Case: 18-1831 Document: 97 Page: 1 Filed: 01/31/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
POLARIS INNOVATIONS LIMITED,
Appellant
v.
KINGSTON TECHNOLOGY COMPANY, INC.,
Appellee
UNITED STATES,
Intervenor
______________________
2018-1831
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2017-
00116.
______________________
Decided: January 31, 2020
______________________
MATTHEW D. POWERS, Tensegrity Law Group LLP,
Redwood Shores, CA, argued for appellant. Also repre-
sented by JENNIFER ROBINSON; AZRA HADZIMEHMEDOVIC,
AARON MATTHEW NATHAN, SAMANTHA A. JAMESON,
McLean, VA; NATHAN NOBU LOWENSTEIN, KENNETH J.
WEATHERWAX, Lowenstein & Weatherwax LLP, Los Ange-
les, CA.
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2 POLARIS INNOVATIONS LIMITED v. KINGSTON TECHNOLOGY
CO. INC.
DAVID M. HOFFMAN, Fish & Richardson PC, Austin, TX,
argued for appellee. Also represented by MICHAEL JOHN
BALLANCO, Washington, DC; NITIKA GUPTA FIORELLA, Wil-
mington, DE.
MELISSA N. PATTERSON, Appellate Staff, Civil Division,
United States Department of Justice, Washington, DC, ar-
gued for intervenor. Also represented by COURTNEY DIXON,
DENNIS FAN, SCOTT R. MCINTOSH, JOSEPH H. HUNT;
THOMAS W. KRAUSE, JOSEPH MATAL, FARHEENA YASMEEN
RASHEED, Office of the Solicitor, United States Patent and
Trademark Office, Alexandria, VA.
______________________
Before REYNA, WALLACH, and HUGHES, Circuit Judges.
Opinion for the court filed PER CURIAM.
Concurring opinion filed by Circuit Judge HUGHES, in
which Circuit Judge WALLACH joins.
PER CURIAM.
In its opening brief, Polaris Innovations Limited ar-
gues that the final written decision at issue in this appeal
exceeds the scope of the Patent Trial and Appeal Board’s
authority and violates the Constitution’s Appointments
Clause. See Appellant’s Br. 53 (citing U.S. Const. art. II,
§ 2, cl. 2). This court recently decided this issue in Arthrex,
Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir.
2019). Accordingly, the Board’s decision in No. IPR2017-
00116 is vacated, and the case is remanded to the Board for
proceedings consistent with this court’s decision in Arthrex.
VACATED AND REMANDED
COSTS
No costs.
Case: 18-1831 Document: 97 Page: 3 Filed: 01/31/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
POLARIS INNOVATIONS LIMITED,
Appellant
v.
KINGSTON TECHNOLOGY COMPANY, INC.,
Appellee
UNITED STATES,
Intervenor
______________________
2018-1831
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2017-
00116.
______________________
HUGHES, Circuit Judge, concurring, in which WALLACH,
Circuit Judge, joins.
I concur because we are bound by the prior panel
decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d
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2 POLARIS INNOVATIONS LIMITED v. KINGSTON TECHNOLOGY
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1320 (Fed. Cir. 2019). 1 However, I write separately to note
that I disagree with the merits and question the remedy of
the Arthrex panel decision. I believe that viewed in light of
the Director’s significant control over the activities of the
Patent Trial and Appeal Board and Administrative Patent
Judges, APJs are inferior officers already properly
appointed by the Secretary of Commerce.
But if APJs are properly considered principal officers,
I have grave doubts about the remedy Arthrex applied to
fix their unconstitutional appointment. In the face of an
unconstitutional statute, our role is to determine whether
severance of the unconstitutional portion would be
consistent with Congress’s intent. Given the federal
employment protections APJs and their predecessors have
enjoyed for more than three decades, I find no legislative
intent to divest APJs of their Title 5 removal protections to
cure any alleged constitutional defect. Because the bar to
find non-severability is so high, though, I reluctantly agree
with Arthrex’s remedy.
I
None of the parties here or in Arthrex dispute that
APJs are officers who exercise “significant authority pur-
suant to the laws of the United States.” Buckley v. Valeo,
1 The parties have raised the same arguments on the
merits of the Appointments Clause issue in both Polaris
cases before this panel, Nos. 2018-1768 and 2018-1831.
However, the government contends that Polaris waived its
Appointments Clause challenge in No. 2018-1768 because
it failed to make the argument before the Board in the first
instance. I need not address the waiver issue because this
concurrence addresses only the merits of the Appointments
Clause argument. And I address this concurrence to No.
2018-1831 because the parties agree the issue was pre-
served there.
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424 U.S. 1, 126 (1976) (per curiam). But “significant au-
thority” marks the line between an officer and an em-
ployee, not a principal and an inferior officer. Despite
being presented with the opportunity to do so, the Supreme
Court has declined to “set forth an exclusive criterion for
distinguishing between principal and inferior officers for
Appointments Clause purposes.” Edmond v. United States,
520 U.S. 651, 661 (1997).
Instead, the pertinent cases make clear that the hall-
mark of an inferior officer is whether a presidentially-nom-
inated and senate-confirmed principal officer “direct[s] and
supervise[s] [her work] at some level.” Id. at 663. Edmond
does not lay out a more exacting test than this, and we
should not endeavor to create one in its stead. The cases
employ an extremely context-specific inquiry, which ac-
counts for the unique systems of direction and supervision
in each case. See infra Section I. Finally, Edmond also
makes clear that the Appointments Clause seeks to “pre-
serve political accountability relative to important govern-
ment assignments.” 520 U.S. at 663. The current
structure for appointing, directing and supervising, and re-
moving APJs allows such political accountability through
the Director’s significant, substantive supervision of APJs’
work, and the ability to discipline and terminate APJs to
promote the efficiency of the service.
Arthrex, in my view, pays insufficient attention to the
significant ways in which the Director directs and super-
vises the work of the APJs and, instead, focuses on whether
the Director can single-handedly review and reverse Board
decisions, and whether APJs are removable at will. In do-
ing so, the Arthrex panel essentially distills the Supreme
Court’s direction and supervision test into two discrete
questions: (1) are an officer’s decisions reviewable by a
principal officer and (2) is the officer removable at will? Be-
cause I believe that the Supreme Court would have an-
nounced such a simple test if it were proper, I respectfully
disagree with the Arthrex panel decision that APJs are
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principal officers. The Director’s power to direct and su-
pervise the Board and individual APJs, along with the fact
that APJs are already removable under the efficiency of the
service standard, suffices to render APJs inferior officers.
A
The Director may issue binding policy guidance, insti-
tute and reconsider institution of an inter partes review,
select APJs to preside over an instituted inter partes re-
view, single-handedly designate or de-designate any final
written decision as precedential, and convene a panel of
three or more members of his choosing to consider rehear-
ing any Board decision. The Arthrex panel categorized
some of these as “powers of review” and others as “powers
of supervision,” but I view them all as significant tools of
direction and supervision.
As Arthrex recognized, “[t]he Director is ‘responsible for
providing policy direction and management supervision’
for the [United States Patent and Trademark Office].” 941
F.3d at 1331 (quoting 35 U.S.C. § 3(a)(2)(A)). Not only can
the Director promulgate regulations governing inter partes
review procedures, but he may also prospectively issue
binding policy guidance “interpreting and applying the pa-
tent and trademark laws.” Gov’t. Br. 21. APJs must apply
this guidance in all subsequent inter partes review proceed-
ings. Such guidance might encompass, for instance, exem-
plary application of the law to specific fact patterns, such
as those posed in pending cases. These powers provide the
Director with control over the process and substance of
Board decisions. Gov’t. Br. 8, 21. And though the Director
cannot directly reverse an individual Board decision that
neglects to follow his guidance, APJs who do so risk disci-
pline or removal under the efficiency of the service stand-
ard applicable under Title 5. See infra Section I C. Such
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binding guidance, and the consequences of failing to follow
it, are powerful tools for control of an inferior officer. 2
The Director also has unreviewable authority to insti-
tute inter partes review. 35 U.S.C. § 314(a), (d). Cf. Free
Enter. Fund v. Pub. Co. Accounting Oversight Bd., 561 U.S.
477, 504 (2010) (discussing the importance of the ability to
“start, stop, or alter individual [PCAOB] investigations,”
even where the reviewing principal officer already had sig-
nificant “power over [PCAOB] activities”). Though the Ar-
threx panel did not address the Director’s ability to
reconsider an institution decision, our precedent also holds
that the Board 3 may reconsider and reverse its initial in-
stitution decision. See, e.g., Medtronic, Inc. v. Robert Bosch
Healthcare Sys., Inc., 839 F.3d 1382, 1385−86 (Fed. Cir.
2016) (explaining that Ҥ 318(a) contemplates that a pro-
ceeding can be ‘dismissed’ after it is instituted, and, as our
prior cases have held, administrative agencies possess in-
herent authority to reconsider their decisions, subject to
certain limitations, regardless of whether they possess ex-
plicit statutory authority to do so” (internal quotation and
citation omitted)).
The Director also controls which APJs will hear any
given instituted inter partes review. 35 U.S.C. § 6(c). In
2 To be sure, I do not mean to suggest that the Direc-
tor’s extensive powers of supervision mean that he can dic-
tate the outcome of a specific inter partes proceeding.
Rather, his ability to issue guidance and designate prece-
dential opinions provides the general type of supervision
and control over APJs’ decision-making that renders them
inferior, not principal, officers.
3 The Director’s delegation of his institution power to
the Board does not diminish its existence. 37 C.F.R.
§ 42.4(a) (stating that “[t]he Board institutes the trial on
behalf of the Director”). See also Ethicon Endo-Surgery,
Inc. v. Covidien LP, 812 F.3d 1023, 1033 (Fed. Cir. 2016).
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6 POLARIS INNOVATIONS LIMITED v. KINGSTON TECHNOLOGY
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my view, this power of panel designation is a quintessential
method of directing and controlling a subordinate. Im-
portantly, I do not believe that in stating that the power to
remove an officer at-will from federal employment is “a
powerful tool for control of an inferior,” Free Enterprise, 561
U.S. at 510 (internal quotation omitted), the Supreme
Court meant that such removal power is the only effective
form of control in the context of the Appointments Clause.
For example, the Judge Advocate General in Edmond could
remove the Court of Criminal Appeal judges from judicial
service without cause, but not necessarily federal employ-
ment altogether. Edmond, 520 U.S. at 664. See also Free
Enterprise, 561 U.S. at 510 (relying on both at-will removal
authority and “the [SEC’s] other oversight authority” in
finding with “no hesitation” that the PCAOB members are
inferior officers). That is akin to the Director’s authority to
designate which APJs will consider a certain case. And de-
spite acknowledging that “when a statute is silent on re-
moval, the power of removal is presumptively incident to
the power of appointment[,]” the Arthrex panel declined to
opine on the Director’s ability to de-designate APJs from a
panel under § 6(c). Arthrex, 941 F.3d at 1332. But Edmond
referenced the ability to remove the judges there “from
[their] judicial assignment[s],” followed by a recognition of
the potent power of removal. 520 U.S. at 664. If the Direc-
tor’s ability to control APJs plays a significant part in the
unconstitutionality at issue, such that the remedy is to
make APJs removable at will, the panel should have defin-
itively addressed the Director’s de-designation authority.
Moreover, as outlined in Section I C, infra, APJs already
may be disciplined or removed from federal employment
under the routine efficiency of the service standard, which
is not incompatible with discipline or removal for failing to
follow the Director’s binding guidance.
And the Director may continue to provide substantial
direction and supervision after the Board issues its final
written decision. As Arthrex discusses, the Director may
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convene a Precedential Opinion Panel (POP), of which the
Director is a member, to consider whether to designate a
decision as precedential. Arthrex, 941 F.3d at 1330. But I
read the Standard Operating Procedures more broadly,
such that the Director may also make a precedential desig-
nation or de-designation decision single-handedly, 4
thereby unilaterally establishing binding agency authority
on important constitutional questions and other exception-
ally important issues. Standard Operating Procedure 2, at
3−4. Indeed, it appears that the Director has done so in at
least sixteen cases in 2018 and 2019. See USPTO, Patent
Trial and Appeal Board Precedential and informative deci-
sions, available at https://www.uspto.gov/patents-applica-
tion-process/patent-trial-and-appeal-board/precedential-
informative-decisions (listing decisions designated as prec-
edential in the past year, where some are labeled as “Prec-
edential Opinion Panel decision” and others are not). The
Director may also convene a POP of his choice, of which he
is by default a member, to consider whether to rehear and
reverse any opinion. Standard Operating Procedure 2, at
4. And, the Director may “determine that a panel of more
than three members is appropriate” and then choose those
additional members as well. Id. Though the Arthrex panel
recognized these powers, it dismissed them because the Di-
rector has only one vote out of at least three. 941 F.3d at
4 “No decision will be designated or de-designated as
precedential or informative without the approval of the Di-
rector. This SOP does not limit the authority of the Director
to designate or de-designate decisions as precedential or in-
formative, or to convene a Precedential Opinion Panel to
review a matter, in his or her sole discretion without regard
to the procedures set forth herein.” Patent Trial and Ap-
peal Board, Standard Operating Procedure 2 (Revision 10)
at 1 (Standard Operating Procedure 2), available at
https://www.uspto.gov/sites/default/files/documents/SOP
2%20R10%20FINAL.pdf.
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1331−32. This assessment, however, fails to recognize the
practical influence the Director wields with the power to
hand-pick a panel, particularly when the Director sits on
that panel. The Director’s ability to unilaterally designate
or de-designate a decision as precedential and to convene a
POP of the size and composition of his choosing are there-
fore important tools for the direction and supervision of the
Board even after it issues a final written decision. 5
5 The Arthrex panel’s underestimation of the Direc-
tor’s power is particularly evident in light of this court’s
prior en banc decision in In re Alappat, 33 F.3d 1526 (Fed.
Cir. 1994), abrogated on other grounds by In re Bilski, 545
F.3d 943 (Fed. Cir. 2008). Alappat contained strong lan-
guage about the ability to control the composition and size
of panels. See, e.g., id. at 1535 (noting that “the Board is
merely the highest level of the Examining Corps, and like
all other members of the Examining Corps, the Board op-
erates subject to the Commissioner’s overall ultimate au-
thority and responsibility”). While the duties of the Board
and the Director have changed since Alappat was decided,
the authority to determine the Board’s composition for re-
consideration of an examiner’s patentability determination
mirrors the current authority with respect to inter partes
review. Compare 35 U.S.C. § 6(c) (2012) (giving the Direc-
tor authority to designate “at least 3 members of the Patent
Trial and Appeal Board” to review “[e]ach appeal, deriva-
tion proceeding, post-grant review, and inter partes re-
view”), with 35 U.S.C. § 7(b) (1988) (giving the
Commissioner power to designate “at least three members
of the Board of Appeals and Interferences” to review “ad-
verse decisions of examiners upon applications for pa-
tents”). Therefore, I believe the panel should have at least
discussed how Alappat’s view of the power to control the
Board might impact the Appointments Clause analysis.
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Combined, all of these powers illustrate that the Direc-
tor has constitutionally significant means of direction and
supervision over APJs─making them inferior officers un-
der the rule of Edmond.
B
Despite the Director’s significant powers of direction
and supervision, the Arthrex panel concluded that APJs are
principal officers in large part because no principal officer
may “single-handedly review, nullify or reverse” the
Board’s decisions. Arthrex, 941 F.3d at 1329. But Supreme
Court precedent does not require such power. And in the
cases in which the Court emphasized a principal officer’s
power of review, that principal officer had less authority to
direct and supervise an inferior officer’s work ex ante than
the Director has here.
In Edmond, for instance, the Court of Appeals for the
Armed Forces, an Article I court, could review decisions of
the Court of Criminal Appeals judges at issue. However,
its scope of review was limited. Edmond, 520 U.S. at 665
(explaining that the Court of Appeals for the Armed Forces
may only reevaluate the facts when there is no “competent
evidence in the record to establish each element of the of-
fense beyond a reasonable doubt”). And while the Judge
Advocate General “exercise[d] administrative oversight”
and could “prescribe uniform rules of procedure,” he could
“not attempt to influence (by threat of removal or other-
wise) the outcome of individual proceedings.” Id. at 664.
Nonetheless, the Supreme Court found that the Court of
Criminal Appeals judges were inferior, not principal, offic-
ers. In comparison, while the Director may not unilaterally
decide to rehear or reverse a Board decision, he has many
powers to direct and supervise APJs both ex ante and ex
post, Section I A, supra, that no principal officer had in Ed-
mond.
Similarly, in Freytag v. Comm’r, 501 U.S. 868 (1991),
the Supreme Court considered the status of special trial
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judges appointed by the Tax Court, whose independent de-
cision-making varied based on the type of case before them.
The Court held that the special trial judges were inferior
officers—not employees—when presiding over “declaratory
judgment proceedings and limited-amount tax cases” be-
cause they “render[ed] the decisions of the Tax Court” in
those cases. Id. at 882. In doing so, the Court distin-
guished between cases in which the special trial judges
acted as “inferior officers who exercise independent author-
ity,” and cases in which they still had significant discretion
but less independent authority. Id. The Court’s analysis
distinguished between inferior officer and employee; no-
where did the Court suggest that special trial judges’ “in-
dependent authority” to decide declaratory judgment
proceedings and limited-amount cases rendered them prin-
cipal officers. See id. at 881−82. Most recently, the Court
applied the framework of Freytag in deciding whether ad-
ministrative law judges (ALJs) of the Securities and Ex-
change Commission (SEC) are inferior officers or
employees. Lucia v. S.E.C., 138 S. Ct. 2044, 2053 (2018).
The Court reasoned that SEC ALJs and Freytag’s special
trial judges are extremely similar, but SEC ALJs arguably
wield more power because their decisions become final if
the SEC declines review. Id. at 2053−54. But again, the
Court found this structure still only rendered SEC ALJs
officers, not employees. Id. at 2054. No mention was made
of SEC ALJs being principal officers. 6 See id. at 2051 n.3
(explaining that the distinction between principal and in-
ferior officers was “not at issue here”). Just as the special
6 In fact, the Court declined “to elaborate on Buck-
ley’s ‘significant authority’ test” marking the line between
officer and employee, citing two parties’ briefs which ar-
gued that the test between officer and employee, not prin-
cipal and inferior officer, should include some measure of
the finality of decision making. Lucia, 138 S. Ct. at
2051─52.
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trial judges in Freytag and the SEC ALJs in Lucia were
inferior officers, so too are APJs.
Nor does this court’s precedent require unfettered re-
view as a marker of inferior officer status. In Masias v.
Sec’y of Health & Human Servs., we rebuffed the argument
that because the Court of Federal Claims does not review
decisions of the Vaccine Program’s special masters de novo,
the special masters are principal officers. 634 F.3d 1283,
1293−94 (Fed. Cir. 2011). There, we recognized that the
Court of Federal Claims may only “set aside any findings
of fact or conclusions of law of the special master found to
be arbitrary, capricious, an abuse of discretion, or other-
wise not in accordance with law . . . .” Id. at 1294. This
limited review means that many of the special masters’ de-
cisions are effectively final because the Court of Federal
Claims has no basis to set aside findings of fact or conclu-
sions of law. We reasoned that such limited review of spe-
cial masters’ decisions by the Court of Federal Claims
resembled the review in Edmond, and that “the fact that
the review is limited does not mandate that special masters
are necessarily ‘principal officers.’” Id. at 1295.
Finally, the panel analogized the Arthrex issue to the
one addressed by the D.C. Circuit in Intercollegiate Broad.
Sys., Inc. v. Copyright Royalty Bd., 684 F.3d 1332 (D.C. Cir.
2012). See Arthrex, 941 F.3d at 1334. But the facts of In-
tercollegiate are significantly different than those in Ar-
threx, or here. The Librarian of Congress—the principal
officer who supervises the Copyright Royalty Judges
(CRJs) at issue—was much more constrained in her ability
to direct and supervise the CRJs than the Director. The
governing statute grants CRJs broad discretion over rate-
making. See 17 U.S.C. § 802(f)(1)(A)(i) (stating that
“[CRJs] shall have full independence in making” numerous
copyright rate-related decisions). The Librarian “ap-
prov[es] the CRJs’ procedural regulations, . . . issu[es] eth-
ical rules for the CRJs, [and] . . . oversee[s] various
logistical aspects of their duties,” such as publishing CRJs’
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decisions and providing administrative resources. Intercol-
legiate, 684 F.3d at 1338. In fact, it appears the only way
the Librarian can exercise substantive control over the
CRJs’ ratemaking decisions is indirectly through the Reg-
ister of Copyrights, whom she, not the President, appoints.
See 17 U.S.C. § 701(a). The Register corrects any legal er-
rors in the CRJs’ ratemaking decisions, 17 U.S.C.
§ 802(f)(1)(D), and provides written opinions to the CRJs
on “novel question[s] of law,” 17 U.S.C. § 802(f)(1)(B), or
when the CRJ requests such an opinion. 17 U.S.C.
§ 802(f)(1)(A)(ii). But the CRJs may not consult with the
Register about a question of fact. 17 U.S.C.
§ 802(f)(1)(A)(i). The Librarian therefore exerts far less
control over CRJs than the Director can over APJs using
all the powers of direction and supervision discussed in
Section I A, supra.
The ill-suited comparison to Intercollegiate in Arthrex
again highlights how the unique powers of direction and
supervision in each case should be viewed in totality, ra-
ther than as discrete categories weighing in favor of infe-
rior officer status or not. In particular, by breaking up the
analysis into three discrete categories—Review, Supervi-
sion, and Removal—the Arthrex panel overlooks how the
powers in each category impact each other. Again, for ex-
ample, whereas ex post the Court of Appeals for the Armed
Forces has more power to review the Court of Criminal Ap-
peals judges’ decisions than the Director has to review a
Board decision, neither the JAG nor the Court of Appeals
for the Armed Forces have the Director’s ex ante control,
such as the power to decide whether to hear a case at all or
to issue binding guidance on how to apply the law in a case.
Viewed through this integrated lens, I believe APJs com-
fortably fit with prior Supreme Court precedent that has
never found a principal officer in a challenged position to
date.
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C
Finally, to the extent that the Arthrex panel decision is
based on the lack of review along with perceived impermis-
sible restrictions on removal of APJs, I believe it misappre-
hends the applicable efficiency of the service standard that
protects APJs. The efficiency of the service standard al-
lows discipline and removal for “misconduct [that] is likely
to have an adverse impact on the agency’s performance of
its functions.” See Brown v. Dep’t of the Navy, 229 F.3d
1356, 1358 (Fed. Cir. 2000). To be sure, the efficiency of
the service standard does not allow discipline or removal of
APJs “without cause,” as in Edmond. See Arthrex, 941 F.3d
at 1333. But neither the Supreme Court nor this court has
required that a civil servant be removable at will to qualify
as an inferior officer. To the contrary, the Supreme Court
and this court have upheld for-cause removal limitations
on inferior officers. See, e.g., Morrison v. Olson, 487 U.S.
654, 692−93 (1988) (holding that the “good cause” re-
striction on removal of the independent counsel, an inferior
officer, is permissible); Masias, 634 F.3d at 1294 (stating
that the Court of Federal Claims can remove special mas-
ters for “incompetency, misconduct, or neglect of duty or for
physical or mental disability or for other good cause
shown”). See also Free Enterprise, 561 U.S. at 494 (explain-
ing that the Court previously “adopted verbatim the rea-
soning of the Court of Claims, which had held that when
Congress ‘ “vests the appointment of inferior officers in the
heads of Departments[,] it may limit and restrict the power
of removal as it deems best for the public interest’ ” (alter-
ation in original) (quoting United States v. Perkins, 116
U.S. 483, 485 (1886) (itself quoting Perkins v. United
States, 20 Ct. Cl. 438, 444 (1885)))).
The efficiency of the service standard allows supervi-
sors to discipline and terminate employees for arguably
even a wider range of reasons than the standards above,
including failure or refusal to follow the Director’s policy or
legal guidance. Together with the significant authority the
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Director wields in directing and supervising APJs’ work,
the ability to remove an APJ on any grounds that promote
the efficiency of the service supports finding that APJs are
inferior officers.
II
Assuming for the sake of argument that APJs are prin-
cipal officers, a remedy is required to cure the constitu-
tional violation arising from their present appointment
scheme. However, I do not believe that the remedy pro-
posed by the Arthrex panel comports with congressional in-
tent as evidenced by the employment protections provided
to APJs and their predecessors for over thirty years. The
Arthrex panel makes APJs removable at will by partially
severing 35 U.S.C. § 3(c) as it applies Title 5’s removal pro-
tections to APJs. Arthrex, 941 F.3d at 1337–38. I question
whether Congress would have wanted to leave APJs with-
out the removal protections of Title 5. But, given the high
standard for finding non-severability, I cannot say that the
Arthrex panel’s remedy was improper.
A
Before proceeding to the traditional severance analy-
sis, I must note several concerns about the panel’s pur-
ported “severance.” In traditional severance cases, both
the unconstitutional language being severed and the re-
maining language are usually part of one statute enacted
at the same time. In what appears to be a smaller number
of cases, an unconstitutional amendment was severed from
the original statute. E.g., Reitz v. Mealey, 314 U.S. 33,
38−39 (1941), overruled in part on other grounds by Perez
v. Campbell, 402 U.S. 637 (1971). But here the “severance”
is far more convoluted—to the extent that I question
whether “severance” is even the appropriate characteriza-
tion of the Arthrex remedy.
A court may sever the application of a particular stat-
ute without striking language explicitly. See, e.g., Nat’l
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Fed’n of Indep. Bus. v. Sebelius, 567 U.S. 519, 586 (2012)
(invalidating the application of a statute to cure a constitu-
tional defect). But the Arthrex panel did not simply sever
the application of 35 U.S.C. § 3(c) to APJs. It severed
§ 3(c)’s application of Title 5 protections, but only with re-
spect to Title 5’s removal protections, and only to APJs. See
Arthrex, 941 F.3d at 1337–38. In doing so, it severed the
application of a separate statute, indeed, a section in a sep-
arate title of the United States Code. Id. Further, the Title
5 employment protections afforded by 35 U.S.C. § 3(c) al-
ready existed when Congress significantly amended other
portions of Title 35, but made no changes to § 3(c), with the
America Invents Act in 2011. See infra Section II C. I
question whether it is appropriate to solve the alleged con-
stitutional infirmity at issue in Arthrex and in this case by
severing the application of a statute that Congress left un-
touched in its most recent revision, the substance of which
had applied in various forms for over 30 years. See infra
Section II B.
B
When faced with an unconstitutional statute, we must
determine whether severing the offending portion is possi-
ble. To do so, we must determine if the remaining statute
“will function in a manner consistent with the intent of
Congress.” Alaska Airlines, Inc. v. Brock, 480 U.S. 678, 685
(1987) (emphasis removed).
The question of severability is a weighty one and the
bar for finding an unconstitutional provision non-severable
is high. We “must refrain from invalidating more of the
statute than is necessary. Indeed, we must retain those
portions of the Act that are (1) constitutionally valid, (2) ca-
pable of ‘functioning independently,’ and (3) consistent
with Congress’ basic objectives in enacting the statute.”
United States v. Booker, 543 U.S. 220, 258–59, (2005) (in-
ternal citations omitted).
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Because the statute as severed by Arthrex can function
independently and is constitutionally valid, the key ques-
tion is whether the statute as excised “remains consistent
with Congress’ initial and basic . . . intent.” Id. at 264.
Here, I question whether the Arthrex-excised statute does
so. Congress afforded federal employment protections to
APJs and their predecessors for over thirty years. And it
seems unlikely to me that Congress, faced with this Ap-
pointments Clause problem, would have chosen to strip
APJs of their employment protections, rather than choose
some other alternative. However, because the bar for non-
severability is so high, and Congress can, at the end of the
day, make another legislative choice if it disagrees with the
outcome here, I reluctantly conclude that § 3(c) can be sev-
ered as it applies to the removal protections for APJs.
To be sure, I do not question the ability to sever an un-
constitutional provision lightly. But our touchstone must
remain the intent of Congress, and in this case, Congress
has maintained federal employment protections for
USPTO officers and employees, including APJs and their
predecessors, from 1975 to today. This long-standing stat-
utory protection leads me to believe that Congress intended
for APJs to have removal protections, such as those incor-
porated through Title 5 in 35 U.S.C. § 3(c), regardless of
changes made to the Board’s duties in the AIA.
C
As the Arthrex panel noted, examiners-in-chief—“the
former title of the current APJs”—were in fact nominated
by the President and confirmed by the Senate until 1975.
Arthrex, 941 F.3d at 1344. See also 35 U.S.C. § 3 (1952).
But the 1975 amendment did not simply remove Presiden-
tial nomination and Senate confirmation; it instead pro-
vided for the appointment of examiners-in-chief (1) by the
Secretary of Commerce (2) “under the classified civil ser-
vice.” An Act To Amend Title 35, United States Code, “Pa-
tents”, and For Other Purposes, Pub. L. No. 93–601, secs.
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1–2, §§ 3, 7, 88 Stat. 1956, 1956 (1975) (codified as amended
at 35 U.S.C. §§ 3, 7 (1976)). This amendment provided fed-
eral employment protections to examiners-in-chief. See,
e.g., Arnett v. Kennedy, 416 U.S. 134, 150–51 (1974), over-
ruled in part on other grounds by Cleveland Bd. of Educ. v.
Loudermill, 470 U.S. 532 (1985) (explaining that the Lloyd-
LaFollette Act’s “efficiency of the service” standard gov-
erned the dismissal of a competitive civil service employee);
Cole v. Young, 351 U.S. 536, 543 (1956) (describing dismis-
sal of federal employees as governed by “general personnel
laws,” such as the Lloyd-LaFollette Act’s “efficiency of the
service” standard).
Two reasons for this change appear in the legislative
history. First, due to the growing number of examiners-in-
chief, Presidential nomination and Senate confirmation
posed a “burden.” H.R. REP. NO. 93-856, at 2 (1974). In an
early case discussing the Appointments Clause, the Su-
preme Court said that this was exactly the reason for
providing for appointment of inferior officers by people
other than the President. United States v. Germaine, 99
U.S. 508, 509–10 (1878). Second, the position of examiner-
in-chief “requir[es] unique legal and technical qualifica-
tions and experience.” An Act To Amend Title 35, United
States Code, “Patents”, and For Other Purposes: Hearing
on S. 645, H.R. 5237, S. 1253 and S.1254 Before Subcomm.
No. 3 of the H. Comm. on the Judiciary, 92d Cong. 28−29
(1974) (letter from William N. Letson, Acting General
Counsel of the Dep’t of Commerce, to Emanuel Celler,
Chairman of the H. Comm. on the Judiciary). In making
this change, Congress implicitly recognized that APJs be-
longed in the civil service, where expertise and nonpartisan
decision-making are expected of all civil servants. Indeed,
such ideas motivated the passage of the Civil Service Re-
form Act (CSRA) only three years after Congress provided
for the appointment of APJs through the civil service sys-
tem. Lovshin v. Dep’t of Navy, 767 F.2d 826, 832 (Fed. Cir.
1985) (citing the Senate’s discussion of the public’s right to
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a government that is both “efficient and effective” and “im-
partially administered”).
Congress then maintained these federal employment
protections through several amendments over more than
three decades. In 1985, Congress amended 35 U.S.C. § 7,
creating the Board of Patent Appeals and Interferences
(BPAI) from the existing Board of Appeals, and again pro-
vided that the examiners-in-chief “shall be appointed to the
competitive service.” 7 Patent Law Amendment Acts of
1984, Pub. L. 98–622, title II, sec. 201, § 7(a), 98 Stat. 3383,
3386 (1984) (codified as amended at 35 U.S.C. § 7 (1988)).
Though the 1978 CSRA replaced the Lloyd-LaFollette Act
between the 1975 and 1985 amendments to 35 U.S.C. § 7,
the CSRA maintained the “efficiency of the service” stand-
ard for discipline and dismissal of federal employees in the
competitive service. 5 U.S.C. § 7513 (1978). See also Cor-
nelius v. Nutt, 472 U.S. 648, 669 (1985) (“The statutory
phrase ‘such cause as will promote the efficiency of the ser-
vice’ pre-dates the Civil Service Reform Act’s recognition of
federal sector collective bargaining.”) (Marshall, J., dis-
senting).
In 1999, Congress made four changes significant here.
First, Congress modified the statutory language governing
the BPAI, moving the Board’s governing language from § 7
to its current location in § 6. See Patent and Trademark
Office Efficiency Act, Pub. L. 106–113, ch. 1, sec. 4717,
113 Stat. 1501, 1501A-580 (1999) (codified at 35 U.S.C. § 6
(2000)). Second, it introduced the terminology of adminis-
trative patent judge, in place of examiners-in-chief. Id. at
1501A-580–81. Third, Congress removed the previous
7 For the Appointments Clause analysis here, I treat
the terms “competitive service” and “classified civil service”
as interchangeable. See, e.g., 5 U.S.C. § 2102(c) (2018) (“As
used in other Acts of Congress, ‘classified civil service’ or
‘classified service’ means the ‘competitive service[.]’”).
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language appointing examiners-in-chief under the compet-
itive service, but added the current § 3(c), giving Title 5
protections to USPTO employees and officers. Id. at sec.
4713, § 3(c), 113 Stat. at 1501A-577 (codified as amended
at 35 U.S.C. § 3(c) (2000)). This meant that even though
their title changed, APJs remained subject to discipline or
dismissal subject to the efficiency of the service standard.
See 5 U.S.C. § 7513 (2000). Fourth, the amendment trans-
ferred the power to appoint APJs from the Secretary of
Commerce to the Director. Patent and Trademark Office
Efficiency Act, Pub. L. 106–113, ch. 1, sec. 4717, 113
Stat. 1501, 1501A-581 (1999) (codified at 35 U.S.C. § 6(a)
(2000)).
This fourth change is particularly significant because
only a few years later, Congress explicitly considered the
constitutionality of this choice—whether APJs were em-
ployees that could be appointed by the Director or officers
that must be appointed by the Secretary of Commerce.
Congress chose the latter. Consideration of this issue was
prompted by an intellectual property law scholar’s sugges-
tion in 2007 that APJs were inferior officers, not employ-
ees, and therefore must be appointed by the President, a
Court of Law, or the Head of a Department. See John F.
Duffy, Are Administrative Patent Judges Unconstitu-
tional?, 2007 PATENTLY-O PAT. L.J. 21, 25 (2007). Congress
responded swiftly, amending the law in 2008 to give the
power to appoint APJs back to the Secretary of Commerce.
Patent and Trademark Administrative Judges Appoint-
ment Authority Revision, Pub. L. 110–313, sec. 1, § 6, 122
Stat. 3014, 3014 (2008) (codified as amended at 35 U.S.C.
§ 6(a) (2012)). While some legislators viewed the fix as un-
necessary, none suggested that APJs were in fact principal
officers appointable only by the President. Compare 154
Cong. Rec. H7234 (daily ed. Jul. 29, 2008 edition) (state-
ment of Rep. King) (“[A] straightforward reading of article
II, section 2, which I strongly endorse, suggests the 1999
authority that Congress bestowed on the Patent and
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Trademark Office Director to appoint administrative law
judges is unconstitutional, inconsistent with article II, sec-
tion 2. Instead, this right is more properly reserved for . . .
the Secretary of Commerce . . . .”), with id. (statement of
Rep. Cohen) (“We firmly believe that appointments made
by the Director are constitutional.”). That Congress ex-
plicitly considered the constitutionality of APJ appoint-
ments just four years before passing the AIA, and
confirmed their appointment by the Head of a Department,
strongly suggests that Congress believed APJs were infe-
rior officers in 2000, 2007, and 2011, and thus, could be
constitutionally appointed by the Secretary, even with re-
strictions on their removal.
Finally, though Congress made significant changes to
Title 35 through the AIA, it did not modify § 3(c)’s applica-
tion of Title 5 protections to USPTO employees and offic-
ers. 8 35 U.S.C. § 3(c) (2012). Yet again, APJs remained
subject to the efficiency of the service removal standard ap-
plicable to many federal employees.
Further confirmation regarding Congressional intent
comes from the fact that § 3 provides specific, and limited,
removal procedures for the Director and the Commissioner
for Patents, as opposed to all other officers and employees
subject to § 3(c). The Director may be removed only by the
President. 35 U.S.C. § 3(a)(4). The Commissioner may be
removed “for misconduct or nonsatisfactory performance”
under her performance agreement, “without regard to the
provisions of title 5.” 35 U.S.C. § 3(b)(2)(C). That Congress
described specific removal procedures for these two
8 The AIA did amend 35 U.S.C. § 3(b), see Leahy-
Smith America Invents Act, Pub. L. 112-29, sec. 21, § 3(b),
125 Stat. 284, 336 (2011) (governing the Director’s ability
to fix pay for APJs), and 35 U.S.C. § 3(e)(2), id. at sec. 20
§ 3(e)(2), 125 Stat. at 334 (technical amendment changing
“this Act” to “that Act”).
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positions strongly implies it intended that all other USPTO
employees and officers enjoy the Title 5 protections pro-
vided in § 3(c).
Given this unbroken line of federal employment protec-
tion afforded to APJs and their predecessors for over three
decades, I question whether severing § 3(c)’s Title 5 re-
moval protections for APJs “remains consistent with Con-
gress’ initial and basic . . . intent.” Booker, 543 U.S. at 264.
My concerns are not alleviated by the Arthrex panel’s focus
on Congress’s intent as it pertained to the importance of
inter partes review, without considering why Congress
chose to provide Title 5 employment protections to APJs for
decades. See Arthrex, 941 F.3d at 1337–38.
D
Finally, I am mindful of the Supreme Court’s guidance
that:
Our ability to devise a judicial remedy that does not
entail quintessentially legislative work often de-
pends on how clearly we have already articulated
the background constitutional rules at issue and
how easily we can articulate the remedy. . . . But
making distinctions in a murky constitutional con-
text, or where line-drawing is inherently complex,
may call for a ‘far more serious invasion of the leg-
islative domain’ than we ought to undertake.
Ayotte v. Planned Parenthood of N. New England, 546 U.S.
320, 329−30 (2006) (quoting United States v. Nat’l Treasury
Emps. Union, 513 U.S. 454, 479 n.26 (1995)). Given the
limited extent of Appointments Clause jurisprudence and
Congress’s repeated decisions to provide federal employ-
ment protections to APJs for decades, I am particularly
concerned that Arthrex’s remedy constitutes an unwise in-
vasion of the legislative domain.
I recognize that the Arthrex panel considered several
potential fixes and chose the one it viewed both as
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constitutional and minimally disruptive. But removing
long-standing employment protections from hundreds of
APJs is quite disruptive. Given no clear evidence that Con-
gress would have intended such a drastic change, I would
defer to Congress to fix the problem. This is a legislative
problem best left to a legislative solution. Congress faces
fewer constraints than we do in fixing an unconstitutional
statute. For example, Congress might choose to: grant the
Director unilateral review over all Board decisions; make
the Chief PTAB Judge a presidential appointee and grant
her review of all Board decisions; provide for review of
Board decisions by a panel of three Presidential appointees
at the USPTO (having created at least two such positions
in addition to the Director); or provide for presidential ap-
pointment of all APJs.
In sum, I believe the Director currently exercises suffi-
cient oversight and supervision of APJs to render them in-
ferior officers under the Appointments Clause. But if APJs
must be viewed as principal officers, I question curing the
ensuing constitutional violation by removing their Title 5
removal protections because I believe it conflicts with Con-
gress’s intent.