Case: 19-1956 Document: 92 Page: 1 Filed: 07/28/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
FALL LINE PATENTS, LLC,
Appellant
v.
UNIFIED PATENTS, LLC, FKA UNIFIED PATENTS,
INC.,
Appellee
ANDREI IANCU, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2019-1956
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
00043.
______________________
Decided: July 28, 2020
______________________
MATTHEW JAMES ANTONELLI, Antonelli, Harrington &
Thompson, LLP, Houston, TX, for appellant. Also repre-
sented by ZACHARIAH HARRINGTON, LARRY D. THOMPSON,
Case: 19-1956 Document: 92 Page: 2 Filed: 07/28/2020
2 FALL LINE PATENTS, LLC v. UNIFIED PATENTS, LLC
JR.; SARAH RING, Daniels & Tredennick, Houston, TX.
JAMES R. BARNEY, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Washington, DC, for appellee.
Also represented by DANIEL CRAIG COOLEY, Reston, VA;
JONATHAN R. BOWSER, Buchanan Ingersoll & Rooney PC,
Alexandria, VA; ASHRAF FAWZY, JONATHAN RUDOLPH
KOMINEK STROUD, Unified Patents LLC, Washington, DC.
SARAH E. CRAVEN, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for interve-
nor. Also represented by THOMAS W. KRAUSE, FRANCES
LYNCH, FARHEENA YASMEEN RASHEED.
______________________
Before O’MALLEY, BRYSON, and HUGHES, Circuit Judges.
O’MALLEY, Circuit Judge.
“In this Circuit, a later panel is bound by the determi-
nations of a prior panel, unless relieved of that obligation
by an en banc order of the court or a decision of the Su-
preme Court.” Deckers Corp. v. United States, 752 F.3d
949, 959 (Fed. Cir. 2014). Of course, we should not follow
our precedent blindly. See Ramos v. Louisiana, 140 S. Ct.
1390, 1405 (2020) (“[S]tare decisis has never been treated
as ‘an inexorable command.’”). “Indeed, we have said that
it is the province and obligation of the en banc court to re-
view the current validity of challenged prior decisions.”
Lighting Ballast Control LLC v. Philips Elecs. N. Am.
Corp., 744 F.3d 1272, 1298 (Fed. Cir. 2014) (en banc)
(O’Malley, J., dissenting) (internal quotations marks omit-
ted). But we do not overturn our decisions lightly, particu-
larly those that we so recently issued. We recognize that
“today’s legal issues are often not so different from the
questions of yesterday and that we are not the first ones to
try to answer them.” June Med. Servs., LLC v. Russo, 140
S. Ct. 2103, 2134 (2020) (Roberts, C.J., concurring).
Case: 19-1956 Document: 92 Page: 3 Filed: 07/28/2020
FALL LINE PATENTS, LLC v. UNIFIED PATENTS, LLC 3
Appellant Fall Line Patents, LLC (“Fall Line”) asks us
to ignore the constraints of our precedent with respect to
two separate issues. It maintains that we have mandamus
jurisdiction over the Patent Trial and Appeal Board’s (“the
Board”) real party-in-interest determinations, notwith-
standing our recent holding in ESIP Series 2, LLC v. Pu-
zhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020) that
§ 314(d) precludes appellate review over this institution-
based requirement. See Appellant Supp. Br. 1–4. And it
contends that this panel has the authority to modify the
constitutional fix adopted by this court in Arthrex, Inc. v.
Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019).
We do not. Despite Fall Line’s arguments otherwise,
“a writ of mandamus is not intended to be simply an alter-
native means of obtaining appellate relief, particularly
where relief by appeal has been specifically prohibited by
Congress.” In re Power Integrations, Inc., 899 F.3d 1316,
1319 (Fed. Cir. 2018). And Fall Line’s challenge to the con-
stitutional fix adopted by this court in Arthrex invokes the
same arguments that we rejected in our denial of en banc
review in that case. See Arthrex, Inc. v. Smith & Nephew,
Inc., 953 F.3d 760, 763 (Fed. Cir. 2020) (Moore, J., joined
by O’Malley, Reyna, and Chen, J., concurring in denial of
rehearing en banc). Accordingly, we decline Fall Line’s in-
vitation to effect legal whiplash and reject the recent hold-
ings of this court in ESIP Series 2 and Arthrex. We
conclude, however, that Fall Line did not waive its right to
assert an Appointments Clause challenge, and vacate and
remand for a new panel of APJs to consider the IPR anew.
I. BACKGROUND
While the parties discuss many details regarding Uni-
fied Patents, LLC’s (“Unified”) revenue structure and the
timeline leading to the Board’s § 312(a)(2) real parties-in-
interest determination, there are only a few pertinent facts
of note.
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4 FALL LINE PATENTS, LLC v. UNIFIED PATENTS, LLC
On October 6, 2017, Unified Patents, LLC (“Unified”)
filed a petition for inter partes review of claims 16–19 and
21–22 of U.S. Patent No. 9,454,748 (the “’748 patent”). J.A.
83. At the time of the filing, the ’748 patent was involved
in a variety of patent matters against certain companies.
J.A. 88. Unified did not list any of these companies, how-
ever, as a real party-in-interest. Id. Fall Line thus argued
that Unified’s real parties-in-interest identification was in-
sufficient. J.A. 184.
The Board rejected Fall Line’s initial § 312(a)(2) argu-
ment in its institution decision. J.A. 200–01. In its insti-
tution decision, it explained:
Although Patent Owner argue[d] Petitioner’s busi-
ness model and public statements could make Pe-
titioner’s members real parties-in-interest, Patent
Owner d[id] not provide any evidence indicating
that any of those members are real parties-in-in-
terest in this proceeding.
J.A. 201. Without anything more, the Board said Fall
Line’s allegations fell flat. The Board concluded, moreover,
that the fact that Unified failed to “submit Voluntary In-
terrogatory Responses in the instant case” was insufficient
to demonstrate that Unified’s real party-in-interest desig-
nation was inaccurate. Id.
After institution, Fall Line sought authorization to file
a motion for discovery regarding Unified’s real party-in-in-
terest designation. J.A. 17. It asked, however, to wait for
a district court ruling before filing the motion. Id. The
Board instructed Fall Line to re-seek authorization when
it was prepared to file the motion, but Fall Line never made
a second request for authorization. Id. Nor did it raise a
§ 312(a)(2) challenge in its patent owner response. Id. Fall
Line’s real party-in-interest objections were not brought
back to the Board’s attention until a few days before the
hearing, when the parties submitted their oral hearing
demonstratives and related objections. Id. Then, during
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FALL LINE PATENTS, LLC v. UNIFIED PATENTS, LLC 5
the oral hearing, Fall Line argued that the Board should
consider its § 312(a)(2) challenge. Id.
In its final written decision, the Board concluded that
Fall Line’s real party-in-interest challenge was untimely,
and that, even if it were to consider Fall Line’s belated ar-
gument, the evidence was insufficient to support such a
challenge. J.A. 17–25. Accordingly, the Board rejected Fall
Line’s § 312(a)(2) challenge, proceeded to address the mer-
its of Unified’s § 103 ground, and concluded that Unified
had proven, by a preponderance of the evidence, that
claims 16–19 and 21–22 of the ’748 patent are unpatenta-
ble. J.A. 75.
Fall Line appealed. In its opening brief, Fall Line ar-
gues that it did not waive its § 312(a)(2) challenge and that
Unified failed to properly identify the real parties-in-inter-
est. Appellant Opening Br. 9–16. It also contends that the
panel should vacate and dismiss the Board’s final written
decision because the current structure of the Board violates
the Appointments Clause, and, because it asserts that the
severance remedy imposed in Arthrex is inadequate, a re-
mand to a new panel of APJs would not fix the constitu-
tional violation. Id. at 17–18.
After the parties completed briefing, we held in ESIP
Series 2, LLC v. Puzhen Life USA, LLC that § 314(d) pre-
cludes review of the Board’s real party-in-interest determi-
nations. 958 F.3d at 1386. In light of this holding, we
ordered that the parties submit supplemental briefing on
the issue.
II. DISCUSSION
A. Fall Line’s Real Party-in-Interest Challenge
Section 312(a) of Title 35 specifies that a petition “may
be considered only if” it includes, inter alia, an “identifica-
tion” of “all real parties in interest.” 35 U.S.C. § 312(a)(2).
In ESIP Series 2, we explained that preclusion of judicial
review under § 314(d) extends to a Board decision
Case: 19-1956 Document: 92 Page: 6 Filed: 07/28/2020
6 FALL LINE PATENTS, LLC v. UNIFIED PATENTS, LLC
concerning the “‘real parties in interest’ requirement of
§ 312(a)(2).” 958 F.3d at 1386. In light of the Supreme
Court’s decision in Thryv, Inc. v. Click-to-Call Techs., LP,
140 S. Ct. 1367 (2020), we held that § 314(d) precludes our
review of the real party-in-interest determination. ESIP
Series 2, 958 F.3d at 1386 (quoting Thryv, 140 S. Ct. at
1373–74).
Fall Line “acknowledges that this [c]ourt . . . should
rule that it lacks normal appellate jurisdiction over the RPI
issue” in light of Thryv, Appellant Supp. Br. 1, but never-
theless insists that we may review the Board’s decision un-
der our “mandamus jurisdiction.” Id. Relying on the
Supreme Court’s stipulation that Cuozzo does not “categor-
ically preclude review,” Fall Line contends that mandamus
is authorized and necessary when the Board engages in
“shenanigans.” Appellant Supp. Br. 2–3 (quoting Cuozzo,
136 S. Ct. at 2141). According to Fall Line, in this case,
such “shenanigans” constitute the Board’s § 312(a)(2) de-
termination. Appellant Supp. Br. 3.
Fall Line misrepresents the Cuozzo Court’s qualifica-
tion and misunderstands the role of mandamus. In Cuozzo,
the Supreme Court explained that its interpretation of
§ 314(d) applies where the grounds for challenging the
Board’s decision “consist of questions that are closely tied
to the application and interpretation of statutes related to
[the Board]’s decision to initiate inter partes review.”
Cuozzo, 136 S. Ct. at 2141. It emphasized that its holding
did not decide “the precise effect of § 314(d) on appeals that
implicate constitutional questions, that depend on other
less closely related statutes, or that present other ques-
tions of interpretation that reach, in terms of scope and im-
pact, well beyond ‘this section.’” Id. And to provide an
example of the type of review that was not “categorically
precluded” by its holding, the Court explained:
[W]e do not categorically preclude review of a final
decision where a petition fails to give “sufficient
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FALL LINE PATENTS, LLC v. UNIFIED PATENTS, LLC 7
notice” such that there is a due process problem
with the entire proceeding, nor does our interpre-
tation enable the agency to act outside its statutory
limits by, for example, canceling a patent claim for
“indefiniteness under § 112” in inter partes review.
Id. at 2141–42. Thus, institution decisions that implicate
constitutional or jurisdictional violations are not “categori-
cally precluded” from judicial review under § 314(d). The
Cuozzo Court did not hold, however, that this court may
exercise its mandamus powers to review “an ordinary dis-
pute about the application of” an institution-related stat-
ute. Id. While we once relied on this precise language in
Cuozzo to conclude that statutory prerequisites to the Di-
rector’s authority to institute an IPR were not related to
institution within the meaning of § 314(d), the Supreme
Court disagreed with that conclusion in Thryv.
It is true that, in the context of concluding that § 314(d)
bars appellate review of the Board’s § 315(b) determina-
tion, the Thryv Court said it did “not decide whether man-
damus would be available in an extraordinary case.”
Thryv, 140 S. Ct. at 1374 n.6. But as Justice Gorsuch rec-
ognized, we have addressed that question and concluded
that mandamus is not available to address decisions that
are barred from appellate review under § 314(d). Id. at
1389 (Gorsuch, J., dissenting) (“[T]he Court today will not
say whether mandamus is available where the § 314(d) bar
applies, and the Federal Circuit has cast doubt on that pos-
sibility.”). Specifically, we recently held that statutory pro-
hibitions of appellate review “cannot be sidestepped simply
by styling the request for review as a petition for manda-
mus.” In re Power Integrations, Inc., 899 F.3d at 1319 (col-
lecting cases). Where an appellant’s claim is nothing more
than a challenge to the Board’s conclusion that the infor-
mation presented in the petition warranted review, there
is “no ‘clear and indisputable’ right to challenge [the] non-
institution decision directly in this court, including by way
of mandamus.” In re Dominion Dealer Solutions, LLC, 749
Case: 19-1956 Document: 92 Page: 8 Filed: 07/28/2020
8 FALL LINE PATENTS, LLC v. UNIFIED PATENTS, LLC
F.3d 1379, 1381 (Fed. Cir. 2014). See also GTNX, Inc. v.
INTTRA, Inc., 789 F.3d 1309, 1312 (Fed. Cir. 2015). So,
while the Supreme Court side-stepped the issue in Thryv,
we have not.
In its mandamus request, Fall Line simply rehashes
the procedural timeline of its § 312(a)(2) challenge and the
evidence in support of its claim. Appellant Supp. Br. 3.
These are the types of arguments that appellants regularly
raised in their § 312(a)(2) appeals, prior to the Supreme
Court’s holding in Thryv and our decision in ESIP Series 2.
See, e.g., Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed.
Cir. 2018). Moreover, as evident from the Board’s decision
and the record, this appeal involves no issues extraneous
to the Board’s § 312(a)(2) determination. Accordingly, we
reject Fall Line’s contention that the present appeal justi-
fies mandamus review. “For this court to entertain such
claims in response to a petition for mandamus would con-
vert the mandamus procedure into a transparent means of
avoiding the statutory prohibition on appellate review of
agency institution decisions.” In re Power Integrations,
Inc., 899 F.3d at 1321. 1
B. Fall Line’s Arthrex Challenge
Fall Line separately argues that the Board’s final writ-
ten decision is erroneous because, at the time of the Board’s
final written decision, the structure of the Board violated
1 The fact that the Board’s real party-in-interest de-
terminations are not reviewable makes it particularly im-
portant that the Board conduct a critical assessment of a
party’s assertions regarding the real party-in-interest is-
sue. Such a critical assessment is especially warranted in
a case in which a petitioner’s entire business model is to
challenge patents on behalf of others. See Applications in
Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1352 (Fed.
Cir. 2018).
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FALL LINE PATENTS, LLC v. UNIFIED PATENTS, LLC 9
the Appointments Clause. Of course, we already addressed
this issue in Arthrex, Inc. v. Smith & Nephew, Inc., 941
F.3d 1320 (Fed. Cir. 2019). There, we held that the Board’s
Administrative Patent Judges (“APJs”) were principal of-
ficers, appointed in violation of the Appointments Clause.
Arthrex, 941 F.3d at 1335. Because the Secretary of Com-
merce and the Director did not have unfettered authority
to remove APJs, we determined that there was insufficient
executive control over APJs. To remedy this constitutional
violation, we severed the problematic removal restrictions
regarding APJs and concluded that impacted cases 2 must
be vacated and remanded for rehearing before a new panel
of APJs. Id. at 1355–40. Fall Line agrees that the APJs
were unconstitutionally appointed, but disagrees with the
severance we adopted to cure that constitutional defect.
Appellant Opening Br. 17–18. Fall Line argues that the
Arthrex severance is inadequate because (1) it does not pro-
vide for reviewability of final agency decisions; and (2) the
severance was inconsistent with Congress’ intent. Id. Be-
cause “no properly appointed Board panel exists,” Fall Line
contends that we must vacate and dismiss the Board’s writ-
ten decision. Id. at 18.
We will not. As a panel, we are bound by our holding
in Arthrex that severance is “an appropriate cure for an Ap-
pointments Clause infirmity” and that Congress “would
have preferred a Board whose members are removable at
will rather than no Board at all.” 753 F.3d at 1337–38.
That Fall Line disagrees with the sufficiency of the consti-
tutional fix is of no moment.
2 That is, an Arthrex-based remand is available in
cases in which the final decision was rendered by a panel
of APJs who were not constitutionally appointed and where
the parties presented an Appointments Clause challenge
on appeal. Arthrex, 941 F.3d at 1340.
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10 FALL LINE PATENTS, LLC v. UNIFIED PATENTS, LLC
Having rejected Fall Line’s attempt to reargue the is-
sues we addressed in Arthrex, however, we nevertheless
find that it is entitled to a remand. Like the patent owner
in Arthrex, Fall Line raised an Appointments Clause chal-
lenge in its opening brief before us. Arthrex, 941 F.3d at
1340. We have held that such litigants are entitled to an
Arthrex-based remand. 3 See, e.g., Polaris Innovations Ltd.
v. Kingston Tech. Co., 792 Fed. Appx. 819 (Fed. Cir. 2020);
Bedgear, LLC v. Fredman Bros. Furniture Co., Inc., 783
Fed. Appx. 1029 (Fed. Cir. 2019). Accordingly, because Fall
Line’s Appointments Clause challenge was timely and the
Board’s final written decision was issued before our Ar-
threx decision, the Board’s decision in No. IPR2018-00043
is vacated and the case is remanded to the Board for pro-
ceedings consistent with this court’s decision in Arthrex.
3 Unified separately argues that Fall Line waived its
right to an Arthrex-based remand because the appellant re-
jected Unified’s offer for a “consented remand” prior to its
appeal. Unified Supp. Br. 5 (citing J.A. 5012). Unified in-
sists that Fall Line cannot “reverse course and seek a re-
mand at this late stage in the case.” Unified Supp. Br. 6.
The record reveals, however, that Fall Line did not waive
an Arthrex-based remand. Rather, Fall Line explained
that, at the time of Unified’s offer, such a remand did not
“make[] sense.” J.A. 5012. During this period of negotia-
tion, Fall Line still believed that this court had appellate
jurisdiction to review the Board’s § 312(a)(2) determina-
tion. Id. (“[T]he RPI issue if decided in our favor would
moot the need for a remand altogether—if we were re-
manded, we would ultimately have to come back up again
on the RPI issue.”). Thus, we conclude that Fall Line has
not waived its Appointments Clause challenge and is enti-
tled to a new IPR proceeding before a constitutionally ap-
pointed panel.
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FALL LINE PATENTS, LLC v. UNIFIED PATENTS, LLC 11
III. CONCLUSION
For these reasons, the Board’s final written decision is
vacated and remanded.
VACATED AND REMANDED
COSTS
No costs.