Case: 19-2111 Document: 65 Page: 1 Filed: 09/09/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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SNYDERS HEART VALVE LLC,
Appellant
v.
ST. JUDE MEDICAL, LLC,
Appellee
UNITED STATES,
Intervenor
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2019-2111
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
00107.
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Decided: September 9, 2020
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MATTHEW JAMES ANTONELLI, Antonelli, Harrington &
Thompson, LLP, Houston, TX, for appellant. Also repre-
sented by ZACHARIAH HARRINGTON, LARRY D. THOMPSON,
JR.; SARAH RING, Daniels & Tredennick, Houston, TX.
JOHN C. O'QUINN, Kirkland & Ellis LLP, Washington,
DC, for appellee. Also represented by HANNAH LAUREN
Case: 19-2111 Document: 65 Page: 2 Filed: 09/09/2020
2 SNYDERS HEART VALVE LLC v. ST. JUDE MEDICAL, LLC
BEDARD, JASON M. WILCOX; BRYAN SCOTT HALES, KRISTINA
NICOLE HENDRICKS, Chicago, IL.
MELISSA N. PATTERSON, Appellate Staff, Civil Division,
United States Department of Justice, Washington, DC, for
intervenor. Also represented by COURTNEY DIXON, SCOTT
R. MCINTOSH, ETHAN P. DAVIS; THOMAS W. KRAUSE,
ROBERT MCBRIDE, FARHEENA YASMEEN RASHEED, Office of
the Solicitor, United States Patent and Trademark Office,
Alexandria, VA.
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Before NEWMAN, O’MALLEY, and TARANTO, Circuit Judges.
PER CURIAM.
In its opening brief, Snyders Heart Valve LLC
(“Snyders”) argues that the final written decision of the Pa-
tent Trial and Appeal Board (“Board”) at issue in this ap-
peal violates the Constitution’s Appointments Clause
because it was rendered by an unconstitutionally ap-
pointed panel of Administrative Patent Judges. Appel-
lant’s Br. 14. We decided this issue in Arthrex, Inc. v.
Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). 1
Under Arthrex, which post-dated the Board’s final written
1 Snyders argues that the Arthrex remedy is insuffi-
cient because it does not allow for review of the Board’s de-
cisions by a superior officer and is inconsistent with
Congress’s intent that Administrative Patent Judges act
independently. Appellant’s Br. at 15–16. We do not sepa-
rately address these argument as we are bound by Arthrex.
Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1338
(Fed. Cir. 2019).
Case: 19-2111 Document: 65 Page: 3 Filed: 09/09/2020
SNYDERS HEART VALVE LLC v. ST. JUDE MEDICAL, LLC 3
decision in this case, Snyders is entitled to vacatur and re-
mand for a hearing before a properly appointed Board. 2
Snyders further argues that due to its own unique cir-
cumstances it is entitled to greater relief than that afforded
to the appellant in Arthrex. Appellant’s Br. 16–18. In
Snyders’ case, the Director of the United States Patent and
Trademark Office (“USPTO”), Andre Iancu, served as coun-
sel for the Appellee St. Jude Medical LLC (“St. Jude”) in a
parallel proceeding prior to his appointment as Director.
Director Iancu has therefore recused himself from this
case. Snyders argues that the Director’s conflict should be
imputed to all USPTO employees and that his recusal
should impact the remedy available to Snyders. This argu-
ment is without merit. The USPTO’s Deputy Director has
the authority to step into the shoes of Director in the event
of the Director’s “incapacity.” 35 U.S.C. § 3(b)(1). A conflict
requiring recusal qualifies as an “incapacity” within the
meaning of the statute. Cf. In re Grand Jury Investigation,
916 F.3d 1047, 1055–56 (D.C. Cir. 2019) (discussing, under
a similar statutory scheme, the Deputy Attorney General’s
authority to oversee a case when the Attorney General is
recused). The Deputy Director’s role sufficiently removes
any potential taint of the Director’s conflict. We see no rea-
son why, moreover, the Director’s lack of participation oth-
erwise impacts the Arthrex remedy analysis. Accordingly,
2 St. Jude argues that because Snyders expressly
waived its Arthrex-based challenge in a companion appeal,
Case Nos. 2019-2108, -2109, -2140, we should deem the ar-
gument waived in this appeal. Snyders was not obligated
to press every argument available to it in a different appeal
to maintain its rights in this one. The companion appeal
addresses inter partes reviews of a different patent than
the one at issue in this appeal. We do not find waiver on
this record.
Case: 19-2111 Document: 65 Page: 4 Filed: 09/09/2020
4 SNYDERS HEART VALVE LLC v. ST. JUDE MEDICAL, LLC
Snyders is entitled to the same relief given to the Arthrex
appellant and no more.
The decision of the Board is thus vacated and re-
manded for proceedings consistent with our decision in Ar-
threx.
VACATED AND REMANDED
COSTS
No costs.