CAFC limits scope of Arthrex in Caterpillar

The decision:


At the behest of Wirtgen America, Inc., the Director of
the United States Patent and Trademark Office, acting
through the Patent Trial and Appeal Board, instituted inter partes review of Caterpillar Paving Products Inc.’s patent. The Board held a hearing on July 30, 2019 and issued
its final written decision on November 13, 2019. Caterpillar has appealed and now moves to vacate and remand for
a new hearing before a differently constituted panel in light
of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320
(Fed. Cir. 2019) issued on October 31, 2019.
The court concludes that Caterpillar has not demonstrated that Arthrex compels a remand. Unlike in prior
cases in which this court has recently vacated and remanded, Arthrex issued before the Board’s final written decision in this case. The Director and Wirtgen argue that
the Board judges were constitutionally appointed as of the
date that this court issued its decision in Arthrex and that
no remand is required. Caterpillar contends that even if
the panel members became constitutional immediately
prior to issuing the final written decision, that “does not
cure a year’s worth of constitutional violations influencing
the Board’s thinking and conclusions.” The court in Arthrex considered and rejected that argument, expressly
limiting its holding “to those cases where final written decisions were issued.” 941 F.3d at 1340. See also Arthrex,
Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir.
2020) (Moore, J., concurring in denial of rehearing) (“Because the APJs were constitutionally appointed as of the
implementation of the severance, inter partes review decisions going forward were no longer rendered by unconstitutional panels.”).