Earlier yesterday, the Federal Circuit vacated the final written decision by the U.S. Patent and Trademark Office Patent Trial and Appeal Board in an inter partes review involving Appellant Snyders Heart Valve LLC and Appellee St. Jude Medical, LLC, and remanded for proceedings consistent with the Court's decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). Snyders argued that the final written decision at issue on appeal violated the Constitution's Appointments Clause because it was rendered by an unconstitutionally appointed panel of Administrative Patent Judges. Snyders also argued that the remedy in Arthrex is insufficient because it does not allow for review of the Board's decisions by a superior officer and is inconsistent with Congress' intent that Administrative Patent Judges act independently. Snyders further argued that due to the unique circumstances of its case, it was entitled to greater relief than afforded under Arthrex.
With respect to Snyders' first argument, the Court indicated that the issue had been decided in Arthrex, and that Snyders was entitled to vacatur and remand for a hearing before a properly appointed Board. The Court did not address Snyders second argument, noting that it was bound by Arthrex.
With respect to Snyders' third argument, Snyders explained that USPTO Director Andre Iancu had served as counsel for St. Jude Medical LLC in a parallel proceeding prior to his appointment as Director. Although Director Iancu had recused himself from the instant case, Snyders argued that the Director's conflict should be imputed to all USPTO employees and that his recusal should impact the remedy available to Snyders. The Court, however, found Snyders' argument to be without merit, noting that the Deputy Director has the authority, under 35 U.S.C. § 3(b)(1), "to act in the capacity of the Director in the event of the absence or incapacity of the Director," and that a conflict requiring recusal qualifies as an "incapacity" within the meaning of the statute.
St. Jude's argued on appeal that because Snyders expressly waived its Arthrex-based challenge in a companion appeal, the Court should deem the argument to have been waived in the instant appeal. The Court, however, explained that "Snyders was not obligated to press every argument available to it in a different appeal to maintain its rights in this one," noting that the companion appeal addressed inter partes reviews of a different patent than the one at issue in the instant appeal, and therefore determined that Snyders had not waived its Arthrex-based challenge in the instant appeal.
The Court concluded that "Snyders is entitled to the same relief given to the Arthrex appellant and no more," and therefore vacated and remanded the Board's final written decision.
Snyders Heart Valve LLC v. St. Jude Medical, LLC (Fed. Cir. 2020)
Panel: Circuit Judges Newman, O'Malley, and Taranto
Per curiam opinion