CAFC Holds Petitioner to PTAB Choice

While we await the en banc determination in Arthrex/Polaris, there have been a number of recent remands back to the PTAB (i.e., where the Appointments Clause issue was first raised in the opening appellate brief). Given this, it may be that the Federal Circuit remains unimpressed with the government’s argument that failure to raise the issue before the PTAB results in forfeiture of the argument. Still, given the supplemental briefing in Polaris as to the sufficiency of the Arthrex remedy, I am still expecting that at least this aspect of the debate is taken up en banc.

In the meantime, the Federal Circuit has made clear that the Appointments Clause issue will not benefit failed PTAB petitioners.

In Ciena Corp. v. Oyster Optics, LLC, Appellant Ciena challenged an IPR Final Written Decision (FWD) finding it had failed to demonstrate the challenged claims as unpatentable. In considering whether or not it made sense for the Appointments Clause issue to be applicable to PTAB petitioners, the Court explained (here)

" Ciena argues that under Arthrex, the Board’s decision must be vacated and remanded for a new hearing before a differently constituted panel because the Board panel that issued the decision was not appointed in compliance with the Appointments Clause. The trouble with accepting Ciena’s argument is that, unlike the patent owner in Arthrex, Ciena sought out the Board’s adjudication, knew or at least should have known of this structural defect, and was content to have the assigned Board judges adjudicate its invalidity challenges until the Board ruled against it. Under those circumstances, Ciena has forfeited its Appointments Clause challenge.

Ciena also argued that the importance of such structural challenges should be considered regardless of the party raising the issue, but the Court highlighted that the issue was already subject to review in Arthrex itself. And, noted that Ciena had opted out of a “perfectly good alternative forum”(district court case was stayed) in availing itself of the PTAB.

Scott A. McKeown is an author of the Patents Post Grant