Case: 19-2349   Document: 35    Page: 1    Filed: 07/07/2020




   United States Court of Appeals
       for the Federal Circuit
                 ______________________

         IN RE: BOLORO GLOBAL LIMITED,
                       Appellant
                ______________________

                 2019-2349, -2351, -2353
                 ______________________

     Appeals from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in Nos. 14/222,613,
 14/222,615, and 14/222,616.
                  ______________________

                     ON MOTION
                 ______________________

     MICHAEL RAYMOND CASEY, Oblon, McClelland, Maier
 and Neustadt, LLP, Alexandria, VA, for appellant. Also
 represented by JAMES LOVE; CARLOS RAFAEL VILLAMAR,
 The Villamar Firm PLLC, Falls Church, VA.

     ROBERT J. MCMANUS, Office of the Solicitor, United
 States Patent and Trademark Office, Alexandria, VA, for
 appellee Andrei Iancu. Also represented by THOMAS W.
 KRAUSE, FARHEENA YASMEEN RASHEED, MOLLY R. SILFEN,
 NICHOLAS THEODORE MATICH, IV, DANIEL KAZHDAN;
 COURTNEY DIXON, SCOTT R. MCINTOSH, MELISSA N.
 PATTERSON, JOSEPH H. HUNT, Appellate Staff, Civil Divi-
 sion, United States Department of Justice, Washington,
 DC.
                   ______________________
Case: 19-2349    Document: 35      Page: 2    Filed: 07/07/2020




 2                              IN RE: BOLORO GLOBAL LIMITED




      Before LOURIE, DYK, and REYNA, Circuit Judges.
 DYK, Circuit Judge.
                         ORDER
     Boloro Global Limited moves to vacate and remand the
 underlying decisions of the Patent Trial and Appeal Board
 in these appeals from the Board’s decisions in ex parte ap-
 peals, affirming the examiner’s rejection of claims in Bo-
 loro’s patent applications. The Director of the United
 States Patent and Trademark Office opposes the motion.
 Both parties have filed supplemental briefing in support of
 their respective positions.
      The Director acknowledges that, under the reasoning
 of this court’s decisions in Arthrex, Inc. v. Smith & Nephew,
 Inc., 941 F.3d 1320 (Fed. Cir. 2019), and VirnetX Inc. v.
 Cisco Sys., Inc., No. 2019-1671, 2020 WL 2462797 (Fed.
 Cir. May 13, 2020), the administrative patent judges
 (APJs) were not constitutionally appointed at the time the
 Board’s final decision on appeal was issued. See Director’s
 2d Suppl. Resp. at 3–4 (conceding that it follows under the
 reasoning of the Supreme Court’s decision in Freytag v.
 Comm’r, 501 U.S. 868, 882 (1991), as understood in Vir-
 netX, that “APJs were principal officers for purposes of all
 governmental functions of their office”); see also id. at 4
 (conceding that, even if the Director could refuse to issue a
 patent if the Board approves an application, that would not
 render an APJ an inferior officer).
     In both Arthrex and VirnetX, this court held that the
 appropriate remedy for such a constitutional violation was
 to vacate the Board’s decision and to remand for the pur-
 pose of reassigning the matter to a different panel of APJs
 for a new hearing and decision. Arthrex, 941 F.3d at 1338–
 39; VirnetX Inc. v. Cisco Sys., Inc., No. 2019-1671, slip op.
 at 2 (Fed. Cir. Jan. 24, 2020). The Director urges that the
 same remedy should not be extended to ex parte proceed-
 ings because, according to the Director, he possesses
Case: 19-2349       Document: 35   Page: 3     Filed: 07/07/2020




 IN RE: BOLORO GLOBAL LIMITED                                 3



 “complete control over the initial examination” and could
 at any time prior to the Board proceedings have directed
 the issuance of Boloro’s patents but did not, consistent with
 the Board’s subsequent decisions. But the Director having
 conceded that the APJ’s appointments were unconstitu-
 tional, we see no principled reason to depart here from the
 resulting remedy applied in Arthrex and VirnetX.
     Accordingly,
     IT IS ORDERED THAT:
     (1) Boloro’s motion to vacate and remand is granted.
     The Patent Trial and Appeal Board’s decision is va-
     cated, and the case is remanded to the Board for pro-
     ceedings consistent with this court’s decision in
     Arthrex.
     (2) Each side shall bear its own costs.


                                   FOR THE COURT

 July 7, 2020                      /s/ Peter R. Marksteiner
    Date                           Peter R. Marksteiner
                                   Clerk of Court
