Case: 18-2140   Document: 115   Page: 1   Filed: 03/23/2020




    United States Court of Appeals
        for the Federal Circuit
                 ______________________

                   ARTHREX, INC.,
                      Appellant

                           v.

   SMITH & NEPHEW, INC., ARTHROCARE CORP.,
                   Appellees

                   UNITED STATES,
                       Intervenor
                 ______________________

                       2018-2140
                 ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. IPR2017-
 00275.
                  ______________________

     ON PETITIONS FOR REHEARING EN BANC
              ______________________

     ANTHONY P. CHO, Carlson, Gaskey & Olds, PC, Bir-
 mingham, MI, for appellant. Also represented by DAVID
 LOUIS ATALLAH, DAVID J. GASKEY, JESSICA E. FLEETHAM;
 TREVOR ARNOLD, JOHN W. SCHMIEDING, Arthrex, Inc., Na-
 ples, FL; ROBERT KRY, JEFFREY A. LAMKEN, MoloLamken
 LLP, Washington, DC.

    CHARLES T. STEENBURG, Wolf, Greenfield & Sacks, PC,
 Boston, MA, for appellees. Also represented by RICHARD
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 2                     ARTHREX, INC. v. SMITH & NEPHEW, INC.




 GIUNTA, TURHAN SARWAR, NATHAN R. SPEED; MICHAEL N.
 RADER, New York, NY; MARK J. GORMAN, Smith & Nephew,
 Inc., Cordova, TN; MARK ANDREW PERRY, Gibson, Dunn &
 Crutcher LLP, Washington, DC.

     MELISSA N. PATTERSON, Appellate Staff, Civil Division,
 United States Department of Justice, Washington, DC, for
 intervenor. Also represented by COURTNEY DIXON, SCOTT
 R. MCINTOSH, JOSEPH H. HUNT; SARAH E. CRAVEN, THOMAS
 W. KRAUSE, JOSEPH MATAL, FARHEENA YASMEEN RASHEED,
 DANIEL KAZHDAN, NICHOLAS THEODORE MATICH, IV, MOLLY
 R. SILFEN, Office of the Solicitor, United States Patent and
 Trademark Office, Alexandria, VA.

      CHARLES R. MACEDO, Amster Rothstein & Ebenstein
 LLP, New York, NY, for amicus curiae New York Intellec-
 tual Property Law Association. Also represented by DAVID
 P. GOLDBERG; ROBERT M. ISACKSON, Leason Ellis LLP,
 White Plains, NY; ROBERT JOSEPH RANDO, The Rando Law
 Firm P.C., Syosset, NY; KSENIA TAKHISTOVA, East Bruns-
 wick, NJ.

      MATTHEW S. HELLMAN, Jenner & Block LLP, Wash-
 ington, DC, for amicus curiae The Association of Accessible
 Medicines. Also represented by YUSUF ESAT, Chicago, IL;
 JEFFREY FRANCER, The Association for Accessible Medi-
 cines, Washington, DC.
                  ______________________

      Before PROST, Chief Judge, NEWMAN, LOURIE, DYK,
     MOORE, O’MALLEY, REYNA, WALLACH, TARANTO, CHEN,
             HUGHES, and STOLL, Circuit Judges.
 MOORE, Circuit Judge, with whom O’MALLEY, REYNA, and
 CHEN, Circuit Judges, join, concurs in the denial of the pe-
               titions for rehearing en banc.
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 ARTHREX, INC. v. SMITH & NEPHEW, INC.                       3



  O’MALLEY, Circuit Judge, with whom MOORE and REYNA,
  Circuit Judges, join, concurs in the denial of the petitions
                    for rehearing en banc.
   DYK, Circuit Judge, with whom NEWMAN and WALLACH,
    Circuit Judges join, and with whom HUGHES, Circuit
  Judge, joins as to Part I.A, dissents from the denial of the
               petitions for rehearing en banc.
   HUGHES, Circuit Judge, with whom WALLACH, Circuit
  Judge, joins, dissents from the denial of the petitions for
                     rehearing en banc.
      WALLACH, Circuit Judge, dissents from the denial of
           the petitions for rehearing en banc.
 PER CURIAM.
                          ORDER
     Petitions for rehearing en banc were filed by appellant
 Arthrex, Inc.; appellees Smith & Nephew, Inc. and Arthro-
 care Corp.; and intervenor United States. Responses to the
 petitions were invited by the court and filed by all three
 parties. Two motions for leave to file amici curiae briefs
 were filed and granted by the court. The petitions for re-
 hearing, responses, and amici curiae briefs were first re-
 ferred to the panel that heard the appeals, and thereafter
 to the circuit judges who are in regular active service. A
 poll was requested, taken, and failed.
     Upon consideration thereof,
     IT IS ORDERED THAT:
     1) The petitions for panel rehearing are denied.
     2) The petitions for rehearing en banc are denied.
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 4                    ARTHREX, INC. v. SMITH & NEPHEW, INC.




     3) The mandate of the court will issue on March 30,
        2020.
                                FOR THE COURT

  March 23, 2020                /s/ Peter R. Marksteiner
      Date                      Peter R. Marksteiner
                                Clerk of Court
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    United States Court of Appeals
        for the Federal Circuit
                   ______________________

                      ARTHREX, INC.,
                         Appellant

                              v.

   SMITH & NEPHEW, INC., ARTHROCARE CORP.,
                   Appellees

                     UNITED STATES,
                         Intervenor
                   ______________________

                         2018-2140
                   ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. IPR2017-
 00275.
                  ______________________

 MOORE, Circuit Judge, with whom O’MALLEY, REYNA, and
 CHEN, Circuit Judges, join, concurring in the denial of the
 petitions for rehearing en banc.
     I concur in the court’s decision to deny the petitions for
 rehearing en banc as rehearing would only create unneces-
 sary uncertainty and disruption. The Arthrex panel fol-
 lowed Supreme Court precedent to conclude that the
 administrative patent judges (APJs) of the USPTO’s Pa-
 tent Trial and Appeal Board were improperly appointed
 principal officers. It further followed the Supreme Court’s
 direction by severing a portion of the statute to solve that
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 2                       ARTHREX, INC. v. SMITH & NEPHEW, INC.




 constitutional problem while preserving the remainder of
 the statute and minimizing disruption to the inter partes
 review system Congress created. The panel’s curative sev-
 erance and subsequent decisions from this court have lim-
 ited the now constitutionally composed Board’s burden of
 addressing cases on remand. I see no merit to the alterna-
 tive courses laid out by the dissents. I agree with the gov-
 ernment that we are not free to affirm despite the
 constitutional infirmity. Finally, I do not agree with Judge
 Dyk that we ought to propose a USPTO restructuring of
 our making and stay all proceedings (presumably this and
 other inter partes review appeals) while both Congress and
 the USPTO consider Judge Dyk’s legislative proposal. If
 Congress prefers an alternate solution to that adopted by
 this court, it is free to legislate, and in the meantime, the
 Board’s APJs are constitutionally appointed and inter
 partes reviews may proceed according to Congress’ initial
 intent.
                                I
      In Arthrex, the court followed Supreme Court prece-
 dent in reaching its conclusion that APJs were principal
 officers who were not constitutionally appointed. The Su-
 preme Court explained that, while there is no “exclusive
 criterion for distinguishing between principal and inferior
 officers . . . ‘inferior officers’ are officers whose work is di-
 rected and supervised at some level by others who were ap-
 pointed by Presidential nomination with the advice and
 consent of the Senate.” Edmond v. United States, 520 U.S.
 651, 661–63 (1997). Arthrex recognized Edmond’s broad
 framework as well as factors the Supreme Court considers
 when addressing an Appointments Clause issue. Arthrex,
 Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1329–30 (Fed.
 Cir. 2019). After weighing those factors and considering
 the relationship between the Presidentially-appointed Di-
 rector of the USPTO and the Board’s APJs, the panel held
 that APJs were principal officers who must be
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 ARTHREX, INC. v. SMITH & NEPHEW, INC.                        3



 Presidentially appointed to comport with the Constitu-
 tion’s Appointments Clause. Id. at 1335.
      As the Arthrex panel explained, the Director has some
 authority over conducting the inter partes review process—
 such as institution decisions and panel composition—and
 may issue guidance or designate decisions as precedential
 for future panels of APJs. Id. at 1329–32. But the Director
 lacks the authority to independently alter a panel’s final
 written decision, and he lacks sufficient control over the
 panel’s decision before it issues on behalf of the Executive.
 Id. at 1335. APJs had the authority to “render a final de-
 cision on behalf of the United States.” Edmond, 520 U.S.
 at 663, 665. The panel also recognized that the Director
 lacked the “powerful tool for control” that is the authority
 to remove APJs “at will and without cause.” Free Enter.
 Fund v. Pub. Co. Accounting Oversight Bd., 561 U.S. 477,
 501 (2010). 1 The Arthrex decision followed Supreme Court
 precedent and was consistent with analyses of other cir-
 cuits addressing Appointments Clause questions. See, e.g.,
 Intercollegiate Broad. Sys., Inc. v. Copyright Royalty Bd.,
 684 F.3d 1332, 1342 (D.C. Cir. 2012); Jones Bros., Inc. v.
 Sec’y of Labor, 898 F.3d 669, 679 (6th Cir. 2018).
                               II
     When an officer’s appointment violates the Appoint-
 ments Clause, courts “try to limit the solution to the prob-
 lem, severing any problematic portions while leaving the
 remainder intact.” Free Enter. Fund, 561 U.S. at 508. As
 the Supreme Court explained, “we must retain those por-
 tions of the Act that are (1) constitutionally valid, (2) capa-
 ble of functioning independently, and (3) consistent with
 Congress’ basic objectives in enacting the statute.” United



     1    To the extent that the dissents suggest otherwise,
 it is the Secretary of Commerce, not the Director, who ap-
 points (35 U.S.C. § 6(c)) and thus can remove APJs.
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 4                      ARTHREX, INC. v. SMITH & NEPHEW, INC.




 States v. Booker, 543 U.S. 220, 258–59 (2005) (internal ci-
 tations omitted). The Arthrex decision adopted the sever-
 ance proposed by the USPTO, which would cause the least
 disruption while preserving the inter partes review scheme
 Congress intended. Arthrex, 941 F.3d at 1337–38.
     Severing APJ removal protections gives properly ap-
 pointed officers sufficient direction and supervision over
 APJ decision-making to render them inferior officers. The
 curative severance was consistent with the Supreme
 Court’s approach to a separation of powers violation in Free
 Enterprise Fund. 561 U.S. at 508 (severing a “for-cause”
 removal restriction as unconstitutional). It similarly
 aligned with the D.C. Circuit’s approach in Intercollegiate,
 which severed a removal restriction to rectify an Appoint-
 ments Clause violation. 684 F.3d at 1340–41.
      While there may have been other possible curative sev-
 erances, the Arthrex severance, which the USPTO itself
 proposed, was consistent with Congress’ intent in enacting
 the inter partes review system. Although Congress origi-
 nally intended that APJs have removal protections, that
 was not Congress’ central objective when it created the
 USPTO’s inter partes review system. The “basic purpose”
 of the inter partes review proceeding is “to reexamine an
 earlier agency decision.” Cuozzo Speed Techs. LLC v. Lee,
 136 S. Ct. 2131, 2144 (2016) (“[T]he proceeding offers a sec-
 ond look at an earlier administrative grant of a patent.”);
 see, e.g., 157 Cong. Rec. S1326 (March 7, 2011) (Sen. Ses-
 sions) (“This will allow invalid patents that were mistak-
 enly issued by the PTO to be fixed early in their life, before
 they disrupt an entire industry or result in expensive liti-
 gation.”). Arthrex’s severance properly retained the por-
 tions of the statute necessary to effectuate Congress’ basic
 objective of providing an agency mechanism where the va-
 lidity of issued patents may be challenged. Congress
 “would have preferred a Board whose members are remov-
 able at will rather than no Board at all.” Arthrex, 941 F.3d
 at 1337–38; see Ayotte v. Planned Parenthood of N. New
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 ARTHREX, INC. v. SMITH & NEPHEW, INC.                     5



 England, 546 U.S. 320, 330 (2006) (“After finding an appli-
 cation or portion of a statute unconstitutional, we must
 next ask: Would the legislature have preferred what is left
 of its statute or no statute at all?”). 2 So too does the
 USPTO, which proposed the severance that Arthrex
 adopted to preserve the system in lieu of the entire thing
 being struck down as unconstitutional.
     The Arthrex panel’s severance was the “narrowest pos-
 sible modification to the scheme Congress created” and the
 approach that minimized the disruption to the continuing
 operation of the inter partes review system. Arthrex, 941
 F.3d at 1337. Because the APJs were constitutionally ap-
 pointed as of the implementation of the severance, inter
 partes review decisions going forward were no longer ren-
 dered by unconstitutional panels. Additionally, subse-
 quent decisions issued by this court significantly limited
 the number of appeals that needed to be remanded based
 on Appointments Clause challenges raised on appeal. See
 Customedia Techs., LLC v. Dish Network Corp., 941 F.3d
 1174, 1175 (Fed. Cir. 2019) (holding that Appointments
 Clause challenges not raised prior to or in the appellant’s
 opening brief are waived). The window for appeals from
 Board decisions issued prior to October 31, 2019—the date
 Arthrex issued—has closed. And no more than 81 appeals
 including Arthrex itself can be vacated and remanded 3



     2   Judge Hughes suggests that Congress would not
 have divested APJs of their removal protection to preserve
 the remainder of the statute and that Congress should fix
 the statute. To be clear, this would require holding the in-
 ter partes review statute unconstitutional and paralyzing
 the Board until Congress acts.
     3   Per the Supreme Court’s decision in Lucia, Arthrex,
 and the other appeals with preserved Appointments
 Clause challenges, were vacated and remanded for
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  6                      ARTHREX, INC. v. SMITH & NEPHEW, INC.




  based on preserved Appointments Clause violations. 4 The
  Board decides on average 820 cases each month (39 inter
  partes reviews and 781 ex parte appeals). 5 The Arthrex


  hearings before new panels of APJs, who are now properly
  appointed. Lucia v. SEC, 138 S. Ct. 2044, 2055 (2018)
  (“[T]he ‘appropriate’ remedy for an adjudication tainted
  with an appointments violation is a new ‘hearing before a
  properly appointed’ official.”); see Intercollegiate, 684 F.3d
  at 1342; Jones Bros., 898 F.3d at 679. Harper v. Virginia
  Dep’t of Taxation does not establish that an applied sever-
  ance, which preserves an otherwise unconstitutional stat-
  ute, applies retroactively. 509 U.S. 86 (1993). The panel
  of APJs that decided the inter partes review in this case
  was not constitutionally appointed when it rendered that
  decision. To forgo vacatur as Judge Dyk suggests would be
  in direct contrast with Lucia and would undermine any in-
  centive a party may have to raise an Appointments Clause
  challenge. The USPTO briefed this issue and likewise re-
  jects the argument that Harper creates a basis for affirm-
  ing. Supp. Br. of United States, Polaris v. Kingston, Nos.
  2018-1768, -1831, at 14.
       4   We have thus far vacated and remanded 37 appeals
  which properly preserved the Appointments Clause chal-
  lenge by raising it before or in their opening brief. There
  are 44 Board decisions rendered prior to our curative deci-
  sion (October 31, 2019) where a notice of appeal has been
  filed by the patent owner, but no opening brief as of yet, or
  where an opening brief has been filed and does raise an
  Appointments Clause challenge. Thus, the universe of
  cases which could be vacated and remanded (if every one of
  these appellants requests remand) is 81.
       5   See    https://www.uspto.gov/patents-application-
  process/patent-trial-and-appeal-board/appeals-and-inter-
  ferences-statistics-page (to ascertain ex parte stats); see
  https://www.uspto.gov/patents-application-process/patent-
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                        7



  decision will result in at most 81 remands. And the re-
  mands are narrow in scope and will not necessitate any-
  thing like a full-blown process. Arthrex, 941 F.3d at 1340
  (holding that the USPTO is not required to reopen the rec-
  ord or permit new briefing).
      The severance applied in Arthrex resulted in minimal
  disruption to the inter partes review system and no uncer-
  tainty presently remains as to the constitutionality of APJ
  appointments. Rehearing this case en banc would have un-
  raveled an effective cure and created additional disruption
  by increasing the potential number of cases that would re-
  quire reconsideration on remand. Judge Dyk’s suggestion
  that Arthrex be stayed to allow Congress to legislate a cure
  makes little sense. Staying the case, and any other pend-
  ing appeal that challenges the Appointments Clause,
  would result in an unnecessary backlog of cases pending a
  congressional cure that is not guaranteed. And even if Con-
  gress did codify a new inter partes review scheme, those
  stayed cases would still need to be reprocessed on remand
  under the new scheme.
      Nothing in the Arthrex decision prevents Congress
  from legislating to provide an alternative fix to the Ap-
  pointments Clause issue. Congress can reinstate title 5 re-
  moval protections for APJs while ensuring that the inter
  partes review system complies with the Appointments
  Clause, if it so chooses.
                               III
      There are several problems with the creative approach
  suggested in Judge Dyk’s dissent. The dissent proposes
  that we stay this (and possibly other inter partes review
  appeals) while Congress or the USPTO considers an agency
  restructuring of his proposal. I am not convinced that it


  trial-and-appeal-board/statistics/aia-trial-statistics-ar-
  chive (to ascertain inter parte review stats).
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  8                      ARTHREX, INC. v. SMITH & NEPHEW, INC.




  would be appropriate or wise to issue such stays. Curing
  the constitutional defect had immediate and significant
  benefits. And there is a significant difference between a
  court’s election to sever a statutory provision as unconsti-
  tutional and issuing legislative or regulatory advisory
  mandates. The Constitution does not provide us authority
  to legislate, and, “mindful that our constitutional mandate
  and institutional competence are limited,” we should re-
  frain from proposing legislative or regulatory fixes. Ayotte,
  546 U.S. at 329. The dissent goes far afield by proposing
  an entirely new agency framework for review for Congress
  to adopt. Dissent at 9–14 (Dyk, J., dissenting). We should
  not attempt to correct a separation of powers issue by cre-
  ating one of our own.
      Finally, Judge Dyk’s proposed fix has not been re-
  viewed and should not be presumed to pass constitutional
  muster. 6 The dissent suggests that a reconsideration panel
  comprising the Director, Deputy Director, and Commis-
  sioner of Patents would suffice. Id. at 9–12. But it is not
  clear, as Judge Dyk suggests, that the Director has the au-
  thority to remove either the Deputy Director or the Com-
  missioner of Patents without cause. Section 3(b)(2)(C)
  limits the Secretary of Commerce’s ability to remove the
  Commissioner of Patents to situations of “misconduct or
  nonsatisfactory performance . . . .” 35 U.S.C. § 3(b)(2)(C).
  And § 3(c) may afford the Deputy Director removal




      6   Even if the USPTO were to adopt the dissent’s pro-
  posed framework, Arthrex and all other similarly situated
  cases would still need to be vacated and remanded to the
  Board. The new framework did not exist when Arthrex was
  decided and it would not rectify the constitutional infirmity
  retroactively.
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                        9



  protections under title 5. 7 For the reasons given, I do not
  believe it proper or prudent to stay cases while Congress
  considers Judge Dyk’s restructuring of the USPTO.
                                IV
      The Arthrex panel followed Supreme Court precedent
  in reaching its decision. The severance provided has mini-
  mized disruption and preserved Congress’ intent as best
  possible while ensuring that the Constitution’s structural
  protections are minded. Given that the Arthrex decision is
  squarely rooted in Supreme Court precedent, I agree with
  the court’s denial of rehearing en banc. If the curative sev-
  erance adopted by this court is not consistent with Con-
  gress’ intent, Congress can legislate to restore the removal
  protections and adopt a different curative mechanism.




      7     Section 3(c) expressly says that title 5 protections
  apply to the agency’s “officers and employees” of which the
  Deputy Director is undeniably one. Moreover, in other sec-
  tions of the same statute when Congress intended to ex-
  empt an officer from title 5 protections it stated so
  explicitly. See, e.g., 35 U.S.C. § 3(b)(2)(C) (“[T]he Commis-
  sioners may be removed from office by the Secre-
  tary . . . without regard to the provisions of title 5 . . .”).
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    United States Court of Appeals
        for the Federal Circuit
                   ______________________

                      ARTHREX, INC.,
                         Appellant

                               v.

    SMITH & NEPHEW, INC., ARTHROCARE CORP.,
                    Appellees

                     UNITED STATES,
                         Intervenor
                   ______________________

                         2018-2140
                   ______________________

      Appeal from the United States Patent and Trademark
  Office, Patent Trial and Appeal Board in No. IPR2017-
  00275.
                   ______________________

  O’MALLEY, Circuit Judge, with whom MOORE and REYNA,
  Circuit Judges, join, concurring in the denial of the peti-
  tions for rehearing en banc.
      I join Judge Moore’s concurrence in full. I agree that
  the panel correctly concluded that, under the Supreme
  Court’s Appointments Clause jurisprudence, Administra-
  tive Patent Judges (“APJs”) are principal officers who were
  not properly appointed to their adjudicative positions. I
  also agree that, rather than invalidate the entirety of the
  America Invents Act (“AIA”), Congress would prefer to pre-
  serve the patent review scheme it created under that Act.
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  2                      ARTHREX, INC. v. SMITH & NEPHEW, INC.




  In severing from the AIA the application of the removal re-
  strictions in 5 U.S.C. § 7513 (“Title 5”) to APJs, the panel
  hewed closely to the principles guiding judicial severance:
  refraining from rewriting the statute or invalidating more
  of it than was absolutely necessary. See R.R. Ret. Bd. v.
  Alton R.R. Co., 295 U.S. 330, 362 (1935); Helman v. Dep’t
  of Veterans Affairs, 856 F.3d 920, 930 (Fed. Cir. 2017).
  While I agree with Judge Dyk and Judge Hughes that Title
  5’s protections for government employees are both im-
  portant and long-standing, I do not believe Congress would
  conclude that those protections outweigh the importance of
  keeping the remainder of the AIA intact—a statute it de-
  bated and refined over a period of more than six years.
       I write separately to address one issue: the suggestion
  in Judge Dyk’s dissent that the court’s decision to sever the
  application of Title 5’s removal protections from the re-
  mainder of the AIA retroactively renders all prior APJ de-
  cisions constitutional, thereby obviating the need for panel
  rehearings in any cases decided under the AIA. Respect-
  fully, that suggestion confuses the remedy the panel
  deemed appropriate in this case with the constitutional fix
  it deemed necessary to allow APJs to render future deci-
  sions in proceedings under the AIA.
       That dissent urges that, “to be consistent with Harper,”
  retroactive application of Arthrex and its “remedy” is nec-
  essary. Dyk Op. at 17. But that contention misreads Har-
  per v. Virginia Dep’t of Taxation, 509 U.S. 86 (1993).
  Harper addressed whether a prior Supreme Court decision
  holding certain taxes unconstitutional applied to taxes lev-
  ied before that decision issued. Harper is best described by
  the Supreme Court itself: “when (1) the Court decides a
  case and applies the (new) legal rule of that case to the par-
  ties before it, then (2) it and other courts must treat that
  same (new) legal rule as ‘retroactive,’ applying it, for exam-
  ple, to all pending cases, whether or not those cases involve
  predecision events.” Reynoldsville Casket Co. v. Hyde, 514
  U.S. 749, 752 (1995). Judge Dyk argues that the general
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                       3



  rule requiring that we give retroactive effect to constitu-
  tional decisions “applies to remedies as well, such as the
  remedy in this case,” meaning, in his view, that once sev-
  erance occurs, all actions taken by APJs before that point,
  even if unconstitutional at the time, are rendered constitu-
  tional nunc pro tunc. Dyk Op. at 17 (citing Reynoldsville,
  514 U.S. at 759). I disagree. While the principle of retro-
  active application requires that we afford the same remedy
  afforded the party before the court to all others still in the
  appellate pipeline, judicial severance is not a “remedy”; it
  is a forward-looking judicial fix.
      It is true that if, as the panel concluded, the appoint-
  ment of APJs ran afoul of the Constitution, that fact was
  true from the time of appointment forward, rendering all
  APJ decisions under the AIA unconstitutional when ren-
  dered. But, no one claims that our declaration of that fact
  in this case would permit us to reopen closed cases decided
  under that unconstitutional structure. See, e.g., Reyn-
  oldsville, 514 U.S. at 758 (“New legal principles, even when
  applied retroactively, do not apply to cases already
  closed.”). All that Harper and Reynoldsville say is that we
  must afford all litigants with pending matters the same
  remedy we afford to the Arthrex appellant. 1 In other
  words, we may not give prospective-only effect to our rul-
  ings, both as to the merits and as to the precise remedy.
      But our curative severance of the statute, does not
  “remedy” the harm to Arthrex, whose patent rights were
  adjudicated under an unconstitutional scheme. So too, in
  Harper: the Court’s ruling that the state taxes at issue had
  been collected unconstitutionally did not remedy the harm


      1   This does not mean, of course, that we must provide
  a remedy to litigants who waived the issue. United States
  v. Booker, 543 U.S. 220, 268 (2005) (“[W]e expect reviewing
  courts to apply ordinary prudential doctrines” including
  those relating to waiver and harmless-error).
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  4                      ARTHREX, INC. v. SMITH & NEPHEW, INC.




  caused by the unlawful collection of taxes. The Court re-
  manded for additional relief to the litigants before it in the
  form of reimbursement of the unconstitutionally collected
  taxes or “some other order” to rectify the “unconstitutional
  deprivation.” Harper, 509 U.S. at 98–99, 100–101. We did
  the same here: the remedy afforded the parties in Arthrex
  is a new hearing before a properly appointed panel of
  judges. Under the Supreme Court’s Appointments Clause
  jurisprudence, Arthrex is entitled to that relief because
  “the ‘appropriate’ remedy for an adjudication tainted with
  an appointments violation is a new ‘hearing before a
  properly appointed’ official.” Lucia v. S.E.C., 138 S. Ct.
  2044, 2055 (2018) (quoting Ryder v. United States, 515 U.S.
  177, 183, 188 (1995)); see also NLRB v. Noel Canning, 573
  U.S. 513, 521, 557 (2014); Bowsher v. Synar, 478 U.S. 714,
  736 (1986). Our decision that the statute can be rendered
  constitutional by severance does not remedy any past
  harm—it only avoids continuing harm in the future. It is
  only meaningful prospectively, once severance has oc-
  curred. 2
      The Government agrees. See Supp. Br. of United
  States, Polaris v. Kingston, Nos. 2018-1768, -1831, at 13–
  14. Presented with an opportunity to brief this very issue,
  the Government expressly rejected the suggestion in Judge
  Dyk’s concurrence in Bedgear, LLC v. Fredman Bros. Fur-
  niture Co., 783 F. App’x 1029 (Fed. Cir. 2019) (and his dis-
  sent here) that the Arthrex panel’s severance order applies



      2   That dissent’s attempt to distinguish Lucia is pred-
  icated on this same misunderstanding of Harper. Because
  judicial severance of one portion of an unconstitutional
  statute is, by necessity, only applicable prospectively, I
  agree with the Arthrex panel that a new hearing before a
  new panel of APJs is the only appropriate remedy for those
  whose proceedings were tainted by the constitutional vio-
  lation.
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                      5



  retroactively. Id. (“[N]either Arthrex’s determination that
  the statutory restrictions on removal of APJs violated the
  Appointments Clause, nor the panel’s invalidation of those
  restrictions, was sufficient to eliminate the impact of the
  asserted constitutional violation on the original agency de-
  cision.”).
      The cases on which the dissent relies do not counsel a
  contrary conclusion. For example, the suggestion that, in
  Free Enterprise Fund v. Public Company Accounting Over-
  sight Board, 561 U.S. 477 (2010), “[t]he Court did not view
  [severance] as fixing the problem only prospectively” reads
  too much into the case. Dyk Op. at 21. Free Enterprise
  considered the petitioners’ request for a declaratory judg-
  ment that the Public Company Accounting Oversight
  Board is unconstitutional and for an injunction preventing
  the Board from exercising any of its powers prospectively.
  561 U.S. at 510. The Court held that statutory restrictions
  on the Securities and Exchange Commission’s power to re-
  move Board members were “unconstitutional and void,”
  and invalidated the removal provision. Id. at 509–10. The
  Court further held that, because it found the unconstitu-
  tional removal provisions could be excised from the remain-
  der of the statute, “petitioners [were] not entitled to broad
  injunctive relief against the Board’s continued operations.”
  Id. at 513 (emphasis added). The decision did not render
  all prior Board actions constitutional. The Court simply
  explained that, by virtue of having severed the non-re-
  moval provisions, the Board could act in the future free of
  the taint of those unconstitutional provisions.
      Like Harper, neither Reynoldsville nor Edmond v.
  United States, 520 U.S. 651, 662–63 (1997), support the
  dissent’s position that rehearing before a new panel is un-
  necessary. In Reynoldsville, the Court made clear—as it
  did in Harper—that any remedy provided the party bring-
  ing the original constitutional challenge must be afforded
  to all other parties with cases that remained open. 514
  U.S. at 758–59. It held that a court may not fashion a
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  6                      ARTHREX, INC. v. SMITH & NEPHEW, INC.




  remedy for a party before it and then declare that the rem-
  edy not apply to any other party still in the pipeline—i.e.,
  whose claim was decided under an unconstitutional
  scheme and remains open. Id. at 753–54. And in Edmond,
  the challenged appointment was found constitutional. 520
  U.S. at 655, 666. Severance was not even at issue. Neither
  case addressed retroactive application of orders fixing con-
  stitutional violations by severance.
       By contrast, Booker makes clear that, even once judi-
  cial severance of a statute occurs, individuals adjudged un-
  der the statute as originally written still are entitled to a
  remedy if their cases are pending on direct review. In
  Booker, the Supreme Court held that 18 U.S.C.
  § 3553(b)(1)—the provision of the federal sentencing stat-
  ute making the United States Sentencing Guidelines man-
  datory—violated the Sixth Amendment’s requirement that
  juries, not judges, find facts relevant to sentencing. 543
  U.S. at 244. Accordingly, the Court severed and excised
  § 3553(b)(1) from the statutory scheme. And, the Court
  ruled that any defendant whose sentence was “authorized
  by the jury’s verdict—a sentence lower than the sentence
  authorized by the Guidelines as written . . . may seek resen-
  tencing under the system set forth in today’s opinions.” Id.
  at 267–68 (emphasis added). In permitting a defendant to
  seek resentencing post-severance, the Supreme Court
  made clear that judicial severance of a statute is neces-
  sarily a prospective act. Id.; see also Free Enter., 561 U.S.
  at 513. This is the same conclusion reached by the DC Cir-
  cuit in Intercollegiate Broadcasting System, Inc. v. Copy-
  right Royalty Board, 684 F.3d 1332 (2012), with which the
  panel decision in this case rightly agrees.
      The dissent’s attempt to read retroactive application of
  severance orders designed to obviate future or ongoing con-
  stitutional violations into Harper and the other Supreme
  Court case law it cites, respectfully, is misplaced. Those
  cases address retroactive application of remedies, not the
  forward-looking curative act of severance.
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    United States Court of Appeals
        for the Federal Circuit
                   ______________________

                      ARTHREX, INC.,
                         Appellant

                               v.

    SMITH & NEPHEW, INC., ARTHROCARE CORP.,
                    Appellees

                     UNITED STATES,
                         Intervenor
                   ______________________

                         2018-2140
                   ______________________

      Appeal from the United States Patent and Trademark
  Office, Patent Trial and Appeal Board in No. IPR2017-
  00275.
                   ______________________

  DYK, Circuit Judge, with whom NEWMAN and WALLACH,
  Circuit Judges join, and with whom HUGHES, Circuit
  Judge, joins as to Part I.A, dissenting from the denial of
  rehearing en banc.
     I respectfully dissent from the court’s decision not to
  rehear this case en banc.
      The panel here holds that the appointment of Admin-
  istrative Patent Judges (“APJs”), when conducted in ac-
  cordance with the America Invents Act (“AIA”), would be
  unconstitutional if those APJs were protected by the
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  2                      ARTHREX, INC. v. SMITH & NEPHEW, INC.




  removal provisions of Title 5. The panel avoids this result
  by severing the Title 5 removal provisions as applied to
  APJs, and thereby “render[ing] the APJs inferior officers
  and remedy[ing] the constitutional appointment problem.”
  Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1325
  (Fed. Cir. 2019).
       As discussed in Part I, I conclude that even if the panel
  were correct that the present structure of IPR proceedings
  violates the Appointments Clause, the draconian remedy
  chosen by the panel—invalidation of the Title 5 removal
  protections for APJs—rewrites the statute contrary to Con-
  gressional intent. That remedy should not be invoked
  without giving Congress and the United States Patent and
  Trademark Office (“PTO”) itself the opportunity to devise a
  less disruptive remedy. In Part II, I conclude that even if
  the Title 5 remedy were adopted, this would not require
  invalidation of preexisting Board decisions. In Part III, I
  address the question of whether APJs are principal offic-
  ers.
                                I
                                A
        The panel’s invalidation of Title 5 removal protections
  and severance is not consistent with Supreme Court prec-
  edent. Severability analysis requires “looking to legislative
  intent.” United States v. Booker, 543 U.S. 220, 246 (2005)
  (collecting cases). In performing this analysis, the court
  cannot sever portions of the statute that would be con-
  sistent with “Congress’ basic objectives in enacting the
  statute.” Booker, 543 U.S. at 259. Severance is appropriate
  if the remaining statute “will function in a manner con-
  sistent with the intent of Congress.” Alaska Airlines, Inc.
  v. Brock, 480 U.S. 678, 685 (1987) (emphasis omitted). The
  panel departs from these requirements. By eliminating Ti-
  tle 5 removal protections for APJs, the panel is performing
  major surgery to the statute that Congress could not possi-
  bly have foreseen or intended.
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                     3



      Removal protections for administrative judges have
  been an important and longstanding feature of Congres-
  sional legislation, and this protection continued to be an
  important feature of the AIA enacted in 2011, as Judge
  Hughes detailed in his concurrence in Polaris Innovations
  Ltd. v. Kingston Tech. Co., Inc., 792 F. App’x 820, 828–830
  (Fed. Cir. 2020) (Hughes, J., concurring).
       Before the passage of the Administrative Procedure Act
  (“APA”) in 1946, administrative law judges (then called
  “hearing examiners”) did not have any removal protections
  or any special status distinguishing them from other
  agency employees. See Ramspeck v. Fed. Trial Examiners
  Conference, 345 U.S. 128, 130 (1953). “Many complaints
  were voiced against the actions of the hearing examiners,
  it being charged that they were mere tools of the agency
  concerned and subservient to the agency heads in making
  their proposed findings of fact and recommendations.” Id.
  at 131. To address these concerns in the APA, Congress
  “provide[d] for a special class of semi-independent subordi-
  nate hearing officers,” H.R. Rep. No. 79-1980, at 10 (1946).
  “Since the securing of fair and competent hearing person-
  nel was viewed as ‘the heart of formal administrative adju-
  dication,’ the Administrative Procedure Act contain[ed] a
  number of provisions designed to guarantee the independ-
  ence of hearing examiners.” Butz v. Economou, 438 U.S.
  478, 514 (1978) (quoting Final Report of the Attorney Gen-
  eral’s Committee on Administrative Procedure 46 (1941)
  (citation omitted)).
      One such provision was Section 11 of the APA, which
  provided that Administrative Law Judges (“ALJs”) gener-
  ally would be “removable . . . only for good cause,” Admin-
  istrative Procedure Act, ch. 324, § 11, 60 Stat. 237, 244
  (1946). These provisions were continued in the Civil Ser-
  vice Reform Act of 1978. H.R. Rep. No. 95-1403, at 304
  (1978) (“An administrative law judge appointed under sec-
  tion 3105 of this title may be removed by the agency in
  which he is employed only for good cause established and
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  4                       ARTHREX, INC. v. SMITH & NEPHEW, INC.




  determined by the Civil Service Commission on the record
  after opportunity for hearing.”). This for-cause removal
  protection was codified in 5 U.S.C. § 7521. 1
       While the protections of section 7521 were inapplica-
  ble to administrative judges of the PTO (since they were
  not “appointed under section 3105”), similar concerns led
  to the enactment of protections for PTO administrative
  judges. Current APJs trace their lineage to the PTO’s ex-
  aminers-in-chief, who were originally nominated by the
  President and confirmed by the Senate. Arthrex, 941 F.3d
  at 1334; 35 U.S.C. § 3 (1952). Beginning with the 1975
  amendments to Title 35, the examiners-in-chief (now APJs)
  were “remove[d] . . . from the political arena by changing
  these positions from ones of Presidential appointment.”
  Hearings Before Subcommittee No. 3 of the Committee on
  the Judiciary House of Representatives, 92d Cong. 43 (1971)
  (statement Of Edward J. Brenner, Former Commissioner
  Of Patents). The 1975 amendment gave the Secretary of
  Commerce the sole authority to appoint examiners-in-chief
  “under the classified civil service.” 35 U.S.C. § 7 (1976); see
  also An Act to Amend Title 35, United States Code,



      1    “An action may be taken against an administrative
  law judge appointed under section 3105 of this title by
  the agency in which the administrative law judge is em-
  ployed only for good cause established and determined by
  the Merit Systems Protection Board on the record after op-
  portunity for hearing before the Board.” 5 U.S.C. § 7521
  (emphasis added). Though Executive Order 13843, dated
  July 10, 2018, placed all administrative law judges in the
  excepted service, and thus “not subject to the requirements
  of 5 CFR, part 302” and further amended 5 C.F.R. § 6.4 to
  eliminate the application of title 5 protections to adminis-
  trative law judges in general, the order was limited by this
  statutory provision. 83 Fed. Reg. 32756–57 (“Except as re-
  quired by statute . . . .”).
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                      5



  “Patents”, and For Other Purposes, Pub. L. 93-601, §§ 1-
  2, 88 Stat. 1956 (1975) (codified as amended at 35 U.S.C.
  §§ 3, 7 (1976)); Polaris, 792 F. App’x at 828–29 (Hughes, J.,
  concurring). This had the result of extending the Civil Ser-
  vice protections for competitive service employees to the ex-
  aminers-in-chief (now APJs). See Arnett v. Kennedy, 416
  U.S. 134, 150–51 (1974), overruled in part on other grounds
  by Cleveland Bd. of Educ. v. Loudermill, 470 U.S. 532
  (1985). This included both provisions concerning appoint-
  ment and removal.
       Until 1999, despite several amendments, Congress re-
  tained the status of APJs as federal employees in the com-
  petitive service under Title 5. Polaris, 792 F. App’x at 829
  (Hughes, J., concurring) (citing Patent Law Amendment
  Acts of 1984, Pub. L. 98-622, title II, sec. 201, § 7(a), 98
  Stat. 3383, 3386 (1984) (codified as amended at 35 U.S.C.
  § 7 (1988), and the 1978 Civil Service Reform Act, Pub. L.
  95-454, 92 Stat. 1121)). In 1999, Congress eliminated the
  requirement that APJs be appointed under competitive
  service provisions, but added the current 35 U.S.C. § 3(c)
  language, which extended Title 5 removal protections to
  APJs. Patent and Trademark Office Efficiency Act, Pub. L.
  106-113, ch. 1, sec. 4713, § 3(c), 113 Stat. 1501A (codified
  as amended at 35 U.S.C. § 3(c) (2000)). 2 Thus, although
  APJs were not subject to appointment as competitive ser-
  vice employees, “APJs remained subject to discipline or dis-
  missal subject to the efficiency of the service standard.”
  Polaris, 792 F. App’x at 830 (Hughes, J., concurring). Sig-
  nificantly, the language of § 3(c) remained unaltered



      2   In fact, even when certain prior bills of the 1999
  Act were considering making the PTO exempt from Title 5,
  a special carve out provision was always contemplated for
  “quasi-judicial examiners,” who would still be removable
  “only for such cause as will promote the efficiency” of the
  agency. S. Rep. No 105-42, at 9, 48 (1997).
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  6                      ARTHREX, INC. v. SMITH & NEPHEW, INC.




  despite the otherwise major overhaul in AIA legislation.
  See id. at 830; 35 U.S.C. § 3(c) (2012). Those removal pro-
  tections were seen as essential to fair performance of the
  APJs quasi-judicial role.
      In sum, ALJs in general and APJs in particular have
  been afforded longstanding and continuous protection from
  removal. The panel gives little weight to the existing stat-
  utory protections in its severance analysis. Moreover, here,
  the provision being partially invalidated is not even part of
  the Patent Act but is instead in Title 5. 3 Elimination of
  those protections cannot be squared with Congressional de-
  sign.
       To be sure, I do not suggest that the inappropriateness
  of the Title 5 invalidation should lead to invalidation of the
  entire AIA statutory scheme. What I do suggest is that
  Congress almost certainly would prefer the opportunity to
  itself fix any Appointments Clause problem before impos-
  ing the panel’s drastic remedy.
      There is no question that Congress could pass a far
  simpler and less disruptive fix and that such a fix is avail-
  able—Congress could amend the statute to provide agency
  review of APJ decisions. 4 Soon after the issuance of the



      3    The panel relies on Intercollegiate Broad. Sys. v.
  Copyright Royalty Bd., 684 F.3d 1332 (D.C. Cir. 2012), to
  justify its severance decision. However, that case is neither
  binding nor apposite to the situation here. In Intercolle-
  giate, the severed removal protections were part of the
  same substantive statute that authorized the Copyright
  Royalty Judges and there was no showing that excising the
  removal protections was contrary to Congressional intent.
  Id. at 1340–41; see also 17 U.S.C. § 802.
      4    In fact, Congressional fixes of PTAB Appointments
  Clause problems have been a feature of past Congressional
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                       7



  panel Arthrex opinion, the House Judiciary Committee
  held hearings to discuss the remedial implications of this
  case. The Patent Trial and Appeal Board and the Appoint-
  ments Clause: Implications of Recent Court Decisions:
  Hearing Before the Subcommittee on Courts, Intellectual
  Property, and the Internet of the H. Comm. on the Judici-
  ary, 116th Cong. (2019) (“Arthrex Hearing”). 5 At the hear-
  ing, subcommittee members expressed concern that
  striking the removal protections for APJs would be “incon-
  sistent with the idea of creating an adjudicatory body” ca-
  pable of “providing independent impartial justice.” Id. at
  45:30 (statement of Rep. Hank Johnson). They agreed that
  it was Congress, not this court, that bears the “responsibil-
  ity to consider a legislative fix,” id. at 46:00–47:00 (state-
  ment of Rep. Hank Johnson), and “question[ed] whether
  [the panel decision was] the right way to achieve the ap-
  parent objective behind the Appointments Clause jurispru-
  dence, namely, to ensure that there is an official
  sufficiently accountable to the President, who signs off on
  important executive branch decisions,” id. at 53:00 (state-
  ment of Rep. Jerrold Nadler).
      Both subcommittee members and witnesses urged that
  providing agency review of PTAB decisions was a prefera-
  ble solution. They noted how this could be achieved: (1)
  establishing a review board comprised of properly ap-
  pointed principal officers with authority to review APJ



  legislation. See Patent and Trademark Administrative
  Judges Appointment Authority Revision, Pub. L. 110-313,
  § 1, 122 Stat. 3014, 3014 (2008) (codified as amended at 35
  U.S.C. § 6(a) (2012)) (providing for appointments of APJs
  by Secretary of Commerce instead of by the Director).
       5   Citations are to the video recording of the hearing,
  available at https://judiciary.house.gov/calendar/even-
  tsingle.aspx?EventID=2249.
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  8                       ARTHREX, INC. v. SMITH & NEPHEW, INC.




  decisions, or (2) providing review of APJ decisions by the
  Director. 6
       If Congress provided such agency review of APJ panel
  decisions, this would cure the core constitutional issue
  identified by the panel by subjecting all APJ decisions to
  review by a principal officer. If APJs were subject to review
  by executive officials at the PTO, then they would no longer
  be principal officers. The APJs would “have no power to
  render a final decision on behalf of the United States unless
  permitted to do so by other Executive officers, and hence
  they [would be] inferior officers within the meaning of Ar-
  ticle II.” Edmond, 520 U.S. at 665; id. at 664–65 (conclud-
  ing that the judges of the Coast Guard Court of Criminal
  Appeals are inferior officers because the Court of Appeals
  for the Armed Forces has the “power to reverse decisions of
  the court” if it “grants review upon petition of the accused”);
  id. at 662 (“Whether one is an ‘inferior officer’ depends on
  whether he has a superior.”); see also Freytag v. Comm’r,
  501 U.S. 868, 881–82 (1991) (holding that a Tax Court spe-
  cial trial judge is an “inferior officer” even though “special
  trial judges . . . render [final] decisions of the Tax Court in
  [certain] cases”); Helman v. Dep’t of Veterans Affairs, 856
  F.3d 920, 929 (Fed. Cir. 2017) (“[T]he special trial judges
  [were] inferior officers [in Freytag].”). Even the panel here
  appears to agree. Arthrex, 941 F.3d at 1329–31 (in finding
  an Appointments Clause violation, relying on there being
  “no provision or procedure providing the Director the power
  to single-handedly review, nullify or reverse a final written
  decision issued by a panel of APJs”).




      6   Id. at 1:04:00 (statement of John F. Duffy); id. at
  1:16:20 (statement of Arti K. Rai); id. at 1:42:12 (statement
  of Rep. Hank Johnson); see also id. at 1:11:00 (statement of
  John M. Whealan); id. at 1:44:23–1:46:30 (witnesses argu-
  ing for unilateral review by the Director).
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                      9



      Supreme Court precedent and circuit authority sup-
  port a temporary stay to allow Congress to implement a
  legislative fix in the Appointments Clause context. Buckley
  v. Valeo, 424 U.S. 1, 144 (1976) (finding the Federal Elec-
  tion Commission’s exercise of enforcement authority to be
  a violation of the Appointments Clause, but “draw[ing] on
  the Court’s practice in the apportionment and voting rights
  cases and stay[ing] . . . the Court’s judgment” to “afford
  Congress an opportunity to reconstitute the Commission
  by law or to adopt other valid enforcement mechanisms”);
  N. Pipeline Constr. Co. v. Marathon Pipe Line Co., 458 U.S.
  50 (1982) (staying a judgment holding that “the broad
  grant of jurisdiction to the bankruptcy courts contained in
  28 U.S.C. § 1471 [(1976)] is unconstitutional” for over three
  months in order to “afford Congress an opportunity to re-
  constitute the bankruptcy courts or to adopt other valid
  means of adjudication, without impairing the interim ad-
  ministration of the bankruptcy laws”); see also Bowsher v.
  Synar, 478 U.S. 714, 736 (1986) (“Our judgment is stayed
  for a period not to exceed 60 days to permit Congress to
  implement the [constitutional] fallback [reporting] provi-
  sions [of the Balanced Budget and Emergency Deficit Con-
  trol Act].”); Md. Comm. for Fair Representation v. Tawes,
  377 U.S. 656, 676 (1964) (after finding a reapportionment
  violation, suggesting that the state legislature be given the
  opportunity “to enact a constitutionally valid state legisla-
  tive apportionment scheme”); Aurelius Inv., LLC v. Puerto
  Rico, 915 F.3d 838, 863 (1st Cir. 2019) (“[O]ur mandate in
  these appeals shall not issue for 90 days, so as to allow the
  President and the Senate to validate the currently defec-
  tive appointments or reconstitute the Board in accordance
  with the Appointments Clause.”).
                               B
      So too, it may well be that Congressional legislation
  would be unnecessary because the agency itself could fix
  the problem by creating an agency review process. As dis-
  cussed below, the Director may be able to designate a
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  10                     ARTHREX, INC. v. SMITH & NEPHEW, INC.




  special panel to rehear decisions rendered by the original
  panel of APJs, that rehearing panel to be composed of only
  officers not subject to Title 5 removal protections, i.e., an
  executive rehearing panel with panel members appointed
  by the President or essentially removable at will by the
  Secretary of Commerce—the Director, the Deputy Director,
  and the Commissioner of Patents. See, e.g., Patent Trial
  and Appeal Board Standard Operating Procedure 2 (ver-
  sion 10), https://www.uspto.gov/sites/default/files/docu-
  ments/SOP2%20R10%20FINAL.pdf.            Far from raising
  separation of powers concerns, this approach permits the
  agency to chart its own course as to the appropriate fix.
       Section 6(c) requires that “[e]ach appeal . . . and inter
  partes review shall be heard by at least 3 members of the
  Patent Trial and Appeal Board.” 35 U.S.C. § 6(c). It also
  specifies that “[o]nly the Patent Trial and Appeal Board
  may grant rehearings.” Id. Section 6(a) provides that
  “[t]he Director, the Deputy Director, the Commissioner of
  Patents, the Commissioner for Trademarks, and the ad-
  ministrative patent judges shall constitute the Patent Trial
  and Appeal Board.” 35 U.S.C. § 6(a). And the statute pro-
  vides that panel members “shall be designated by the Di-
  rector.” 35 U.S.C. § 6(c). 7
      There is no requirement in the statute or regulations
  that the rehearing panel be the same as the original panel.
  We have previously held that the statutory grant of author-
  ity under section 6(c) (then 35 U.S.C. § 7 (1988)) to “desig-
  nate the members of a panel hearing an appeal . . .


       7   The Director is “responsible for providing policy di-
  rection and management supervision for the Office,” 35
  U.S.C. § 3(a)(2)(A), with the authority to “govern the con-
  duct of the proceedings in the Office,” 35 U.S.C.
  § 2(b)(2)(A). He is also “vested” with “[t]he powers and du-
  ties of the United States Patent and Trademark Office.” 35
  U.S.C. § 3(a)(1).
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                      11



  extend[s] to [the] designation of a panel to consider a re-
  quest for rehearing.” In re Alappat, 33 F.3d 1526, 1533
  (Fed. Cir. 1994), abrogated on other grounds by In re Bilski,
  545 F.3d 943 (Fed. Cir. 2008) (interpreting an earlier ver-
  sion of the statute); see also Oil States Energy Services,
  LLC v. Greene’s Energy Group, LLC, 138 S. Ct. 1365, 1381
  (2018) (“[T]he Director can add more members to the
  panel—including himself—and order the case reheard.”)
  (Gorsuch, J., dissenting, with Chief Justice Roberts join-
  ing). “In those cases where a different panel of the Board
  is reconsidering an earlier panel decision, the Board is still
  the entity reexamining that earlier decision; it is simply
  doing so through a different panel.” Id. at 1533–34. The
  regulations do not specify the composition of a rehearing
  panel, simply stating that “[w]hen rehearing a decision on
  petition, a panel will review the decision for an abuse of
  discretion.” 37 C.F.R. § 42.71(c) (emphasis added).
        The legislative history similarly confirms the Direc-
  tor’s authority. In 1927, Congress, at the same time that it
  eliminated the provision requiring the Commissioner (now
  the Director) to review board of examiner decisions, made
  clear that the “supervisory power of the commissioner [to
  rehear panel decisions], as it has existed for a number of
  decades, remains unchanged by the bill.” S. Rep. No. 69-
  1313, at 4 (1927).
       The Director has previously created such special re-
  hearing panels. See Arthrex, 941 F.3d at 1330 (“That
  standing [Precedential Opinion] [P]anel, composed of at
  least three Board members, can rehear and reverse any
  Board decision and can issue decisions that are binding on
  all future panels of the Board.”); see also Patent Trial and
  Appeal Board Standard Operating Procedure 2 (version
  10), https://www.uspto.gov/sites/default/files/documents/
  SOP2%20R10%20FINAL.pdf.
      A rehearing panel consisting of the Director, the Dep-
  uty Director, and the Commissioner of Patents would itself
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  12                     ARTHREX, INC. v. SMITH & NEPHEW, INC.




  comply with the Appointments Clause. The Director is a
  principal officer appointed by the President and confirmed
  by the Senate. 8 The Deputy Director and the Commis-
  sioner of Patents are properly appointed inferior officers
  because they are removable by principal officers. “The
  power to remove officers, [the Supreme Court has] recog-
  nized, is a powerful tool for control.” Edmond, 520 U.S. at
  664. The Deputy Director is appointed by the Secretary of
  Commerce (a Presidentially appointed officer) under 35
  U.S.C. § 3(b)(1). The Deputy Director is removable at will
  by the Secretary of Commerce because “[i]n the absence of
  all constitutional provision, or statutory regulation as to
  the removal of [inferior] officers, . . . the power of removal
  [is] incident to the power of appointment.” In re Hennen,
  38 U.S. 230, 259 (1839). 9               Under the statute,


       8   The statute also specifies that the Director is ap-
  pointed and removable at will by the President. 35 U.S.C.
  § 3(a)(1), (4).
       9   The Deputy Director is not an “employee” for pur-
  poses of 5 U.S.C. § 7513, which provides removal protec-
  tions to PTO officers and employees through 35 U.S.C. §
  3(c)’s application of Title 5 to the PTO’s “[o]fficers and em-
  ployees.” Section 7511(b)(2)(C) of Title 5 excludes from the
  definition of “employees” subject to these protections those
  “employees whose position has been determined to be of a
  confidential, policy-determining, policy-making or policy-
  advocating character” by “the head of an agency for a posi-
  tion excepted from the competitive service by statute.” The
  legislative history of this provision indicates that political
  appointees (of which the Deputy Director is one) were not
  meant to be included in the definition of “employee” for pur-
  poses of § 7513 removal protections. H.R. Rep. No. 101-
  328, 4–5 (1989); see also Special Counsel v. Peace Corps, 31
  M.S.P.R. 225, 231 (1986) (“The[] terms [‘policy-making,’
  ‘confidential,’ and ‘policy-advocating’] . . . are, after all,
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                      13



  “Commissioners [such as the Commissioner of Patents]
  may be removed from office by the Secretary for miscon-
  duct or nonsatisfactory performance . . . , without regard to
  the provisions of title 5”—essentially at-will removal. 35
  U.S.C. § 3(b)(2)(C). In contrast, to be removed under Title
  5, “the agency must show . . . that the employee’s miscon-
  duct is likely to have an adverse impact on the agency’s
  performance of its functions.” Brown v. Dep’t of the Navy,
  229 F.3d 1356, 1358 (Fed. Cir. 2000) (emphasis added).
       The Deputy Director and the Commissioner of Patents
  are also inferior officers because they are supervised by the
  Director. Again, in Edmond, the Supreme Court “th[ought]
  it evident that ‘inferior officers’ are officers whose work is
  directed and supervised at some level by others who were
  appointed by Presidential nomination with the advice and
  consent of the Senate.” Edmond, 520 U.S. at 662 (empha-
  sis added). The Director has significant administrative
  oversight of the duties of these two officers. The USPTO’s
  organizational chart shows that the Deputy Director and
  the Commissioner of Patents report to the Director. See,
  e.g., USPTO Fiscal Year 2019 Congressional Justification,
  at     3,     https://www.uspto.gov/sites/default/files/docu-
  ments/fy19pbr.pdf. The Deputy Director is appointed by
  the Secretary of Commerce only “upon nomination by the
  Director.” 35 U.S.C. § 3(b)(1). And the Secretary of Com-
  merce, acting through the Director, annually evaluates the
  Commissioner’s performance, which determines the Com-
  missioner’s annual bonus. 35 U.S.C. § 3(b)(2)(B).
    In sum, the roles that would be played by these three
  members of an executive rehearing panel would be


  only a shorthand way of describing positions to be filled by
  so-called ‘political appointees.’”); Aharonian v. Gutierrez,
  524 F. Supp. 2d 54, 55 (D.D.C. 2007) (describing the ap-
  pointment of the PTO Deputy Director as a “decision[] in-
  volving high-level policymaking personnel.”).
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  14                      ARTHREX, INC. v. SMITH & NEPHEW, INC.




  constitutional because the Director is a principal officer,
  and the Deputy Director and the Commissioner of Patents
  are inferior officers subject to the supervision of the Direc-
  tor of and the Secretary. If an appropriate stay were
  granted, it would seem possible that the Director, if he
  chose to do so, could achieve agency review without Con-
  gressional legislation.
       Of course, as I discuss in the next section, either a Con-
  gressional fix or an agency fix could not be retroactive. The
  new rehearing procedure would have to be made available
  to losing parties in past cases.
                                II
      Alternatively, I conclude that if the panel’s Title 5 pro-
  tection remedy remained, this would still not require a re-
  mand for a new hearing before a new panel, as the Arthrex
  panel opinion holds. Arthrex, 941 F.3d at 1340. This new
  hearing remedy is not required by Lucia v. S.E.C., 138 S.
  Ct. 2044 (2018), imposes large and unnecessary burdens on
  the system of inter partes review, and involves unconstitu-
  tional prospective decision-making.
                                A
      After holding the APJ removal protection provisions
  unconstitutional and severable, the panel set aside all
  panel decisions of the Board where the issue was properly
  raised on appeal. These cases are remanded for a new
  hearing before a new panel “[b]ecause the Board’s decision
  in this case was made by a panel of APJs that were not
  constitutionally appointed at the time the decision was ren-
  dered.” Arthrex, 941 F.3d at 1338.
      This holding is in part constitutional interpretation
  and part statutory construction. In essence, the panel im-
  properly makes the application of its decision prospective
  only, so that only PTAB decisions after the date of the
  panel’s opinion are rendered by a constitutionally ap-
  pointed panel. In my view, the panel improperly declined
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                     15



  to make its ruling retroactive. If the ruling were retroac-
  tive, the actions of APJs in the past would have been com-
  pliant with the constitution and the statute. In this
  respect, I think that the panel in Arthrex ignored governing
  Supreme Court authority.
                               B
       I first address the Arthrex panel’s claim that Lucia
  mandates remanding for a new hearing. In Lucia, the is-
  sue was whether Securities and Exchange Commission
  (“SEC”) ALJs were inferior officers that had to be ap-
  pointed by an agency head—the SEC. Lucia, 138 S. Ct. at
  2051 & n.3 (2018). The Supreme Court held that “[t]he
  Commission’s ALJs are ‘Officers of the United States,’ sub-
  ject to the Appointments Clause.” Id. at 2055. The ALJs
  were found to be unconstitutionally appointed as “Officers
  of the United States” because they were appointed by
  “[o]ther staff members, rather than the Commission
  proper.” Id. at 2049, 2051.
       While the case was pending, “the SEC issued an order
  ‘ratif[ying]’ the prior appointments of its ALJs,” thus ap-
  parently curing the constitutional defect. 10 Id. at 2055 n.6
  (alteration in original) (quoting SEC Order, In re: Pending
  Administrative       Proceedings      (Nov.    30,     2017),
  https://www.sec.gov/litigation/opinions/2017/33-
  10440.pdf). The Supreme Court nevertheless held that
  “the ‘appropriate’ remedy for an adjudication tainted with
  an appointments violation is a new ‘hearing before a
  properly appointed’ official.” Id. at 2055 (quoting Ryder v.
  United States, 515 U.S. 183, 183, 188 (1995)).
       The difference between Lucia and Arthrex is that the
  fix in Lucia was an agency fix, whereas the fix in Arthrex


      10 The Court declined to decide whether the agency
  cured the defect when it “ratified” the appointments, but
  assumed that it did so. Lucia, 138 S. Ct. at 2055 n.6.
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  16                      ARTHREX, INC. v. SMITH & NEPHEW, INC.




  is a judicial fix. Agencies and legislatures generally act
  only prospectively, while a judicial construction of a statute
  or a holding that a part of the statute is unconstitutional
  and construing the statute to permit severance are neces-
  sarily retrospective as well as prospective.
                                 C
       As the Supreme Court concluded in Rivers v. Roadway
  Exp., Inc., 511 U.S. 298 (1994), in construing a statute,
  courts are “explaining [their] understanding of what the
  statute has meant continuously since the date when it be-
  came law.” Id. at 313 n.12 (emphasis added). The same is
  true as to constitutional decisions, as Harper v. Virginia
  Dep’t of Taxation, 509 U.S. 86 (1993) confirmed: “‘[B]oth
  the common law and our own decisions’ have ‘recognized a
  general rule of retrospective effect for the constitutional de-
  cisions of this Court.’” Id. at 94 (quoting Robinson v. Neil,
  409 U.S. 505, 507 (1973)). As Justice Scalia put it in his
  concurrence in the later Reynoldsville decision:
       In fact, what a court does with regard to an uncon-
       stitutional law is simply to ignore it. It decides the
       case “disregarding the [unconstitutional] law,”
       Marbury v. Madison, 1 Cranch 137, 178 (1803) (em-
       phasis added), because a law repugnant to the Con-
       stitution “is void, and is as no law,” Ex parte
       Siebold, 100 U.S. 371, 376 (1880).
  Reynoldsville Casket Co. v. Hyde, 514 U.S. 749, 760 (1995)
  (Scalia, J., concurring) (alterations in original). In other
  words, “[w]hen [a c]ourt applies a rule of federal law to the
  parties before it, that rule is the controlling interpretation
  of federal law and must be given full retroactive effect in
  all cases still open on direct review and as to all events,
  regardless of whether such events predate or postdate [the
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                           17



  court’s] announcement of the rule.” Harper, 509 U.S. at
  97. 11
       The requirement for retroactivity applies to remedies
  as well, such as the remedy in this case. In Reynoldsville,
  the Court reversed an Ohio Supreme Court decision declin-
  ing to apply a constitutional decision as to a limitations pe-
  riod retroactively. 514 U.S. at 759. The Court rejected the
  respondent’s argument that the Ohio Supreme Court’s de-
  cision was based on “remedy” rather than “non-retroactiv-
  ity” and held that accepting the Ohio Supreme Court’s
  “remedy” would “create what amounts to an ad hoc exemp-
  tion from retroactivity.” Id. at 758. The Court noted only
  four circumstances where retroactive application of a con-
  stitutional ruling is not outcome-determinative. 12 None is
  remotely relevant to Arthrex.
      Thus, to be consistent with Harper, the statute here
  must be read as though the APJs had always been consti-
  tutionally appointed, “disregarding” the unconstitutional


      11   Harper overruled prior caselaw that provided for
  exceptions allowing prospective application of a new rule of
  law in constitutional and other cases. Reynoldsville Casket
  Co. v. Hyde, 514 U.S. 749, 752 (1995) (“Harper overruled [a
  prior Supreme Court decision] insofar as the [prior] case
  (selectively) permitted the prospective-only application of a
  new rule of law.”).
       12  Namely, where there is: “(1) an alternative way of
  curing the constitutional violation; or (2) a previously ex-
  isting, independent legal basis (having nothing to do with
  retroactivity) for denying relief; or (3) as in the law of qual-
  ified immunity, a well-established general legal rule that
  trumps the new rule of law, which general rule re-
  flects both reliance interests and other significant policy
  justifications; or (4) a principle of law, such as that of ‘fi-
  nality’ . . . , that limits the principle of retroactivity itself.”
  Reynoldsville, 514 U.S. at 759 (internal citations omitted).
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  18                       ARTHREX, INC. v. SMITH & NEPHEW, INC.




  removal provisions. Marbury v. Madison, 5 U.S. 137, 178
  (1803). Since no Congressional or agency action is required
  in order to render the appointment of the PTAB judges con-
  stitutional, when the PTAB judges decided cases in the
  past, they did not act improperly. Thus, the past opinions
  rendered by the PTAB should be reviewed on the merits,
  not vacated for a new hearing before a different panel.
      To be sure, a new decision or hearing may sometimes
  be necessary where a deciding official might have acted dif-
  ferently if he had been aware of the unconstitutional na-
  ture of a restriction on his authority. That was the
  situation in Booker, where judges’ decision-making might
  have been affected by their perception that the sentencing
  guidelines were mandatory and where the mandatory pro-
  vision was held unconstitutional and severed. Booker, 543
  U.S. at 249–265. Booker was not an Appointments Clause
  case, and even in Booker, a new sentencing hearing was not
  required in every case. Id. at 268. Here, even applying the
  Booker approach, it is simply not plausible that the PTAB
  judges’ decision-making would have been affected by the
  perceived existence or non-existence of the removal protec-
  tions of Title 5. As the Fifth Circuit has concluded in this
  respect, “[r]estrictions on removal are different” from Ap-
  pointments Clause violations where “officers were vested
  with authority that was never properly theirs to exercise.”
  Collins v. Mnuchin, 938 F.3d 553, 593 (5th Cir. 2019) (en
  banc) (separate majority opinion). 13 As discussed above,


       13   In Collins, the Fifth Circuit explained:
       Restrictions on removal are different. In such cases
       the conclusion is that the officers are duly ap-
       pointed by the appropriate officials and exercise
       authority that is properly theirs. The problem iden-
       tified by the [different] majority decision in this
       case is that, once appointed, they are too distant
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                       19



  Lucia required a new determination, but in that case the
  fix was imposed only prospectively—the making of new ap-
  pointments by the agency head and the ratification of ear-
  lier appointments—rather than a retroactive court decision
  involving severance. See Lucia, 138 S. Ct. at 2055 n.6.
                               D
      While the Circuits appear to be divided as to the retro-
  activity issue in Appointments Clause and similar cases, 14



      from presidential oversight to satisfy the Constitu-
      tion’s requirements.
      Perhaps in some instances such an officer’s actions
      should be invalidated. The theory would be that a
      new President would want to remove the incum-
      bent officer to instill his own selection, or
      maybe that an independent officer would act differ-
      ently than if that officer were removable at will. We
      have found no cases from either our court or the
      Supreme Court accepting that theory.
  938 F.3d at 593–94 (separate majority opinion)
      14    In Collins v. Mnuchin, 938 F.3d 553 (5th Cir. 2019)
  (en banc), the en banc Fifth Circuit found that the Federal
  Housing Finance Agency (“FHFA”) was unconstitutionally
  structured because Congress “[g]rant[ed] both removal pro-
  tection and full agency leadership to a single FHFA Direc-
  tor.” Id. at 591. It did not invalidate prior agency actions.
  Id. at 592 (separate majority opinion). It concluded that
  the only appropriate remedy, and one that “fixes
  the . . . purported injury,” is a declaratory judgment “re-
  moving the ‘for cause’ provision found unconstitutional.”
  Id. 595 (separate majority opinion).
      In Intercollegiate Broadcasting and Kuretski, the D.C.
  Circuit reached the opposite result. See Intercollegiate
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  20                     ARTHREX, INC. v. SMITH & NEPHEW, INC.




  the very Supreme Court decisions relied on in Arthrex have
  given retroactive effect to statutory constructions or consti-
  tutional decisions that remedied potential Appointment
  Clause violations. In Free Enterprise Fund v. Public Co.
  Accounting Oversight Board, 561 U.S. 477 (2010), the
  SEC’s Public Company Accounting Oversight Board had
  instituted an investigation against an accounting firm,
  Beckstead and Watts (“B&W”). Id. at 487. B&W and an-
  other affiliated organization, Free Enterprise Fund, filed
  suit, asking the district court to enjoin the investigation as
  improperly instituted because members of the Board had
  not been constitutionally appointed. Id. at 487–88. The
  Supreme Court found that the statutory removal protec-
  tions afforded to members of the Board were unconstitu-
  tional. Id. at 484. “By granting the Board executive power
  without the Executive’s oversight [i.e., by limiting re-
  moval], th[e Sarbanes-Oxley] Act subvert[ed] the Presi-
  dent’s ability to ensure that the laws are faithfully


  Broad. Sys., Inc. v. Copyright Royalty Bd., 684 F.3d 1332
  (D.C. Cir. 2012); Kuretski v. Comm’r, 755 F.3d 929 (D.C.
  Cir. 2014). In Intercollegiate Broadcasting, the D.C. Cir-
  cuit found that the appointments of the Copyright Royalty
  Judges in the Library of Congress violated the Appoint-
  ments Clause because they could be removed only for
  cause. 684 F.3d at 1334. The court invalidated the for-
  cause restriction on the removal of the judges, rendering
  them “validly appointed inferior officers.” Id. at 1340–41.
  Yet, the D.C. Circuit declared that “[b]ecause the Board’s
  structure was unconstitutional at the time it issued its de-
  termination, we vacate and remand the determination.”
  Id. at 1342. These two cases were not based on Supreme
  Court precedent, did not consider the Supreme Court prec-
  edent suggesting a different result, and were an apparent
  departure from the Court’s rulings in similar circum-
  stances.
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                      21



  executed—as well as the public’s ability to pass judgment
  on his efforts.” Id. at 498. But the Court severed the un-
  constitutional removal provisions from the remainder of
  the statute, leaving the rest of relevant act fully opera-
  tional and constitutional. Id. at 509.
      The Court did not view this action as fixing the problem
  only prospectively. It refused to invalidate or enjoin the
  prior actions of the Board in instituting the investigation,
  explaining that “properly viewed, under the Constitu-
  tion, . . . the Board members are inferior officers” and “have
  been validly appointed by the full Commission.” Id. at 510,
  513. The Court remanded for further proceedings, but ex-
  plained that the plaintiffs were only “entitled to declara-
  tory relief sufficient to ensure that the reporting
  requirements and auditing standards to which they [we]re
  subject will be enforced only by a constitutional agency ac-
  countable to the Executive.” 15 Id. at 513.
       So too in Edmond v. United States, 520 U.S. 651 (1997),
  past actions by the Coast Guard Court of Criminal Appeals
  were not set aside. The criminal defendants’ convictions
  had been affirmed by the Coast Guard Court of Criminal
  Appeals. Id. at 655. The defendants contended that the
  Coast Guard Court of Criminal Appeals judges had not
  been properly appointed, rendering the convictions invalid.
  See id. The issue was “whether Congress ha[d] authorized
  the Secretary of Transportation to appoint civilian [judges
  to] the Coast Guard Court of Criminal Appeals, and if so,
  whether this authorization [wa]s constitutional under the


      15  On remand, the parties agreed that the Supreme
  Court’s decision did not require invalidating the Board’s
  prior actions. The agreed-upon judgment stated: “[a]ll re-
  lief not specifically granted by this judgment is hereby
  DENIED.” Judgment, Free Enter. Fund v. Pub. Co. Ac-
  counting Oversight Bd., No. 06-0217 (D.D.C. Feb. 23, 2011),
  ECF No. 66.
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  22                     ARTHREX, INC. v. SMITH & NEPHEW, INC.




  Appointments Clause of Article II [because the judges were
  inferior officers].” Id. at 653.
       The Court construed the relevant statutes so that “Ar-
  ticle 66(a) d[id] not give [the] Judge Advocates General au-
  thority to appoint Court of Criminal Appeals judges; [and]
  that § 323(a) d[id] give the Secretary of Transportation au-
  thority to do so.” Id. at 658. The Court explained that “no
  other way to interpret Article 66(a) that would make it con-
  sistent with the Constitution” because “Congress could not
  give the Judge Advocates General power to ‘appoint’ even
  inferior officers of the United States.” Id. The Court then
  found that the judges of the Coast Guard Court of Criminal
  Appeals were inferior officers and that “[their] judicial ap-
  pointments [by the Secretary] . . . [we]re therefore valid.”
  Id. at 666. Most significantly, the Court did not remand for
  a new hearing but rather “affirm[ed] the judgment of the
  Court of Appeals for the Armed Forces.” Id. Nowhere did
  the Court suggest that the actions taken before the Court’s
  construction were rendered invalid.
      In Appointments Clause cases, the Supreme Court has
  required a new hearing only where the appointment’s de-
  fect had not been cured 16 or where the cure was the result


       16 See Ryder v. United States, 515 U.S. 177, 187–88
  (1995) (declining to apply the de facto officer doctrine to
  preserve rulings made by an unconstitutionally appointed
  panel); N.L.R.B. v. Noel Canning, 573 U.S. 513, 519, 520,
  557 (2014) (affirming the DC Circuit in vacating an NLRB
  order finding a violation because the Board lacked a
  quorum as “the President lacked the power to make the
  [Board] recess appointments here at issue”); see also
  Bandimere v. Sec. & Exch. Comm’n, 844 F.3d 1168, 1171,
  1188 (10th Cir. 2016) (setting aside opinion of an improp-
  erly appointed SEC ALJ where “the SEC conceded the ALJ
  had not been constitutionally appointed”).
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                      23



  of non-judicial action. 17 The contrary decision in Arthrex is
  inconsistent with binding Supreme Court precedent and
  creates a host of problems in identifying the point in time
  when the appointments became valid. 18
                                 ***
       I respectfully suggest that Arthrex was wrongly de-
  cided for two reasons. First, the panel’s remedy invalidat-
  ing the Title 5 removal protections for APJs is contrary to
  Congressional intent and should not be invoked without
  giving Congress and the PTO the opportunity to devise a
  less disruptive remedy. Second, even if the Arthrex remedy
  (to sever Title 5 protections) were adopted, there would be
  no need for a remand for a new hearing before a new panel
  because, under this judicial construction, APJs will be ret-
  roactively properly appointed by the Secretary of




      17   See Lucia, 138 S. Ct. at 2055 n.6; see also Jones
  Bros., Inc. v. Sec’y of Labor, 898 F.3d 669, 679 (6th Cir.
  2018) (improperly appointed ALJ’s decision vacated de-
  spite Mine Commission’s attempt to cure the improper ap-
  pointment during judicial review by ratifying the
  appointment of every ALJ); Cirko on behalf of Cirko v.
  Comm’r of Soc. Sec., 948 F.3d 148, 152 (3d Cir. 2020) (af-
  firming district court’s remand for a new hearing before
  properly appointed Social Security Administration ALJs
  despite SSA’s later reappointment of all agency judges).
      18   The difficulty of identifying at what point in time
  the appointments becomes effective is evident. Is it when
  the panel issues the decision, when the mandate issues,
  when en banc review is denied, when certiorari is denied,
  or (if there is an en banc proceeding) when the en banc
  court affirms the panel, or (if the Supreme Court grants
  review) when the Supreme Court affirms the court of ap-
  peals decision?
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  24                     ARTHREX, INC. v. SMITH & NEPHEW, INC.




  Commerce and their prior decisions will not be rendered
  invalid.
                               III
       Finally, the panel’s conclusion that PTAB judges are
  principal officers under the existing statutory structure is
  open to question. It does appear to be the case under the
  Supreme Court’s decision in Lucia that PTAB judges are
  “officers,” but it seems to me far from clear that they are
  “principal officers.” The panel concluded that they were
  because “‘inferior officers’ are officers whose work is di-
  rected and supervised at some level by others who were ap-
  pointed by Presidential nomination with the advice and
  consent of the Senate.” Arthrex, 941 F.3d at 1329 (quoting
  Edmond, 520 U.S. at 662–63). The panel held that no prin-
  cipal officer “exercise[d] sufficient direction and supervi-
  sion over APJs to render them inferior officers.” Id.
  Despite the quoted language in Edmond, I do not think
  that the sole distinction between “inferior officers” and
  “principal officers” lies in agency supervision. In Morrison
  v. Olson, 487 U.S. 654 (1988), the Supreme Court held that
  an independent counsel was an “inferior officer” despite the
  fact that she was removable only for “good cause” and “pos-
  sesse[d] a degree of independent discretion to exercise the
  powers delegated to her,” id. at 671, 691.
       In Morrison, the Court was in part persuaded by the
  fact that the independent counsel’s “grant of authority d[id]
  not include any authority to formulate policy for the Gov-
  ernment or the Executive Branch.” Morrison, 487 U.S. at
  671. The First Circuit squared the holdings in Edmond
  and Morrison “by holding that Edmond’s supervision test
  was sufficient, but not necessary.” Aurelius, 915 F.3d at
  860. The First Circuit explained that “inferior officers are
  those who are directed and supervised by a presidential ap-
  pointee; otherwise, they ‘might still be considered inferior
  officers if the nature of their work suggests sufficient
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                     25



  limitations of responsibility and authority.’” Id. (quoting
  United States v. Hilario, 218 F.3d 19, 25 (1st Cir. 2000)).
       Similarly, here, it seems appropriate to also examine
  whether the role of the officers in question includes articu-
  lation of agency policy. PTAB judges have no such role.
  They are not charged with articulating agency policy, and
  certainly are not the principal officers charged with that
  articulation. Their sole function is to determine the facts
  in individual patent challenges under the AIA; as to the
  law, they are obligated to follow the law as articulated by
  the Supreme Court and this court. It appears to be the case
  that review of administrative judges’ decisions by an Arti-
  cle I court prevented the administrative judges in Edmond
  and Masias v. Sec’y of Health & Human Servs., 634 F.3d
  1283 (Fed. Cir. 2011), from being “officers.” See Edmond,
  520 U.S. at 664; Masias, 634 F.3d at 1294. It is hard for
  me to see how identical review by an Article III court
  (which severely cabins the authority of PTAB judges) does
  not prevent PTAB judges from being principal officers.
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    United States Court of Appeals
        for the Federal Circuit
                    ______________________

                       ARTHREX, INC.,
                          Appellant

                               v.

    SMITH & NEPHEW, INC., ARTHROCARE CORP.,
                    Appellees

                      UNITED STATES,
                          Intervenor
                    ______________________

                          2018-2140
                    ______________________

      Appeal from the United States Patent and Trademark
  Office, Patent Trial and Appeal Board in No. IPR2017-
  00275.
                   ______________________

  HUGHES, Circuit Judge, with whom WALLACH, Circuit
  Judge, joins, dissenting from the denial of the petitions
  for rehearing en banc.
      I respectfully dissent from the court’s decision
  declining to rehear this appeal en banc. I believe that,
  viewed in light of the Director’s significant control over the
  activities of the Patent Trial and Appeal Board and
  Administrative Patent Judges, APJs are inferior officers
  already properly appointed by the Secretary of Commerce.
  And even if APJs are properly considered principal officers,
  I have grave doubts about the remedy the Arthrex panel
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  2                     ARTHREX, INC. v. SMITH & NEPHEW, INC.




  applied to fix their appointment. In the face of an
  unconstitutional statute, our role is to determine whether
  severance of the unconstitutional portion would be
  consistent with Congress’s intent. Given the federal
  employment protections APJs and their predecessors have
  enjoyed for more than three decades, and the overall goal
  of the America Invents Act, I do not think Congress would
  have divested APJs of their Title 5 removal protections to
  cure any alleged constitutional defect in their appointment.
  As Judge Dyk suggests in his dissent, which I join as to
  Part I.A, I agree that Congress should be given the
  opportunity to craft the appropriate fix. Dyk Op. at 6.
                               I
      None of the parties here dispute that APJs are officers
  who exercise “significant authority pursuant to the laws of
  the United States.” Buckley v. Valeo, 424 U.S. 1, 126 (1976)
  (per curiam). But “significant authority” marks the line
  between an officer and an employee, not a principal and an
  inferior officer. Despite being presented with the oppor-
  tunity to do so, the Supreme Court has declined to “set
  forth an exclusive criterion for distinguishing between
  principal and inferior officers for Appointments Clause
  purposes.” Edmond v. United States, 520 U.S. 651, 661
  (1997).
       Instead, the pertinent cases make clear that the hall-
  mark of an inferior officer is whether a presidentially-nom-
  inated and senate-confirmed principal officer “direct[s] and
  supervise[s] [her work] at some level.” Id. at 663. Edmond
  does not lay out a more exacting test than this, and we
  should not endeavor to create one in its stead. Instead, I
  believe the Supreme Court has engaged in a context-spe-
  cific inquiry accounting for the unique systems of direction
  and supervision of inferior officers in each case. See infra
  Section I. Importantly, the Court has not required that a
  principal officer be able to single-handedly review and re-
  verse the decisions of inferior officers, or remove them at
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                        3



  will, to qualify as inferior. And I believe that the Supreme
  Court would have announced such a simple test if it were
  proper.
      Finally, Edmond also makes clear that the Appoint-
  ments Clause seeks to “preserve political accountability
  relative to important government assignments.” 520 U.S.
  at 663. The Director’s power to direct and supervise the
  Board and individual APJs, along with the fact that APJs
  are already removable under the efficiency of the service
  standard, provides such political accountability. APJs are
  therefore inferior officers.
                                A
      The Director may issue binding policy guidance, insti-
  tute and reconsider institution of an inter partes review,
  select APJs to preside over an instituted inter partes re-
  view, single-handedly designate or de-designate any final
  written decision as precedential, and convene a panel of
  three or more members of his choosing to consider rehear-
  ing any Board decision. The Arthrex panel categorized
  some of these as “powers of review” and others as “powers
  of supervision,” but I view them all as significant tools of
  direction and supervision.
       As Arthrex recognized, “[t]he Director is ‘responsible for
  providing policy direction and management supervision’
  for the [United States Patent and Trademark Office].” Ar-
  threx, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1331
  (Fed. Cir. 2019) (quoting 35 U.S.C. § 3(a)(2)(A)). Not only
  can the Director promulgate regulations governing inter
  partes review procedures, but he may also prospectively is-
  sue binding policy guidance “interpreting and applying the
  patent and trademark laws.” Gov’t. Br. 37. APJs must ap-
  ply this guidance in all subsequent inter partes review pro-
  ceedings. Such guidance might encompass, for instance,
  exemplary application of the law to specific fact patterns,
  such as those posed in pending cases. These powers pro-
  vide the Director with control over the process and
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  4                      ARTHREX, INC. v. SMITH & NEPHEW, INC.




  substance of Board decisions. Gov’t. Br. 36–37. And
  though the Director cannot directly reverse an individual
  Board decision that neglects to follow his guidance, APJs
  who do so risk discipline or removal under the efficiency of
  the service standard applicable under Title 5. See infra
  Section I C. Such binding guidance, and the consequences
  of failing to follow it, are powerful tools for control of an
  inferior officer. 1
       The Director also has unreviewable authority to insti-
  tute inter partes review. 35 U.S.C. § 314(a), (d). Cf. Free
  Enter. Fund v. Pub. Co. Accounting Oversight Bd., 561 U.S.
  477, 504 (2010) (discussing the importance of the ability to
  “start, stop, or alter individual [PCAOB] investigations,”
  even where the reviewing principal officer already had sig-
  nificant “power over [PCAOB] activities”). Though the Ar-
  threx panel did not address the Director’s ability to
  reconsider an institution decision, our precedent holds that
  the Board 2 may reconsider and reverse its initial institu-
  tion decision. See, e.g., Medtronic, Inc. v. Robert Bosch
  Healthcare Sys., Inc., 839 F.3d 1382, 1385−86 (Fed. Cir.
  2016) (explaining that “§ 318(a) contemplates that a pro-
  ceeding can be ‘dismissed’ after it is instituted, and, as our
  prior cases have held, administrative agencies possess



      1    To be sure, I do not mean to suggest that the Direc-
  tor’s extensive powers of supervision mean that he can dic-
  tate the outcome of a specific inter partes proceeding.
  Rather, his ability to issue guidance and designate prece-
  dential opinions provides the general type of supervision
  and control over APJs’ decision-making that renders them
  inferior, not principal, officers.
       2   The Director’s delegation of his institution power to
  the Board does not diminish its existence. 37 C.F.R.
  § 42.4(a) (stating that “[t]he Board institutes the trial on
  behalf of the Director”). See also Ethicon Endo-Surgery,
  Inc. v. Covidien LP, 812 F.3d 1023, 1033 (Fed. Cir. 2016).
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                        5



  inherent authority to reconsider their decisions, subject to
  certain limitations, regardless of whether they possess ex-
  plicit statutory authority to do so” (internal quotation and
  citation omitted)).
       The Director also controls which APJs will hear any
  given instituted inter partes review. 35 U.S.C. § 6(c). In
  my view, this power of panel designation is a quintessential
  method of directing and controlling a subordinate. Im-
  portantly, I do not believe that in stating that the power to
  remove an officer at-will from federal employment is “a
  powerful tool for control of an inferior,” Free Enterprise, 561
  U.S. at 510 (internal quotation omitted), the Supreme
  Court meant that such removal power is the only effective
  form of control in the context of the Appointments Clause.
  For example, the Judge Advocate General in Edmond could
  remove the Court of Criminal Appeal judges from judicial
  service without cause, but not necessarily federal employ-
  ment altogether. Edmond, 520 U.S. at 664. See also Free
  Enterprise, 561 U.S. at 510 (relying on both at-will removal
  authority and “the [SEC’s] other oversight authority” in
  finding with “no hesitation” that the PCAOB members are
  inferior officers). That is akin to the Director’s authority to
  designate which APJs will consider a certain case. And de-
  spite acknowledging that “when a statute is silent on re-
  moval, the power of removal is presumptively incident to
  the power of appointment[,]” the Arthrex panel declined to
  opine on the Director’s ability to de-designate APJs from a
  panel under § 6(c). Arthrex, 941 F.3d at 1332. But Edmond
  referenced the ability to remove the judges there “from
  [their] judicial assignment[s],” followed by a recognition of
  the potent power of removal. 520 U.S. at 664. If the Direc-
  tor’s ability to control APJs plays a significant part in the
  unconstitutionality at issue, such that the remedy is to
  make APJs removable at will, the panel should have defin-
  itively addressed the Director’s de-designation authority.
  Moreover, as outlined in Section I C, infra, APJs already
  may be disciplined or removed from federal employment
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  6                      ARTHREX, INC. v. SMITH & NEPHEW, INC.




  under the routine efficiency of the service standard, which
  is not incompatible with discipline or removal for failing to
  follow the Director’s binding guidance.
      And the Director may continue to provide substantial
  direction and supervision after the Board issues its final
  written decision. As Arthrex recognizes, the Director may
  convene a Precedential Opinion Panel (POP), of which the
  Director is a member, to consider whether to designate a
  decision as precedential. Arthrex, 941 F.3d at 1330. But I
  read the Standard Operating Procedures more broadly,
  such that the Director may also make a precedential desig-
  nation or de-designation decision single-handedly, 3
  thereby unilaterally establishing binding agency authority
  on important constitutional questions and other exception-
  ally important issues. Standard Operating Procedure 2, at
  3−4. Indeed, it appears that the Director has done so in at
  least sixteen cases in 2018 and 2019. See USPTO, Patent
  Trial and Appeal Board Precedential and informative deci-
  sions, available at https://www.uspto.gov/patents-applica-
  tion-process/patent-trial-and-appeal-board/precedential-
  informative-decisions (listing decisions designated as prec-
  edential in the past year, where some are labeled as “Prec-
  edential Opinion Panel decision” and others are not). The
  Director may also convene a POP of his choice, of which he



      3    “No decision will be designated or de-designated as
  precedential or informative without the approval of the Di-
  rector. This SOP does not limit the authority of the Director
  to designate or de-designate decisions as precedential or in-
  formative, or to convene a Precedential Opinion Panel to
  review a matter, in his or her sole discretion without regard
  to the procedures set forth herein.” Patent Trial and Ap-
  peal Board, Standard Operating Procedure 2 (Revision 10)
  at 1 (Standard Operating Procedure 2), available at
  https://www.uspto.gov/sites/default/files/docu-
  ments/SOP2%20R10%20FINAL.pdf.
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                       7



  is by default a member, to consider whether to rehear and
  reverse any opinion. Standard Operating Procedure 2, at
  4. And, the Director may “determine that a panel of more
  than three members is appropriate” and then choose those
  additional members as well. Id. Though the Arthrex panel
  recognized these powers, it dismissed them because the Di-
  rector has only one vote out of at least three. 941 F.3d at
  1331−32. This assessment, however, misses the practical
  influence the Director wields with the power to hand-pick
  a panel, particularly when the Director sits on that panel.
  The Director’s ability to unilaterally designate or de-desig-
  nate a decision as precedential and to convene a POP of the
  size and composition of his choosing are important tools for
  the direction and supervision of the Board even after it is-
  sues a final written decision. 4



      4    The underestimation of the Director’s power is par-
  ticularly evident in light of this court’s prior en banc deci-
  sion in In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994),
  abrogated on other grounds by In re Bilski, 545 F.3d 943
  (Fed. Cir. 2008). Alappat contained strong language about
  the ability to control the composition and size of panels.
  See, e.g., id. at 1535 (noting that “the Board is merely the
  highest level of the Examining Corps, and like all other
  members of the Examining Corps, the Board operates sub-
  ject to the Commissioner’s overall ultimate authority and
  responsibility”). While the duties of the Board and the Di-
  rector have changed since Alappat was decided, the author-
  ity to determine the Board’s composition for
  reconsideration of an examiner’s patentability determina-
  tion mirrors the current authority with respect to inter
  partes review. Compare 35 U.S.C. § 6(c) (2012) (giving the
  Director authority to designate “at least 3 members of the
  Patent Trial and Appeal Board” to review “[e]ach appeal,
  derivation proceeding, post-grant review, and inter partes
  review”), with 35 U.S.C. § 7(b) (1988) (giving the
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  8                      ARTHREX, INC. v. SMITH & NEPHEW, INC.




      Combined, all of these powers provide the Director con-
  stitutionally significant means of direction and supervision
  over APJs─making them inferior officers under the rule of
  Edmond.
                               B
      Despite the Director’s significant powers of direction
  and supervision, the Arthrex panel concluded that APJs are
  principal officers in large part because no principal officer
  may “single-handedly review, nullify or reverse” the
  Board’s decisions. Arthrex, 941 F.3d at 1329. But Supreme
  Court precedent does not require such power. And in the
  cases in which the Court emphasized a principal officer’s
  power of review, that principal officer had less authority to
  direct and supervise an inferior officer’s work ex ante than
  the Director has here.
       In Edmond, for instance, the Court of Appeals for the
  Armed Forces, an Article I court, could review decisions of
  the Court of Criminal Appeals judges at issue. However,
  its scope of review was limited. Edmond, 520 U.S. at 665
  (explaining that the Court of Appeals for the Armed Forces
  may only reevaluate the facts when there is no “competent
  evidence in the record to establish each element of the of-
  fense beyond a reasonable doubt”). And while the Judge
  Advocate General “exercise[d] administrative oversight”
  and could “prescribe uniform rules of procedure,” he could
  “not attempt to influence (by threat of removal or other-
  wise) the outcome of individual proceedings.” Id. at 664.
  Nonetheless, the Supreme Court found that the Court of



  Commissioner power to designate “at least three members
  of the Board of Appeals and Interferences” to review “ad-
  verse decisions of examiners upon applications for pa-
  tents”). Therefore, I believe the panel should have at least
  discussed how Alappat’s view of the power to control the
  Board might impact the Appointments Clause analysis.
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                       9



  Criminal Appeals judges were inferior, not principal, offic-
  ers. In comparison, while the Director may not unilaterally
  decide to rehear or reverse a Board decision, he has many
  powers to direct and supervise APJs both ex ante and ex
  post, Section I A, supra, that no principal officer had in Ed-
  mond.
       Similarly, in Freytag v. Comm’r, 501 U.S. 868 (1991),
  the Supreme Court considered the status of special trial
  judges appointed by the Tax Court, whose independent de-
  cision-making varied based on the type of case before them.
  The Court held that the special trial judges were inferior
  officers—not employees—when presiding over “declaratory
  judgment proceedings and limited-amount tax cases” be-
  cause they “render[ed] the decisions of the Tax Court” in
  those cases. Id. at 882. In doing so, the Court distin-
  guished between cases in which the special trial judges
  acted as “inferior officers who exercise independent author-
  ity,” and cases in which they still had significant discretion
  but less independent authority. Id. The Court’s analysis
  distinguished between inferior officer and employee; no-
  where did the Court suggest that special trial judges’ “in-
  dependent authority” to decide declaratory judgment
  proceedings and limited-amount cases rendered them prin-
  cipal officers. See id. at 881−82. Most recently, the Court
  applied the framework of Freytag in deciding whether ad-
  ministrative law judges (ALJs) of the Securities and Ex-
  change Commission (SEC) are inferior officers or
  employees. Lucia v. S.E.C., 138 S. Ct. 2044, 2053 (2018).
  The Court reasoned that SEC ALJs and Freytag’s special
  trial judges are extremely similar, but SEC ALJs arguably
  wield more power because their decisions become final if
  the SEC declines review. Id. at 2053−54. But again, the
  Court found this structure still only rendered SEC ALJs
  officers, not employees. Id. at 2054. No mention was made
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  10                     ARTHREX, INC. v. SMITH & NEPHEW, INC.




  of SEC ALJs being principal officers. 5 See id. at 2051 n.3
  (explaining that the distinction between principal and in-
  ferior officers was “not at issue here”). Just as the special
  trial judges in Freytag and the SEC ALJs in Lucia were
  inferior officers, so too are APJs.
       Nor does this court’s precedent require unfettered re-
  view as a marker of inferior officer status. In Masias v.
  Sec’y of Health & Human Servs., we rebuffed the argument
  that because the Court of Federal Claims does not review
  decisions of the Vaccine Program’s special masters de novo,
  the special masters are principal officers. 634 F.3d 1283,
  1293−94 (Fed. Cir. 2011). There, we recognized that the
  Court of Federal Claims may only “set aside any findings
  of fact or conclusions of law of the special master found to
  be arbitrary, capricious, an abuse of discretion, or other-
  wise not in accordance with law . . . .” Id. at 1294. This
  limited review means that many of the special masters’ de-
  cisions are effectively final because the Court of Federal
  Claims has no basis to set aside findings of fact or conclu-
  sions of law. We reasoned that such limited review of spe-
  cial masters’ decisions by the Court of Federal Claims
  resembled the review in Edmond, and that “the fact that
  the review is limited does not mandate that special masters
  are necessarily ‘principal officers.’” Id. at 1295.
      Finally, the panel analogized the Arthrex issue to the
  one addressed by the D.C. Circuit in Intercollegiate Broad.
  Sys., Inc. v. Copyright Royalty Bd., 684 F.3d 1332 (D.C. Cir.
  2012). See Arthrex, 941 F.3d at 1334. But the facts of


       5    In fact, the Court declined “to elaborate on Buck-
  ley’s ‘significant authority’ test” marking the line between
  officer and employee, citing two parties’ briefs which ar-
  gued that the test between officer and employee, not prin-
  cipal and inferior officer, should include some measure of
  the finality of decision making. Lucia, 138 S. Ct. at
  2051─52.
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                       11



  Intercollegiate are significantly different than those in Ar-
  threx. The Librarian of Congress—the principal officer
  who supervises the Copyright Royalty Judges (CRJs) at is-
  sue—was much more constrained in her ability to direct
  and supervise the CRJs than the Director. The governing
  statute grants CRJs broad discretion over ratemaking. See
  17 U.S.C. § 802(f)(1)(A)(i) (stating that “[CRJs] shall have
  full independence in making” numerous copyright rate-re-
  lated decisions). The Librarian “approv[es] the CRJs’ pro-
  cedural regulations, . . . issu[es] ethical rules for the CRJs,
  [and] . . . oversee[s] various logistical aspects of their du-
  ties,” such as publishing CRJs’ decisions and providing ad-
  ministrative resources. Intercollegiate, 684 F.3d at 1338.
  In fact, it appears the only way the Librarian can exercise
  substantive control over the CRJs’ ratemaking decisions is
  indirectly through the Register of Copyrights, whom she,
  not the President, appoints. See 17 U.S.C. § 701(a). The
  Register corrects any legal errors in the CRJs’ ratemaking
  decisions, 17 U.S.C. § 802(f)(1)(D), and provides written
  opinions to the CRJs on “novel question[s] of law,”
  17 U.S.C. § 802(f)(1)(B), or when the CRJ requests such an
  opinion. 17 U.S.C. § 802(f)(1)(A)(ii). But the CRJs may not
  consult with the Register about a question of fact.
  17 U.S.C. § 802(f)(1)(A)(i). The Librarian therefore exerts
  far less control over CRJs than the Director can over APJs
  using all the powers of direction and supervision discussed
  in Section I A, supra.
      The comparison to Intercollegiate in Arthrex again
  highlights how the unique powers of direction and supervi-
  sion in each case should be viewed in totality, rather than
  as discrete categories weighing in favor of inferior officer
  status or not. In particular, breaking up the analysis into
  three discrete categories—Review, Supervision, and Re-
  moval—overlooks how the powers in each category impact
  each other. Again, for example, whereas ex post the Court
  of Appeals for the Armed Forces has more power to review
  the Court of Criminal Appeals judges’ decisions than the
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  12                      ARTHREX, INC. v. SMITH & NEPHEW, INC.




  Director has to review a Board decision, neither the JAG
  nor the Court of Appeals for the Armed Forces have the
  Director’s ex ante control, such as the power to decide
  whether to hear a case at all or to issue binding guidance
  on how to apply the law in a case. Viewed through this
  integrated lens, I believe APJs comfortably fit with prior
  Supreme Court precedent that has never found a principal
  officer in a challenged position to date.
                                 C
       Finally, Title 5’s efficiency of the service standard does
  not limit the ability to discipline or remove APJs in a con-
  stitutionally significant manner. It allows discipline and
  removal for “misconduct [that] is likely to have an adverse
  impact on the agency’s performance of its functions.” See
  Brown v. Dep’t of the Navy, 229 F.3d 1356, 1358 (Fed. Cir.
  2000). To be sure, the efficiency of the service standard
  does not allow discipline or removal of APJs “without
  cause,” as in Edmond. See Arthrex, 941 F.3d at 1333. But
  neither the Supreme Court nor this court has required that
  a civil servant be removable at will to qualify as an inferior
  officer. To the contrary, the Supreme Court and this court
  have upheld for-cause removal limitations on inferior offic-
  ers. See, e.g., Morrison v. Olson, 487 U.S. 654, 692−93
  (1988) (holding that the “good cause” restriction on removal
  of the independent counsel, an inferior officer, is permissi-
  ble); Masias, 634 F.3d at 1294 (stating that the Court of
  Federal Claims can remove special masters for “incompe-
  tency, misconduct, or neglect of duty or for physical or men-
  tal disability or for other good cause shown”). See also Free
  Enterprise, 561 U.S. at 494 (explaining that the Court pre-
  viously “adopted verbatim the reasoning of the Court of
  Claims, which had held that when Congress ‘ “vests the ap-
  pointment of inferior officers in the heads of Depart-
  ments[,] it may limit and restrict the power of removal as
  it deems best for the public interest’ ” ” (alteration in origi-
  nal) (quoting United States v. Perkins, 116 U.S. 483, 485
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                       13



  (1886) (itself quoting Perkins v. United States, 20 Ct. Cl.
  438, 444 (1885)))).
      The efficiency of the service standard allows supervi-
  sors to discipline and terminate employees for arguably an
  even wider range of reasons than the standards above.
  Failing or refusing to follow the Director’s policy or legal
  guidance is one such reason. Together with the significant
  authority the Director wields in directing and supervising
  APJs’ work, the ability to remove an APJ on any grounds
  that promote the efficiency of the service supports finding
  that APJs are inferior officers.
                                II
      Assuming for the sake of argument that APJs are prin-
  cipal officers, the present appointment scheme requires a
  remedy. The Arthrex fix makes APJs removable at will by
  partially severing 35 U.S.C. § 3(c) as it applies Title 5’s re-
  moval protections to APJs. Arthrex, 941 F.3d at 1337–38.
  Though the key question in a severance analysis is congres-
  sional intent, Arthrex disposed of the question in a few sen-
  tences. I believe a fulsome severance analysis should have
  considered Congress’s intent in establishing inter partes re-
  view against the backdrop of over thirty years of employ-
  ment protections for APJs and their predecessors. And
  doing so would have revealed the importance of removal
  protections for APJs, particularly in light of Congress’s de-
  sire for fairness and transparency in the patent system.
      Our touchstone must remain the intent of Congress.
  See United States v. Booker, 543 U.S. 220, 246 (2005). As I
  outlined in my concurrence in Polaris Innovations Ltd. v.
  Kingston Tech. Co., 792 F. App’x 820, 828–31 (Fed. Cir.
  2020), the long-standing employment protections provided
  to APJs leads me to believe that Congress intended for
  them to have removal protections, regardless of changes
  made to the Board in the AIA. Given this history, it seems
  unlikely to me that Congress, faced with this Appoint-
  ments Clause problem, would have chosen to strip APJs of
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  14                    ARTHREX, INC. v. SMITH & NEPHEW, INC.




  their employment protections, rather than choose some
  other alternative.
       I recognize that the panel considered several potential
  fixes and chose the one it viewed both as constitutional and
  minimally disruptive. But removing long-standing em-
  ployment protections from hundreds of APJs is quite dis-
  ruptive. It paradoxically imposes the looming prospect of
  removal without cause on the arbiters of a process which
  Congress intended to help implement a “clearer, fairer,
  more transparent, and more objective” patent system. See,
  e.g., America Invents Act, 157 Cong. Rec. S5319 (daily ed.
  Sept. 6, 2011) (statement of Sen. Kyl).
      Given no clear evidence that Congress would have in-
  tended such a drastic change, I would defer to Congress to
  fix the problem. I agree with Judge Dyk that Congress
  “would prefer the opportunity to itself fix any Appoint-
  ments Clause problem before imposing the panel’s drastic
  remedy.” Dyk Op. at 6. Congress can best weigh the need
  for a fair and transparent patent system with the need for
  federal employment protections for those entrusted with
  carrying out that system. And Congress faces fewer con-
  straints than we do in fixing an unconstitutional statute.
  We should allow it to do so.
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    United States Court of Appeals
        for the Federal Circuit
                    ______________________

                       ARTHREX, INC.,
                          Appellant

                               v.

    SMITH & NEPHEW, INC., ARTHROCARE CORP.,
                    Appellees

                      UNITED STATES,
                          Intervenor
                    ______________________

                          2018-2140
                    ______________________

      Appeal from the United States Patent and Trademark
  Office, Patent Trial and Appeal Board in No. IPR2017-
  00275.
                   ______________________

  WALLACH, Circuit Judge, dissenting from denial of a
  petition for rehearing en banc.
       I write to express my disagreement with the merits of
  the decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941
  F.3d 1320 (Fed. Cir. 2019). Given the significant direction
  to and supervision of an administrative patent judge
  (“APJ”) of the U.S. Patent and Trademark Office’s
  (“USPTO”) Patent Trial and Appeal Board (“PTAB”) by the
  USPTO Director, an APJ constitutes an inferior officer
  properly appointed by the Secretary of Commerce. Specif-
  ically, the Director’s ability to select a panel’s members, to
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  2                       ARTHREX, INC. v. SMITH & NEPHEW, INC.




  designate a panel’s decision as precedential, and to de-des-
  ignate precedential opinions gives the Director significant
  authority over the APJs and preserves the political ac-
  countability of the USPTO. This framework strongly sup-
  ports the contention that APJs are inferior officers. I
  respectfully disagree with the Arthrex decision.
       The Supreme Court explained that it “ha[s] not set
  forth an exclusive criterion for distinguishing between
  principal and inferior officers for Appointment Clause pur-
  poses[,]” Edmond v. United States, 520 U.S. 651, 661
  (1997), but that it is “evident that ‘inferior officers’ are of-
  ficers whose work is directed and supervised at some level
  by others who were appointed by presidential nomination
  with the advice and consent of the Senate[,]” id. at 663 (em-
  phasis added). The inquiry is context specific; the Supreme
  Court has sought to determine whether a principal officer
  “exercises administrative oversight over” another, by ex-
  amining, for instance, whether a principal officer “is
  charged with the responsibility to prescribe uniform rules
  of procedure,” “formulate[s] policies and procedure[s] in re-
  gard to review of” the officer’s work, and may remove the
  officer without cause. Id. at 664 (internal quotation marks
  omitted). The oversight need not be “plenary,” Free Enter.
  Fund v. Pub. Co. Accounting Oversight Bd., 561 U.S. 477,
  504 (2010), and the officer’s actions may be “significant”
  and done “largely independently” of the principal officer,
  id. at 504. Edmond instructs that the Appointments
  Clause is “designed to preserve political accountability rel-
  ative to important Government assignments[.]” 520 U.S.
  at 663. The current framework for appointing, directing
  and supervising, and removing APJs preserves political ac-
  countability of the important work done at the USPTO.
      The Director has broad authority to direct and super-
  vise the APJs; this includes removal powers, see 35 U.S.C
  § 3(c), and supervision responsibilities, such as the prom-
  ulgation of regulations, id. § 2(b), including those govern-
  ing inter partes review, id. § 316(a)(4), and establishing
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  ARTHREX, INC. v. SMITH & NEPHEW, INC.                        3



  USPTO policy, id. §§ 3(a), 6. In particular, there are spe-
  cific ways the Director may direct and supervise the APJs
  and effectively determine the outcome of their work. First,
  the Director has the ability to select APJ panel members
  and designate which panel decisions are precedential. Spe-
  cifically, the Director controls which APJ will hear any
  given appeal, proceeding, or review. See id. § 6(c) (“Each
  appeal, derivation proceeding, post-grant review, and inter
  partes review shall be heard by at least [three] members of
  the [PTAB], who shall be designated by the Director.” (em-
  phasis added)). Accordingly, the Director holds the author-
  ity to select which APJ will be on a panel and is free to
  exclude an APJ from a panel for any reason. I see this as
  overwhelming support for the proposition that APJs are in-
  ferior officers.
       Second, the Director possesses an additional supervi-
  sory tool in exercising his or her statutory authority to form
  a standing Precedential Opinion Panel of at least three
  PTAB members who can rehear and reverse any PTAB de-
  cision. See Patent Trial and Appeal Board Standard Oper-
  ating Procedure 2 at 2–4 https://www.uspto.gov/sites/
  default/files/documents/SOP2%20R10%20FINAL.pdf. The
  Precedential Opinion Panel’s opinion is precedential and
  binds all future panels of the PTAB. Id. at 3. The Director
  selects the members of the Precedential Opinion Panel
  and, by default, serves as a member of the panel as well.
  Id. at 4. The ability to select is the ability to direct. More-
  over, the Director has the authority to de-designate prece-
  dential opinions as she or he sees fit. Id. at 12. These tools
  certainly preserve political accountability at the USPTO.
  Even though the Arthrex panel focused on the Director’s
  authority—or lack thereof—over APJs as an essential
  building block in its analysis, the panel failed to give ade-
  quate weight to these compelling features of the Director’s
  authority.
       Other indicia support the view that APJs are inferior
  officers, but I view panel selection and precedential
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  4                     ARTHREX, INC. v. SMITH & NEPHEW, INC.




  determinations as key, and noticeably absent from the dis-
  cussion in Arthrex. Accordingly, I respectfully disagree
  with the Arthrex decision.
