There’s been a fair amount of discussion regarding Judge Newman’s dissent in last week’s Mobility Workx case. In Mobility Workx, a divided panel of the Federal Circuit rejected a variety of constitutional challenges to the Patent Trial and Appeal Board (PTAB). Judges Dyk and Schall, in the majority, found no merit in the due process arguments relating to PTAB fees raised by Mobility Workx (a topic I hope to discuss in more detail at a later date). But they also rejected Mobility Workx’s structural arguments regarding the Appointments Clause and the Administrative Procedure Act with respect to the institution decision.
Judge Newman, in dissent, gave credence to those arguments. In particular, she argues that the Director’s delegation of the institution decision to APJs raises a similar Appointments Clause issue to that addressed in Arthrex. But she does so based on flawed assumptions—in particular, the assumption that, post-Arthrex, the Director cannot review institution decisions by themself.
That assumption is incorrect.
The Supreme Court laid out its remedy clearly in Arthrex, saying “we hold that 35 U.S.C. §6(c) is unenforceable as applied to the Director insofar as it prevents the Director from reviewing the decisions of the PTAB on his own.” (Emphasis added). In other words, the Director can ignore the 3 member panel requirement and act on his or her own when reviewing decisions of the PTAB.
And there is already a procedure for requesting review of an institution decision—the request for rehearing. 37 C.F.R. § 42.71 permits those dissatisfied with a decision on institution to petition for rehearing of that decision. And § 42.71 also states that a panel will conduct that rehearing. Since, as the Supreme Court made clear, the Director can act alone when reviewing a decision of the PTAB, there is no Appointments Clause problem—a principal officer of the United States retains the ability to review institution decisions.
While it’s likely that dissatisfied parties will try to make this argument to appeal institution decisions in the future, the Federal Circuit should have no problem rejecting them.