Case: 19-2349 Document: 35 Page: 1 Filed: 07/07/2020
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: BOLORO GLOBAL LIMITED,
Appellant
______________________
2019-2349, -2351, -2353
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. 14/222,613,
14/222,615, and 14/222,616.
______________________
ON MOTION
______________________
MICHAEL RAYMOND CASEY, Oblon, McClelland, Maier
and Neustadt, LLP, Alexandria, VA, for appellant. Also
represented by JAMES LOVE; CARLOS RAFAEL VILLAMAR,
The Villamar Firm PLLC, Falls Church, VA.
ROBERT J. MCMANUS, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Andrei Iancu. Also represented by THOMAS W.
KRAUSE, FARHEENA YASMEEN RASHEED, MOLLY R. SILFEN,
NICHOLAS THEODORE MATICH, IV, DANIEL KAZHDAN;
COURTNEY DIXON, SCOTT R. MCINTOSH, MELISSA N.
PATTERSON, JOSEPH H. HUNT, Appellate Staff, Civil Divi-
sion, United States Department of Justice, Washington,
DC.
______________________
Case: 19-2349 Document: 35 Page: 2 Filed: 07/07/2020
2 IN RE: BOLORO GLOBAL LIMITED
Before LOURIE, DYK, and REYNA, Circuit Judges.
DYK, Circuit Judge.
ORDER
Boloro Global Limited moves to vacate and remand the
underlying decisions of the Patent Trial and Appeal Board
in these appeals from the Board’s decisions in ex parte ap-
peals, affirming the examiner’s rejection of claims in Bo-
loro’s patent applications. The Director of the United
States Patent and Trademark Office opposes the motion.
Both parties have filed supplemental briefing in support of
their respective positions.
The Director acknowledges that, under the reasoning
of this court’s decisions in Arthrex, Inc. v. Smith & Nephew,
Inc.,
941 F.3d 1320 (Fed. Cir. 2019), and VirnetX Inc. v.
Cisco Sys., Inc., No. 2019-1671,
2020 WL 2462797 (Fed.
Cir. May 13, 2020), the administrative patent judges
(APJs) were not constitutionally appointed at the time the
Board’s final decision on appeal was issued. See Director’s
2d Suppl. Resp. at 3–4 (conceding that it follows under the
reasoning of the Supreme Court’s decision in Freytag v.
Comm’r,
501 U.S. 868, 882 (1991), as understood in Vir-
netX, that “APJs were principal officers for purposes of all
governmental functions of their office”); see also id. at 4
(conceding that, even if the Director could refuse to issue a
patent if the Board approves an application, that would not
render an APJ an inferior officer).
In both Arthrex and VirnetX, this court held that the
appropriate remedy for such a constitutional violation was
to vacate the Board’s decision and to remand for the pur-
pose of reassigning the matter to a different panel of APJs
for a new hearing and decision. Arthrex, 941 F.3d at 1338–
39; VirnetX Inc. v. Cisco Sys., Inc., No. 2019-1671, slip op.
at 2 (Fed. Cir. Jan. 24, 2020). The Director urges that the
same remedy should not be extended to ex parte proceed-
ings because, according to the Director, he possesses
Case: 19-2349 Document: 35 Page: 3 Filed: 07/07/2020
IN RE: BOLORO GLOBAL LIMITED 3
“complete control over the initial examination” and could
at any time prior to the Board proceedings have directed
the issuance of Boloro’s patents but did not, consistent with
the Board’s subsequent decisions. But the Director having
conceded that the APJ’s appointments were unconstitu-
tional, we see no principled reason to depart here from the
resulting remedy applied in Arthrex and VirnetX.
Accordingly,
IT IS ORDERED THAT:
(1) Boloro’s motion to vacate and remand is granted.
The Patent Trial and Appeal Board’s decision is va-
cated, and the case is remanded to the Board for pro-
ceedings consistent with this court’s decision in
Arthrex.
(2) Each side shall bear its own costs.
FOR THE COURT
July 7, 2020 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
