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.

______________________ 

Decided: May 27, 2022

______________________ 

ANTHONY P. CHO, Carlson, Gaskey & Olds, PC, Birmingham, MI, argued for appellant. Also represented by 

DAVID LOUIS ATALLAH, JESSICA E. FLEETHAM, DAVID J.

GASKEY. Also argued by ROBERT KRY, MoloLamken LLP, 

Washington, DC. Also represented by JEFFREY A. LAMKEN; 

JORDAN RICE, Chicago, IL; TREVOR ARNOLD, JOHN W.

SCHMIEDING, Arthrex, Inc., Naples, FL.

 CHARLES T. STEENBURG, Wolf, Greenfield & Sacks, 

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2 ARTHREX, INC. v. SMITH & NEPHEW, INC. 

P.C., Boston, MA, argued for appellees. Also represented 

by RICHARD GIUNTA, TURHAN SARWAR, NATHAN R. SPEED; 

MICHAEL N. RADER, New York, NY; MARK J. GORMAN, 

Smith & Nephew, Inc., Cordova, TN. 

 JOSHUA MARC SALZMAN, Appellate Staff, Civil Division, 

United States Department of Justice, Washington, DC, argued for intervenor. Also represented by BRIAN M.

BOYNTON, COURTNEY DIXON, SCOTT R. MCINTOSH; SARAH E.

CRAVEN, DANIEL KAZHDAN, THOMAS W. KRAUSE, FARHEENA 

YASMEEN RASHEED, MOLLY R. SILFEN, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA. 

 ______________________ 

Before MOORE, Chief Judge, REYNA and CHEN, Circuit 

Judges.

MOORE, Chief Judge. 

Arthrex, Inc. appeals a Patent Trial and Appeal Board 

final written decision finding claims 1, 4, 8, 10–12, 16, 18, 

and 25–28 of U.S. Patent No. 9,179,907 unpatentable as 

anticipated. It also challenges a decision by the Commissioner for Patents denying Arthrex’s request for the Director of the Patent and Trademark Office (PTO) to review the 

Board’s decision and grant rehearing. We affirm.

BACKGROUND

In 2015, Arthrex sued Smith & Nephew, Inc. and ArthroCare Corp. (collectively, S&N) in the United States 

District Court for the Eastern District of Texas, alleging 

infringement of the ’907 patent. Shortly before trial, S&N 

petitioned the Board for inter partes review (IPR), arguing 

certain claims of the ’907 patent were anticipated. The 

Board instituted IPR and ultimately found that prior art 

anticipated claims 1, 4, 8, 10–12, 16, 18, and 25–28. Smith 

& Nephew, Inc. v. Arthrex, Inc., IPR2017-00275, 2018 WL 

2084866, at *1 (P.T.A.B. May 2, 2018).

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Arthrex appealed. It primarily challenged the Board’s 

decision on the merits, but it also argued that the Board 

lacked constitutional authority to issue the agency’s final 

decision. Arthrex reasoned that the Board could not issue 

final decisions because its Administrative Patent Judges 

(APJs) were not nominated by the President and confirmed 

by the Senate, as the Appointments Clause requires for 

principal officers. We agreed with Arthrex’s constitutional 

challenge and held that the appropriate remedy was to (1) 

sever the statutory limitations on the removal of APJs and 

(2) remand for rehearing by a new panel of APJs. Arthrex, 

Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1338, 1340 

(Fed. Cir. 2019). We did not reach the merits of the Board’s 

decision.

The Supreme Court vacated and remanded. United 

States v. Arthrex, Inc., 141 S. Ct. 1970 (2021) (Arthrex). It 

agreed that because APJs are appointed by the Secretary 

of Commerce, rather than the President with the advice 

and consent of the Senate, they could not issue any “final 

decision binding the Executive Branch.” Id. at 1985. The 

Court held, however, that the appropriate remedy was to 

(1) exempt the Director from 35 U.S.C. § 6(c), which precludes anyone but the Board from granting rehearing of a 

Board decision, and (2) “remand to the Acting Director for 

him to decide whether to rehear” the case. Id. at 1987.

On remand, Arthrex requested “rehearing by the Director.” Smith & Nephew, Inc. v. Arthrex, Inc., IPR2017-

00275, Paper 39 at 1 (P.T.A.B. Aug. 27, 2021). The office of 

the Director was, however, vacant. As was the office of 

Deputy Director, which is “vested with the authority to act 

in the capacity of the Director in the event of [his] absence 

or incapacity.” 35 U.S.C. § 3(b)(1). The responsibility of 

addressing Arthrex’s request thus fell to the Commissioner 

under a standing directive known as Agency Organization 

Order 45-1. That order states, “If both the [Director] and 

the Deputy [Director] positions are vacant, the Commissioner for Patents . . . will perform the non-exclusive 

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4 ARTHREX, INC. v. SMITH & NEPHEW, INC. 

functions and duties of the [Director].”1 U.S. Patent & 

Trademark Off., U.S. Dep’t of Commerce, Agency Organization Order 45-1, at II.D (Nov. 7, 2016) (AOO 45-1). The 

Commissioner then denied rehearing and ordered that the

Board’s decision “is the final decision of the agency.” Smith 

& Nephew, Inc. v. Arthrex, Inc., IPR2017-00275, Paper 40 

at 2 (P.T.A.B. Oct. 15, 2021).

Arthrex appeals. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(4)(A).

DISCUSSION

I 

We first address Arthrex’s challenge to the Commissioner’s order denying rehearing. Arthrex argues it “never 

got the remedy the Supreme Court ordered” because “[n]o 

presidentially appointed, Senate-confirmed principal officer decided Arthrex’s petition” for rehearing. Appellant’s 

Supp. Br. 1. Specifically, it argues the Commissioner’s exercise of the Director’s authority to decide rehearing petitions violated (1) the Appointments Clause, U.S. Const., 

art. II, § 2, cl. 2; (2) the Federal Vacancies Reform Act 

(FVRA), 5 U.S.C. § 3345 et seq.; and (3) the Constitution’s 

separation of powers, U.S. Const., art. II, § 3. We do not 

agree. 

A 

The Appointments Clause requires all “Officers of the 

United States” to be appointed by the President with the 

advice and consent of the Senate. U.S. Const., art. II, § 2, 

1 The order refers to the Director and Deputy Director by their alternate titles of “Under Secretary of Commerce for Intellectual Property” and “Deputy Under 

Secretary of Commerce for Intellectual Property,” respectively. For clarity, we use the titles of Director and Deputy 

Director.

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ARTHREX, INC. v. SMITH & NEPHEW, INC. 5

cl. 2. For “inferior Officers,” however, the Appointments 

Clause authorizes Congress to dispense with joint appointment and vest appointment power “in the President alone, 

in the Courts of Law, or in the Heads of Departments.” Id. 

Congress did just that with the Commissioner for Patents, 

empowering the Secretary of Commerce to unilaterally appoint him. 35 U.S.C. § 3(b)(2)(A). 

Because the Commissioner for Patents is not a Presidentially appointed, Senate-confirmed (PAS) officer, he ordinarily may not “issue a final decision binding the 

Executive Branch.” Arthrex, 141 S. Ct. at 1985. Arthrex 

argues the Commissioner violated this principle when he 

denied Arthrex’s rehearing request and stamped the 

Board’s decision as “the final decision of the agency.” 

Smith & Nephew, IPR2017-00275, Paper 40 at 2. 

1 

Although an inferior officer generally cannot issue a final agency decision, he may perform the functions and duties of an absent PAS officer on a temporary, acting basis. 

United States v. Eaton is instructive. 169 U.S. 331 (1898). 

After falling ill, the consul general to Siam, Sempronius 

Boyd, a PAS officer, unilaterally appointed Lewis Eaton, 

then a missionary, to the position of vice consul general. 

Id. at 331–32. Mr. Boyd then took a leave of absence, returning to his home in Missouri, where he later died. Id.

at 332–33. In the period between Mr. Boyd’s departure and 

his replacement’s arrival, Mr. Eaton was required by law 

to “temporarily . . . fill the place[ ] of consul[ ] general,” 

which he did. Id. at 336 (quoting Revised Statutes § 1674). 

The government, however, refused to pay Mr. Eaton for his 

services. It argued that Congress violated the Appointments Clause by authorizing the President to promulgate 

the consular regulations Mr. Boyd invoked to appoint Mr. 

Eaton. See id. at 343. 

The Supreme Court rejected that argument. It held 

that an inferior officer “charged with the performance of 

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6 ARTHREX, INC. v. SMITH & NEPHEW, INC. 

the duty of [a] superior for a limited time, and under special 

and temporary conditions,” need not be Presidentially appointed and Senate confirmed. Id. Otherwise, the Court 

reasoned, “every delegation of power to an inferior to perform under any circumstances or exigency the duties of a 

superior officer” would be void, “and the discharge of administrative duties would be seriously hindered.” Id. 

Eaton thus teaches that the Appointments Clause allows 

an inferior officer to temporarily wield the powers of an absent PAS officer.

The Supreme Court reaffirmed Eaton’s holding in this 

very case. It cited Eaton with approval as “holding that an 

inferior officer can perform functions of [a] principal office 

on [an] acting basis.” Arthrex, 141 S. Ct. at 1985 (citing 

Eaton, 169 U.S. at 343). And based on that understanding 

of Eaton, it distinguished the Board’s APJs from early patent arbitrators and examiners, explaining that “they exercised their limited power under ‘special and temporary 

conditions.’” Id. (quoting Eaton, 169 U.S. at 343). Consistent with Eaton, an inferior officer can temporarily perform functions of a principal officer on an acting basis. 

Eaton is, moreover, consistent with the FVRA. Under 

the FVRA, if a PAS officer “dies, resigns, or is otherwise 

unable to perform the functions and duties of the office,” an 

inferior officer may fill in for him “temporarily in an acting 

capacity.” 5 U.S.C. § 3345(a)(1), (3). The Supreme Court 

alluded to this interim appointment mechanism when it ordered “a remand to the Acting Director for him to decide 

whether to rehear [S&N’s] petition.” Arthrex, 141 S. Ct. at 

1987 (emphasis added). This further supports that an inferior officer may temporarily perform an absent PAS officer’s duties without violating the Appointments Clause.

2 

This case is indistinguishable from Eaton. Like Mr. 

Eaton, the Commissioner was merely performing the functions and duties of the Director in the limited period 

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ARTHREX, INC. v. SMITH & NEPHEW, INC. 7

between the former Director’s departure and the current 

Director’s arrival. See Eaton, 169 U.S. at 332–33. And he 

did so under a previous Director’s standing directive, see 

AOO 45-1, at II.D (“If both the [Director] and the Deputy 

[Director] positions are vacant, the Commissioner for Patents . . . will perform the non-exclusive functions and duties of the [Director].”), which is akin to how Mr. Boyd 

“called to” Mr. Eaton “and asked him to take charge of the 

consulate and its archives.” Eaton, 169 U.S. at 331–32. 

Eaton therefore counsels that the Commissioner’s actions 

did not violate the Appointments Clause.

Arthrex argues that “only a [PAS] officer may issue final agency decisions that are not subject to review by any 

superior officer.” Appellant’s Supp. Br. 12. Adopting this 

argument, however, would require us to ignore the Supreme Court’s prior decision in this case directing “a remand to the Acting Director for him to decide whether to 

rehear [S&N’s] petition.” Arthrex, 141 S. Ct. at 1987 (emphasis added); see also, e.g., 5 U.S.C. § 3345(a)(3) (providing that an Acting Director may be an inferior officer 

within the PTO). It would also require us to hold the FVRA 

facially unconstitutional insofar as it permits inferior officers to perform a PAS officer’s duties in an acting capacity. 

See 5 U.S.C. § 3345(a)(1), (3). Lastly, this argument directly conflicts with Eaton’s clear holding that an inferior 

officer may temporarily exercise a PAS officer’s powers in 

his absence. See 169 U.S. at 343. We therefore reject the 

argument that only a PAS officer may issue final agency 

decisions in all circumstances.

We also reject Arthrex’s argument that Eaton is inapposite because it addressed only “situations where Congress creates a mechanism for temporary appointments 

that permits the President to select the appointee.” Appellant’s Supp. Reply Br. 2. Arthrex misapprehends the facts 

of Eaton and of this case. The President never selected Mr. 

Eaton as vice consul general; Mr. Boyd did. Eaton, 169 

U.S. at 331–32. Nor did Congress authorize the President 

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8 ARTHREX, INC. v. SMITH & NEPHEW, INC. 

to appoint Mr. Eaton; rather, it authorized him to promulgate regulations providing for such appointments. See id.

at 336 (“The president is authorized to . . . provide for the 

appointment of vice consuls . . . under such regulations as 

he shall deem proper . . . .” (quoting Revised Statutes 

§ 1695)). Regardless, here, Congress did authorize the 

President to select the Commissioner to temporarily perform the Director’s duties. That is because the Patent Act 

broadly empowers the President, acting through the Director, to delegate the Director’s duties as he sees fit. See 35 

U.S.C. § 3(b)(3)(B) (“The Director shall . . . delegate to [officers and employees] such of the powers vested in the Office as the Director may determine.”); Patent and 

Trademark Office Efficiency Act, Pub. L. No. 106-113, 

§ 4745, 113 Stat. 1501, 1501A-587 (1999) (codified at 35 

U.S.C. § 1 note) (The Director “may delegate any of [his] 

functions . . . to such officers and employees . . . as [he] may 

designate.”). This basis for distinguishing Eaton therefore 

lacks merit. 

Nor are we persuaded by Arthrex’s argument that this 

case is different from Eaton because the Commissioner was 

supposedly not performing the Director’s duties “for a limited time.” Appellant’s Supp. Br. 16. The Commissioner’s 

time in that role was, from the outset, limited to the period 

in which the Director and Deputy Director offices remained 

vacant. See AOO 45-1, at II.D. Arthrex concedes this. Appellant’s Supp. Br. 16 (“Under the agency’s delegation, 

Commissioner Hirshfeld serves indefinitely until a successor is appointed . . . .” (emphasis added)). It is immaterial 

that AOO 45-1 did not specify exactly how long the Commissioner’s tenure would be, for neither did the temporary 

appointment in Eaton. See 169 U.S. at 331–32 (noting appointment was for period “during [Sempronius Boyd’s] absence, and until the then expected arrival from the United 

States of Robert M. Boyd, whom Sempronius Boyd desired 

should act as consul general” but who had not yet qualified). Moreover, the Commissioner denied Arthrex’s 

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rehearing request on his 268th day performing the Director’s duties, which is less than the 309 days the Supreme 

Court deemed acceptable in Eaton. See id. at 333–34. Finally, the Commissioner’s stint as the Director’s stand-in 

was always limited in that the President could have replaced him with an Acting Director at any time. See 5 

U.S.C. § 3345(a)(2), (3). In light of this combination of 

facts, the Commissioner was performing the Director’s duties “for a limited time, and under special and temporary 

conditions.” Eaton, 169 U.S. at 343.

In sum, Arthrex’s Appointments Clause challenge runs 

headlong into Eaton and the Supreme Court’s prior decision in this case. We therefore conclude that the Commissioner’s exercise of the Director’s authority while that office 

was vacant did not violate the Appointments Clause.

B 

Arthrex next argues the FVRA precluded the Commissioner from ruling on Arthrex’s rehearing request and deprives the Commissioner’s decision of any “force or effect.” 

Because the FVRA applies only to non-delegable duties, 

and because deciding rehearing requests is a delegable 

duty, we hold that the FVRA does not apply here.

1 

When a PAS officer dies, resigns, or is otherwise unable, the FVRA dictates who may temporarily perform his 

“functions and duties” in an acting capacity. 5 U.S.C. 

§ 3345(a); see also 5 U.S.C. § 3348(d)(1)–(2) (“An action 

taken by any person who is not [appointed pursuant to the 

FVRA], in the performance of any function or duty of a vacant office to which [the FVRA applies,] shall have no force 

or effect” and “may not be ratified.” (emphasis added)). 

Critically, the statute defines that term narrowly: 

[T]he term “function or duty” means any function 

or duty of the applicable office that— 

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10 ARTHREX, INC. v. SMITH & NEPHEW, INC. 

(A)

(i) is established by statute; and

(ii) is required by statute to be performed by the applicable officer 

(and only that officer); or

(B)

(i)

(I) is established by regulation;

and

(II) is required by such regulation to be performed by the applicable officer (and only that 

officer); and

(ii) includes a function or duty to 

which clause (i)(I) and (II) applies, 

and the applicable regulation is in 

effect at any time during the 180-

day period preceding the date on 

which the vacancy occurs.

5 U.S.C. § 3348(a)(2) (emphases added). 

This statutory language is unambiguous: the FVRA 

applies only to functions and duties that a PAS officer alone 

is permitted by statute or regulation to perform. It does 

not apply to delegable functions and duties. Other circuits 

agree. Schaghticoke Tribal Nation v. Kempthorne, 587 

F.3d 132, 135 (2d Cir. 2009) (holding the FVRA did not prohibit an inferior officer from performing a function of a PAS 

officer who had resigned because the agency’s regulations 

permitted the PAS officer to delegate that function); Stand 

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Up for Cal.! v. U.S. Dep’t of Interior, 994 F.3d 616, 622 (D.C. 

Cir. 2021) (observing FVRA applies to “exclusive duties”).2 

The legislative history, as is often the case, demonstrates the competing considerations that went into the 

statute’s adoption. On one hand, the FVRA’s sponsors expressed a desire for the law to apply in nearly all circumstances. One sponsor “hope[d] that the Senate would make 

the Vacancies Act ‘so tight, so air-tight, that no department 

can find a crack or crevice anywhere through which to 

creep.’” S. Rep. No. 105-250, at 9 (1998) (quoting statement 

of Senator Robert Byrd). Likewise, another sponsor said 

the law was meant to “cover all situations when the officer 

cannot perform his duties.” 144 Cong. Rec. 27,496 (1998) 

(statement of Senator Fred Thompson). 

The Senate Committee on Governmental Affairs stated 

that “[t]he purpose of [the FVRA] is to create a clear and 

exclusive process to govern the performance of duties” in 

an acting capacity. S. Rep. No. 105-250, at 1. It also said, 

“The bill applies to all vacancies in Senate-confirmed positions in executive agencies with [only] a few express exceptions.” Id. at 2; see also id. at 15–17 (describing exceptions). 

And it repeatedly rejected a narrow interpretation that

agencies vested with general delegation authority were exempt from the FVRA. See, e.g., id. at 3–4. 

On the other hand, commenting on the specific statutory provision at issue here, 5 U.S.C. § 3348(a)(2), the Committee stated:

The bill defines “function or duty” of the office as 

those functions or duties that (1) are established by 

2 We acknowledge that these decisions are not binding on us and that Stand Up’s observation may be dictum. 

See 994 F.3d at 622 n.2 (“Appellants have not raised their 

FVRA claims on appeal . . . .”). Nevertheless, these cases 

support our interpretation.

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12 ARTHREX, INC. v. SMITH & NEPHEW, INC. 

statute and are required to be performed only by the 

applicable officer; (2) are established by regulation 

and are required to be performed only by the applicable officer; [or] (3) were established by regulation 

and were required to be performed only by the applicable officer at any time in the 180 days preceding the vacancy . . . . 

S. Rep. No. 105-250, at 17–18 (emphases added). The Committee elaborated, “The functions or duties of the office that 

can be performed only by the head of the executive agency 

are therefore defined as the non-delegable functions or duties of the officer . . . .” Id. at 18 (emphasis added). And it 

clarified that “[d]elegable functions of the office could still 

be performed by other officers or employees.” Id. It appears this was a compromise to address concerns that a 

broader definition could “cause an unintended shutdown of 

the Federal agency within which the vacancy exists due to 

administrative paralysis.” Id. at 30–31. These competing 

narratives in the legislative history cannot alter the plain 

language of the statute that was adopted, which provides 

that the FVRA applies only to non-delegable functions and 

duties. 5 U.S.C. § 3348(a)(2). 

Arthrex is correct that this reading of § 3348(a)(2) renders the FVRA’s scope “vanishingly small.” Oral Arg. at 

4:58–5:13.3 The government readily admits that only “a 

very small subset of duties” are non-delegable. Id. at 

37:21–37. The Department of Justice agrees: “Most, and 

in many cases all, the responsibilities performed by a PAS 

officer will not be exclusive.” Guidance on Application of 

Fed. Vacancies Reform Act of 1998, 23 Op. O.L.C. 60, 72 

(1999). Pertinent here, the government contends that the 

FVRA imposes no constraints whatsoever on the PTO because all the Director’s duties are delegable. Oral Arg. at 

3 Available at https://oralarguments.cafc.uscourts.

gov/default.aspx?fl=18-2140_03302022.mp3.

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36:44–53 (Q: “Are there any functions or duties that a Director at the PTO has that in your view are not delegable?” 

A: “No, I don’t believe there are any.”); id. at 38:38–57 

(“When you ask the question whether . . . the FVRA imposes constraints as opposed to an affirmative grant of authority to President Biden as it pertains to the Patent and 

Trademark Office, I’d say no . . . .”). We find it disquieting 

that the government views the FVRA as impacting such a 

“very small subset of duties” and not impacting the PTO at 

all. 

That does not, however, justify departing from the 

plain language of the statute. N.C. Dep’t of Transp. v. Crest 

St. Cmty. Council, Inc., 479 U.S. 6, 14 (1986) (“[I]f one must 

ignore the plain language of a statute to avoid a possibly 

anomalous result, the short answer is that Congress did 

not write the statute that way.” (cleaned up)). Moreover, 

Congress chose the limiting language of § 3348(a)(2) knowing full well that “many [PAS officers] lack any meaningful 

statutory duties.” S. Rep. No. 105-250, at 18. We can neither rewrite the statute nor supplant Congress’ judgment.

Furthermore, adopting Arthrex’s position would have 

significant consequences. Arthrex does not dispute S&N’s 

assertion that, in the last decade alone, the PTO has issued 

more than 668,000 patents signed by an inferior officer filling in for the Director. Construing the FVRA to apply to 

delegable duties would call the validity of those patents 

into question. It would also cast doubt on all the IPR decisions the PTO issued during the Commissioner’s tenure 

performing the Director’s delegable functions. See 5 U.S.C. 

§ 3348(d)(1) (“An action taken by any person who is not acting under section 3345, 3346, or 3347 . . . shall have no 

force or effect.”). 

The impacts of such a decision would, moreover, reverberate far beyond the PTO. The universe of delegable PASofficer duties is expansive, potentially encompassing every 

Executive agency. Oral Arg. at 41:03–13 (noting there are 

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14 ARTHREX, INC. v. SMITH & NEPHEW, INC. 

more than 1,000 PAS offices across the government); id. at 

4:58–5:13 (“In the real world, every agency has general delegation authority, and it applies to the vast and overwhelming majority of the agency’s functions.”); Guidance 

on Application of Fed. Vacancies Reform Act of 1998, 23 

Op. O.L.C. at 72 (“Most, and in many cases all, the responsibilities performed by a PAS officer will not be exclusive.”). 

Indeed, when Congress “delegates authority to a federal officer or agency, subdelegation to a subordinate federal officer or agency is presumptively permissible absent 

affirmative evidence of a contrary congressional intent.” 

Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 

1031 (Fed. Cir. 2016) (quoting U.S. Telecom Ass’n v. FCC, 

359 F.3d 554, 565 (D.C. Cir. 2004)); see also Kobach v. U.S. 

Election Assistance Comm’n, 772 F.3d 1183, 1190–91 (10th 

Cir. 2014) (“Our sibling circuits that have spoken on this 

issue are unanimous in permitting subdelegations to subordinates, even where the enabling statute is silent, so long 

as the enabling statute and its legislative history do not 

indicate a prohibition on subdelegation.” (collecting cases)). 

As between the exceedingly broad scope that Arthrex proposes and the exceedingly narrow scope that the plain text 

of § 3348(a)(2) demands, we must choose the latter.

Arthrex argues that our interpretation “read[s] 

§ 3347(b) out of the statute entirely.” Oral Arg. at 11:02–

14. We do not agree. Section 3347(b) merely provides that 

a statute granting the head of an agency “general authority 

. . . to delegate [his] duties” does not exempt the agency 

from the FVRA. Construing the FVRA to apply only to nondelegable duties does not render this provision superfluous. If, for example, Congress grants an agency head general delegation authority but specifies that certain duties 

are non-delegable, § 3347(b) makes clear that the FVRA 

still applies to those non-delegable duties. And if no statute or regulation precludes delegation of a specific duty, the 

FVRA would not apply for that reason, not because of a 

statutory grant of general delegation authority. We 

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therefore reject Arthrex’s argument that our reading of 

§ 3348(a)(2) conflicts with § 3347(b).

The plain language of the statute limits the scope of the 

FVRA to non-delegable functions and duties. The FVRA 

does not, therefore, restrict who may perform a PAS officer’s delegable duties when he is absent. 

2 

Applying the statute to this case, we must determine 

whether reviewing rehearing requests is a delegable duty 

of the Director or a duty that the Director, and only the 

Director, must perform. In Arthrex, the Supreme Court 

held that the Director (or Acting Director) must have the 

ability to rehear decisions of the Board. 141 S. Ct. at 1987 

(“If the Director were to have the ‘authority to take control’ 

of a PTAB proceeding, APJs would properly function as inferior officers.” (quoting Go-Bart Importing Co. v. United 

States, 282 U.S. 344, 354 (1931))). It did not hold that the 

Director must rehear every Board decision, nor did it require the Director to issue a decision in response to every 

rehearing request. “To be clear, the Director need not review every decision of the PTAB. What matters is that the 

Director have the discretion to review decisions rendered 

by APJs.” Id. at 1988. We conclude that under the Patent 

Act this discretion includes the discretion to delegate review of rehearing requests. 

The Patent Act bestows upon the Director a general 

power to delegate “such of the powers vested in the [PTO] 

as the Director may determine.” 35 U.S.C. § 3(b)(3)(B). 

There is nothing in the Patent Act indicating that the Director may not delegate this rehearing request review function. Arthrex identifies no statute, regulation, or other law 

that limits the Director’s delegable duties or suggests that 

rehearing requests are not delegable. 

Arthrex cites 35 U.S.C. § 6(c), which provides that 

“[o]nly the Patent Trial and Appeal Board may grant 

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16 ARTHREX, INC. v. SMITH & NEPHEW, INC. 

rehearings.” On its face, the statute does not even permit 

the Director to grant rehearing, much less assign that authority exclusively to him. The Supreme Court, however, 

held that § 6(c) “cannot constitutionally be enforced to the 

extent that its requirements prevent the Director from reviewing final decisions rendered by APJs.” Arthrex, 141 S. 

Ct. at 1987. “The Director accordingly may review final

[Board] decisions” notwithstanding § 6(c). Id.4 The Supreme Court held that the Director may review final Board 

decisions. That is all the Appointments Clause requires, 

that the Director have the option to review, if she so 

chooses, a final Board decision. That the Appointments 

Clause requires that a PAS have review authority does not 

mean that a principal officer, once bestowed with such authority, cannot delegate it to other agency officers. 

Given the language of the statute, the Director’s general grant of delegation authority, and the absence of any 

language suggesting that rehearing requests must be reviewed by the Director and only the Director, we conclude 

that, for purposes of the FVRA, the duty to decide rehearing requests is delegable. Arthrex argues that the Director’s general delegation authority cannot alone satisfy the 

FVRA. Appellant’s Supp. Reply Br. 7–8. According to Arthrex, Congress enacted § 3347(b) of the FVRA specifically 

to foreclose this argument. Id. (citing, e.g., S. Rep. No. 105-

250, at 17). There are two problems with Arthrex’s

4 Arthrex argues that after the Supreme Court’s decision, § 6(c) now “permits the Director—and only the Director—to exercise a unilateral power to review Board 

decisions.” Appellant’s Supp. Br. 22. But § 6(c) contains 

no such limitation. The statute permits the Board to grant 

rehearing, and the Supreme Court’s Arthrex decision concluded that the Director may also grant rehearing. Nothing in § 6(c) permits the Director (and only the Director) to 

rule on rehearing requests. 

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argument. First, § 3347(b) does not actually apply to the 

Director at all. It provides that the general delegation authority of “the head of an Executive agency” is not a basis 

to evade the FVRA. (Emphasis added). Because the PTO 

is a subagency of the Department of Commerce, see 35 

U.S.C. § 1(a), it is not an “Executive agency” under the 

FVRA. See 5 U.S.C. § 105 (“For the purpose of this title, 

‘Executive agency’ means an Executive department, a Government corporation, and an independent establishment.”); 5 U.S.C. § 101 (listing the Department of 

Commerce as an Executive department). Second, even 

when there exists general delegation authority, Congress 

can still exempt specific duties or functions and thereby require those to be performed by the PAS officer. We are not, 

therefore, relying upon the Director’s general delegation 

authority alone in holding that the FVRA does not apply 

here. Rather, our decision rests on the absence of any statute or regulation or law permitting only the Director to decide rehearing requests. 

We hold that the Commissioner’s order denying Arthrex’s rehearing request on the Director’s behalf did not 

violate the FVRA. The FVRA does not restrict who may 

perform the delegable functions and duties of an absent 

PAS officer. And the Director’s authority to decide requests for rehearing Board decisions is delegable.5 

C 

Arthrex next contends that by exercising the Director’s 

authority, the Commissioner violated the Constitution’s 

separation of powers. We do not agree. 

5 The government argues that there are no non-delegable duties of the Director. This decision is limited to a 

determination that the Director’s authority to review rehearing requests is a delegable duty. As that is the only 

power at issue in this case, we go no broader. 

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18 ARTHREX, INC. v. SMITH & NEPHEW, INC. 

The Constitution requires the President to “take Care 

that the Laws be faithfully executed.” U.S. Const., art. II, 

§ 3. “That power, in turn, generally includes the ability to 

remove executive officials.” Seila Law LLC v. Consumer 

Fin. Prot. Bureau, 140 S. Ct. 2183, 2197 (2020). Without 

removal power, it would be “impossible for the President 

. . . to take care that the laws be faithfully executed.” Id.

at 2198 (alteration in original) (quoting Myers v. United 

States, 272 U.S. 52, 164 (1926)). Except in limited circumstances not pertinent here, Congress cannot restrict the 

President’s removal power. See id. at 2191–92. So, for example, a statute that prohibits the President from removing a PAS officer except for “inefficiency, neglect of duty, or 

malfeasance in office” is an unconstitutional encroachment 

upon Executive power. Id. at 2192–93 (quoting 12 U.S.C. 

§ 5491(c)(3)).

Arthrex argues that because the Commissioner is removable only for “misconduct or nonsatisfactory performance,” 35 U.S.C. § 3(b)(2)(C), the Constitution’s 

separation of powers precludes him from performing the 

Director’s duties. This argument has no merit. Although 

the President must have cause to remove the Commissioner from that position, he needs no cause to remove the 

Commissioner from his role as the Director’s temporary 

stand-in. Arthrex concedes that the FVRA provides a 

mechanism for the President to name an Acting Director 

“with the stroke of a pen” and that “there is simply no burden associated with doing that.” Oral Arg. at 22:31–23:02; 

see 5 U.S.C. § 3345(a)(2), (3) (authorizing the President to 

simply “direct” another PAS officer or a senior employee of 

the agency “to perform the functions and duties of the vacant office temporarily in an acting capacity”). Because the 

President has unfettered power under the FVRA to strip 

the Commissioner of his temporary PAS-officer authority, 

the Commissioner’s exercise of that authority does not violate the Constitution’s separation of powers.

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II

Turning to the merits, Arthrex challenges the Board’s 

finding that prior art anticipated claims 1, 4, 8, 10–12, 16, 

18, and 25–28 of the ’907 patent. It also contends the Board 

lacked statutory authority to determine the validity of Arthrex’s priority claim during IPR. Because substantial evidence supports its anticipation finding, and because it has 

the authority to resolve priority issues during IPR, we affirm the Board’s decision.

A 

The ’907 patent discloses a surgical device for attaching 

soft tissue to bone without requiring the surgeon to tie suture knots to secure the suture or tissue. See ’907 patent 

at 1:43–48. The device comprises an “eyelet” through 

which the surgeon threads the suture. See id. at 1:51–53. 

The eyelet may be a flexible “suture loop 70,” as shown below: 

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20 ARTHREX, INC. v. SMITH & NEPHEW, INC. 

Id. at 5:51–59; Fig. 15. Alternatively, the eyelet may be a 

rigid “implant 150 . . . formed of a transparent polymer material”:

Id. at 7:4–10; Fig. 21. 

Claim 1 is representative. Appellant’s Br. 13. Pertinent to this appeal, it recites “an eyelet” generically, 

thereby encompassing both of the above embodiments:

1. A suture securing assembly, comprising: 

an inserter including a distal end, a proximal end, and a longitudinal axis between 

the distal end and the proximal end; 

a first member including an eyelet oriented 

to thread suture across the longitudinal 

axis, the first member being situated near 

the distal end of the inserter, the first member being configured to be placed in bone; 

and 

a second member situated near the distal 

end of the inserter, the second member being moveable by a portion of the inserter 

relative to the first member in a distal direction toward the eyelet into a suture securing position where the second member 

locks suture in place.

’907 patent at claim 1 (emphasis added).

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The Board found claim 1 anticipated by U.S. Patent 

Publication No. 2002/0013608 (ElAttrache). Smith & 

Nephew, Inc. v. Arthrex, Inc., IPR2017-00275, 2018 WL 

2084866, at *4–5 (P.T.A.B. May 2, 2018) (Board Decision).6 

ElAttrache is the 2002 publication of an earlier Arthrex patent application, Application No. 09/886,280. ElAttrache 

at [21]. It discloses the same flexible eyelet embodiment as 

the ’907 patent:

Id. at Fig. 15.

Before the Board, Arthrex agreed that ElAttrache 

would anticipate the challenged claims if it were prior art 

but argued that ElAttrache is not, in fact, prior art. Board 

Decision at *1. It reasoned that the ’907 patent claims 

6 The Board also found claim 1 anticipated by International Patent Publication No. WO 02/21999 A2 (Martinek). Id. at *5–6. Because we affirm the Board’s decision 

based on ElAttrache, we need not address Martinek.

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22 ARTHREX, INC. v. SMITH & NEPHEW, INC. 

priority to the ’280 application through a series of intervening continuation, continuation-in-part, and divisional applications. Arthrex contended the effective filing date of 

the challenged claims is the filing date of the ’280 application, which was before ElAttrache’s publication date. 

The Board rejected that argument. It found that one of 

the intervening applications, Application No. 10/405,707, 

lacks any written description of the flexible eyelet embodiment encompassed by the generic eyelet claimed in the ’907 

patent and, thus, cuts off the ’907 patent’s priority claim. 

Board Decision at *7. The Board reasoned that although 

the ’707 application incorporates the ’280 application by 

reference, id. at *11–12, it criticizes the ’280 application’s 

“flexible loop configuration” and purports to “overcome [its] 

disadvantages” using a “fixed aperture,” see id. at *8–9 

(quoting ’707 application, ¶¶ 5–7). Because of that criticism, the Board found that a skilled artisan would have understood the ’707 application to do away with flexible 

eyelets and require rigid eyelets. Id. at *9–11. Accordingly, the Board concluded that the effective filing date of 

the challenged claims is the filing date of the application 

that issued as the ’907 patent, well after ElAttrache’s publication date. Id. at *4.

B 

“[T]o gain the benefit of the filing date of an earlier application under 35 U.S.C. § 120, each application in the 

chain leading back to the earlier application must comply 

with the written description requirement of 35 U.S.C. 

§ 112.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 

(Fed. Cir. 1997) (citing In re Hogan, 559 F.2d 595, 609 

(CCPA 1977)). That means each application in the chain 

must “reasonably convey[ ] to those skilled in the art that 

the inventor had possession of the [later-claimed] subject 

matter as of the filing date.” Ariad Pharms., Inc. v. Eli 

Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)

(first citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 

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ARTHREX, INC. v. SMITH & NEPHEW, INC. 23

1563 (Fed. Cir. 1991); and then citing In re Kaslow, 707 

F.2d 1366, 1375 (Fed. Cir. 1983)). “Sufficiency of written 

description is a question of fact, reviewed for substantial 

evidence.” Gen. Hosp. Corp. v. Sienna Biopharms., Inc., 

888 F.3d 1368, 1371 (Fed. Cir. 2018) (citing Inphi Corp. v. 

Netlist, Inc., 805 F.3d 1350, 1354 (Fed. Cir. 2015)). 

Substantial evidence supports the Board’s finding that 

the ’707 application lacks written description of flexible 

eyelets and, thus, the generic eyelet claim limitation. The 

’707 application’s only mention of flexible eyelets is in the 

background section. There, it credits the ’280 application’s 

overall technique as an improvement but strongly criticizes 

its use of a flexible eyelet because it “impedes sliding of the 

suture”:

Although the [’280 application’s] technique provides an improved method of graft fixation to bone, 

the flexible loop configuration at the end of the 

driver disadvantageously impedes sliding of the suture or graft which is fed through the suture loop. 

In addition, because the cannulated driver of [the 

’280 application] is provided with a flexible loop at 

its distal end, placement of the suture or graft at the 

bottom of the blind hole or socket and the cortical 

bone must be approximated, thus sometimes necessitating additional removal, tapping and insertion 

steps to ensure full insertion of the plug or screw 

into the blind hole or socket. This, in turn, may 

abrade the adjacent tissue and/or damage the bone 

or cartilage. 

’707 application, ¶ 5 (emphases added). Aside from this critique, the ’707 application is completely silent about flexible eyelets. 

And to “overcome the disadvantages” of flexible eyelets, 

the ’707 application exclusively discloses an eyelet with a 

“fixed aperture” rather than a flexible loop. Id. ¶ 7. Unlike 

flexible eyelets, this allows the suture to “freely slide 

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24 ARTHREX, INC. v. SMITH & NEPHEW, INC. 

through the aperture,” which in turn “allow[s] precise advancement and guiding of the plug or screw into the blind 

hole or socket.” Id. ¶ 29. The application stresses the importance of this feature, noting that the invention covers 

“an aperture of any configuration of any geometrical shape, 

as long as it . . . allows the captured suture to freely slide 

within the aperture.” Id. ¶ 33 (emphasis added). 

Based on these disclosures, S&N’s expert testified that 

a skilled artisan would have understood the ’707 application to require a rigid eyelet. He explained that because 

the ’707 application mentions a flexible eyelet “only for purposes of criticizing it and emphasizing the need for an alternative approach that allows suture to slide freely,” a 

skilled artisan would have understood that free sliding is 

“essential to the purported invention” and that flexible eyelets are “contrary to the invention’s stated purpose.” J.A. 

2324, § 125; J.A. 2323, § 123. This testimony and the disclosures of the ’707 application are substantial evidence 

upon which the Board could find that the ’707 application 

lacks written description of generic eyelets encompassing 

flexible eyelets, as claimed by the ’907 patent. See Tronzo 

v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998) (holding substantial evidence did not support finding that parent application provided written description of laterclaimed genus encompassing any shape where it “tout[ed] 

the advantages of [a] conical shape,” mentioned other 

shapes only in reciting the prior art, and “specifically distinguishe[d] the prior art as inferior”); see also Bilstad v. 

Wakalopulos, 386 F.3d 1116, 1125 (Fed. Cir. 2004) (explaining that Tronzo is an “exception[ ] to the general rule 

that disclosure of a species provides sufficient written description support for a later filed claim directed to the genus”). 

Arthrex argues the Board failed to give effect to the 

’707 application’s incorporation of the entire ’280 application by reference. According to Arthrex, this broad incorporation by reference compels a finding that the ’707 

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ARTHREX, INC. v. SMITH & NEPHEW, INC. 25

application provides written description support for flexible eyelets because there is no dispute that the ’280 application discloses one. The Board, however, considered the 

’707 application’s incorporation by reference and found it 

did not outweigh the evidence that the ’707 application relies entirely on rigid eyelets. Board Decision at *11–12. 

Because the ’707 application denigrates flexible eyelets and 

exclusively describes alternatives to overcome their disadvantages, we cannot say the Board’s finding was unreasonable. 

Arthrex further argues that the ’707 application adequately describes generic eyelets because it discloses “the 

function of threading suture,” which is “tied to” flexible eyelets. Appellant’s Br. 49. To be sure, the disclosure of a 

function may provide written description of a known structure for performing that function if the function and structure are “sufficiently correlated” to one another. Amgen, 

Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1332 

(Fed. Cir. 2003). If, however, the specification derides a 

particular structure and seeks to replace it with alternatives that ostensibly perform its function better, a reasonable person could find that the specification lacks written 

description for that structure. The Board’s finding that the 

’707 application does not adequately describe generic eyelets that encompass flexible eyelets is supported by substantial evidence, as is its determination that ElAttrache 

is anticipatory prior art.

C 

Lastly, there is no merit to Arthrex’s argument that the 

Board lacked statutory authority to decide whether the 

’707 application meets the written description 

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26 ARTHREX, INC. v. SMITH & NEPHEW, INC. 

requirement.7 Arthrex argues that because the scope of an 

IPR is limited to “ground[s] that could be raised under section 102 or 103,” 35 U.S.C. § 311(b), the Board could not 

address the written description requirement of § 112. Section 311(b), however, merely dictates the grounds on which 

an IPR petition may be based, not the issues that the Board 

may consider to resolve those grounds. S&N complied with 

§ 311(b) by asserting invalidity grounds under § 102. And 

because Arthrex argued that ElAttrache is not prior art by 

claiming priority to the ’280 application, the Board needed 

to determine whether the ’707 application satisfied the 

written description requirement. See In re NTP, Inc., 654 

F.3d 1268, 1279 (Fed. Cir. 2011) (holding “priority can be 

considered and determined during reexamination proceedings,” which are governed by similar statutory language).8 

The Board therefore did not exceed its authority. 

7 Although the government contends Arthrex forfeited this argument, we exercise our discretion to address 

it. See Singleton v. Wulff, 428 U.S. 106, 121 (1976) (“The 

matter of what questions may be taken up and resolved for 

the first time on appeal is one left primarily to the discretion of the courts of appeals, to be exercised on the facts of 

individual cases.”).

8 Compare 35 U.S.C. §§ 301, 302 (“Any person at any 

time may file a request for reexamination by the Office of 

any claim of a patent on the basis of any prior art [consisting of patents or printed publications bearing on the patentability of that claim].”) with 35 U.S.C. § 311(b) (“A 

petitioner in an inter partes review may request to cancel 

as unpatentable 1 or more claims of a patent only on a 

ground that could be raised under section 102 or 103 and 

only on the basis of prior art consisting of patents or 

printed publications.”). 

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CONCLUSION

Arthrex does not persuade us that the Commissioner 

violated the Appointments Clause, the FVRA, or the Constitution’s separation of powers in denying Arthrex’s rehearing request. Nor does it identify reversible error in the 

Board’s decision that ElAttrache anticipated the challenged claims of the ’907 patent. Accordingly, we affirm.

AFFIRMED

COSTS

The parties shall bear their own costs. 

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