# United States **Court of Appeals**  **for the Federal Circuit**

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IN RE : BOLORO GLOBAL LIMITED, Appellant

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2019

- 2349
, - 2351,

- 2353

______________________ Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No s . 14/222,613, 14/222,615, and 14/222,616.

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ON MOTION

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M ICHAEL R AYMOND C ASEY , Oblon , McClelland, Maier and Neustadt, LLP, Alexandria, VA, for appellant. Also represented by J AMES L OVE ; C ARLOS R AFAEL V ILLAMAR , The Villamar Firm PLLC, Falls Church, VA.

R OBERT J. M C M ANUS , Office of the Solicitor, United States Patent and Trademar k Office, Alexandria, VA, for appellee Andrei Iancu. Also represented by T HOMAS W. K RAUSE , F ARHEENA Y ASMEEN R ASHEED , M OLLY R. S ILFEN , N ICHOLAS T HEODORE M ATICH , IV

, D ANIEL K AZHDAN ; C OURTNEY D IXON , S COTT R. M C I NTOSH , M ELISSA N. P ATTERSON , J O SEPH H. H UNT , Appellate Staff, C ivil Division, United States Department of Justice, Washington, DC.

______________________ Case: 19-2349 Document: 35 Page: 1 Filed: 07/07/2020IN RE : BOLORO GLOBAL LIMIT ED 2

Before L OURIE , D YK , and R EYNA , Circuit Judges

. D YK , Circuit Judge

. O R D E R

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 decision s in ex parte appeal s , affirming the examiner’s rejection of claims in Boloro’s patent application s . 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 Virnet X 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 VirnetX

, that “APJs were pri ncipal 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 Virnet X

, this court held that the appropriate remedy for such a constitutional violation wasto vacate the Board’s decision and to remand for the purpose of reassigning the matter to a different panel of APJs for a new hearing and decis ion. 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). T he Director urges that the same remedy should not be extended to ex parte proceedings because, according to the Director, he pos sesses Case: 19-2349 Document: 35 Page: 2 Filed: 07/07/2020IN RE : BOLORO GLOBAL LIMIT ED 3

“complete control over the initial examination” and could at any time prior to the Board proceedings have directed the issuance of Boloro’s patent s but did not, consistent with the Board’s subsequent decision s

. But the Director having conceded that the APJ’s appointments were unconstitutional, we see no principled reason to depart here from the resulting remedy applied in Arthrex and VirnetX

. Accordingly,

I T I S O RDERED T HAT : (1) Boloro’s motion to vacate and remand is granted.The Patent Trial and Appeal Board’s decision is vacated, and the case is remanded to the Board for proceedings consistent with this court’s decision in Arthrex

. (2) Each side shall bear its own costs.

F OR THE C OURT

Ju ly 7 , 2020 /s/ Peter R. Marksteiner Date Peter R. Marksteiner Clerk of Court Case: 19-2349 Document: 35 Page: 3 Filed: 07/07/2020