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 Division, United States Department of Justice, Washington, 

DC.

______________________ 

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

Before LOURIE, DYK, and REYNA, Circuit Judges. 

DYK, 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 decisions in ex parte appeals, affirming the examiner’s rejection of claims in Boloro’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 VirnetX, 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 purpose 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 proceedings because, according to the Director, he possesses 

Case: 19-2349 Document: 35 Page: 2 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 unconstitutional, 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 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.

 FOR THE COURT

July 7, 2020 /s/ Peter R. Marksteiner

 Date Peter R. Marksteiner

 Clerk of Court 

 

Case: 19-2349 Document: 35 Page: 3 Filed: 07/07/2020