NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

BEDGEAR, LLC,

Appellant

v.

FREDMAN BROS. FURNITURE COMPANY, INC.,

Appellee

______________________

2018-2082, 2018-2083, 2018-2084

______________________

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2017-

00350, IPR2017-00351, IPR2017-00352.

______________________

Decided: November 7, 2019 

______________________

K. LEE MARSHALL, Bryan Cave Leighton Paisner LLP, 

San Francisco, CA, argued for appellant. Also represented 

by JOSEPH J. RICHETTI, ALEXANDER DAVID WALDEN, New 

York, NY. 

 JASON R. MUDD, Erise IP, P.A., Overland Park, KS, argued for appellee. Also represented by ERIC ALLAN 

BURESH. 

 ______________________
2 BEDGEAR, LLC v. FREDMAN BROS. FURNITURE CO.

Before NEWMAN, DYK, and STOLL, Circuit Judges.

Opinion for the court filed PER CURIAM.

Opinion concurring in the judgment filed by Circuit Judge 

DYK, in which Circuit Judge NEWMAN joins.

PER CURIAM.

In its opening brief, Bedgear, LLC argues that the 

three final written decisions at issue in this appeal exceed 

the scope of the Patent Trial and Appeal Board’s authority 

and violate the Constitution’s Appointments Clause. See 

Appellant’s Br. 66 (citing U.S. Const. art. II, § 2, cl. 2). This

court recently decided this issue in Arthrex, Inc. v. Smith 

& Nephew, Inc., No. 18-2140 (Fed. Cir. Oct. 31, 2019). Accordingly, the Board’s decisions in Nos. IPR2017-00350, 

IPR2017-00351, and IPR2017-00352 are vacated and the 

case is remanded to the Board for proceedings consistent 

with this court’s decision in Arthrex.

VACATED AND REMANDED

COSTS

No costs.
NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

BEDGEAR, LLC,

Appellant

v.

FREDMAN BROS. FURNITURE COMPANY, INC.,

Appellee

______________________

2018-2082, 2018-2083, 2018-2084

______________________

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2017-

00350, IPR2017-00351, IPR2017-00352.

______________________

DYK, Circuit Judge, with whom Circuit Judge NEWMAN

joins, concurring in the judgment. 

I agree that the panel here is bound to follow Arthrex, 

Inc. v. Smith & Nephew, Inc., No. 2018-2140, 2019 WL 

5616010 (Fed. Cir. Oct. 31, 2019). But, even putting to one 

side the question of whether Administrative Patent Judges 

(“APJs”) would have been improperly appointed (if not subject to at will removal), it seems to me that the remedy aspect of Arthrex (requiring a new hearing before a new 

panel) is not required by Lucia v. S.E.C., 138 S. Ct. 2044

(2018), imposes large and unnecessary burdens on the system of inter partes review, requiring potentially hundreds 
2 BEDGEAR, LLC v. FREDMAN BROS. FURNITURE CO.

of new proceedings, and involves unconstitutional prospective decision-making. 

I

In Arthrex, the panel held that the appointment of Administrative Patent Judges (“APJs”) would be unconstitutional if subject to the removal provisions of title 5. The 

panel avoids this result by holding that those removal provisions are unconstitutional as applied to APJs, and that 

the unconstitutional removal provision may be severed 

from the remainder of the statute “to render the APJs inferior officers and remedy the constitutional appointment 

problem.” Arthrex, 2019 WL 5616010, at *1. Instead of 

holding past actions by APJs valid, the Arthrex majority 

held those past actions invalid and remanded for a new 

hearing before a new panel “[b]ecause the Board’s decision 

in this case was made by a panel of APJs that were not 

constitutionally appointed at the time the decision was rendered.” Arthrex, 2019 WL 5616010, at *11. 

This holding is in part constitutional interpretation 

and part statutory construction. In essence, the panel improperly makes the application of its decision prospective

only, so that only PTAB decisions after the date of the 

panel’s opinion are rendered by a constitutionally appointed panel. In my view, the panel improperly declined 

to make its ruling retroactive so that the actions of APJs in 

the past were compliant with the constitution and the statute. In this respect, I think that the panel in Arthrex ignored governing Supreme Court authority. 

II

I first address the Arthrex panel’s claim that Lucia

mandates remanding for a new hearing. In Lucia, the issue was whether Securities and Exchange Commission 

(“SEC”) Administrative Law Judges (“ALJs”) were inferior 

officers that had to be appointed by an agency head—the 

SEC. Lucia, 138 S. Ct. at 2051 & n.3 (2018). The Supreme 
BEDGEAR, LLC v. FREDMAN BROS. FURNITURE CO. 3

Court held that “[t]he Commission’s ALJs are ‘Officers of 

the United States,’ subject to the Appointments Clause.” 

Id. at 2055. The ALJs were found to be unconstitutionally 

appointed as “Officers of the United States” because they 

were appointed by “[o]ther staff members, rather than the 

Commission proper.” Id. at 2046, 2051. 

While the case was pending, “the SEC issued an order 

‘ratif[ying]’ the prior appointments of its ALJs,” thus curing the constitutional defect.1 Id. at 2055 n.6 (alteration in 

original) (quoting SEC Order, In re: Pending Administrative Proceedings (Nov. 30, 2017), https://www.sec.gov/litigation/opinions/2017/33-10440.pdf). The Supreme Court 

nevertheless held that “the ‘appropriate’ remedy for an adjudication tainted with an appointments violation is a new 

‘hearing before a properly appointed’ official.” Id. at 2055 

(quoting Ryder v. United States, 515 U.S. 183, 188 (1995)). 

The difference between Lucia and Arthrex is that the 

fix in Lucia was an agency fix, whereas the fix in Arthrex

is a judicial fix. Agencies and legislatures generally act 

only prospectively, while a judicial construction of a statute 

or a holding that a part of the statute is unconstitutional

and construing the statute to permit severance are necessarily retrospective as well as prospective. 

III

As the Supreme Court concluded in Rivers v. Roadway 

Exp., Inc., 511 U.S. 298 (1994), “[i]n construing a statute, 

courts are ‘explaining [their] understanding of what the 

statute has meant continuously since the date when it became law.’” Id. at 313 n.12 (emphasis added). The same is 

true as to constitutional decisions, as Harper v. Virginia 

Dep’t of Taxation, 509 U.S. 86 (1993) confirmed: “‘[B]oth 

 

1 The Court declined to decide whether the agency 

cured the defect when it “ratified” the appointments. Lucia, 

138 S. Ct. at 2055 n.6.
4 BEDGEAR, LLC v. FREDMAN BROS. FURNITURE CO.

the common law and our own decisions’ have ‘recognized a 

general rule of retrospective effect for the constitutional decisions of this Court.’” Id. at 94 (alteration in original) 

(quoting Robinson v. Neil, 409 U.S. 505, 507 (1973)). As 

Justice Scalia put it in his concurrence in the later Reynoldsville decision: 

In fact, what a court does with regard to an unconstitutional law is simply to ignore it. It decides the 

case “disregarding the [unconstitutional] law,” 

Marbury v. Madison, 1 Cranch 137, 178 (1803) 

(emphasis added), because a law repugnant to the 

Constitution “is void, and is as no law,” Ex parte 

Siebold, 100 U.S. 371, 376 (1880). 

Reynoldsville Casket Co. v. Hyde, 514 U.S. 749, 760 (1995) 

(Scalia, J., concurring) (alterations in original). In other 

words, “[w]hen [a c]ourt applies a rule of federal law to the 

parties before it, that rule is the controlling interpretation 

of federal law and must be given full retroactive effect in 

all cases still open on direct review and as to all events, 

regardless of whether such events predate or postdate [the 

court’s] announcement of the rule.” Harper, 509 U.S. at 97 

(1993).2 

The requirement for retroactivity applies to remedies 

as well, such as the remedy in this case. In Reynoldsville 

Casket Co. v. Hyde, 514 U.S. 749 (1995), the Court reversed 

an Ohio Supreme Court decision declining to apply a constitutional decision as to a limitations period retroactively. 

 

2 Harper overruled prior caselaw that provided for 

exceptions allowing prospective application of a new rule of 

law in constitutional and other cases. Reynoldsville Casket 

Co. v. Hyde, 514 U.S. 749, 752 (1995) (“Harper overruled [a 

prior Supreme Court decision] insofar as the [prior] case 

(selectively) permitted the prospective-only application of a 

new rule of law.”).
BEDGEAR, LLC v. FREDMAN BROS. FURNITURE CO. 5

The Court rejected the respondent’s argument that the 

Ohio Supreme Court’s decision was based on “remedy” rather than “non-retroactivity” and held that accepting the 

Ohio Supreme Court’s “remedy” would “create what 

amounts to an ad hoc exemption from retroactivity.” Id. at 

758. The Court noted only four circumstances where retroactive application of a constitutional ruling is not outcome-determinative.3 None is remotely relevant to 

Arthrex.

Thus, to be consistent with Harper, the statute here 

must be read as though the PTAB judges had always been 

constitutionally appointed, “disregarding” the unconstitutional removal provisions. Marbury v. Madison, 1 Cranch 

137, 178, 2 L.Ed. 60 (1803). Since no Congressional or 

agency action is required in order to render the appointment of the PTAB judges constitutional, when the PTAB 

judges decided cases in the past, they did not act improperly. Thus, the past opinions rendered by the PTAB should 

be reviewed on the merits, not vacated for a new hearing

before a different panel. 

 

3 Namely, where there is: “(1) an alternative way of 

curing the constitutional violation, or (2) a previously existing, independent legal basis (having nothing to do with 

retroactivity) for denying relief, or (3) as in the law of qualified immunity, a well-established general legal rule that 

trumps the new rule of law, which general rule reflects both reliance interests and other significant policy 

justifications, or (4) a principle of law, such as that of ‘finality’ . . . , that limits the principle of retroactivity itself.” 

Reynoldsville, 514 U.S. at 759.
6 BEDGEAR, LLC v. FREDMAN BROS. FURNITURE CO.

IV

While the Circuits appear to be divided as to the retroactivity issue in Appointments Clause and similar cases,4

the very Supreme Court decisions relied on in Arthrex have 

given retroactive effect to statutory constructions or constitutional decisions that remedied potential Appointment 

 

4 In Collins v. Mnuchin, 938 F.3d 553 (5th Cir. 2019), 

the en banc Fifth Circuit found that the Federal Housing 

Finance Agency (“FHFA”) was unconstitutionally structured because Congress “[g]rant[ed] both removal protection and full agency leadership to a single FHFA Director.” 

938 F.3d at 591. It declined to invalidate prior agency actions. Id. at 592. It concluded that the only appropriate 

remedy, and one that “fixes the . . . purported injury,” is a 

declaratory judgment “removing the ‘for cause’ provision 

found unconstitutional.” Id. 595.

In Intercollegiate Broadcasting and Kuretski, the D.C. 

Circuit reached the opposite result. See Intercollegiate 

Broad. Sys., Inc. v. Copyright Royalty Bd., 684 F.3d 1332 

(D.C. Cir. 2012); Kuretski v. Comm’r, 755 F.3d 929 (D.C. 

Cir. 2014). In Intercollegiate Broadcasting, the D.C. Circuit found that the appointments of the Copyright Royalty 

Judges in the Library of Congress violated the Appointments Clause because they could be removed only for 

cause. Intercollegiate Broad. Sys., Inc., 684 F.3d at 1334. 

The court invalidated the for-cause restriction on the removal of the judges, rendering them “validly appointed inferior officers.” Id. at 1340–41. Yet, the D.C. Circuit 

declared that “[b]ecause the Board’s structure was unconstitutional at the time it issued its determination, we vacate and remand the determination.” Id. at 1342. These

two cases were not based on Supreme Court precedent, did 

not consider the Supreme Court precedent suggesting a different result, and were an apparent departure from the 

Court’s rulings in similar circumstances. 
BEDGEAR, LLC v. FREDMAN BROS. FURNITURE CO. 7

Clause violations. In Free Enterprise Fund v. Public Co. 

Accounting Oversight Bd., 561 U.S. 477 (2010), the SEC’s 

Public Company Accounting Oversight Board had instituted an investigation against an accounting firm, Beckstead and Watts (“B&W”). Id. at 487. B&W and another 

affiliated organization, Free Enterprise Fund, filed suit, 

asking the district court to enjoin the investigation as improperly instituted because members of the Board had not 

been constitutionally appointed. Id. The Supreme Court 

found that the statutory removal protections afforded to 

members of the Board were unconstitutional. Id. at 484. 

“By granting the Board executive power without the Executive’s oversight [i.e., by limiting removal], this Act subverts the President’s ability to ensure that the laws are 

faithfully executed—as well as the public’s ability to pass 

judgment on his efforts.” Id. at 498. But the Court severed 

the unconstitutional removal provisions from the remainder of the statute, leaving the rest of relevant act fully operational and constitutional. Id. at 509. 

The Court did not view this action as fixing the problem

only prospectively. It refused to invalidate or enjoin the 

prior actions of the Board in instituting the investigation, 

explaining that “properly viewed, under the Constitution, . . . the Board members are inferior officers” and “have 

been validly appointed by the full Commission.” Id. at 510, 

513. The Court remanded for further proceedings, but explained that Plaintiffs are only “entitled to declaratory relief sufficient to ensure that the reporting requirements 

and auditing standards to which they are subject will be 

enforced only by a constitutional agency accountable to the 

Executive.” Id. at 513.5 

 

5 On remand, the parties agreed that the Supreme 

Court’s decision did not require invalidating the Board’s 

prior actions. The agreed-upon judgment stated: “[a]ll relief not specifically granted by this judgment is hereby 
8 BEDGEAR, LLC v. FREDMAN BROS. FURNITURE CO.

So too in Edmond, past actions by the Coast Guard 

Court of Criminal Appeals were not set aside. The criminal 

defendants’ convictions had been affirmed by the Coast 

Guard Court of Criminal Appeals. Edmond v. United 

States, 520 U.S. 651, 655 (1997). The defendants contended that the Coast Guard Court of Criminal Appeals 

judges had not been properly appointed, rendering the convictions invalid. See id. The issue was “whether Congress 

ha[d] authorized the Secretary of Transportation to appoint civilian [judges to] the Coast Guard Court of Criminal 

Appeals, and if so, whether this authorization [wa]s constitutional under the Appointments Clause of Article II [because the judges were inferior officers].” Id. at 653. 

The Court construed the relevant statutes so that “Article 66(a) d[id] not give Judge Advocates General authority to appoint Court of Criminal Appeals judges; [and] that 

§ 323(a) d[id] give the Secretary of Transportation authority to do so.” Id. at 658. The Court explained that “no other 

way to interpret Article 66(a) that would make it consistent 

with the Constitution” because “Congress could not give 

the Judge Advocates General power to ‘appoint’ even inferior officers of the United States.” Id. The Court then 

found that the judges of the Coast Guard Court of Criminal 

Appeals are inferior officers and that “[their] judicial appointments [by the Secretary] . . . are therefore valid.” Id. 

at 666. Most significantly, the Court did not remand for a 

new hearing but rather “affirm[ed] the judgment of the 

Court of Appeals for the Armed Forces.” Id. Nowhere did 

the Court suggest that the actions taken before the Court’s 

construction were rendered invalid. 

In Appointments Clause cases, the Supreme Court has 

required a new hearing only where the appointment’s 

 

DENIED.” See Judgment Order, Free Enter. Fund v. Pub. 

Co. Accounting Oversight Bd., C.A. No. 06-0217-JR (D.D.C. 

Feb. 23, 2011), ECF No. 66.
BEDGEAR, LLC v. FREDMAN BROS. FURNITURE CO. 9

defect had not been cured6 or where the cure was the result 

of non-judicial action.7 The contrary decision in Arthrex is 

inconsistent with binding Supreme Court precedent and 

creates a host of problems in identifying the point in time 

when the appointments became valid.8 

***

 

6 See Ryder v. United States, 515 U.S. 177, 182–83 

(1995) (declining to apply the de facto officer doctrine to 

preserve rulings made by an unconstitutionally appointed 

panel); Nguyen v. United States, 539 U.S. 69, 77, 83 (2003) 

(declining to leave “undisturbed” the judgments of an unconstitutionally composed panel); N.L.R.B. v. Noel Canning, 573 U.S. 513, 519, 520 (2014) (affirming the DC 

Circuit in vacating an NLRB order finding a violation because the Board lacked a quorum as “the President lacked 

the power to make the [Board] recess appointments here at 

issue”); see also Bandimere v. Sec. & Exch. Comm’n, 844 

F.3d 1168, 1171, 1188 (10th Cir. 2016) (setting aside opinion of an improperly appointed SEC ALJ where “the SEC 

conceded the ALJ had not been constitutionally appointed”).

7 See Lucia, 138 S. Ct. at 2055 n.6; see also Jones 

Bros., Inc. v. Sec’y of Labor, 898 F.3d 669, 679 (6th Cir. 

2018) (improperly appointed ALJ’s decision vacated despite Mine Commission’s attempt to cure the improper appointment during judicial review).

8 The difficulty of identifying at what point in time 

the appointments became effective is evident. Is it when 

then panel issues the decision, when the mandate issues,

when en banc review is denied, when certiorari is denied,

or (if there is an en banc proceeding) when the en banc 

court affirms the panel, or (if the Supreme Court grants 

review) when the Supreme Court affirms the court of appeals decision? 
10 BEDGEAR, LLC v. FREDMAN BROS. FURNITURE CO.

I respectfully suggest that Arthrex was wrongly decided on the issue of remedy. As a result of the Arthrex

construction, APJs were properly appointed by the PTO Director/Under-Secretary of Commerce and their prior decisions are not invalid.