United States Court of Appeals 

for the Federal Circuit ______________________

CATERPILLAR PAVING PRODUCTS INC.,

Appellant

v.

WIRTGEN AMERICA, INC., JOSEPH VOGELE AG,

Appellees

ANDREI IANCU, UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR OF THE UNITED STATES 

PATENT AND TRADEMARK OFFICE,

Intervenor

______________________

2020-1261

______________________

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2018-

01200.

______________________

ON MOTION

______________________

JOSHUA GOLDBERG, Finnegan, Henderson, Farabow, 

Garrett & Dunner, LLP, Washington, DC, for appellant. 

Also represented by DANIEL CRAIG COOLEY, Reston, VA.

Case: 20-1261 Document: 33 Page: 1 Filed: 05/06/2020
2 CATERPILLAR PAVING PRODUCTS v. WIRTGEN AMERICA, INC.

RALPH WILSON POWERS, III, Sterne Kessler Goldstein 

& Fox, Washington, DC, for appellees. Also represented by 

DONALD BANOWIT, TYLER DUTTON, JON WRIGHT; MARK 

ANDREW KILGORE, RYAN D. LEVY, SETH R. OGDEN, Patterson Intellectual Property Law, PC, Nashville, TN. 

 MONICA BARNES LATEEF, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, for 

intervenor. Also represented by THOMAS W. KRAUSE,

FARHEENA YASMEEN RASHEED, DANIEL KAZHDAN.

______________________

Before LOURIE, DYK, and REYNA, Circuit Judges.

DYK, Circuit Judge.

O R D E R

At the behest of Wirtgen America, Inc., the Director of 

the United States Patent and Trademark Office, acting 

through the Patent Trial and Appeal Board, instituted inter partes review of Caterpillar Paving Products Inc.’s patent. The Board held a hearing on July 30, 2019 and issued 

its final written decision on November 13, 2019. Caterpillar has appealed and now moves to vacate and remand for 

a new hearing before a differently constituted panel in light 

of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 

(Fed. Cir. 2019) issued on October 31, 2019.

The court concludes that Caterpillar has not demonstrated that Arthrex compels a remand. Unlike in prior 

cases in which this court has recently vacated and remanded, Arthrex issued before the Board’s final written decision in this case. The Director and Wirtgen argue that 

the Board judges were constitutionally appointed as of the 

date that this court issued its decision in Arthrex and that 

no remand is required. Caterpillar contends that even if 

the panel members became constitutional immediately 

prior to issuing the final written decision, that “does not 

Case: 20-1261 Document: 33 Page: 2 Filed: 05/06/2020
CATERPILLAR PAVING PRODUCTS v. WIRTGEN AMERICA, INC. 3

cure a year’s worth of constitutional violations influencing 

the Board’s thinking and conclusions.” The court in Arthrex considered and rejected that argument, expressly 

limiting its holding “to those cases where final written decisions were issued.” 941 F.3d at 1340. See also Arthrex, 

Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir.

2020) (Moore, J., concurring in denial of rehearing) (“Because the APJs were constitutionally appointed as of the 

implementation of the severance, inter partes review decisions going forward were no longer rendered by unconstitutional panels.”). 

Accordingly,

IT IS ORDERED THAT:

(1) The motion to vacate and remand is denied. 

(2) Caterpillar’s opening brief is due within 30 days 

from the date of filing of this order. 

May 6, 2020 

Date

FOR THE COURT

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

Case: 20-1261 Document: 33 Page: 3 Filed: 05/06/2020