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

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CATERPILLAR PAVING P RODUCTS 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

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2020

- 1261

______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR201 8

- 01200.

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ON MOTION

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J OSHUA G OLDBERG , Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, for appellant. Also represented by D ANIEL C RAIG C OOLEY , Reston, VA. Case: 20-1261 Document: 33 Page: 1 Filed: 05/06/2020CATERPILLAR PAVING P RODUCTS v. WIRTGEN AMERICA , INC

. 2

R ALPH W ILSON P OWERS , III , Sterne Kessler Goldstein & Fox, Washington, DC, for appellees. Also represented by D ONALD B ANOWIT , T YLER D UTTON , J ON W RIGHT ; M ARK A NDREW K ILGORE , R YAN D. L EVY , S ETH R. O GDEN , Patterson Intellectual Property Law, PC, Nashville, TN.

M ONICA B ARN ES L ATEEF , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for intervenor. Also represented by T HOMAS W. K RAUSE , F ARHEENA Y ASMEEN R ASHEED , D ANIEL K AZHDAN

.

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Before L OURIE , D YK , and R EYNA , Circuit J udge s

.

D YK , 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 issuedits 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

. U nlike 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
t he 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: 05/06/2020CATERPILLAR PAVING P RODUCTS v. WIRTGEN AMERICA , INC

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cure a year’s worth of constitutional violations influencing the Board’s thi nking and conclusions.” T he court in Arthrex considered and rejected that argument, expresslylimiting 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 panel s. ”).
Accordingly

, I T I S O RDERED T HAT : (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 F OR THE C OURT

/s/ Peter R. Marksteiner Peter R. Marksteiner Clerk of Court Case: 20-1261 Document: 33 Page: 3 Filed: 05/06/2020