HE HAD THE POWER ' Hirshfeld Decisions Stand

• Published date: 08 May 2023
• Subject Matter: Intellectual Property, Patent
• Law Firm: Jones Day
• Author: Ms Alison E. Ibendahl and Joseph Beauchamp

A panel of the Federal Circuit has again held that Commissioner Drew Hirshfeld had the requisite authority to act on requests for Director review of PTAB decisions during which the office of Director was vacant. Fall Line Pats., LLC v. Unified Pats., LLC, No. 2019-1956, 2022 WL 17747862 at *2 (Fed. Cir. Dec. 19, 2022) The Federal Circuit denied a prior challenge to Commissioner Hirshfeld's authority during this period.

The latest decision has its roots in an IPR filed against a data management patent owned by Fall Line Patents, LLC. The decision resulted in the Board invalidating several claims. Fall Line's appeal of the Board decision was working its way through the PTAB and Federal Circuit behind Arthrex, the Supreme Court case holding that the USPTO Director has discretion to review PTAB final written decisions. After remand to the PTAB, Arthrex's request for Director review was denied by Commissioner for Patents Drew Hirshfeld, in his interim performance of the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. Arthrex again appealed to the Federal Circuit, this time arguing Hirshfeld in interim acting capacity did not have the authority to make Director review decisions. The Federal Circuit held that Commissioner Hirshfeld did not act beyond his authority because an inferior officer can perform the duties of a principal officer on a temporary acting basis. Arthrex, Inc. v. Smith & Nephew, Inc., 35 F.4th 1328 (Fed. Cir. 2022) (Arthrex II).

Meanwhile in Fall Line, The Supreme Court granted cert to vacate judgment and remand to the Federal Circuit, who then remanded to the PTAB to allow Fall Line to request review from the Director. Fall Line, like Arthrex, was remanded to the PTAB during the interim period between when former Director Andrei Iancu stepped down and before Director Kathi Vidal took over. Fall Line requested Director review of the PTAB decision but the request was denied by Commissioner Hirshfeld. Fall Line appealed the decision to the Federal Circuit, arguing that Hirshfeld's exercise of the Director's authority violated the Appointments Clause and the Federal Vacancies Reform Act.

After Fall Line had submitted briefing on its challenge to Commissioner Hirshfeld's authority, the Federal Circuit rejected Arthrex's challenge in Arthrex II. Fall Line then submitted that it had an additional argument not considered in Arthrex II'that the Patent Act does not authorize delegations to...