Facts of the Case

Provided by Oyez

The Patent Trial and Appeal Board consists of a Director, a Deputy Director, a Commissioner for Patents, a Commissioner for Trademarks, and administrative patent judges. Under 35 U.S.C. § 6(a), the Secretary of Commerce, in consultation with the Director of the U.S. Patent and Trademark Office (USPTO), appoints Administrative Patent Judges (APJs) to the Board. Among other responsibilities, APJs decide questions of patentability in inter partes review, a “hybrid proceeding” with “adjudicatory characteristics similar to court proceedings.” 


Arthrex owns a patent that was subject to inter partes review, and a three-judge panel consisting of three APJs issued a final written decision finding the claims unpatentable. Arthrex appealed to the U.S. Circuit Court for the Federal Circuit, claiming that the appointment of APJs violates the Appointments Clause of the U.S. Constitution. The Federal Circuit agreed, finding that the statute as currently constructed makes APJs principal officers, who must be appointed by the President with the advice and consent of the Senate. The court severed the portion of the Patent Act restricting removal of the APJs in order to render them inferior officers and thus remedy the constitutional appointment problem.


  1. Are administrative patent judges principal officers who must be appointed by the President with the advice and consent of the Senate, or inferior officers who may be appointed by a department head?

  2. If they are principal officers, can they be rendered inferior officers by severing the portion of the Patent Act restricting their removal?


  1. The unreviewable authority wielded by APJs during inter partes review is incompatible with their appointment by the Secretary to an inferior office. Chief Justice John Roberts authored the opinion of the Court, in which he was joined in that holding by Justices Samuel Alito, Neil Gorsuch, Brett Kavanaugh, and Amy Coney Barrett.

    Having found a constitutional violation, Chief Justice Roberts cured the defect by requiring that the Director of the USPTO hold the ultimate authority to review the final outcome of inter partes review proceedings--a departure from the statutory scheme passed by Congress. Though only Justices Alito, Kavanaugh, and Barrett joined this part of the opinion, a concurring opinion authored by Justice Stephen Breyer and joined by Justices Sonia Sotomayor and Elena Kagan approved of the remedy despite disagreeing with the holding that made it necessary.  

    Justice Gorsuch filed an opinion concurring in part and dissenting in part.  While he was part of the majority that held APJs wielded unconstitutional authority, his remedy would have been to invalidate the statutory scheme and send the problem to Congress for a fix that complied with the Constitution.  

    Justice Clarence Thomas dissented from the majority’s approach. He concluded both that the APJs were inferior officers under the Constitution under the statutory scheme approved by Congress, and that the appropriate remedy once the Court held otherwise was to have vacated the decision of the APJs at the heart of the dispute. 

Deep Dive Episode 167 – Courthouse Steps Oral Argument: United States v. Arthrex Inc.

Deep Dive Episode 167 – Courthouse Steps Oral Argument: United States v. Arthrex Inc.

Regulatory Transparency Project's Fourth Branch Podcast

The U.S. Supreme Court heard oral arguments in United States v. Arthrex Inc. on March 1,...