U.S. Patent Trademark Office. Photo: Diego M. Radzinschi/ALM

Now that the U.S. Court of Appeals for the Federal Circuit has declared the U.S. Patent and Trademark Office's method of hiring administrative judges unconstitutional, the court has begun sending some patent validity challenges back to the Patent Trial and Appeal Board. But the PTO is urging the court to slow down.

The Federal Circuit on its own motion canceled an argument scheduled for Monday between Facebook Inc. and Uniloc 2017 LLC, in which Uniloc had raised the same Appointments Clause issue decided in Thursday's Arthrex v. Smith & Nephew. As in Arthrex, the court remanded the dispute to the PTAB for a hearing before a new panel of judges.

But another case involving the same Appointments Clause issue remained on the Federal Circuit's calendar for argument Monday, and the Justice Department urged the court not to vacate any more cases pursuant to Arthrex until it's had a chance to petition for en banc review. The government has 45 days to do so under Federal Circuit rules.

"It would be inappropriate for the Court to dispose of these cases before the resolution of any petitions for rehearing that the parties in Arthrex may choose to file," Department of Justice attorney Melissa Patterson wrote in a letter brief in Polaris Innovations v. Kingston Technology.

The court ruled in Arthrex that PTAB judges are principal officers of an executive agency, and therefore should have been appointed by the president and confirmed by the Senate. But the court further held that, going forward, it can reinterpret the Patent Act as making PTAB judges at will employees, which will render them inferior officers. That will solve the constitutional problem. But the court said it is required under a 2018 Supreme Court decision to remand PTAB decisions that aren't final on appeal for new hearings before a different panel of judges.

Also Friday, the court made clear that not all pending PTAB appeals will benefit from Arthrex. Customedia Technologies had asked the court Friday to vacate and remand its PTAB dispute with Dish Network. But the court issued precedential orders the same day refusing to do so, because Customedia hadn't raised the Appointments Clause issue in its briefing.

"Customedia did not raise any semblance of an Appointments Clause challenge in its opening brief or raise this challenge in a motion filed prior to its opening brief," the court stated. "Consequently, we must treat that argument as forfeited in this appeal."

"Didn't take long for the court to decide that," Dish's counsel, Baker Botts partner Eliot Williams, observed on Twitter.

Ropes & Gray partner Scott McKeown said applying waiver would reduce the number of cases the PTAB has to rehear. "I think that was the hope [at the PTO] when they issued their opinion yesterday," McKeown said. He thinks there could still be a fight over waiver because of the intervening change in the law. "There would seem to be some precedent out there that says, 'How can I waive something I didn't know that I had?'" McKeown said.