Jared Bobrow (left) and Mel Bostwick (right) of Orrick, Herrington & Sutcliffe.

Micron Technology Inc. has opened a new front in the Arthrex v. Smith & Nephew appointment clause wars.

Last fall the U.S. Court of Appeals for the Federal Circuit ruled that the administrative judges of the Patent Trial and Appeal Board weren't constitutionally appointed. In so doing it told dissatisfied litigants that so long as they raised the issue by the time they filed their opening briefs on appeal, they'd be entitled to new hearings before a different panel of PTAB judges.

Dozens of litigants have since been granted remands. Patent owner North Star Innovations Inc. figured it could get some too, after it lost two cases on semiconductor patents before the PTAB on Oct. 22. That was nine days before the Federal Circuit issued Arthrex and reinterpreted federal law to make the PTAB judges constitutional going forward.

After filing its appeals with the Federal Circuit on Dec. 30, North Star dutifully moved to vacate and remand Jan. 29. The motion is "based on the violation of the Appointments Clause as already determined by Arthrex, and is appropriately raised in a motion filed prior to North Star's opening brief," North Star stated in a filing signed by Edward Flynn of Eckert Seamans Cherin & Mellott.

Not so fast, said opponent Micron and its lawyers at Orrick, Herrington & Sutcliffe. Litigants have 30 days to seek rehearing before the PTAB. North Star "could have, but did not, raise an Appointments Clause challenge before the Board" after the Arthrex decision issued, Micron stated in a Feb. 10 filing signed by partner Jared Bobrow. "North Star instead remained silent, raising its challenge only after it appealed to this Court."

Not only that, North Star has elected not to raise an appointments clause challenge in a third case decided the same day, in which it prevailed on a few patent claims while losing on others. "That is not how constitutional law works," Bobrow writes. "North Star cannot accept a favorable ruling from the judges while objecting only to the unfavorable ones."

The U.S. Patent and Trademark Office intervened Wednesday in North Star Innovations v. Micron Technology to support Micron's argument. That's consistent with the PTO's position in previous cases that litigants who failed to raise the appointments clause before the PTAB should be deemed to have forfeited it.

"We were glad to see the PTO step in and endorse our forfeiture position," said Orrick partner Mel Bostwick, who's litigating the appeal with Bobrow. "Companies should not be allowed to sit on their rights and then belatedly make constitutional challenges for purely strategic reasons, as North Star is trying to do here."

North Star said in its Feb. 18 reply brief that requesting rehearing from the board "would have done no good." Under PTAB rules, the same panel that issued the final written decision against North Star would rehear the case. "That panel could then simply rubber-stamp its prior FWD, and now North Star would have been left with a final written decision rendered by the same APJs who would now be considered to be constitutionally appointed under Arthrex," Flynn wrote.

As the Arthrex court stated, "a new panel of APJs must be designated and a new hearing granted," Flynn wrote.

Of course, the Federal Circuit is currently weighing en banc petitions filed by parties and the PTO in Arthrex and another similar case, so all of this could become academic. But as of now, Flynn wrote, "whether Micron likes it or not, Arthrex remains standing, and as recognized by numerous panels of this Court, it is binding."