Caterpillar Paving Products Inc. v. Wirtgen America, Inc., Joseph Vogele Ag

United States Court of Appeals
for the Federal Circuit
______________________
CATERPILLAR PAVING PRODUCTS 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
______________________

2020-1261
______________________

Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
01200.
______________________

ON MOTION
______________________

J
OSHUA GOLDBERG, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Washington, DC, for appellant.
Also represented by D
ANIEL CRAIG COOLEY, Reston, VA.

Case: 20-1261 Document: 33 Page: 1 Filed: 05/06/2020

CATERPILLAR PAVING PRODUCTS v. WIRTGEN AMERICA, INC.
2
RALPH WILSON POWERS, III, Sterne Kessler Goldstein
& Fox, Washington, DC, for appellees. Also represented by
DONALD BANOWIT, TYLER DUTTON, JON WRIGHT; MARK
ANDREW KILGORE, RYAN D. LEVY, SETH R. OGDEN, Patter-
son Intellectual Property Law, PC, Nashville, TN.

MONICA BARNES LATEEF, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
intervenor. Also represented by THOMAS W. KRAUSE,
FARHEENA YASMEEN RASHEED, DANIEL KAZHDAN.
______________________

Before
LOURIE, DYK, and REYNA, Circuit Judges.

DYK, 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 in-
ter partes review of Caterpillar Paving Products Inc.’s pa-
tent. The Board held a hearing on July 30, 2019 and issued
its final written decision on November 13, 2019. Caterpil-
lar 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 demon-
strated that Arthrex compels a remand. Unlike in prior
cases in which this court has recently vacated and re-
manded, Arthrex issued before the Board’s final written de-
cision in this case. The Director and Wirtgen argue that
the 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
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CATERPILLAR PAVING PRODUCTS v. WIRTGEN AMERICA, INC.
3
cure a year’s worth of constitutional violations influencing
the Board’s thinking and conclusions.” The court in Ar-
threx considered and rejected that argument, expressly
limiting its holding “to those cases where final written de-
cisions 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) (“Be-
cause the APJs were constitutionally appointed as of the
implementation of the severance, inter partes review deci-
sions going forward were no longer rendered by unconsti-
tutional panels.”).
Accordingly,
IT IS ORDERED THAT:
(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
FOR THE COURT

/s/ Peter R. Marksteiner
Peter R. Marksteiner
Clerk of Court

Case: 20-1261 Document: 33 Page: 3 Filed: 05/06/2020