Are administrative patent judges unconstitutional?

George Washington Law Review

Volumn 77, Issue 4, 2009, Pages 904-923

  Duffy, John F ^a  

^a GEORGE WASHINGTON UNIVERSITY   (United States)

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EID: 69249104255     PISSN: 00168076     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Review

References (101)

1. 35 U.S.C. § 6 (2006). As noted above, Congress changed the appointments process in 35 U.S.C. § 6 after earlier versions of this essay became available on the internet. To preserve the original tenor of the essay, the main body of the text maintains the citations to the earlier version of the statute and employs the present tense when discussing the statute. Subsequent changes are mentioned in the footnotes and the Epilogue.
2. Id. § 6(a).
3. U.S. CONST, art. II, § 2, cl. 2.
4. Buckley v. Valeo, 424 U.S. 1, 126 (1976) (per curiam).
5. Freytag v. Comm'r, 501 U.S. 868, 880, 878 (1991).
6. Morrison v. Olson, 487 U.S. 654, 671 (1988).
7. Id. at 670.
8. Freytag v. Comm'r, 501 U.S. 868 (1991).
9. Id. at 880.
10. Id. at 880-81.
11. Id. at 881-82.
12. Id. at 882.
13. Id.
14. Id.
15. Id.
16. See 37 C.F.R. 5 41.125 (2009) (BPAI's power to rule on motions);
17. Id. §§ 41.150-.151 (BPAI's powers to order discovery);
18. Id. § 41.152 (making applicable the Federal Rules of Evidence, with the powers of district courts being lodged in the BPAI).
19. " See 35 U.S.C. § 6(b).
20. Id. § 135(a).
21. See id. §§ 141, 145;
22. see also BD. OF PATENT APPEALS &INTERFERENCES, PATENT &TRADEMARK OFFICE, STANDARD OPERATING PROCEDURE 2 (REVISION 7): PUBLICATION OF OPINIONS AND BINDING PRECEDENT (2008), http://www.uspto.gov/web/offices/ dcom/bpai/sop2. pdf (noting that the Director of the PTO may review BPAI decisions to determine whether they should be made precedential but that such review "is not for the purpose of reviewing or affecting the outcome of any given appeal").
23. Administrative Procedure Act, ch. 324,60 Stat. 237 (1946) (codified as amended in scattered sections of 5 U.S.C); see Dickinson v. Zurko, 527 U.S. 150,165 (1999).
24. In re Alappat, 33 F.3d 1526,1535 (Fed. Cir. 1994). The PTO Director's powers to select BPAI panels and to designate certain BPAI opinions as precedential help to explain why administrative patent judges may be considered "inferior" and not principal officers, for the judges are inferior and subordinate in significant ways to the PTO Director. See Morrison v. Olson, 487 U.S. 654, 671-73 (1988). These limitations on the judges' authority do not detract from their power to render decisions in individual cases concerning important and valuable patent rights. That decisional power is the key to deciding that the judges are more than mere functionaries.
25. In re Alappat, 33 F.3d 1526, 1535-36 (Fed. Cir. 1994).
26. Animal Legal Def. Fund v. Quigg, 932 F.2d 920, 929 (Fed. Cir. 1991).
27. Id. at 928-29.
28. Jnre Alappat, 33 F.3d 1526 (Fed. Cir. 1994).
29. Id. at 1535.
30. Brenner v. Manson, 383 U.S. 519, 523 n.6 (1966).
31. Morgan v. United States, 298 U.S. 468, 481 (1936).
32. 29 Under Freytag, the Court considered special trial judges to be officers because, inter alia, the Chief Judge of the Tax Court could assign special trial judges the power to render final decisions on behalf of the Tax Court. Freytag v. Comm'r, 501 U.S. 868, 882 (1991). Thus, if the PTO Director has statutory power to permit panels of administrative patent judges to render final decisions in particular cases, the judges would still be officers for purposes of the Appointments Clause.
33. 30 Pa. Dep't of Pub. Welfare v. U.S. Dep't of Health &Human Servs., 80 F.3d 796 (3d Cir. 1996).
34. 31 Id. at 802.
35. 32 See, e.g., Ryder v. United States, 515 U.S. 177, 180, 186-88 (1995) (noting the lower court's conclusion that judges on the Coast Guard Court of Military Review were officers and holding that the inclusion of such invalidly appointed judges in a panel could not be considered harmless error); Willy v. Admin. Review Bd., 423 F.3d 483, 491 (5th Cir. 2005) (noting the government's concession that members of the Administrative Review Board, which adjudicates whistleblower claims inside the Department of Labor, are officers for purposes of the Appointments Clause).
36. 33 See Landry v. FDIC, 204 F.3d 1125 (D.C. Cir. 2000).
37. 34 See id. at 1133.
38. Id. at 1134.
39. Officers of the United States Within the Meaning of the Appointments Clause, 2007 OLC Lexis 3, at *58-59 (Apr. 16,2007), available at http://www.usdoj.gov/olc/2007/appointments clausevl0.pdf.
40. Id. at *60.
41. Id. at *61 (noting also that the officer's decision "could" decide the rights of another "even though by law [it was] readily 'subject to revision and correction' on the initiative of the taxpayer").
42. Freytag v. Comm'r, 501 U.S. 868, 886 (1990).
43. 35 U.S.C. § 3(a) (2006) (emphasis added).
44. Id. § 1(a); see also 15 U.S.C. § 1511(4) (2006) (listing the PTO as one of the bureaus "under the jurisdiction and subject to the control of the Secretary of Commerce").
45. 35 U.S.C. § 3(a)(2)(A).
46. Freytag, 501 U.S. at 918 (Scalia, J., concurring); see also id. at 915 (noting that "a subdivision of the Department of the Treasury⋯ would not qualify" as a Department).
47. FEC v. NRA Political Victory Fund, 6 F.3d 821, 824 (D.C. Cir. 1993) (quoting Comm. for Monetary Reform v. Bd. of Governors of Fed. Reserve Sys., 766 F.2d 538, 543 (D.C. Cir. 1985)).
48. Id. (quoting Comm. for Monetary Reform, 766 F.2d at 543).
49. 46 See FEC v. NRA Political Victory Fund, 6 F.3d 821, 822 (D.C. Cir. 1993).
50. Id. at 826.
51. See Freytag v. Comm'r, 501 U.S. 868, 878-79 (1991); see also Nguyen v. United States, 539 U.S. 69, 77-81 (2003).
52. See 35 U.S.C. § 3(a) (1994) (conferring power on the Secretary of Commerce to appoint all officers and employees of the PTO).
53. See Intellectual Property and Communications Omnibus Reform Act of 1999, Pub. L. No. 106-113, §§ 4717, 4731, 113 Stat. 1501, 1501A-521, 1501A-580 to -582.
54. Landry v. FDIC, 204 F.3d 1125, 1131 (D.C. Cir. 2000).
55. For the BPAI's procedures, see Bd. of Patent Appeals &Interferences, Patent &Trademark Office, Standard Operating Procedure 1 (Revision 13): Assignment of Judges to Merit Panels, Motion Panels, and Expanded Panels (2008), http://www.uspto. gov/web/offices/dcom/bpai/sopl.pdf.
56. See id.
57. See United States Patent and Trademark Office, Office of the General Counsel Bios, http://www.uspto.gOv/web/offices/dcom/gcounsel/bios. htm#fleming (last visited Mar. 4, 2009).
58. See Nguyen v. United States, 539 U.S. 69, 82 (2003) (holding that the presence of only a single invalidly appointed judge is sufficient to vacate the judgment of a panel containing a quorum of validly appointed judges).
59. Cf. Edmond v. United States, 520 U.S. 651, 654,666 (1997) (permitting the Secretary of Transportation to ratify the appointment of officers who previously lacked a valid appointment where the Secretary possessed a general power to appoint all officers in the Department and no statute conferred the power to appoint the relevant officials in any other person). There is a line of precedent establishing that an appointment will be considered to be made by a "Head of Department" if, by law, the appointment was subject to approval or approbation by the Head of the relevant Department (e.g., by the Secretary of Commerce). But in United States v. Mouat, 124 U.S. 303 (1888), the Supreme Court held that this theory could not be extended to justify the appointment of an officer where no statute required the concurrence of the Department Head: If there were any statute which authorized the head of the Navy Department to appoint a paymaster's clerk, the technical argument, that the appointment in this case, although actually made by Paymaster Whitehouse and only approved by Harmony as Acting Secretary in a formal way⋯ might still be considered sufficient to call this an appointment by the head of that Department. But there is no statute authorizing the Secretary of the Navy to appoint a paymaster's clerk, nor is there any act requiring his approval of such an appointment, and the regulations of the navy do not seem to require any such appointment or approval for the holding of that position.
60. Id. at 307-08. Nevertheless, it is possible that the Department of Commerce has recognized the constitutional problem with the statutory appointment structure and found some avenue by which, despite the apparent terms of 35 U.S.C. § 6, the Secretary of Commerce and not the PTO Director can bear responsibility for appointing administrative patent judges. Despite an extensive search, however, I have uncovered no evidence that this has occurred or indeed could occur under existing statutory law. The PTO's publicly available materials give no hint that anyone other than the PTO Director is appointing administrative patent judges.
61. See, e.g.. MANUAL OF PATENT EXAMINING PROCEDURE § 1202 (8th ed. 2001, July 2008 revision) (reproducing 35 U.S.C. § 6(a) in the Manual's section on "Composition of the Board" without any suggestion that administrative patent judges are appointed by someone other than the PTO Director). If the agency believes that it has found some way to push responsibility back to the Secretary without a statutory fix, it should be candid about the true location of the appointing power and the legal basis for shifting it.
62. District of Columbia Appropriations Act of 2000, Pub. L. No. 106-113, § 1000(a), 113 Stat. 1501, 1535-36 (1999).
63. Id. § 1000(b), 113 Stat, at 1536. The Intellectual Property and Communications Omnibus Reform Act, which was S. 1948, appears on page 1501A-521 of volume 113 of the Statutes at Large.
64. 59 See H.R. 1908,110th Cong. § 7 (2007) (amending 35 U.S.C. § 6 to provide that "administrative patent judges shall be persons of competent legal knowledge and scientific ability who are appointed by the Secretary of Commerce").
65. See Combined Petition for Panel Rehearing and Rehearing En Banc at 8-15, In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) (No. 2006-1192), 2007 WL 3388523.
66. See id. at 8-9 (noting that the party "became aware of the [constitutional] error underlying the Board's proceedings in⋯ reviewing a July 2007 article" and citing this Essay); see also id. at 8-15 (briefing the Appointments Clause issue with several references to this Essay).
67. See Response to Appellant's Petition for Panel Rehearing and Rehearing En Banc, In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) (No. 2006-1192), 2007 WL 4739046.
68. Id. at 15 n.6.
69. Petition for Writ of Certiorari at 2, Translogic Tech., Inc. v. Dudas, 129 S. Ct. 43 (2008) (No. 07-1303), 2008 WL 1757257.
70. See id. at 2 n.l.
71. See Marcia Coyle, Patent Board's Rulings in Doubt, Nat'l L.J., Apr. 28, 2008, at 1, available at http://www.law.com/jsp/nlj/ PubArticleNLJ.jsp?id=900005509641.
72. Id. at 7.
73. See, e.g., Adam Liptak, In One Flaw, Questions on Validity of 46 Judges, N.Y. Times, May 6, 2008, at A18, available at http//www.nytimes.com/2008/05/06/washington/06bar.html; Patent Judgments Questioned in Appointment Flap, NPR Weekend Edition Saturday, May 10, 2008, available at http://www.npr.org/templates/story/story.php?storyld= 90344019. The New York Times article quoted a spokeswoman for the PTO as confirming that 46 of 74 judges on the BPAI had been appointed under the unconstitutional 1999 statute. The National Law Journal had previously quoted the same spokeswoman as representing that "nearly 40" of the BPAI's 61 judges were appointed under the 1999 statute.
74. See Coyle, supra note 66. While the reason for the disparity is unclear, the two figures were consistent in confirming that approximately 65% of the BPAI judges were appointed under the flawed statute. Random selection from such a pool of judges would produce constitutionally appointed judges for less than 5% of three-judge panels.
75. See Brief for the Federal Respondent in Opposition, Translogic Tech., Inc. v. Dudas, 129 S. Ct. 43 (2008) (No. 07-1303), available at http://www.usdoj.gov/osg/briefs/2008/0responses/2007- 1303.resp.pdf.
76. Id. at 13.
77. The government's brief detailed the speed of the change: On July 21, 2008, the chairman of the Senate Judiciary Committee introduced S. 3295, which was co-sponsored by the ranking minority member of the Judiciary Committee. See 154 Cong. Rec. S6976 (daily ed.). The next day, the bill was discharged from committee, and it passed the Senate by unanimous consent.
78. See 154 Cong. Rec. S7079 (daily ed. July 22, 2008). An identical bill, H.R. 6362, has been pending in the House of Representatives, where it is co-sponsored by the bipartisan leadership of the Judiciary Committee and its Subcommittee on Courts, the Internet, and Intellectual Property.
79. See 154 Cong. Rec. H6088 (daily ed. June 25, 2008).
80. Id. at 13-14.
81. Pub. L. No. 110-313, § 1(a)(1), 122 Stat. 3014, 3014 (2008) (to be codified at 35 U.S.C. § 6)
82. Freytag v. Comm'r, 501 U.S. 868, 884 (1990).
83. Id. at 878. As Justice Souter explained, "no branch [of the government] may abdicate its Appointments Clause duties," by, for example, "adopt[ing] a more diffuse and less accountable mode of appointment than the Constitution requires." Weiss v. United States, 510 U.S. 163, 188 &n.3 (1994) (Souter, J., concurring).
84. See Freytag, 501 U.S. at 878.
85. Translogic Tech., Inc. v. Dudas, 129 S. Ct. 43 (2008).
86. Pub. L. No. 110-313, § l(a)(l)(C)(c), 122 Stat. 3014, 3014 (to be codified at 35 U.S.C. § 6(c)) ("The Secretary of Commerce may, in his or her discretion, deem the appointment of an administrative patent judge who, before the date of the enactment of this subsection, held office pursuant to an appointment by the Director to take effect on the date on which the Director initially appointed the administrative patent judge.").
87. Marbury v. Madison, 5 U.S. (1 Cranch) 137, 162 (1803).
88. 79 Pub. L. No. 110-313, § l(a)(l)(C)(d), 122 Stat. 3014, 3014 (to be codified at 35 U.S.C. § 6(d)).
89. See Ryder v. United States, 515 U.S. 177, 180-88 (1995).
90. See In re DBC, 545 F.3d 1373, 1377 (Fed. Cir. 2008).
91. As this essay was going to the printer, a petition for certiorari filed by DBC was pending at the Supreme Court.
92. See Petition for Writ of Certiorari, DBC v. Patent &Trademark Office, No. 08-1284 (U.S. Apr. 15, 2009), 2009 WL 1061247. The Court has extended the time for the Solicitor General to file a response to June 17, 2009, available at http://origin.www.supremecourt us.gov/docket/08-1284.htm.
93. During the oral argument before the Federal Circuit in DBC, the government confirmed that no applicants had raised the constitutional issue before the Board. See Petition for a Writ of Certiorari, supra note 82, at 8. The certiorari petition in DBC reveals an important practical hurdle to raising the constitutional issue before the Board: the parties before the Board "are not made aware of the composition of the Board until either the day of oral argument or the day the Board's decision is rendered."
94. Id. at 9. Thus, during the briefing of the case, parties could not know whether their case will be assigned to a pael with an invalidly appointed judge.
95. Robertson v. FEC, 45 F.3d 486, 489 (D.C. Cir. 1995).
96. Id.
97. See, e.g., Able v. United States, 88 F.3d 1280, 1288 (2d Cir. 1996) (noting that the "Supreme Court has been inconsistent in its jurisprudence concerning the 'constitutionality' exception to the exhaustion requirement"). For criticism of the rule that agencies may not adjudicate constitutional claims,
98. see Note, The Authority of Administrative Agencies to Consider the Constitutionality of Statutes, 90 Harv. L. Rev. 1682 (1977).
99. See, e.g., Thunder Basin Coal Co. v. Reich, 510 U.S. 200, 215 (1994) (describing as "not mandatory" the rule that '"[adjudication of the constitutionality of congressional enactments has generally been thought beyond the jurisdiction of administrative agencies'" (quoting Johnson v. Robison, 415 U.S. 361, 368 (1974))).
100. If an accused infringer raises the issue, the Federal Circuit might very well be driven to rely on the de facto officer doctrine to avoid the constitutional issue. A pragmatic reason for taking such an approach is once again clear: there is a strong desire not to destabilize years of decisions by the BPAI. While existing case law places strong constraints on the scope of the de facto officer, the doctrine itself contains a fundamental degree of flexibility that could make it attractive in these unusual circumstances.
101. Officers of the United States Within the Meaning of the Appointments Clause, 2007 OLC Lexis 3, at *2 (Apr. 16, 2007), available at http://www.usdoj.gov/olc/2007/appointments clausevl0.pdf (quoting Buckley v. Valeo, 424 U.S. 1,125 (1976) (per curiam)). Consistent with its text, the Supreme Court has interpreted the Appointments Clause to demand observance of fairly specific rules in the appointments process.