Challenge to BPAI Appointments Moves to Supreme Court

Translogic Tech. v. Dudas (on petition for certiorari 2008)

In 2007, Professor John Duffy wrote a Patently-O Patent Law Journal article challenging the constitutionality of the current system for appointing administrative patent judges. The Patent Act requires the Director of the PTO to appoint BPAI judges. 35 U.S.C. §6. However, under Article II of the constitution, appointment of “inferior officers” such as these may only be delegated as far as a “Head of Department.”  In this case, the head of department would be the Secretary of Commerce – not the PTO Director.

Now, Translogic has repackaged Professor Duffy’s article in its petition for certiorari to the Supreme Court — arguing that the BPAI’s rejection of the Translogic patent during reexamination should be vacated because one of the APJs was unconstitutionally appointed. (Based on the BPAI decision, the CAFC Set aside an $80 million jury verdict against Hitachi).

The question presented:

Under the Appointments Clause of the Constitution, art. II, § 2, cl. 2, Congress may vest the appointment of inferior officers in the President, in the Courts of Law, or in the Heads of Departments. In this case, one of the three members of a panel of the Board of Patent Appeals and Interferences (“Board”) of the United States Patent and Trademark Office (“PTO”) that ruled on the claims of Petitioner’s patent was appointed by the Director of the PTO, who is not the Head of a Department.

The Questions Presented are:

  1. Whether one of the members of the panel of the Board was appointed in violation of the Appointments Clause; and
  2. If so, whether there must be a vacatur of the Board’s decision.

Translogic’s brief is clean and could be an easy grant. It raises questions that the Supreme Court is designed to answer: how the Constitution limits federal law. The only knock is that this issue was not raised at the BPAI or the CAFC (until a rehearing request) – primarily because Professor Duffy’s article was not yet published. 

Notes and Documents:

21 thoughts on “Challenge to BPAI Appointments Moves to Supreme Court

  1. Mr. Slonecker, I would suppose the argument is that the “illegal” panelist tainted the pool during their conference(s) regarding the matter. For all the Court knows, the other panelists may have been undecided and were persuaded to their final positions by the “illegal” panelist. The process could have gone otherwise, of course, but the point is that the three did not each reach his decision in a vacuum, but with the collaboration of the other two.

  2. Andrew Dhuey:

    No decision yet on the BPMC v California Petition.
    Today, April 21, the Solicitor General has been invited to file a brief.

  3. Mr. Slonecker,

    There were three judges on the BPAI panel and they were unanimous in affirming the rejections (One judge wrote a partial concurrence, thinking that some claims were anticipated as well as obvious) (If you go to public pair and type in one of the reexam numbers, like 90/006,392, you can get the 91 page BPAI decision).

    I don’t pretend expertise on determining whether the Supreme Court will decide since two properly appointed judges were on the decision, but I have read in other people’s comments on earlier posts that even a single defective appointment may be sufficient to require correction, even if it wouldn’t matter.

    Since these are reexams, I don’t think you can file RCEs as per MPEP 2272 “Both the examiner and the patent owner should recognize that substantial patent rights will be at issue with no opportunity for the patent owner to refile under 37 CFR 1.53(b), >or< 1.53(d), ** and with no opportunity to file a request for continued examination under 37 CFR 1.114″

    Obviously, if some continuation of the original parent is still pending (who knows?), that could be subject to a continuation, assuming 20 years has not passed from the original filing.

  4. Perhaps an uninformed question, but how many judges were on the BPAI panel and how did they vote? Unanimous? Split? If split, how did the “illegal” judge vote?

    The Supreme Court considers cases as presented. If it turns out that the decision would be sustained even if the “illegal” judge’s opinion was given no weight, then would in effect the Supreme Court be called upon to provide what in essence would comprise an advisory opinion?

    Since I can not recall the last time a case with which I was involved during prosecution was taken on appeal within the USPTO so my familiarity with the governing rules is, at best, quite “rusty”, is there anything in the rules that would have prevented the applicant from filing a continuation after final rejection by the examiner (or perhaps even the BPAI decision) without abandoning the parent application under appeal?

    In mine are incredibly silly questions please extend me the benefit out the doubt as my coffee has not yet kicked in.

  5. “Geez,” I take it that by “clean,” Prof. Crouch meant that the petition presents a purely legal question that would dispose of the whole case, not “entirely free of reasons to deny cert.”

    Some cert petitions ask the Supreme Court to decide a question that it can’t reach without overturning some of the district court’s fact finding,ruling on a bunch of other non-cert-worthy legal issues, or getting entangled in state law.

    Here, the issue is “clean,” in that if the Supreme Court decides to grant the petition, it need only answer one question of federal law of the sort that the Supreme Court answers all of the time. If the petitioner is right (i.e. if the Supreme Court agrees with Duffy), he wins. If he’s wrong, he loses.

    I doubt that the Supreme Court will be sympathetic to the “the law review article making my argument wasn’t published yet” excuse, but stranger things have happened.

    * Also, as far as I know, Mr. Dhuey’s correct about how the Supreme Court’s conferences work.

  6. just curious, that’s essentially correct. When you are in a conference (in my case, tomorrow’s), there are four possibilities:

    1) Denied. Far and away the most likely result. This will usually come in the following Monday’s orders.

    2) Granted. Very rare, of course. This is usually listed in the following Monday’s orders, although occassionally is will come in a Friday afternoon Misc. Order.

    3) Invitiation to the Solicitor General to express his views on whether the court should grant cert. It’s not really an invitation, but rather a command. If the SG says, yes, the court almost always grants cert. If not, there’s still a realistic chance the court will grant.

    4) No action. This is usually where there is another case on the docket which raises the same or very similar legal issue. The court holds such related cases, and decides later what do with them. A common situation is for the court to issue a decision in one of them, and for the related cases, it vacates the lower court decisions with instructions to reconsider in light of the recent decision.

    I might be omitting some other possibilities. I consider myself a good student when it comes to the ways of the Supreme Court — I’m no expert. One of the great joys of my life has been to work with such an expert (Andrew J. Pincus) in the BPMC v. Cal. cert. petition. Even if we’re denied tomorrow, it’s been a thrill.

  7. These comments lose their minimal connection with sanity when the issues go beyond the PTO or the Fed. Cir. Iwasthere’s comment is about all one needs to prove that point. In any event, there is nothing special about Translogic’s case as it relates to the appointment of the Board members issue. If this were a viable attack, why is it not being raised properly in a d.ct. action, or any other appeal from the Board?

  8. About once a year, Professor Crouch reveals his naivete when it comes to the Supreme Court.

    No petition could possibly be described as “clean” where the error complained of was not raised below. The Court will deny cert. This is known as a “vehicle problem.”

    Stick to commenting on the Federal Circuit.

  9. Hal Wegner wrote many years ago in the JPTOS or AIPLAQJ about problems with the way the board is set up. He was less concerned with the appointment process than he was with the fact that the statute allows for “political panels” (my term) to be set up to decide cases in which major policy statements were made. Political panels could comprise for example, the Director and the Commissioner and then some career lackey. The two polies can then decide the case on some political grounds.

    I am neither supporting nor criticizing Hal’s work. Rather, just bringing it back up to the surface.

  10. Translogics could not have raised the argument below bc (a) even if the board had constituted itself (purportedly illegally) and (b) had created the harm – final rejection of claims in reexam case (the ultra virus act) (c) the harm was only cognizable by the courts when the cafc took the side of the unlawful and inferior court (the board) over the lawful district court (valid). en banc and panel rehearing was the ONLY time it could have been properly raised otherwise it was only an advisory opinion. Furthermore, it could not have been raised on remand to the lower court bc the mandate rule would have foreclosed re-opening an issue that could have been raised in the appeal. Fed. R. Civ Pro. and Fed. R. App. Pro is simply not equipped to deal with the dual jurisdictional appeal process the PTO has fashioned from the reexam statutes. All kinds of wackiness is sure to ensue. CAFC needs to bone up on federalism and define the role for the board for what it is: and inferior administrative court – far far below tax court of even contract court.

  11. Andrew Dhuey:
    From your comment may one assume that when a Petition to the Supreme Court is “DISTRIBUTED for Conference of April 18, 2008” (a Friday) a decision to accept or deny is likely to come down the following Monday? Is that always the case?

    Good luck. I hope they take your case.

  12. “The only knock is that this issue was not raised at the BPAI or the CAFC (until a rehearing request)”

    That’s a pretty big knock, Dennis. Especially considering your point about how: “S.1145 includes a provision that would fix the problem.”

    In other words, the petitioner failed to raise the issue at the CAFC, and it looks as though this issue won’t come up in the future. Those are two big knocks against Supreme Court review. It’s not enough that the court below erred; there has to be a “compelling” reason for the Supreme Court to take up the case.

    That’s a tough standard. I’ll find out on Monday if I’ve met it in our petition (BPMC v. California).

  13. “If the Translogic Petition is granted, then it will be a blogosphere first, that a Constitutional issue was first raised on the Internet on Patently-O.com by Professor Duffy’s article. Just another First for Professor Crouch.”

    This is a victory for carrot tops everywhere.

  14. Is this issue somehow unique to 35 USC as it relates to appointment of APJs on the BPAI or does it apply equally to ALL administrative judges in EVERY agency???

    I’m assuming the fix here would have been for someone to stamp Gutierrez’s signature on said APJ’s application material?? You people do know that the PTO advertises these positions on the USAJOBS website for ANY qualified person to apply??

  15. As Prof. Crouch says, the petition is “clean” and the question it presents is the sort of thing the Supreme Court could answer.

    On the other hand, I imagine that the Supreme Court prefers to address arguments that have been presented to the lower courts, and it’s something of an odd case where a law professor comes up with a good argument after the petitioner has already lost his appeal at the panel. Prof. Duffy’s argument might be a very good one, but I could see the Court sitting this one out and waiting for another petition.

  16. It is me Just wondering again, is the Translogic petition for rehearing and rehearing en banc to the Federal Circuit available?

  17. (Paying no heed to Just Visiting) in which case Professor Crouch will have out-shone the en banc Federal Circuit, i.e., Professor Crouch will have accomplished providing a link that was missing due to the Federal Circuit having shirked a petition for rehearing it clearly should have granted.

    The question now is, will Dudas file an Opposition?

    Anybody?, anybody?, Bueller?

  18. Another chance for the Supremes to jump all over the CAFC for failing to do its job. My guess is that cert is granted and the case is immediately sent back down to the CAFC.

  19. Uh, it’s just a petition for cert. Apparently it was filed on the right sized paper and was sent to the right address.

  20. If the Translogic Petition is granted, then it will be a blogosphere first, that a Constitutional issue was first raised on the Internet on Patently-O.com by Professor Duffy’s article. Just another First for Professor Crouch.

  21. I was wondering how this got to the Supreme Court not having been heard below. If anybody else was wondering, Page 5 of the Petition cleared that question up:

    “Petitioner did not raise the Appointments Clause issue in its merits brief to the Federal Circuit because the article by Professor John Duffy exposing the unconstitutionality of the PTO’s appointments process, supra note 1, was not published until July 2007, months after briefing and oral argument were complete. Nonetheless, the Appointments Clause issue was fully developed in the petition for rehearing and rehearing en banc. The Federal Circuit declined to decide the issue when it denied that petition.”

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