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Law Professor Making Trouble,

and I mean that in the best possible way:

The U.S. Patent and Trademark Office may have a major problem on its hands -- the possibly unconstitutional appointment of nearly two-thirds of its patent appeals judges.... The flaw, discovered by highly regarded intellectual property scholar John Duffy of George Washington University Law School, could also afflict the appointment of nearly half of the agency's trademark appeals judges.

A petition raising the issue has just been filed in the U.S. Supreme Court by a company whose patent was rejected by a three-judge Board of Patent Appeals and Interferences panel. That panel decision was subsequently affirmed by the U.S. Court of Appeals for the Federal Circuit, which set aside an $86.5 million infringement verdict won by the company.

The company's petition, drafted by veteran high court litigator Robert Long of Washington's Covington & Burling, contends that one of the three panel judges in its case was named to the board in violation of the Constitution's appointments clause. Translogic Technology v. Dudas, No. 07-1303.

The petition relies heavily on Duffy's analysis, which the professor published in an online IP journal....

Here's the opening paragraph of Duffy's article:

Under 35 U.S.C. ยง 6, administrative patent judges of the Board of Patent Appeals and Interferences (BPAI) are appointed by the Director of the Patent and Trademark Office (PTO). That method of appointment is almost certainly unconstitutional, and the administrative patent judges serving under such appointments are likely to be viewed by the courts as having no constitutionally valid governmental authority.

Read the rest of the piece (it's only 9 pages long) for more.

Thanks to How Appealing for the pointer.

Tony Tutins (mail):
Figuring that the Patent Office antedated the Commerce Department, I suspected that the appointment power had originally been vested in the Commissioner (whatever) of Patents, thus this issue was a tempest in a teapot.

But, according to the brief history of patents on the Ladas and Perry website, the 1861 legislation establishing what I believe is the original patent appeals board provided that The examiners in chief were to be appointed by the President on the advice and consent of the Senate. Thus even letting the Secretary of Commerce appoint the BAPI judges represents a relaxation of the original requirement.
4.29.2008 6:49pm
Dave2L (mail) (www):
Could Congress pass a law instituting all the prior rulings? Would that make the rulings subject to Article III review? What possible problems might arise in that review? Could a ruling rendered by an unconstitutionally appointed judge but instituted via legislation run afoul of due process? I'm thinking here of Robert's reasoning in Medellin that Congress could enact legislation giving domestic effect to all ICJ rulings. Could Congress not also do the same for BPAI rulings?

It seems to me it would be a huge waste of our tax dollars to simply throw out all of the work that went into the rulings on the basis of a (admittedly important) technicality. If it can, should Congress act in this case?
4.29.2008 7:17pm
Guest forgetting where he placed his log-in information (mail):
How are the actions of the BPAI judges any different than the actions of IRS Office of Appeals officers deciding internal administrative proceedings? (Or are their actions to be found unconstitutional as well?)
4.29.2008 7:22pm
Tony Tutins (mail):
Those wanting an ex post facto fix up should notice that the company appealing their patent's rejection by a three-judge Board of Patent Appeals and Interferences panel were not made content by the subsequent affirmation of that panel decision by the U.S. Court of Appeals for the Federal Circuit,
4.29.2008 7:24pm
Lior:
[IANAL] Is there a kind of finality ("statute of limitations") for court rulings, or is it the case that every past ruling of an unconstitutionally constituted BPAI panel can now be reopened?
4.29.2008 7:27pm
Dave2L (mail) (www):
Tony-

Agreed that there will be some that would want to overturn the rulings. But isn't there likely to be as many who would want to keep the rulings, thus protecting their patents? And is the latter group not likely to be more politically powerful? I imagine big business does not want a giant disruption in their patents. And if they had to do things over again, aren't many of the losers likely to lose again? That would give a strong disincentive to lobbying against congressional action.

I'm not a patent lawyer by any means, and don't know the realities of the BPIA rulings. I am just wondering if anyone can see any obvious flaws in the idea of congressional action.

Lior: If a ruling is unconstitutional, it's unconstitional. There is no statute of limitations on unconstitutionality.
4.29.2008 7:48pm
Jay:
"Lior: If a ruling is unconstitutional, it's unconstitional. There is no statute of limitations on unconstitutionality."

Well, that's really overbroad--people waive or forfeit their constitutional claims all the time. The question here would be whether the defect in appointments it so severe as to make anything the judges did simply void, as if someone not confirmed by the Senate had been acting as an Article III judge for 10 years.
4.29.2008 8:02pm
Dave2L (mail) (www):
Jay-

This isn't a procedural question. If SCOTUS determines that that the judges had not power to issue rulings, then the rulings have no effect. I don't see how one can waive out of not being bound by an otherwise meaningless judgment. But, I may be wrong.
4.29.2008 8:10pm
PersonFromPorlock:
Dave2L:

Lior: If a ruling is unconstitutional, it's unconstitional. There is no statute of limitations on unconstitutionality.

True, but there's always "compelling government interest" as a reason for ignoring old unconstitutionalities (if that's a word).

Really, the sensible thing to do is give everyone who applies a patent and let them all fight it out in court. That's more or less what happens, anyway.
4.29.2008 8:13pm
alias:
Regardless of what happens, this is pretty cool for Prof. Duffy. I've never heard of a law review article having this much impact. It often happens that professors "discover" something, and either...their arguments are shaky, their "discovery" involves a standard rather than a rule, and reasonable people can disagree about it, there are a bunch of caveats, or their "discovery" isn't of much significance... this one might be real.

On the other hand, the cert petition didn't raise the argument until the rehearing petition at the Federal Circuit. The petitioners' excuse is that Duffy hadn't written his article yet. I'm not an expert on the Supreme Court, but my guess is that the Court might wait for another cert petition in which it has the benefit of an opinion below of some kind.
4.29.2008 8:19pm
Dave N (mail):
Law Professor Making Trouble, and I mean that in the best possible way
As opposed to the worst possible ways, such as blogging. :-)

Sorry. I couldn't resist.
4.29.2008 9:03pm
Lior:
Dave2L: SCOTUS rules all the time that a Federal agency didn't have the power to issue this or that regulation. Does that mean that past effects of the regulation are automatically voided? For example, when a federal criminal law is struck down because it's unconstitutional, is it the case that everyone currently serving time under this law is immediately released? that everyone who has ever been convicted under the law has their record expunged?
4.29.2008 9:04pm
OrinKerr:
On the other hand, the cert petition didn't raise the argument until the rehearing petition at the Federal Circuit. The petitioners' excuse is that Duffy hadn't written his article yet. I'm not an expert on the Supreme Court, but my guess is that the Court might wait for another cert petition in which it has the benefit of an opinion below of some kind.

That seems right to me. The excuse that a professor hadn't written an article yet explaining the lawyer's argument is a pretty lame excuse for why a lawyer didn't make his argument in a timely way.
4.29.2008 9:05pm
Dave2L (mail) (www):

...[W]hen a federal criminal law is struck down because it's unconstitutional, is it the case that everyone currently serving time under this law is immediately released? that everyone who has ever been convicted under the law has their record expunged?


As far as I can tell, yes. If a law or regulation is not promulgated under valid governmental authority, then it is not a law or regulation. Hence, any "conviction" under that law is not really a conviction.

I feel like I've fallen down the rabbit hole on this one. Is there something I am missing? If so, please tell me what the authority would be to keep someone in jail for violating a law that is not really a law. Some sort of judicial determination that the person could have been convicted of a different law? That would run into numerous constitutional problems.
4.29.2008 9:26pm
Dave2L (mail) (www):
Before it gets raised, let me point out that of course if there is still an appeal pending of a law deemed unconstitutional by a lower court, any release of prisoners would probably be stayed pending exhaustion of appeals. But once those appeals are done, what authority is there to continue holding someone for breaking a law that is not a law?
4.29.2008 9:29pm
CrazyTrain (mail):
But once those appeals are done, what authority is there to continue holding someone for breaking a law that is not a law?

The collateral order doctrine.
4.29.2008 11:37pm
Terrivus:
The excuse that a professor hadn't written an article yet explaining the lawyer's argument is a pretty lame excuse for why a lawyer didn't make his argument in a timely way.

That totally jumped out at me, too, when I read the cert petition. I mean, fine, admit that you didn't raise it below, and come up with some arguments why that shouldn't preclude granting cert. But saying that a professor hadn't written the law review article you got your main argument from? Wow. Points for honesty, I guess, but that and $2 gets you a tall Starbucks coffee.
4.29.2008 11:51pm
Dave N (mail):
Terrivus,

Where can you get a tall Starbucks coffee for only $2?
4.29.2008 11:56pm
Tony Tutins (mail):

Where can you get a tall Starbucks coffee for only $2?


A tall drip? Practically anywhere.
4.30.2008 2:11am
Dave2L (mail) (www):
CrazyTrain-

the collateral order doctrine would certainly allow you to file an interlocutory appeal to determine the constitutionality of a law you have been charged with breaking. But I fail to see how in any way it might be used to keep a person imprisoned if the law they are charged with has already been found to be unconstitutional.
4.30.2008 2:46am
David Schwartz (mail):
But once those appeals are done, what authority is there to continue holding someone for breaking a law that is not a law?
The same authority that allows you to hold someone who just so happens to be innocent. Any system made by human beings will make some mistakes, and you can lose your rights by failing to raise them at the right time.

Must we retroactively undo all the affects of criminal convictions without Miranda warnings before Miranda?
4.30.2008 8:34am
Eugene Volokh (www):
It turns out that there's a complex body of law about when new legal doctrines require the release of prisoners who were convicted before the doctrines were announced, and whose convictions would have violated the doctrine had the doctrine been in existence. There's also a separate body of law about when the invalidity of a government official's appointment invalidates the official's past decisions. I can't tell you the rules off the top of my head with complete confidence (these aren't quite my fields), but I just want to stress that this isn't virgin territory -- there are relatively well-understood answers out there.
4.30.2008 10:04am
ParatrooperJJ (mail):
So what the author is saying is that the appointment authority can not be delagated down to lower officers of a department?
4.30.2008 10:32am
David Schwartz (mail):
So what the author is saying is that the appointment authority can not be delagated down to lower officers of a department?
Precisely. See Freytag v. Commissioner:
The Appointments Clause prevents Congress from distributing power too widely by limiting the actors in whom Congress may vest the power to appoint. The Clause reflects our Framers' conclusion that widely distributed appointment power subverts democratic government.
4.30.2008 10:52am
D.A.:
Orin and alias,
I would agree with you except the petitioner made the explicit argument in a petition that the CAFC denied. Couldn't a court always prevent review of a particular issue by denying to consider the issue?
Here, the issue is presented clearly, and it's the only issue in the case. Because this was a direct appeal from the Board to the CAFC, there was no intermediate district court opinion to muddle things up and set the stage for a confusing ruling. Instead, there's a single clear issue of law, that the Supreme Court can address without complicating factors. That seems like a great reason to grant cert.
4.30.2008 11:56am
D.A.:
Which is to day, even if the CAFC had considered the issue, review by the SUpreme Court would have been de novo.
4.30.2008 11:58am