In re DBC: Federal Circuit hears Challenge to Appointment of Patent Judges

Earlier this month the U.S. Court of Appeals for the Federal Circuit heard a challenge to the appointment process for federal administrative patent judges. The appellants, interestingly enough a juice company who had been denied a patent for a new mangosteen fruit drink, claim the judge that rejected their patent application had been appointed in a manner that violated Article II’s appointment clause. Until President Bush singed a new bill into law this past August which vested the Secretary of Commerce with the power to appoint patent judges, the director of the Patent and Trade Office had been appointing administrative patent judges.

Under Article II of the Constitution the President has the authority to appoint principal officers with the advice and consent of the Senate. In the case of inferior officers however- a category in which administrative patent judges fall- Congress may vest the appointment power in the president, in the courts, or in the “heads of departments.” DBC, along with George Washington Law Professor John Duffy who first broke the patent judge appointment flaw in an online article, argue that the director of the PTO does not qualify as a “head of department” and, because two of the three judges who voted to reject their mangosteen juice drink patent were appointed in an unconstitutional manner, the panels decision should be thrown out.

The government does not concede that the director of PTO can not appoint administrative patent judges. But, if the process is indeed unconstitutional, the government is relying on the so called “de facto rule” which simply means a judges decision should still stand even if it is later discovered the judge was not properly in office or had been appointed in a flawed manner.

Were the court to rule that the appointment of patent judges prior to the new law violated the appointment clause of the Constitution- is the Federal Circuit really ready to throw out every single patent rejection or approval made by any judge appointed by the Director of the PTO rather than the Secretary of Commerce? Though the decision of the Federal Circuit is yet to come, this is one controversy that is likely to be solved by the U.S Supreme Court. SCOTUS is currently considering a petition of cert for a similar case.

The text of John Duffy’s initial article is available here.

Posted by Todd Garvey