Are The Last Eight Years Of Patent Board Appeals About To Be Tossed Out?

from the that-would-be-a-big-one dept

Mon, Apr 28th 2008 2:22pm — Mike Masnick

A little known lawsuit that has received very little attention could have a massive impact on our patent system. It turns out that, thanks to a procedural change in the law in March of 2000, nearly 2/3 of the appointments to the patent appeals board may have been unconstitutional. This could, potentially, invalidate any ruling involving one of those "unconstitutional" judges over the past eight years. Since the rulings involve panels of 3 such judges, an awful lot of the appeals will have involved one of the now questionably appointed judges. The details are very much inside baseball, but the quick summary is that the law was changed allowing the director of the Patent Office to appoint these judges, rather than the Secretary of Commerce. Yet, the Appointments Clause of the Constitution says that such appointments may only be made by the President, the courts or the heads of a department. The director of the USPTO is not considered a head of a department, as it's a part of the Commerce department (so appointments would need to come from the Secretary of Commerce to be Constitutional).

While the issue was first raised by a well-regarded scholar last year, the argument is now being put to the test in court by a company that felt the Board ruled incorrectly on one of its patents, and raised that issue as a part of an appeal. The Patent Office and the Justice Department are claiming that the company can't raise this issue now because it had not been used earlier (an appeal is supposed to be on the same issues raised earlier). Even if that's the case, then you can bet some other company will eventually raise this issue as well -- so the courts are going to need to deal with it sooner or later. Given the ramifications of a ruling saying that such appointments were unconstitutional (potentially invalidating an awfully large number of rulings), it would be surprising if the courts actually went that way. While it is reasonable to question why the head of the USPTO should be allowed to appoint these judges (there's a potential conflict of interest), pulling eight years of rulings into question would present a legal nightmare over what, honestly, seems like a minor procedural issue. There are plenty of problems with the patent system, but I'd rather they not be dealt with using minor procedural "gotchas."

Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.

Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.

While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.

–The Techdirt Team

Filed Under: constitution, patent appeals board, patents
Companies: uspto

12 Comments

If you liked this post, you may also be interested in...

Reader Comments

Subscribe: RSS

View by: Time | Thread

Yeah right, 28 Apr 2008 @ 2:54pm

Watch the supreme court come in and save the butts of the Patent Office. There's no WAY they want to deal with the ramifications of declaring 8 years worth of judgements to be null. Ain't happenin. Think of all the crap which would start to fly and the paperwork, not to mention the backlog it would cause.
[ link to this | view in thread ]
Haywood, 28 Apr 2008 @ 2:57pm

I'll take what I can get
"I'd rather they not be dealt with using minor procedural "gotchas.""

I see all the time our officials, elected and appointed; doing what they can get by with, not what is delegated by law. I'd love to see a decade of court cases overturned. Sort of like how the make an example out of one offender to discourage similar behavior.
[ link to this | view in thread ]
Joshua, 28 Apr 2008 @ 3:13pm

Re: I'll take what I can get
I agree. We can't afford to let our government break the ultimate law of the land just because it would be inconvenient for them to be accountable. Invalidating that many rulings would also bring attention to our failing patent system. If the patent office was doing their jobs correctly, 8 years of invalidated patents suddenly becoming valid again would not be a major issue.
[ link to this | view in thread ]
bobbknight, 28 Apr 2008 @ 4:19pm

Gotcha
Huummmm it's the gotchas that gave us the Miranda ruling and as real civics is just not taught anymore in school, we leave it up to the courts to protect our rights.

Lawyers are good at gotchas, it's their jobs to be good at them.
[ link to this | view in thread ]
Jason, 28 Apr 2008 @ 5:41pm

Huh?
The constitution of the United States of America is now "a minor procedural gotcha" ?

*big sigh*
[ link to this | view in thread ]
Grady, 28 Apr 2008 @ 5:57pm

Simple way to correct it...
Dismiss the judges in 2010, and re-instate the old "law." Nothin' major. Nothin' to stress about.

Wait, this is the US gov't....they won't do somethin' that simple....
[ link to this | view in thread ]
Anonymous Coward, 28 Apr 2008 @ 6:35pm

Hi would you mind shutting down your blog because you don't have the right to say anything because the first amendment's right to free press and free speech are just minor clauses.
[ link to this | view in thread ]
Mike (profile), 29 Apr 2008 @ 1:01am

Re:
Hi would you mind shutting down your blog because you don't have the right to say anything because the first amendment's right to free press and free speech are just minor clauses.

This is quite different than that. It's not that the clause is minor, but the specific action is minor. The difference between the director of the PTO making the appointment and the head of Commerce making it is marginal. If it was done properly, the results would have been nearly identical. It's just that Dudas would have made recommendations to the Sec of Commerce and the same results would have happened.

My point is that the impact is minor.
[ link to this | view in thread ]
rwahrens (profile), 29 Apr 2008 @ 4:02am

Don't buy it.
No, that difference isn't minor.

It's like your wife appointing her sister as your financial attorney - without having a Power of attorney from you to authorize the action, then having her sister empty your bank account.

That isn't a "minor" action.
[ link to this | view in thread ]
Mike (profile), 29 Apr 2008 @ 4:07am

Re: Don't buy it.
It's like your wife appointing her sister as your financial attorney - without having a Power of attorney from you to authorize the action, then having her sister empty your bank account.

Um. No. It's actually nothing like that. The first part of the sentence assumes that it was done behind the back of the Sec of Commerce -- which there's no evidence to suggest.

The second part then suggests that the panel acted improperly once appointed, which, again, there's no evidence to suggest.
[ link to this | view in thread ]
Richard Ahlquist (profile), 29 Apr 2008 @ 4:33am

Ahhhh the old...
corporate mind trick!

"These are the patent drones your are seeking.. There is nothing to see here.... Move along....."

"There we distracted them for 8 year now blast em!"
[ link to this | view in thread ]
MLS, 29 Apr 2008 @ 7:42am

Re: Re:
You are correct in noting that had the appointment of these Administrative Law Judges (ALJs) been performed by the Secretary of Commerce based upon input from the USPTO Director, the outcome of who was eventually appointed would likely have been the same.

Nonetheless, the constitutionality of their appointment is now in question, and one can only wonder the ripple effect this will have should the Supreme Court agree that only the Secretary of Commerce has the constitutional power to make such appointments.

A case raising this issue is now before the Supreme Court in the form of a petition for certiorari, which the court is free to accept or deny. If it is denied (there are legal issues of a technical nature that may lead to its denial), you can be sure the issue will be raised immediately in another case.
[ link to this | view in thread ]