A US law professor has uncovered a constitutional flaw in appointing judges who decide patent appeals and disputes, which could undo thousands of patent decisions concerning claims worth billions of dollars.
The basic point John F. Duffy, who teaches at the George Washington University Law School, has raised does not appear to be in dispute. Since 2000, patent judges have been appointed by a government official without the constitutional power to do so.
“I actually ran it by a number of colleagues who teach administrative law and constitutional law,” Duffy said, recalling his own surprise at finding such a fundamental and important flaw. He thought he must be missing something. “No one thought it was a close question.”
Charles Miller, a spokesman for the justice department, said the government had no comment. But the justice department has already all but conceded that Duffy is right. Given the opportunity to dispute him in a December appeals court filing, government lawyers only said they were at work on a legislative solution.
They did warn that the impact of Duffy’s discovery could be cataclysmic for the patent world, casting “a cloud over many thousands of board decisions” and “unsettling the expectations of patent holders and licensees across the nation.” But they did not say Duffy was wrong.
If it was a legislative mistake, it may turn out to be a big one. The patent court hears appeals from people and companies whose patent applications were turned down by patent examiners, and it decides disputes over who invented something first. There is often a lot of money involved.
The problem Duffy identified at least arguably invalidates every decision of the patent court decided by a three-judge panel that included at least one judge appointed after March 2000.
The appeals court, the US court of appeals for the federal circuit, ducked the question in January, which was easy to do because the company on the losing side raised it only after the court had already issued its decision. The company, Translogic Technology Inc., was frank in explaining the delay: It had not known of the issue until Duffy published his article. Last month, it asked the supreme court to consider the question.
Some provisions of the US constitution are open to interpretation, but some are clear.
The constitution says that some government officials may be appointed only by the president, the courts or “heads of departments” like the attorney general or the secretary of commerce. But a 1999 law changed the way administrative patent judges are appointed, substituting the director of the Patent and Trademark Office for the secretary of commerce. Jennifer Rankin Byrne, a spokeswoman for the office, said 46 of the 74 judges on the patent court, the board of patent appeals and interferences, were appointed under the new law.
“That method of appointment is almost certainly unconstitutional,” Duffy wrote in his paper, first published last summer on an influential patent law blog.
The office of legal counsel at the justice department, which is supposed to catch constitutional problems in pending legislation, only last year published a 41-page note on the importance and limits of the appointments clause.
People who wield the delegated sovereign powers of the federal government are officers subject to the appointments clause, the memorandum said, and judges certainly wield such power.
The supreme court will soon decide whether to take up the question in the case involving Translogic, one with $86 million at stake. “An improperly constituted tribunal should not be deciding the case,” said Robert A. Long, a lawyer for Translogic. “You have to go back and have the decision made by a properly constituted panel.”
©2008/THE NEW YORK TIMES