Brief of Amicus Curiae Administrative, Constitutional, and Intellectual Property Law Professors Urging Reversal and Supporting Petitioners in 19–1434 & 19–1452 (U.S. Supreme Court)

40 Pages Posted: 15 Sep 2021

See all articles by Joshua D. Sarnoff

Joshua D. Sarnoff

DePaul University College of Law

Alan B. Morrison

George Washington University - Law School

Robert L. Glicksman

George Washington University - Law School

Dmitry Karshtedt

George Washington University - Law School

Mark A. Lemley

Stanford Law School

Date Written: December 2, 2020

Abstract

The Federal Circuit in these cases concluded that APJs are principal rather than inferior officers under the Appointments Clause. The parties agree that the answer to this question is determined in part by the duties that APJs perform and the degree of supervision over them. It is agreed that APJs serve only as judicial officers, meaning that they have no authority to issue rules or otherwise make policy. The Director of the PTO has administrative supervisory authority over them but has no power to review specific decisions. Although the Director has certain other duties and powers that affect APJs, none of them is significant enough to constitute meaningful supervision of the kind that those officers found to be principal officers in other contexts have possessed. The same is true of other officials in the Department, including the Secretary. And, as noted above, none of them has express authority to review the substance of a decision of an APJ panel in an inter partes proceeding.

The Federal Circuit recognized that this Court has not set forth a definitive test by which to determine whether Congress’ designation of inferior officer status is constitutional. It examined various factors that it found relevant, and it found, on balance, that APJs were not inferior officers. That conclusion is incorrect. As demonstrated below, the “totality of all the circumstances” method is not an administrable way to resolve these questions, nor is it compelled by the Constitution. Instead, amici urge the Court to decide this case by relying on two objective factors that support the conclusion that APJs and other similarly situated officers in other Departments are inferior officers.

First, Congress determined by its careful selection of the method by which APJs are appointed that APJs are inferior officers. Under the express provisions of the Appointments Clause, an officer may not be an inferior officer unless Congress has, by law, so provided. When Congress authorized the Secretary to appoint APJs, the Senate gave up the power to oversee their appointment that it has for principal officers. In addition, when the President signed the AIA into law, he surrendered his power to appoint APJs, although he may still make “suggestions” to the Secretary. There is no reason to suppose that Congress would have agreed to an alternative means of appointment here or in other similar situations unless it concluded that the duties of the office at issue were such that it could confidently leave their appointment to one of the three alterative appointing authorities provided in the Appointments Clause, here the Head of the Commerce Department. As several Justices have recognized, at least where Congress has created an inferior office, there should be a rebuttable presumption that Congress has acted constitutionally. Because there is no basis to second-guess that determination in this instance, such a presumption should apply here.

The second fact supporting the inferior officer designation for APJs is that their position is strictly limited to that of an adjudicator who must follow the law as set forth by Congress and, to the extent applicable, by principal officers in the Commerce Department for which they work. They do not have authority to issue rules or otherwise make policy, except to the extent that any adjudication involves policy choices. They also have no authority to commence enforcement proceedings of any kind, civil or criminal. Their duties to decide cases under the patent laws arise when a party seeks review before the PTO, the Director decides (or delegates the decision to decide) whether review is appropriate, and the case is assigned to specific APJs. Although the patent owner may not seek inter partes review, it knows that, when it commences an infringement action, there is a real possibility that such review will be Federal Circuit will review an inter partes ruling on the validity of a patent, just like one coming from a federal district court. Those facts all support the reasonableness of Congress’ determination that APJs are inferior officers because they have no significant duties inconsistent with that status.

If the Court nonetheless affirms the Federal Circuit’s conclusion that APJs are principal officers, it should reject the Federal Circuit’s remedy of striking the “for cause” limitation on the removal of APJs. That rejection would not affect the result in these cases because the APJ decision in this case was not made by properly appointed officers and thus cannot stand. However, the outcome in other inter partes review cases will be determined depending on whether the Federal Circuit’s remedial ruling is upheld. The United States has taken the position that the elimination of for-cause removal solves the Appointments Clause problem, but that view is mistaken.

Keywords: administrative law, constitutional law, removals, unitary executive, political control

Suggested Citation

Sarnoff, Joshua D. and Morrison, Alan B. and Glicksman, Robert L. and Karshtedt, Dmitry and Lemley, Mark A., Brief of Amicus Curiae Administrative, Constitutional, and Intellectual Property Law Professors Urging Reversal and Supporting Petitioners in 19–1434 & 19–1452 (U.S. Supreme Court) (December 2, 2020). Available at SSRN: https://ssrn.com/abstract=3905557 or http://dx.doi.org/10.2139/ssrn.3905557

Joshua D. Sarnoff

DePaul University College of Law ( email )

25 E. Jackson Blvd.
Chicago, IL Cook County 60604-2287
United States
312-362-6326 (Phone)

Alan B. Morrison (Contact Author)

George Washington University - Law School ( email )

2000 H Street, N.W.
Washington, DC 20052
United States

Robert L. Glicksman

George Washington University - Law School ( email )

2000 H Street, N.W.
Washington, DC 20052
United States
202-994-4641 (Phone)

HOME PAGE: http://www.law.gwu.edu/Faculty/profile.aspx?id=16085

Dmitry Karshtedt

George Washington University - Law School ( email )

2000 H Street, N.W.
Washington, DC 20052
United States

Mark A. Lemley

Stanford Law School ( email )

559 Nathan Abbott Way
Stanford, CA 94305-8610
United States

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