The U.S. Supreme Court recently granted three petitions for certiorari challenging the constitutionality of the administrative patent judges of the Patent Trial and Appeal Board (PTAB). The issues before the Court are whether PTAB judges must be appointed by the President and confirmed by the Senate and, if so, whether the Federal Circuit Court of Appeals properly cured the defect by severing a portion of the Patent Act restricting the removal of administrative patent judges (APJs).

Constitutional Challenge to Appointment of PTAB Judges

The Appointments Clause of Article II provides:

[The President] ... shall nominate, and by and with the Advice and Consent of the Senate, shall appoint Ambassadors, other public Ministers and Consuls, Judges of the supreme Court, and all other Officers of the United States, whose Appointments are not herein otherwise provided for, and which shall be established by Law: but the Congress may by Law vest the Appointment of such inferior Officers, as they think proper, in the President alone, in the Courts of Law, or in the Heads of Departments.

APJs are appointed by the Secretary of Commerce, in consultation with the Director of the USPTO pursuant to 35 U.S.C. § 6(a). The issue is whether APJs are "Officers of the United States" and if so, whether they are inferior officers or principal officers. If they are deemed “principal officers,” they must be appointed by the President, and confirmed by the Senate, as opposed to by the Secretary of Commerce.

The Federal Circuit held that the appointment of the APJs by the Secretary of Commerce violates the Appointments Clause, concluding that neither the USPTO Director nor the Secretary of Commerce “exercise[s] sufficient direction and supervision over APJs to render them inferior officers,” citing “[t]he lack of any presidentially-appointed officer who can review, vacate, or correct decisions by the APJs combined with the limited removal power.” In an attempt to “cure” this defect, the Federal Circuit found that “severing the portion of the Patent Act restricting removal of the APJs is sufficient to render the APJs inferior officers and remedy the constitutional appointment problem.”

The Supreme Court granted certiorari on October 13, 2020. The Court consolidated the three granted petitions into one hour of oral argument. The justices must ultimately decide the following issues:

(1) Whether, for purposes of the Constitution’s appointments clause, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the president with the Senate’s advice and consent, or “inferior Officers” whose appointment Congress has permissibly vested in a department head; and (2) whether, if administrative patent judges are principal officers, the court of appeals properly cured any appointments clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. § 7513(a) to those judges.

While the case will be heard during the October 2020/2021 Term, an argument date has not yet been scheduled. We will continue to closely follow this case and will post updates as additional information becomes available.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.