BPAI Appointments Clause Argument Waived

In re DBC (Fed. Cir. 2008) (

The primary issue in DBC began with Professor Duffy's 2007 administrative law article in the Patently-O Patent L.J. In that article, Duffy noted a constitutional problem with the appointment of BPAI judges. Notably, the 1999 statute required that BPAI judges be appointed by the PTO Director while constitution requires such 'inferior officers' be appointed by either the President or a 'Head of Department' such as the Secretary of Commerce. Later, I found that the vast majority of recent BPAI decision included at least one illegally appointed judge (using Duffy's standard). [LINK] Following these findings, Congress passed an amendment placing the appointment duty in the hands of the Secretary of Commerce. The Bill – now signed into law – includes a retroactive saving clause that would bless prior improperly appointed judges as properly acting as "de facto officer[s]" [Link] The retroactive savings clause is, however, considered constitutionally suspect.

During reexamination, the patentee (DBC) lost its BPAI appeal. At the Federal Circuit, the DBC argued that the BPAI decision should be vacated because two of the three BPAI panel members were 'illegally appointed.' Citing Duffy's Patently-O article, Judge Linn noted the potential appointment problems. However, rather than addressing the issue directly, the Federal Circuit dismissed DBC's argument as waived because the patent applicant had failed to raise the issue before the BPAI panel itself.

If DBC had timely raised this issue before the Board, the Board could have evaluated and corrected the alleged constitutional infirmity by providing DBC with a panel of administrative patent judges appointed by the Secretary. Of course, the Board may not have corrected the problem, or even acknowledged that the problem existed. But in that case, DBC would have preserved its right to appeal the issue.

In exceptional circumstances, the Federal Circuit will consider previously waived arguments. Here, however, the court declined its discretion to do so: "We do not view the circumstances of this case to warrant such an exceptional measure."

Although this case focuses on the particular appointments clause issue, its discussion of waiver may be especially important for those preparing BPAI arguments.

DBC's patent focuses on uses of the mangosteen fruit – apparently one of the ugliest and most delicious fruits around. In the appeal the Federal Circuit also found (1) a substantial question of patentability had been raised [this has become a very low bar] and (2) that the patent claims were properly found obvious based on the prior art despite evidence of commercial success.

Comments

[Matt]

Of course, unless oral arguments are requested at the BPAI, then at time of briefing, the appellant doesn't know what panel will review the case, and so doesn't know if there's an illegally appointed judge to object to.

[Andrew Dhuey]

Matt, the court considered that:

"Even if DBC did not learn of the judges assigned to its panel until oral argument or until a decision was issued, it still had an opportunity to challenge the composition of the panel in a post-argument submission or in a motion for reconsideration. If DBC had timely raised this issue before the Board, the Board could have evaluated and corrected the alleged constitutional infirmity by providing DBC with a panel of administrative patent judges appointed by the Secretary."

page 8.

[6000]

And that's why AD makes the big $ and me and matt don't, yet.

[CS]

And so the Fed. Cir. buried this issue forever, since even if there are Appellants who remain technically capable of raising this question, they must first bring it to the PTO. Since every BPAI judge is now properly appointed, the PTO could simply resend out the same decision, by the same panel (as indicated by the Court). The retroactive savings won't matter with this decision, since a rehearing by the BPAI will presumably cure the problem, since the panel will now be properly appointed.