Patent Appeals Board Constitutionality Targeted in Federal Circuit

Intellectual property attorneys are eagerly anticipating a ruling on whether the appointment of certain patent appeals board attorneys since March 2000 violated the appointments clause of the constitution. The U.S. Court of Appeals for the Federal Circuit is set to hear arguments Wednesday in a case that questions the constitutionality of the three-judge board that rejected a company's patent last year.

The case, In re DBC, is the first to come before the Federal Circuit since attorneys for Translogic Technology raised the issue in a petition for rehearing en banc. The Federal Circuit rejected the petition earlier this year. DBC's lawyers, including Lawrence Jarvis of McAndrews, Held & Malloy, did not immediately know about Translogic's petition —” and the general issue —” when DBC filed a reply brief in May in its challenge of a patent appeals board decision.

Jarvis will argue the case Wednesday for DBC, which has applied for a patent for a beverage made from the mangosteen fruit. Jarvis is asking the Federal Circuit to vacate the decision of the Board of Patent Appeals and Interferences that rejected a DBC patent, arguing that two of the judges on the panel were improperly appointed. The administrative judges on the panel comprise "inferior officers" and can only be appointed by the president, the courts or the head of a department. In the DBC case, Jarvis included in a supplemental brief the petition for cert filed by Translogic attorney Robert Long of Covington & Burling.

In the eyes of the government, Translogic and DBC don't have a case because, among other things, the issue was raised too late in the game. Justice Department attorney Kelsi Corkran says in a brief that DBC lawyers should have raised the issue before the patent appeals board, not the Federal Circuit.

"The rule against considering late-raised claims should apply with particular force here, where DBC failed not only to raise the issue before the board but also in its opening brief or reply brief before this court," Corkran wrote in a brief in August.

President George Bush in August signed a bill that says the Secretary of Commerce will appoint patent appeal board members in consultation with the director of the Patent and Trademark Office. Commerce Secretary Carlos Gutierrez immediately re-appointed Administrative Patent Judges Michael Tierney and James Moore —” the two judges who are at the center of the DBC case.

The new law has a built-in defense to challenges raised to the constitutionality of the judges: the de facto doctrine. Government lawyers argue that the appeals board judges in question were eligible to serve except for a "€œtechnical" defect.

George Washington University Professor John Duffy is credited with discovering the flaw in the patent appeals board appointments. Duffy published an article in July 2007 on the popular intellectual property blog Patently-O in which he made his argument.