Scholar Says Botched Law Threatens Patent System The way judges are appointed to the Board of Patent Appeals almost definitely violates the Constitution, says John Duffy, a professor at George Washington University Law School. Duffy wrote a paper suggesting that the problem could invalidate scores of decisions.


Scholar Says Botched Law Threatens Patent System

Scholar Says Botched Law Threatens Patent System

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The way judges are appointed to the Board of Patent Appeals almost definitely violates the Constitution, says John Duffy, a professor at George Washington University Law School. Duffy wrote a paper suggesting that the problem could invalidate scores of decisions.


Now we turn to the Board of Patent Appeals. If that phrase makes you more bored than it holds appeal, bear with me. It's very possible that this very important board that you may never have heard of, this panel which rules on extremely important patent law cases worth billions of dollars, could be comprised of judges who were appointed unconstitutionally. Yes, in 1999, a law changed the way judges are appointed to the Board of Patent Appeals. That law could invalidate many of the decisions the board's made for almost a decade.

A tangible example of what the board does? A couple of years back when Microsoft claimed that Apple stole some of their technology for the iPod, well, that's the case that a board like this might hear. The man who discovered the possible unconstitutionality is our next guest, John Duffy, a law professor at George Washington University Law School. He wrote the telltale paper. Hello, professor.

Professor JOHN DUFFY (Constitutional Law, The George Washington University Law School): Hello.

PESCA: So, why were you looking at the issue in the first place?

Prof. DUFFY: Well, professors have the luxury of looking at what interests them, and there was a case winding its way through the courts at the time involving other legal issues. And I was curious about the case because it had a lot of very complex and interesting legal issues, so I was spending some time just trying to understand them. I thought the case itself was like a really great exam in one of the areas I teach in.

PESCA: Yeah.

Prof. DUFFY: And as I was looking through that I started to look at issues sort of further and further afield from the basic issues in that case out of curiosity. And I ran across this provision and I thought, this certainly can't be right. This simply is not correct. The law in this area is fairly clear, and this isn't constitutional.

PESCA: When you say this couldn't be correct, the law that changed the way that judges were appointed to this board, that's the thing that couldn't be correct.

Prof. DUFFY: That's correct, that's correct. The law stated that the judges on this board are appointed by the Patent Office director. And there's a very small number of ways in which important officials who are called "officers" in the Constitution can be appointed under the Constitution. And the - someone who is an Undersecretary of Commerce, which is the head of the Patent Office, simply doesn't have the power under the Constitution.

PESCA: So maybe the president has the power and maybe the head of the Department of Commerce has the power, but this 1999 law changed who was doing the appointing and you just said that goes against the constitution.

Prof. DUFFY: Yes, that's - that was my first reaction. That's exactly right. And then I began to investigate to try and make sure I wasn't missing anything. Of course, I first looked to see how many other people have talked about this and noticed this, and I thought there would be several articles that see this is a problem. We have to address this.

And I couldn't find anything, which I thought was strange. So I thought for sure I was wrong. There's something I'm missing. But I went through rather carefully and checked every way I could under the doctrine, under the various provisions of the laws to the powers these judges had, to see if they qualified as officers, if they were significant enough. There's a whole set of cases on that.

PESCA: Yeah.

Prof. DUFFY: And after all this checking, I became quite convinced that I was right and the law was wrong.

PESCA: And now that you've gone public. Everyone who has a dog in a fight has been maybe able to knock your case or prove you wrong. Has anyone been able to do that or even try to do that?

Prof. DUFFY: No, no, that has not happened, and even, indeed, before I published this or put this out in the world, I actually talked to several colleagues of mine who teach in the same area - people who worked previously in the government as well who - whose responsibilities include this particular kind of issue of constitutional law. And no one thought I was wrong, and everyone thought I was right, and everyone thought it wasn't a close case.

PESCA: Right. So I guess the big question is, what does it mean if you're right? I mean, good job, you found a flaw. But in the real world what are the consequences?

Prof. DUFFY: Well, the consequences will be significant, I think. The government, in some of its filings, has said that the consequences will be quite traumatic and quite cataclysmic. I think that they are trying to overplay things a little bit. I'm not exactly sure of their strategy. I think their strategy, in part, is to tell the courts, oh, you simply can't follow the Constitution because...

PESCA: Right, they're saying something like, OK, maybe you're right, we made a mistake, but what that means is society as we know it is going to fall apart. They're kind of raising the stakes there.

Prof. DUFFY: Right and that clearly isn't true. It's not going to be a catastrophe with people running through the streets ripping their hair out. It will have significant legal consequences, and many of the decisions that were rendered that are still in the pipeline - in other words, if they're still being adjudicated, are likely to have to be re-adjudicated under a constitutionally-constituted board of appeals.

PESCA: Do you have any idea that if they never change the law, will we have totally different judges? Or is it possible they'd maybe even have the same slate of people there working on the cases.

Prof. DUFFY: Well, if they had never changed the law, the judges would have been appointed by the Secretary of Commerce, which is one of the ways that the Constitution specifies that officials can be appointed. It's impossible to say exactly who would have been appointed by various secretaries of Commerce if the Secretary of Commerce had to pass on these judges.

The whole basis for this particular constitutional provision is the sense among the framers of our Constitution that only very high-level officials who are very close to the electorate should be appointing other people who exercise significant powers in our countries. They want to prevent the diffusion of appointments, in part, because they thought if responsibility of appointing high-level officials was diffused throughout the government, that would sort of weaken accountability.

PESCA: Right.

Prof. DUFFY: And that, I think, is - that, I think, is this basic principle that's at issue in this case, and we can't tell, but I do think in the - someone who is a Cabinet Secretary is very, very careful about making an appointment. Because if something goes wrong with that appointment, it will be a black mark.

PESCA: Right, it could bounce back to them, and there you get to the accountability. But one thing that strikes me as unfair, and it may be following the law, but this law was passed in 1999 during the Clinton administration. And most of the judges since then, maybe Clinton and his administration got a couple in, but they've all been appointed by the Bush administration. So if this law is proved unconstitutional, and the judges were all there in error, it's like a whole administration for two terms didn't get to appoint any of their judges.

Prof. DUFFY: Well, then I think the administration should change this very quickly.

(Soundbite of laughter)

PESCA: Yeah.

Prof. DUFFY: They still have time left. There's not a new president. We don't even know who one of the nominees will be.

PESCA: Right.

Prof. DUFFY: So, there's still time. If they change this very quickly, they will get the opportunity, the Secretary of Commerce would get the opportunity to appoint. And the appointments could be done rather swiftly. It's not - unlike the process of confirming people through the Senate, which historically has taken a fair bit of time, an appointment by a Cabinet Secretary can be done rather swiftly.

There was a fix, a legislative fix, that was put into legislation that then-pending patent legislation - six weeks after I originally wrote this article. It passed the House of Representatives. So six weeks after I put this out, published this, there was a legislative fix that was in Congress. It passed the House of Representatives. It's now pretty clear that it's died in the Senate.

PESCA: Right.

Prof. DUFFY: So, I think the administration should get Congress to act a little bit more swiftly on this.

PESCA: Are you a hero among legal scholars today?

Prof. DUFFY: I doubt it.

(Soundbite of laughter)

PESCA: They're not retiring your jersey or anything like that?

Prof. DUFFY: No, I still have a large stack of papers on my desk.

PESCA: And finally, the exact moment you figured it out, was it eureka? Did it work like in the movies, where you said, hey, wait a minute! And you circled something? Do you remember that moment?

Prof. DUFFY: Yes, I actually do remember that moment. I was looking through the statute, I had the statute in front of me, and I was thinking about lots of different issues, other legal issues. And I read this provision and I said, now, that can't be right. There's something wrong here. And I thought, surely, how can anybody miss this? How could this happen?

And it was a, you know, it was something where I thought, this is kind of incredible, actually. Began doing searches and figuring out how many people have talked about this, and when I found no one had talked about this, I did think that is was somewhat significant.

PESCA: John Duffy, law professor at the Washington - George Washington University School of Law. Thank you, Professor Duffy.

Prof. DUFFY: Thank you very much.

PESCA: Thank you for protecting the Constitution.

(Soundbite of laughter)

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