DBC v. Patent & Trademark Office, Bd. of Patent Appeals & Interferences - Opposition

No. 08-1284

In the Supreme Court of the United States

DBC, PETITIONER

v.

PATENT AND TRADEMARK OFFICE, BOARD OF PATENT APPEALS AND INTERFERENCES

ON PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

BRIEF FOR THE RESPONDENT IN OPPOSITION

ELENA KAGAN
Solicitor General
Counsel of Record
TONY WEST
Assistant Attorney General
MICHAEL S. RAAB
KELSI BROWN CORKRAN
Attorneys
Department of Justice
Washington, D.C. 20530-0001
(202) 514-2217

QUESTION PRESENTED

Whether the decision of the Board of Patent Appeals and Interferences in this case should be vacated because two of the members of the panel were appointed by the Director of the Patent and Trademark Office rather than the Secretary of Commerce, when petitioner did not raise its Appointments Clause challenge before the Board.

In the Supreme Court of the United States

No. 08-1284

DBC, PETITIONER

v.

PATENT AND TRADEMARK OFFICE, BOARD OF PATENT APPEALS AND INTERFERENCES

ON PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

BRIEF FOR THE RESPONDENT IN OPPOSITION

OPINIONS BELOW

The opinion of the court of appeals (Pet. App. 1a-24a) is reported at 545 F.3d 1373. The opinion of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office (Pet. App. 25a-61a) is not reported.

JURISDICTION

The judgment of the court of appeals was entered on November 3, 2008. A petition for rehearing was denied on January 16, 2009 (Pet. App. 62a-63a). The petition for a writ of certiorari was filed on April 15, 2009. The jurisdiction of this Court is invoked under 28 U.S.C. 1254(1).

STATEMENT

1. The United States Patent and Trademark Office (USPTO) is "responsible for the granting and issuing of patents," subject to the policy direction of the Secretary of Commerce. 35 U.S.C. 2(a)(1). The "powers and du ties" of the USPTO are vested in the "Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office" (Direc tor), who is appointed by the President with the advice and consent of the Senate. 35 U.S.C. 3(a)(1).

When a patent examiner within the USPTO makes an adverse decision on a patent application during original examination or on a patent during reexamination, the disappointed patent applicant or patent owner may ap peal the decision to the Board of Patent Appeals and Interferences (Board). The Board includes, inter alia, the Director, the Commissioner for Patents, the Com missioner for Trademarks, and "administrative patent judges." 35 U.S.C. 6(a) and (b); 35 U.S.C. 134(a) and (b). The members of the Board who are "administrative pat ent judges" are required by statute to be "be persons of competent legal knowledge and scientific ability." 35 U.S.C. 6(a). Each appeal to the Board must be heard by "at least three members of the Board, who shall be des ignated by the Director." 35 U.S.C. 6(b). A patent own er may seek judicial review of an adverse decision of the Board in the United States Court of Appeals for the Federal Circuit. 35 U.S.C. 141, 306.

Between 2000 and 2008, administrative patent judges were "appointed by the Director." 35 U.S.C. 6(a). Since August 2008, they have instead been "appointed by the Secretary of Commerce, in consultation with the Direc tor." Act of Aug. 12, 2008 (2008 Act), Pub. L. No. 110- 313, § 1(a)(1)(B), 122 Stat. 3014 (to be codified at 35 U.S.C. 6(a)). When Congress changed the appointment method in 2008, it authorized the Secretary, "in his or her discretion, [to] deem the appointment of an admin istrative patent judge who, before [August 12, 2008], held office pursuant to an appointment by the Direc tor to take effect on the date on which the Director initially appointed the administrative patent judge." Id. § 1(a)(1)(C), 122 Stat. at 3014 (to be codified at 35 U.S.C. 6(c)). Congress also provided that, in cases involving "a challenge to the appointment of an administrative patent judge on the basis of the judge's having been originally appointed by the Director," "[i]t shall be a defense * * * that the administrative patent judge so appointed was acting as a de facto officer." Ibid. (to be codified at 35 U.S.C. 6(d)). Shortly after the statute was enacted, the Secretary re-appointed all of the current administra tive patent judges who were initially appointed between 2000 and 2008, effective on the respective dates they were appointed by the Director.

2. Petitioner owns a patent that was issued in May 2004 and is directed to a "nutraceutical composition[] comprising a mixture of the pulp and pericarp of the mangosteen fruit." Pet. App. 2a. In October 2004, pur suant to a request filed by a third party, a patent exam iner at the USPTO reexamined the patent and invali dated it on the ground that its subject matter would have been obvious at the time of invention. Id. at 3a-4a.

Petitioner appealed the examiner's decision to the Board. On June 20, 2007, a three-member panel of the Board heard oral argument on the appeal. Pet. App. 27a. On August 24, 2007, the panel affirmed the exam iner's decision. Id. at 25a-61a.

3. a. Petitioner then sought judicial review in the court of appeals, challenging the determination of obvi ousness. Pet. App. 5a. After the close of briefing in the court of appeals, petitioner filed a supplemental brief, arguing for the first time that the Board's decision should be vacated because two of the three administra tive patent judges who had participated in the case had been appointed by the Director. Id. at 6a-7a & n.2. Pe titioner contended that the appointment of administra tive patent judges by the Director violated the Appoint ments Clause, which requires that inferior officers be appointed by "the President alone, * * * the Courts of Law, or * * * the Heads of Departments." U.S. Const. Art. II, § 2, Cl. 2.

The government responded that petitioner had waived any challenge to the appointment of the Board members by failing to raise the issue before the agency or in its opening and reply briefs before the court of ap peals. Pet. App. 6a. The government explained that, if petitioner had raised its objection before the Board, the Board might have chosen to avoid any potential constitu tional violation by convening a new panel with members whom the Secretary of Commerce had appointed prior to 2000. See id. at 9a. The government also argued that the 2008 Act altering the appointment of administrative patent judges had obviated petitioner's constitutional objection, both by authorizing the Secretary to appoint the administrative judges in petitioner's case and to deem their appointments to "take effect on the date on which the Director initially appointed" them, and by recognizing a defense on the ground that each of the judges had been "acting as a de facto officer" at the time the Board issued its decision. § 1(a)(1)(C), 122 Stat. at 3014 (to be codified at 35 U.S.C. 6(c) and (d)).

b. The court of appeals held that petitioner had waived its Appointments Clause challenge by failing to raise it before the Board, explaining that "a party gener ally may not challenge an agency decision on a basis that was not presented to the agency." Pet. App. 7a. The court noted that even if petitioner did not learn which administrative patent judges had been assigned to its case until after its briefs were filed with the Board, it still had an opportunity to raise an Appointments Clause challenge in a post-argument submission or in a motion for reconsideration. Id. at 10a. The court explained that, if the challenge had been raised "before the Board, the Board could have evaluated and corrected the al leged constitutional infirmity." Ibid. As a result, a timely challenge before the Board could have "avoided the unnecessary expenditure of the administrative re sources of the original Board panel, the judicial re sources of [the court of appeals], and the substantial de lay and costs incurred in prosecuting this appeal." Id. at 11a.

Recognizing that "excusal of [petitioner's] waiver is discretionary," the court of appeals considered several factors before declining to take the "exceptional meas ure" of accepting petitioner's invitation "to consider a challenge it failed to timely raise." Pet. App. 12a. The court noted that "permit[ting] litigants like [petitioner] to raise such issues for the first time on appeal would encourage * * * sandbagging." Id. at 13a. The court also considered the 2008 statute (which "eliminat[ed] the issue of unconstitutional appointments going forward"), the lack of "any allegation of incompetence or other im propriety regarding the administrative patent judges" in this case, the likelihood that a remand would simply result in having the case assigned "to the same panel [of the Board]" (each member of which has now been ap pointed by the Secretary), and the fact that the court it self was affirming the merits of the Board's decision. Id. at 13a-14a.1

c. On the merits, the court held that substantial evi dence supports the Board's determination that the pat ent at issue was properly invalidated on obviousness grounds. Pet. App. 15a-24a.

ARGUMENT

Petitioner concedes (Pet. 20) that a court of appeals' decision whether to address "an Appointments Clause challenge raised for the first time on appeal is dis cretionary." In this case, the court of appeals' fact- bound decision not to address petitioner's forfeited ar gument is correct and does not conflict with any decision of this Court or any other court of appeals. Moreover, to the extent that petitioner raises additional constitu tional challenges to the 2008 statute that altered the appointment of administrative patent judges, those ar guments (which the court of appeals also declined to address) lack merit and do not implicate any conflicts in the courts of appeals. There is consequently no sound reason for this Court to depart from its usual practice of refraining to answer constitutional questions in the first instance.

1. Petitioner forfeited its constitutional challenge by failing to present the Appointments Clause issue either to the agency or in its opening brief or reply brief in the court of appeals. As a direct result of that forfeiture, the issue was never considered by the agency or the court of appeals, and this Court should refrain from de ciding the question as a matter of first impression.

a. Because "[t]his Court * * * is one of final re view, 'not of first view,'" FCC v. Fox Television Sta tions, Inc., 129 S. Ct. 1800, 1819 (2009) (quoting Cutter v. Wilkinson, 544 U.S. 709, 718 n.7 (2005)); see Adarand Constructors, Inc. v. Mineta, 534 U.S. 103, 110 (2001) (per curiam), it generally declines to consider arguments that have not been previously addressed. That is espe cially true with regard to constitutional questions. "If there is one doctrine more deeply rooted than any other in the process of constitutional adjudication, it is that [the Court] ought not to pass on questions of constitu tionality . . . unless such adjudication is unavoidable." Department of Commerce v. United States House of Representatives, 525 U.S. 316, 343 (1999) (quoting Spec tor Motor Serv., Inc. v. McLaughlin, 323 U.S. 101, 105 (1944)). Thus, in Fox Television, the Court upheld cer tain FCC orders against a challenge under the Adminis trative Procedure Act, 5 U.S.C. 551 et seq., but it de clined to "decide their validity under the First Amend ment" because the court of appeals had "not definitively rule[d] on the constitutionality of the Commission's or ders." 129 S. Ct. at 1819.

The reasons for declining to consider issues that were not decided below are particularly strong when the litigant that seeks this Court's review failed to present its claims in a timely fashion to the lower court or the responsible Executive Branch agency. Requiring an is sue to be timely raised in the proceedings below serves important purposes. It promotes judicial economy by ensuring that potentially dispositive issues can be re solved at the earliest possible stage, and it discourages "the practice of 'sandbagging,'" i.e., allowing, "for stra tegic reasons," the lower court or administrative body to "pursue a certain course, and later-if the outcome is unfavorable-claiming that the course followed was re versible error." Freytag v. Commissioner, 501 U.S. 868, 895 (1991) (Scalia, J., concurring in part and concurring in the judgment); see also Wainwright v. Sykes, 433 U.S. 72, 89-90 (1977).

Both of those purposes would be served by denying review in this case. Petitioner never raised its constitu tional challenge while its case was pending before the Board. Petitioner also failed to raise the issue in its opening or reply brief before the court of appeals. Al lowing the decisions below to be overturned on the basis of a challenge to the Board's composition that was first raised long after petitioner knew which administrative patent judges would decide its appeal would waste judi cial resources and encourage sandbagging in future cases. Because the Appointments Clause question was neither timely pressed nor passed upon below, the Court should follow its customary practice and refuse to decide the question in the first instance.

b. The court of appeals held (Pet. App. 6a) that peti tioner had waived its constitutional challenge by failing to raise that issue while the case was pending before the Board. In response, petitioner contends that it would have been "impossible" to raise the claim before it knew which Board members would hear its appeal, Pet. 18, and that its failure to raise its constitutional challenge should be excused because an administrative agency cannot "entertain a claim that the statute which created it was in some respect unconstitutional." Ibid. (quoting Robertson v. FEC, 45 F.3d 486, 489 (D.C. Cir. 1995)). Those arguments are unpersuasive.

Petitioner does not contest the creation of the Board (or of the USPTO), but merely the appointment of some of the Board's members, each of whom serves on any particular case only upon designation by agency offi cials. And as the court of appeals observed (Pet. App. 10a), even if petitioner did not know the composition of the panel "until oral argument or until a decision was issued," petitioner still could have challenged the panel's composition "in a post-argument submission or in a mo tion for reconsideration." Oral argument before the Board was held on June 20, 2007, more than two months before the Board issued its decision. See id. at 25a, 27a.

If petitioner had raised its Appointments Clause challenge in a timely fashion, nothing in the governing statutes or in general principles of administrative law would have precluded the Board from remedying the alleged constitutional defect. According to the Board's standard operating procedures, which "create[] internal norms for the administration" of the Board, the Chief Judge or Vice Chief Judge "will approve a revised desig nation" of the judges on a panel "[w]hen satisfied that there is good reason to change the panel already desig nated."2 Board of Patent Appeals and Interferences, Standard Operating Procedure 1 (Revision 12): As signment of Judges to Merits Panels, Motions Panels, and Expanded Panels 1, 6 (Aug. 10, 2005). As a result, if petitioner had raised its objection in a timely fashion (through, for example, a petition to the Chief Adminis trative Patent Judge under 37 C.F.R. 41.3), the agency would have had the power to replace the panel members to whom petitioner now objects. The Director, the Chief Judge, or the Vice Chief Judge might have determined that there was "good reason to change the panel already designated" if, for example, any of those officials wanted to avoid the uncertainty that might arise from a chal lenge to the constitutionality of any Board member's appointment.

Accepting petitioner's claim of futility would ratify a course of action that deprived the agency of any chance to consider measures that would have avoided the al leged constitutional problem. This is consequently an appropriate case to follow the "general rule" that "courts should not topple over administrative decisions unless the administrative body not only has erred, but has erred against objection made at the time appropri ate under its practice." Woodford v. Ngo, 548 U.S. 81, 90 (2006) (emphasis and citation omitted).

c. Even if petitioner had pressed its constitutional argument before the Board, or if its failure to present that issue to the Board could be excused on the ground of futility, petitioner's failure to raise its Appointments Clause challenge in its opening brief or reply brief in the court of appeals would justify that court's decision not to address the question. A court of appeals is not required to address non-jurisdictional arguments that a party seeking appellate review forfeits by leaving them un mentioned in its opening and reply briefs. See, e.g., 16AA Charles Alan Wright et al., Federal Practice and Procedure § 3974.1, at 232-243 & nn.13-19 (4th ed. 2008) (citing cases). Indeed, "'[n]o procedural principle is more familiar to this Court than that a constitutional right,' or a right of any other sort, 'may be forfeited in criminal as well as civil cases by the failure to make timely assertion of the right before a tribunal having jurisdiction to determine it.'" United States v. Olano, 507 U.S. 725, 731 (1993) (quoting Yakus v. United States, 321 U.S. 414, 444 (1944)).

d. Although petitioner concedes (Pet. 20) that the court of appeals had "discretion[]" not to "hear an Ap pointments Clause challenge raised for the first time on appeal," petitioner contends (Pet. 18) that "[w]here a constitutional challenge is timely, it is against this Court's jurisprudence to avoid a decision on the merits of a question under the Appointments Clause." That argument is flawed for two reasons.

First, petitioner's challenge was not raised in a timely manner. Petitioner's reliance (Pet. 18) on Ryder v. United States, 515 U.S. 177 (1995), is misplaced. In Ryder, the Court stressed that the petitioner had "chal lenged the composition of the Coast Guard Court of Mili tary Review while his case was pending before that court on direct review" and had thus "raised his objec tion to the judges' titles before those very judges and prior to their action on his case." Id. at 182 (emphases added). Here, by contrast, petitioner did not raise its Appointments Clause challenge until after the Board had ruled against it and the principal briefs had been filed in the court of appeals. Under these circumstances, petitioner's contention that the court of appeals was re quired to entertain his forfeited challenge directly impli cates the concerns discussed above relating to judicial efficiency and the prevention of sandbagging. See pp. 7- 8, supra.

Second, petitioner is wrong in contending (Pet. 19) that this Court's "jurisprudence" required the court of appeals to address an "untimely * * * Appointments Clause challenge on the merits." As the court of appeals explained, this Court has never adopted such a rule. Pet. App. 12a; see Freytag, 501 U.S. at 893-901 (Scalia, J., concurring in part and concurring in the judgment). This case is distinguishable from those "'rare cas[es]'" in which this Court has "'exercise[d] [its] discretion' to hear a waived claim based on the Appointments Clause." Plaut v. Spendthrift Farm, Inc., 514 U.S. 211, 232 (1995) (quoting Freytag, 501 U.S. at 879).

Like Plaut, those rare cases (see Pet. 19-23) gener ally involved this Court's supervision and protection of uniquely judicial power, and especially Article III pow er. For example, in Glidden Co. v. Zdanok, 370 U.S. 530 (1962), the Court considered whether certain judges on the Court of Claims and the Court of Customs and Pat ent Appeals were Article III judges and thus eligible to sit on federal district courts and courts of appeals. In deed, petitioner quotes (Pet. 19) the Glidden plurality's reference to "a strong policy concerning the proper ad ministration of judicial business." 370 U.S. at 536 (opin ion of Harlan, J.). In Nguyen v. United States, 539 U.S. 69 (2003), this Court prevented a non-Article-III judge from exercising Article III jurisdiction in a criminal case. In Lamar v. United States, 241 U.S. 103 (1916), the Court addressed whether a United States District Judge appointed in Michigan had jurisdiction to preside over a federal criminal trial in New York. Id. at 117- 118. In Freytag, the Court addressed appointments within the Tax Court, which "exercise[d] judicial power to the exclusion of any other function" and was, unlike the Board here, determined by this Court to be "inde pendent of the Executive and Legislative Branches." 501 U.S. at 891.

Unlike the constitutional arguments raised in those cases, petitioner's challenge concerns the appointments of Executive Branch officials and does not affect the authority of any Article III court. See FCC v. Pottsville Broad. Co., 309 U.S. 134, 141 (1940) (contrasting the re lationship between courts in a unified Article III judicial system with the relationship between a court and an ad ministrative agency). No compelling reason exists for excusing petitioner's failure to observe the bedrock pro cedural rule that a non-jurisdictional argument is for feited unless timely asserted. See Olano, 507 U.S. at 731.

2. Even if petitioner had not forfeited its Appoint ments Clause challenge, this Court's review would be unwarranted because the question presented is one of little prospective importance. Administrative patent judges are now appointed by the Secretary of Commerce rather than by the Director of the USPTO. 2008 Act § 1(a)(1)(B), 122 Stat. 3014 (to be codified at 35 U.S.C. 6(a)). The Secretary of Commerce is indisputably a "Head[] of Department[]" under the Appointments Clause. See Freytag, 501 U.S. at 886; id. at 918-919 (Scalia, J., concurring in part and concurring in the judgment).

Petitioner takes issue (Pet. 15 n.3, 24-25) with the new requirement that the Secretary of Commerce ap point administrative patent judges "in consultation with" the Director of the USPTO (2008 Act § 1(a)(1)(B), 122 Stat. 3014 (to be codified at 35 U.S.C. 6(a))), but that consultation requirement creates no serious constitu tional concern. In one of its earliest Appointments Clause decisions, this Court held that a statute under which the Assistant Treasurer (an inferior officer in the Treasury Department) appointed clerks (also inferior officers) was constitutional because the appointments were required to be made "with the approbation of the Secretary of the Treasury." United States v. Hartwell, 73 U.S. (6 Wall.) 385, 393-394 (1868); see United States v. Moore, 95 U.S. 760, 762 (1878) (holding that the Sec retary of the Navy's approval of the report of a board of examiners sufficed to appoint a "passed assistant-sur geon"); see also Appointment and Removal of Inspec tors of Customs, 4 Op. Att'y Gen. 162, 164-165 (1843) (concluding that, under the Appointments Clause, a per manent customs inspector "can be regularly appointed by the Secretary of the Treasury on the nomination of the [district] collector [of customs]"). It follows a forti ori that the "consultation" requirement in the 2008 Act -which imposes fewer limits on the Secretary's ap pointment power, neither requiring the Director to act first nor placing any binding limit on the Secretary's ultimate selection of appointees-is consistent with the Appointments Clause.

3. Petitioner also challenges (Pet. 25-33) two other aspects of the 2008 Act: the Secretary's discretion to deem re-appointments of administrative patent judges to be effective "on the date on which the Director ini tially appointed" them, and Congress's express authori zation of a defense that an administrative patent judge appointed by the Director before August 2008 was "act ing as a de facto officer." § 1(a)(1)(C), 122 Stat. at 3014 (to be codified at 35 U.S.C. 6(c) and (d)). As with peti tioner's principal constitutional argument, those ques tions were not addressed by the court of appeals, which is reason enough for this Court to decline to decide them in the first instance. The resolution of those questions, moreover, would have no impact on the outcome of this case unless the Court considered and accepted peti tioner's forfeited Appointments Clause challenge to the prior method of appointing administrative patent judg es. In any event, petitioner's arguments lack merit and implicate no disagreement in the courts of appeals or conflict with this Court's decisions.

a. The 2008 Act authorizes the Secretary of Com merce, "in his or her discretion, [to] deem" the Secre tary's appointment of that judge "to take effect on the date on which the Director initially appointed the admin istrative patent judge." § 1(a)(1)(C), 122 Stat. at 3014 (to be codified at 35 U.S.C. 6(c)). On August 12, 2008, the Secretary re-appointed all of the current administra tive patent judges who were initially appointed between 2000 and 2008, effective on the respective dates they were appointed by the Director.

Contrary to petitioner's suggestion, it is well estab lished that Congress may retroactively ratify executive actions, as well as authorize retroactive appointments of officers. See, e.g., Swayne & Hoyt, Ltd. v. United States, 300 U.S. 297, 301-302 (1937) ("It is well settled that Congress may, by enactment not otherwise inap propriate, 'ratify . . . acts which it might have autho rized.'") (citation omitted); United States v. Heinszen & Co., 206 U.S. 370 (1907) (upholding against a due process challenge a 1906 statute that ratified duties on imports to Philippine Islands levied by the President during a period of time when Congress had not yet authorized any such tariffs); Quackenbush v. United States, 177 U.S. 20, 26-27 (1900) (recognizing Congress's power to authorize the retroactive appointment of officers of the United States).

Petitioner's reliance (Pet. 26-27) on Plaut, supra, is misplaced. That case involved retroactive legislation that would have set aside the final judgments of Article III courts. The Court in Plaut expressly contrasted that impermissible result with "the miscellany of decisions upholding legislation that altered rights fixed by the final judgments of non-Article III courts or administra tive agencies." 514 U.S. at 232 (citations omitted). Here, the provision that petitioner challenges does not alter any final judgments of Article III courts. Indeed, it does not even alter any rights fixed by judgments of the Board. Instead, it affirms the expectations of the af fected patent owners and licensees rooted in the Board's adjudication of their disputes.

b. The other provision of the 2008 Act that peti tioner now contests states: "It shall be a defense to a challenge to the appointment of an administrative patent judge on the basis of the judge's having been originally appointed by the Director that the administrative patent judge so appointed was acting as a de facto officer." § 1(a)(1)(C), 122 Stat. at 3014 (to be codified at 35 U.S.C. 6(d)). As this Court has explained, the de-facto-officer doctrine "confers validity upon acts performed by a per son acting under the color of official title even though it is later discovered that the legality of that person's ap pointment or election to office is deficient." Ryder, 515 U.S. at 180. The doctrine has deep historical roots, and it reflects this Court's longstanding recognition that "endless confusion would result if in every proceeding before * * * officers their title could be called in ques tion." Norton v. Shelby County, 118 U.S. 425, 442 (1886).

Petitioner contends (Pet. 29) that application of the de-facto-officer doctrine in this case would "conflict[] with the decisions of this Court," but it fails to demon strate any actual conflict. This Court generally weighs at least four factors in considering whether to apply the doctrine. First, the doctrine rests on the "obviously sound policy of preventing litigants from abiding the outcome of a lawsuit and then overturning it if adverse upon a technicality of which they were previously aware." Glidden Co., 370 U.S. at 535 (plurality opinion of Harlan, J.). In Ryder, the Court emphasized the im portance of a timely objection, reasoning that "one who makes a timely challenge to the constitutional validity of the appointment of an officer who adjudicates his case is entitled to a decision on the merits of the question and whatever relief may be appropriate if a violation indeed occurred." 515 U.S. at 182-183. Unlike the private liti gant in Ryder, petitioner did not raise its Appointment Clause challenge in a timely fashion. See p. 11, supra. In these circumstances, the de-facto-officer doctrine "prevent[s]" petitioner from "abiding the outcome of a lawsuit and then overturning it if adverse upon a techni cality." Glidden Co., 370 U.S. at 535 (plurality opinion of Harlan, J.).3

Second, the Court has "found a judge's actions to be valid de facto when there is a 'merely technical' defect of statutory authority." Nguyen, 539 U.S. at 77 (quoting Glidden Co., 370 U.S. at 535 (plurality opinion of Harlan, J.)). The Court has described the difference between an appointment that was improper because of a "technical" defect and one infected by a more significant problem as "the difference between an action which could have been taken, if properly pursued, and one which could never have been taken at all." Id. at 79. Here, there is no dis pute that the administrative patent judges in question were "persons of competent legal knowledge and scien tific ability," as required by statute, 35 U.S.C. 6(a), and they were therefore eligible to serve notwithstanding any technical defect in their appointments.

Third, this Court has invoked the de-facto-officer doctrine to uphold the acts of an improperly constituted administrative commission, see Buckley v. Valeo, 424 U.S. 1, 142 (1976) (per curiam), and unconstitutionally apportioned state legislatures, see ibid. (citing Connor v. Williams, 404 U.S. 549, 550-551 (1972) (per curiam)). Although the Court has been reluctant to apply the doc trine when considering alleged incursions on Article III power,4 such cases implicate the Court's role as guardian of Article III authority and supervisor of the federal courts. Here, by contrast, although the Board performs adjudicative functions, it is indisputably part of an Exec utive Branch agency. See Dickinson v. Zurko, 527 U.S. 150, 154 (1999). Any improper appointment of its mem bers presents no Article III issues.

Fourth, the Court has shown great sensitivity to the practical consequences that rejection of the de-facto- officer doctrine would entail. The doctrine aims to pre vent "the chaos that would result from multiple and rep etitious suits challenging every action taken by every official whose claim to office could be open to question, and * * * to protect the public by insuring the orderly functioning of the government despite technical defects in title to office." Ryder, 515 U.S. at 180 (quoting 63A Am. Jur. 2d Public Officers and Employees § 578, at 1080-1081 (1984)). Here, refusing to give Board deci sions de facto validity would unsettle the expectations of patent holders and licensees.

In addition, whereas application of the de-facto- officer doctrine typically involves a reviewing court's application of judge-made rules governing the appropri ate exercise of remedial discretion, the 2008 Act ex pressly provides that the doctrine "shall be a defense to a challenge" like the one presented here. § 1(a)(1)(C), 122 Stat. at 3014 (to be codified at 35 U.S.C. 6(d)). That directive reflects Congress's evident desire to prevent technical challenges from disrupting settled expecta tions in the manner described above, and it is controlling unless the Constitution precludes Congress from man dating de-facto-officer treatment in the circumstances of this case. Petitioner cites no decision in which this Court has declared unconstitutional a federal statutory provision calling for application of the de-facto-officer doctrine. And in light of petitioner's failure to raise its Appointments Clause challenge either before the Board or in its principal briefs in the court of appeals, the rele vant provision of the 2008 Act is clearly constitutional as applied to this case.

4. Finally, this Court's review of the former method of appointing administrative patent judges is not war ranted because of the limited practical significance of that issue. As petitioner acknowledges (Pet. 8-9 & n.2), there is only one other case in which a party has chal lenged a Board decision rendered by a panel that in cluded judges appointed under the pre-August 12, 2008 appointments scheme. And the plaintiff in that case, In re Hickman, No. 2008-1437, 2009 WL 899806 (Fed. Cir. Apr. 3, 2009), also failed to raise any Appointments Clause objection before the Board.

CONCLUSION

The petition for a writ of certiorari should be denied.

Respectfully submitted.

ELENA KAGAN
Solicitor General
TONY WEST
Assistant Attorney General
MICHAEL S. RAAB
KELSI BROWN CORKRAN
Attorneys

JUNE 2009

1 Because the court of appeals concluded that petitioner had waived its Appointments Clause challenge, the court declined to address the government's alternative contention that the administrative patent judges should be treated as de facto officers pursuant to the 2008 stat ute. Pet. App. 6a n.3, 14a.

2 Under 35 U.S.C. 6(b), a patent appeal within the USPTO is heard "by at least three members of the Board, who shall be designated by the Director." The Director has delegated the authority to designate panel members for individual cases to the Chief Administrative Patent Judge, who is also authorized to redelegate that authority to the Vice Chief Administrative Patent Judge. See U.S. Patent & Trademark Of fice, U.S. Dep't of Commerce, Manual of Patent Examining Procedure § 1002.02(f) at 1000-9 (8th ed., revision 6, Sept. 2007) <http://www. uspto.gov/web/offices/pac/mpep/mpep_e8r5_1000.pdf>.

3 See Andrade v. Lauer, 729 F.2d 1475, 1499 (D.C. Cir. 1984) (holding that a plaintiff seeking to avoid application of the de-facto-officer doc trine must both "bring his action at or around the time that the chal lenged government action is taken * * * [and] show that the agency or department involved has had reasonable notice under all the cir cumstances of the claimed defect in the official's title to office").

4 See Nguyen, supra (ruling on the statutory propriety of permitting a non-Article III judge to sit on a Ninth Circuit panel); Glidden Co., supra (deciding whether two "United States Courts" were Article III or Article I courts).