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(Another) Challenge to the Constitutionality of BPAI Appointments

By Peter Zura

Aldor Solutions Corp. v. Dudas, (1:08cv897), U.S. District Court for the District of Columbia

Plaintiffs are the co-owners of patent application Serial No. 09/694,095, ("the '095 application") titled "On-line System For Memorial, Legacy, Funeral and Remembrance Arrangements, Services and Transactions." During prosecution, the examiner rejected the application under 102(e)/103 using various combinations of 9 prior art references. On appeal, the BPAI upheld the rejections.

Pursuant to 35 U.S.C. § 145, an appeal was filed in the United States District Court for the District of Columbia. Of course, the complaint challenged the rejections as being improper. In addition, the complaint alleges:

14. [T]he Board that issued the March 27, 2008 Decision on Appeal was improperly constituted under the appointments clause of the United States Constitution. In particular, upon information and belief, at least one of the three judges that constituted the members of the Board that issued the March 27, 2008 [sic] were appointed by the PTO director on or after March 2000.

15. The judges who sit on the Board qualify as "inferior officers" under the appointments clause of the United States Constitution. The appointments clause of the United States Constitution requires that inferior officers be appointed either by the President of the United States, the courts of law or heads of departments. The PTO director is not a head of a department within the meaning of the appointments clause.

For anyone following this issue, Professor John Duffy previously wrote an article for Patently-O challenging the constitutionality of the current system for appointing administrative patent judges. The Patent Act (35 U.S.C. §6) requires the Director of the PTO to appoint BPAI judges. In contrast, Article II of the Constitution provides that appointment of ?inferior officers? such as BPAI judges may only be delegated as far as a ?Head of Department.? In the case of the PTO, the head of department would be the Secretary of Commerce, and not the PTO Director.

In a different case, Translogic Technology separately filed a petition for certiorari with the Supreme Court last month seeking resolution on the same issues. However, there is at least some doubt whether the Court will grant review, as the issue was not raised until a rehearing request at the CAFC.

For more information, see

John Duffy, "Are Administrative Patent Judges Unconstitutional?" (Patently-O) (SSRN)

Patently-O: "Challenge to BPAI Appointments Moves to Supreme Court" (link)

Law.com: "Could Constitutional Flaw Unravel Eight Years of Patent Board Rulings?" (link)

Full post as published by Two-Seventy-One Patent Blog on June 04, 2008 (boomark / email).