Review of APJ Appointments to Be Considered by SCOTUS

Back in November of 2019 the House Judiciary Committee conducted a hearing entitled “The Patent Trial and Appeal Board and the Appointments Clause: Implications of Recent Court Decisions.” The hearing explored whether or not the Federal Circuit solution pronounced in Arthrex was effective to cure the Appointments Clause defect.  While there was some debate over whether the “fix” would hold, all of the witnesses were unanimous in that Congress, could, and should, fix the issue in the short term.

Today, Arthrex was granted cert.  I expect that Congress will now turn back to their earlier discussed legislative fix.

First, the questions that will be considered by the SCOTUS:

1. Whether, for purposes of the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the President with the Senate’s advice and consent, or “inferior Officers” whose appointment Congress has permissibly vested in a department head.

2. Whether, if administrative patent judges are principal officers, the court of appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. 7513(a) to those judges.

While predicting what interests the Court is anyone’s guess, it would seem likely that the court’s focus will be on issue 2 – severability and the resulting CAFC remedy. Regardless of the outcome there, Congress can limit the potential impact on pending AIA trials by adjusting the AIA statutes in anticipation of an adverse SCOTUS outcome (i.e., the AIA is not severable).

Getting back to the earlier House hearing, the fix that was proposed most often was a new Director review period. That is, a time window after a Final Written Decision (FWD) in which the Director could change the outcome of the (FWD). This simple solution would require little more than a line or two of additional statutory text.

Perhaps legislators didn’t feel the urgency back in November given the uncertainty of SCOTUS interest. Now, however, the ball is firmly in the hands of Congress to insulate the system from an adverse SCOTUS decision.  My expectation is that the simple fix will be pursued in the short term.