`
`
`
`No. 19-1434, 19-1452, & 19-1458
`IN THE
`Supreme Court of the United States
`
`UNITED STATES OF AMERICA,
`
`
`
`
`
`
`
`
`PETITIONER,
`
`
`v.
`
`ARTHREX, INC., ET AL.,
`
`
`
`On Writ of Certiorari to the United States
`Court of Appeals for the Federal Circuit
`
`BRIEF OF AMICUS CURIAE
`ADMINISTRATIVE, CONSTITUTIONAL,
`AND INTELLECTUAL PROPERTY
`LAW PROFESSORS
`URGING REVERSAL AND
`SUPPORTING PETITIONERS
`In 19-1434 & 19-1452
`
`
`
`
`
`
`
`
`RESPONDENTS.
`
`
`
`
`
`
`
`
`
`December 2, 2020
`
`ALAN B. MORRISON
`COUNSEL OF RECORD
`GEORGE WASHINGTON
`UNIVERSITY LAW SCHOOL
`2000 H STREET NW
`Washington, DC 20052
`(202) 994-7120
`abmorrison@law.gwu.edu
`
`
`
`Additional Captions Listed on Inside Cover
`
`
`
`
`
`
`
`
`
`SMITH & NEPHEW, INC., ET AL.,
`
` SMITH & NEPHEW, INC., ET AL.,
`PETITIONERS,
`PETITIONERS,
`
`v.
`V .
`ARTHREX, INC., ET AL.,
`ARTHREX, INC., ET AL.,
`
`
`RESPONDENTS.
`RESPONDENTS.
`
`
`
`
`____________
`ARTHREX, INC.,
`ARTHREX, INC.,
`PETITIONER,
`PETITIONER,
`
`v.
`V .
`SMITH & NEPHEW, INC., ET AL.,
`SMITH & NEPHEW, INC., ET AL.,
`
`
`
`
`
`
`
`
`RESPONDENTS.
`RESPONDENTS.
`
`
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`
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`
`
`
`TABLE OF CONTENTS
`
`
`TABLE OF AUTHORITIES .................................. ii
`
`INTEREST OF THE AMICI CURIAE .................. 1
`
`INTRODUCTION AND SUMMARY
` OF ARGUMENT ………………………..... 1
`
`ARGUMENT ........................................................ 10
`
`APJs ARE INFERIOR OFFICERS UNDER
`THE APPOINTMENTS CLAUSE ....................... 10
`
` The Rationale for Deference To Congress ....... 12
`
` The Test Used by the Federal Circuit Is Unclear
`and Unworkable ................................................... 23
`
`THE REMEDY IMPOSED BY THE FEDERAL
`CIRCUIT IS NOT AUTHORIZED BY LAW ....... 28
`
`CONCLUSION ..................................................... 33
`
`APPENDIX (List of Amici Curiae) ...................... 35
`
`
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`
`ii
`
`
`TABLE OF AUTHORITIES
`
`
`
`Cases
`Barr v. American Ass’n of Political Consultants,
`Inc., 140 S. Ct. 2335 (2020) .............................. 31
`Burnham v. Superior Court of California,
` 495 U.S. 604 (1990) ......................................... 24
`Crowell v. Benson, 285 U.S. 22 (1932) ...……… 20
`Cuozzo Speed Techs., LLC v. Lee,
` 136 S. Ct. 2131 (2016) ........................................ 4
`Edmond v. United States, 520 U.S. 651
`
`(1997) ………………………………………11,19, 21
`Ex Parte Siebold, 100 U.S. 371 (1879) ............... 18
`Free Enterprise Fund v. Public Co. Accounting
`Oversight Bd., 561 U.S. 477 (2010) .................. 28
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
` 721 F.3d 1330 (Fed. Cir. 2013) ......................... 3
`Freytag v. Commissioner, 501 U.S. 868 (1991) ... 21
`In re Sealed Case, 838 F.2d 476
`
`(D.C. Cir. 1988)………………………..……..14, 18
`Kramer v. Union Free School District No. 15,
` 395 U.S. 621 (1969) .......................................... 15
`Lucia v. Securities & Exchange Commission,
` 138 S. Ct. 2044 (2018) .......................... 16, 18, 30
`Morrison v. Olson, 487 U.S. 654 (1988). ...... passim
`Murphy v. NCAA, 138 S. Ct. 1461 (2018) ........... 33
`SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018)
` ............................................................................. 4
`Seila Law, LLC v. Consumer Financial Protection
`Bureau, 140 S. Ct. 2183 (2020) .................... 8, 30
`
`
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`
`
`
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`
`
`iii
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` 5
`
`
`Weiss v. United States, 510 U.S. 163 (1994) . 14, 16
`Wiener v. United States, 357 U.S. 349 (1958) ..... 32
`
`Statutes
`
`America Invents Act of 2011,
` 35 U.S.C. §§ 311 et seq........................................ 2
`Longshoremen’s and Harbor Workers’
` Compensation Act, 33 U.S.C. § 919……………20
`P.L. 110–313, 122 Stat 3014, § 1(a)(1)(B) ………3
`
` U.S.C. § 7513(a) ............................................ 5, 32
`10 U.S.C. § 866 ..................................................... 21
`10 U.S.C. § 867 ..................................................... 20
`10 U.S.C. § 941 ..................................................... 19
`15 U.S.C. § 7217 ................................................... 29
`35 U.S.C. § 1(a) .................................................... 18
`35 U.S.C. § 3(a) ...................................................... 3
`35 U.S.C. § 6(a) .................................................. 3, 4
`35 U.S.C. § 6(c) .................................................. 3,19
`35 U.S.C. § 102 ...................................................... 3
`35 U.S.C. § 103 ...................................................... 3
`35 U.S.C. § 141 …………………………………. 4,18
`35 U.S.C. § 316 ................................................. 4, 18
`35 U.S.C. § 318 ....................................................... 4
`35 U.S.C. § 319 ....................................................... 4
`35 U.S.C. § 321 ..................................................... 33
`
`Constitution
`Appointments Clause, Article II, §2 ............. passim
`Necessary & Proper Clause, Article I, §8, cl.18...12
`
`
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`
` 1
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`INTEREST OF THE AMICI CURIAE1
`
`Amici curiae (listed in the Appendix) are
`
`professors of administrative, constitutional, and
`intellectual property
`law, who have taught,
`written, and/or litigated on the subjects of these
`consolidated cases.
` Amici have no interest,
`financial or otherwise, in these cases, and they are
`filing this brief solely to provide the Court with
`their analysis, which differs from that of the
`petitioners, on the basis on which this Court should
`reverse the judgment below. Amici agree that the
`Administrative Patent Judges
`(APJs) whose
`appointments are at issue are inferior officers and
`hence were properly appointed under
`the
`Appointments Clause. However, if the Court
`concludes that APJs are principal officers, amici
`urge the Court not to approve the remedy adopted
`by the Federal Circuit and supported by the United
`States—striking the “for-cause”
`limitation on
`removal of APJs. Rather, the resolution of how to
`comply with the Appointments Clause should be
`left to Congress.
`INTRODUCTION AND
`SUMMARY OF ARGUMENT
`
`As long as there have been patents, there
`
`have been alleged infringers who have been sued
`by the owner of the patent. Infringement cases are
`
`1 No person other than the amici have authored this brief in
`whole or in part or made a monetary contribution toward its
`preparation or submission. It is filed pursuant to blanket
`consents filed by all parties.
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` 2
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`litigated in federal courts where the legal issues
`have been decided by Article III judges and the
`factual questions resolved by juries. In many
`infringement cases, the alleged infringer will
`contend that the patent is invalid even though
`properly issued by the Patent & Trademark Office
`(“PTO”). Patents are issued through an ex parte
`non-adversary process in which trained patent
`examiners review the application to determine
`whether the patent and the various and often
`numerous claims that are made meet the
`standards required by law for a valid patent.
`During this process, private third parties (i.e., a
`competitor or potential infringer) are not allowed
`to participate.
`
`The PTO is a busy office. For example, in
`
`the
`office
`issued 391,103 patents.
`2019,
`https://www.uspto.gov/web/offices/ac/ido/oeip/taf/st
`_co_19.htm. Many patents have little or no
`commercial value and hence never become the
`subject of infringement litigation. But for those
`patents
`that generate
`litigation,
`the court
`proceedings are lengthy and costly and are often
`conducted before judges and juries with no training
`in patents. After prior efforts to provide an
`alternative
`forum
`for resolving patentability
`disputes were unsuccessful, Congress created
`“inter partes” review in the America Invents Act of
`2011 (“AIA”), 35 U.S.C. §§ 311 et seq.
`The basic principle of inter partes review is
`that any party, including an alleged infringer, may
`petition the PTO to commence an administrative
`
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`
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` 3
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`
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`patentability
`the
`review
`to
`proceeding
`requirements of novelty and nonobviousness in 35
`U.S.C. §§ 102 & 103. If the PTO grants the petition
`and concludes that the patent is invalid, any
`parallel infringement action will be dismissed.
`Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d
`1330 (Fed. Cir. 2013).
`
`If the PTO agrees to undertake inter partes
`review, the case is assigned to a panel of three
`Administrative Patent Judges (“APJs”) who are
`appointed by the Secretary of Commerce. 35 U.S.C.
`§§ 6(c), 6(a). As of October 2019, there were 266
`APJs.2 Typically, one of the APJs assigned to a
`case is an expert in the subject matter of the patent
`as well as in patent law generally. § 6(a). APJs are
`part of the Patent Trial and Appeal Board (“PTAB”
`or the “Board”), whose other members include the
`Director of the PTO, who is appointed by the
`President with the advice and consent of the
`Senate, § 3(a), and the Deputy Director, the
`Commissioner for Patents, and the Commissioner
`for Trademarks, who are appointed by the
`Secretary. § 6(a).3
`
`
`2 https://www.uspto.gov/sites/default/files/documents/
`What%20is%20PTAB%20for%20website%2010.24.19.pdf
`(p. 3).
`3 Until 2008, APJs were appointed by the Director, but
`because the Director is not a Department Head, and because
`Congress determined that APJs are inferior officers, it
`required the Department Head to make the appointment.
`P.L. 110–313, 122 Stat 3014, § 1(a)(1)(B).
`
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` 4
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`An inter partes case is adjudicated in what
`is “less like a judicial proceeding and more like a
`specialized agency proceeding.” Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2143 (2016).
`However, it has “many of the usual trappings of
`litigation. The parties conduct discovery and join
`issue in briefing and at an oral hearing. §§
`316(a)(5), (6), (8), (10), (13).” SAS Institute Inc. v.
`Iancu, 138 S. Ct. 1348, 1354 (2018). Based on that
`record, a panel of three APJs decides the legal and
`factual issues of novelty and nonobviousness and
`issues a final written decision. 35 U.S.C. § 318(a).
`There are no other officers within the Department
`who have the authority to review, or do in fact do
`review, decisions of APJs before they may be
`appealed to the Federal Circuit by either the patent
`owner or by the party challenging the patent. Id. §§
`319, 141(c).4
`The Federal Circuit in these cases concluded
`that APJs are principal rather than inferior officers
`under the Appointments Clause. The parties agree
`that the answer to this question is determined in
`part by the duties that APJs perform and the
`degree of supervision over them. It is agreed that
`APJs serve only as judicial officers, meaning that
`they have no authority to issue rules or otherwise
`make policy. The Director of the PTO has
`administrative supervisory authority over them
`
`4 A case may be reheard by the Board pursuant to 35 U.S.C.
`§ 6(c), but no party has suggested that rehearings are
`frequently granted. They are heard by panels of at least
`three, and so even if the Director, who is the only principal
`officer on the Board, sat on all of them, rehearings would not
`solve the problem identified by the Federal Circuit.
`
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` 5
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`but has no power to review specific decisions.
`Although the Director has certain other duties and
`powers that affect APJs, none of them is significant
`enough to constitute meaningful supervision of the
`kind that those officers found to be principal
`officers in other contexts have possessed. The same
`is true of other officials in the Department,
`including the Secretary. And, as noted above, none
`of them has express authority to review the
`substance of a decision of an APJ panel in an inter
`partes proceeding.
`
`Although the statute creating the office of
`APJ does not have specific protections against “at
`will” removal, the parties agree that, under a
`general statute that is not limited to APJs, they
`may be disciplined or removed “only for such cause
`as will promote the efficiency of the service.” 5
`U.S.C. § 7513(a). Thus, although the Secretary
`may seek the removal of an APJ for cause, an APJ,
`like other federal employees, may obtain review of
`such an effort before the Merit Systems Protection
`Board. The validity of those restrictions on removal
`is not the basis for any direct challenge in these
`cases, but the Federal Circuit concluded that their
`elimination would cure the Appointments Clause
`violation that it found.
`
`In these consolidated petitions, the parties
`agree that APJs are not employees and that they
`are at least inferior officers. It is further agreed
`that, if APJs were properly designated as inferior
`officers by Congress,
`the method of
`their
`appointment provided by
`law satisfies
`the
`
`
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` 6
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`Constitution. The issue now before this Court is
`whether APJs are principal officers who must be,
`but were not, appointed by the President with the
`advice and consent of the Senate.
`
`The Federal Circuit recognized that this
`Court has not set forth a definitive test by which to
`determine whether Congress’ designation of
`inferior officer status is constitutional. It examined
`various factors that it found relevant, and it found,
`on balance, that APJs were not inferior officers.
`That conclusion is incorrect. As demonstrated
`below, the “totality of all the circumstances”
`method is not an administrable way to resolve
`these questions, nor is it compelled by the
`Constitution. Instead, amici urge the Court to
`decide this case by relying on two objective factors
`that support the conclusion that APJs and other
`similarly situated officers in other Departments
`are inferior officers.
`
`First, Congress determined by its careful
`selection of the method by which APJs are
`appointed that APJs are inferior officers. Under
`the express provisions of the Appointments Clause,
`an officer may not be an inferior officer unless
`Congress has, by law, so provided. When Congress
`authorized the Secretary to appoint APJs, the
`Senate gave up the power to oversee their
`appointment that it has for principal officers. In
`addition, when the President signed the AIA into
`law, he surrendered his power to appoint APJs,
`although he may still make “suggestions” to the
`Secretary. There is no reason to suppose that
`
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`Congress would have agreed to an alternative
`means of appointment here or in other similar
`situations unless it concluded that the duties of the
`office at issue were such that it could confidently
`leave their appointment to one of the three
`alterative appointing authorities provided in the
`Appointments Clause, here the Head of the
`Commerce Department. As several Justices have
`recognized, at least where Congress has created an
`inferior office, there should be a rebuttable
`presumption
`that
`Congress
`has
`acted
`constitutionally. Because there is no basis to
`second-guess that determination in this instance,
`such a presumption should apply here.
`
`The second fact supporting the inferior
`
`officer designation for APJs is that their position is
`strictly limited to that of an adjudicator who must
`follow the law as set forth by Congress and, to the
`extent applicable, by principal officers in the
`Commerce Department for which they work. They
`do not have authority to issue rules or otherwise
`make policy, except to the extent that any
`adjudication involves policy choices. They also
`have no authority to commence enforcement
`proceedings of any kind, civil or criminal. Their
`duties to decide cases under the patent laws arise
`when a party seeks review before the PTO, the
`Director decides (or delegates the decision to
`decide) whether review is appropriate, and the case
`is assigned to specific APJs. Although the patent
`owner may not seek inter partes review, it knows
`that, when it commences an infringement action,
`there is a real possibility that such review will be
`
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` 8
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`sought and obtained. But it also knows that the
`Federal Circuit will review an inter partes ruling
`on the validity of a patent, just like one coming
`from a federal district court. Those facts all
`support
`the
`reasonableness
`of Congress’
`determination that APJs are inferior officers
`because
`they have no
`significant duties
`inconsistent with that status.
`
`If the Court nonetheless affirms the Federal
`
`Circuit’s conclusion that APJs are principal
`officers, it should reject the Federal Circuit’s
`remedy of striking the “for cause” limitation on the
`removal of APJs. That rejection would not affect
`the result in these cases because the APJ decision
`in this case was not made by properly appointed
`officers and thus cannot stand. However, the
`outcome in other inter partes review cases will be
`determined depending on whether the Federal
`Circuit’s remedial ruling is upheld. The United
`States has taken the position that the elimination
`of for-cause removal solves the Appointments
`Clause problem, but that view is mistaken for two
`reasons.
`
`First, if there is a flaw in the current system,
`
`is that the requirement of Presidential
`it
`appointment and Senate confirmation for principal
`officers has not been met. Making APJs subject to
`removal at will on the back end does not cure the
`front-end
`problem
`of
`an unconstitutional
`appointment. One simply has nothing to do with
`the other, in contrast to a case in which the
`appointment of the officer is valid, and the only
`
`
`
`
`
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` 9
`
`
`question is whether a restriction on removal is
`permissible. See Seila Law, LLC v. Consumer
`Financial Protection Bureau, 140 S. Ct. 2183
`(2020).
`
`
`There are at least two direct ways that the
`problem can be solved, but they require Congress
`to make the change prospectively. Congress could
`make all APJs principal officers, by requiring that
`they be appointed by the President and confirmed
`by the Senate. It could also create a layer of
`appellate patent judges who are appointed as
`principal officers and who would review all APJ
`decisions, much the way (although not necessarily
`subject to the same standard of review) that the
`Securities & Exchange Commission applies when
`it reviews decisions by its administrative law
`judges.
`
`Second, to the extent that the attempted
`
`cure might be found through a severability
`analysis, the Federal Circuit did not sever an
`unconstitutional provision; it re-wrote not just the
`law creating the inter partes review but the
`separate law providing for protection for APJs
`against removal at will. By doing so, the Federal
`Circuit imposed its view of what an inter partes
`review system should be in place of the one that
`Congress actually created.
`
`inter partes
`law governing
`Under the
`review, independent APJs, who are not part of the
`policymaking process, make determinations of law
`as to the validity of a patent. But in striking the
`
`
`
`
`
`
`
`
`for-cause removal protection for APJs, the Federal
`Circuit
`set aside Congress’
`system with
`independent APJs and substituted its own system
`in which policymakers would be able to influence
`the outcome of what are decisions of law. It is not
`that such a system is unthinkable, but it is plainly
`not the one that Congress created. Therefore, the
`Federal Circuit’s
`attempt
`to
`solve
`the
`Appointments Clause problem by altering the
`independence of APJs was not a proper exercise of
`the severability power and should be overturned by
`this Court if it concludes that APJs are principal
`officers.
`
`
`ARGUMENT
`
`APJs ARE INFERIOR OFFICERS UNDER
`THE APPOINTMENTS CLAUSE.
`
`The Appointments Clause, Article II, §2,
`
`provides as follows:
`
`
`
`
`
`
`
`10
`
`
`[The President] shall nominate, and by and
`with the Advice and Consent of the Senate,
`shall appoint Ambassadors, other public
`Ministers and Consuls, Judges of the
`supreme Court, and all other Officers of the
`United States, whose Appointments are not
`herein otherwise provided for, and which
`shall be established by Law: but the
`Congress may by Law vest the Appointment
`of such inferior Officers, as they think
`proper, in the President alone, in the Courts
`of Law, or in the Heads of Departments.
`
`
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`11
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`
`All parties agree that Congress sought to make
`APJs inferior officers and that they were duly
`appointed as such. The question presented is
`whether this Court should follow the Federal
`Circuit, reject the judgment of Congress, and
`conclude that APJs are principal officers who must
`be appointed by the President and confirmed by the
`Senate. Because the ruling of the Federal Circuit
`was in error, this Court should reverse.
`
`In Edmond v. United States, 520 U.S. 651,
`
`661 (1997), this Court observed that “Our cases
`have not set forth an exclusive criterion for
`distinguishing between principal and inferior
`officers for Appointments Clause purposes.” Or as
`the Court observed in Morrison v. Olson, 487 U.S.
`654, 671 (1988), “The line between ‘inferior’ and
`‘principal’ officers is one that is far from clear, and
`the Framers provided little guidance into where it
`should
`be
`drawn. See, e.g., 2
`J. Story,
`Commentaries on the Constitution § 1536, pp. 397–
`398 (3d ed. 1858).” It is fair to say that the
`struggles that the judges of the Federal Circuit had
`in deciding the proper status of APJs demonstrate
`the uncertainty and complexity with the current
`approach to deciding this question. In amici’s view,
`the text of the Appointments Clause provides a
`direct and readily administrable means of
`answering this question in most cases and will
`provide sure-footed guidance to Congress and, if
`needed, to the lower courts.
`
`
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`
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`12
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`The text assigns to Congress the primary,
`although not exclusive, role for deciding whether
`an
`officer
`is
`inferior
`or principal. The
`Appointments Clause does not simply state that
`Congress may pass a law creating an inferior office.
`Rather, it expressly provides for a level of
`discretion on top of that already present in Article
`I, §8, cl. 18, which authorizes Congress to “make all
`Laws necessary and proper to carry into Execution”
`all powers under the Constitution. Under the
`Appointments Clause, except for officers expressly
`designated as principal officers, Congress may
`provide for an alternative method of appointment
`“for such inferior Officers, as they think proper.”
`Given this broad discretionary power, the courts
`should
`presume
`that
`a
`congressional
`determination “as they think proper” of inferior
`officer status is constitutionally correct, and the
`courts should do no more than verify that the
`duties of the office are not plainly inconsistent with
`that status. If that test is applied to APJs, the
`presumption holds because Congress was more
`than reasonable in its determination that they are
`inferior officers.
`
`
`The Rationale for Deference to Congress
`
`The Appointments Clause is an example of
`
`an important check built into the Constitution. As
`a limit on executive power, the Framers required
`the Senate’s approval for the appointment of
`principal officers in the executive branch so that
`the President alone could not choose them. As
`
`
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`13
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`such, the provision creates an important check on
`the executive branch, much the way that the
`President’s veto gives the President a check on
`Congress’ power to enact laws.
`
`The Framers also created a means by which
`
`the default option of the President plus the Senate
`could be avoided if that process became too
`burdensome and the office to be filled was of lesser
`importance. That alternative is the passage by
`Congress of a law creating an inferior office and
`then providing for appointments to it to be vested
`“in the President alone, in the Courts of Law, or in
`the Heads of Departments.” This exception to the
`advice and consent check is significant for several
`reasons that support amici’s focus on the role of
`Congress in designating inferior officers.
`
`First, the exception requires the enactment
`
`of a law, which requires the agreement of both
`Houses and the President. No other method for
`creating inferior officers is permitted, which means
`that neither House of Congress nor the President
`may establish an inferior office on their own, nor
`choose the method of appointment. Second,
`creating an exception requires the Senate to
`surrender its ability to affect the appointments to
`that office, which it is unlikely to do if the officer
`exercises significant executive branch functions,
`and the Senate wishes to exercise some influence
`over who will carry them out. Third, the President
`must also surrender some of his powers if the
`appointment will be made by the courts of law or a
`Department Head, and he is also unlikely to do
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`14
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`that if the appointee will have major executive
`branch responsibilities. Finally, the House must
`concur to be sure that the Senate is not abdicating
`its responsibilities with respect to an important
`office because the Senators would prefer to spend
`their time on other matters. See Weiss v. United
`States, 510 U.S. 163, 188 (1994) (“no branch may
`abdicate its Appointment Clause duties”) (Souter,
`J., concurring). These are not, to be sure, perfect
`checks, but they go a long way toward providing
`basic assurances that the power to create
`exceptions to the method of appointments of
`principal offices is not abused. For these reasons,
`when Congress does what it did for APJs—
`explicitly create their positions as inferior offices—
`the agreement of the House, the Senate, and the
`President to do so is strong evidence that the
`Appointments Clause has been satisfied.
`
`This idea of placing significant emphasis on
`
`the decision of Congress “as they think proper” to
`create an exception to the default position of the
`President plus the Senate is not original with
`amici. When the late Justice Ruth Bader Ginsburg
`was on the D.C. Circuit, she dissented in In re
`Sealed Case, 838 F.2d 476 (D.C. Cir. 1988), in
`which the court of appeals sustained a challenge to
`the constitutionality of the Independent Counsel
`Act, but was reversed by this Court in Morrison v.
`Olson, 487 U.S. 654 (1988). In her dissent, then-
`Judge Ginsburg recognized the difficulty of
`answering the principal officer question in that
`case and in the myriad of other situations in which
`it will arise. As she observed,
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`
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`
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`15
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`
`
`Because the founding fathers did not settle
`the question, I regard the matter as one on
`which Congress’ judgment is owed a large
`measure of respect—deference of the kind
`courts accord to myriad constitutional
`judgments Congress makes, for example,
`most judgments about what classifications
`are compatible with the command that all
`persons shall enjoy ‘the equal protection of
`the laws.’ U.S. Const. amend XIV §1.
`
`
`838 F.2d at 532. The deference to the legislature
`when equal protection challenges are raised (even
`where there is no comparable language to “as they
`think proper”) has been justified for reasons
`similar to those advanced for applying deference
`here: “The presumption of constitutionality and the
`approval given ‘rational’ classifications in other
`types of enactments are based on an assumption
`that the institutions of state government are
`structured so as to represent fairly all the people.
`However, when the challenge to the statute is in
`effect a challenge of this basic assumption, the
`assumption can no longer serve as the basis for
`presuming constitutionality.” Kramer v. Union
`Free School District No. 15, 395 U.S. 621, 628
`(1969) (footnote omitted).
`
`
`Judge Ginsburg’s dissent also noted that the
`question “concerns the legitimacy of a classification
`made by Congress pursuant to its constitutionally-
`assigned role in vesting appointment authority.
`That constitutional assignment
`to Congress
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`16
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`counsels judicial deference.” 838 F.2d at 532.
`Recognizing that Congress’ intent to create an
`inferior office is not “dispositive,” Judge Ginsburg
`would have sustained
`the principal officer
`designation because the proper category of an
`independent counsel “is fairly debatable,” and the
`contrary arguments there were “insufficiently
`compelling
`to
`justify upsetting Congress’
`considered judgment on the matter.” Id.
`
`Justice David Souter in his concurring
`
`opinion in Weiss, supra, also found the question of
`whether the military appellate judges there were
`principal or inferior officers to be a difficult one. In
`the end he agreed with the approach of Judge
`Ginsburg in the Independent Counsel case, and
`because “neither Congress nor the President
`thought military judges were principal officers, and
`since in the presence of doubt deference to the
`political branches’ judgment is appropriate, I
`conclude that military judges are inferior officers
`for purposes of the Appointments Clause.” 510 U.S.
`at 194.
`
`Justice Stephen Breyer in Lucia v. Securities
`
`& Exchange Commission, 138 S. Ct. 2044 (2018),
`dissented because he would have decided whether
`the ALJs whose status was at issue there should
`have been decided on statutory, not constitutional
`grounds. But in the course of addressing the
`constitutional
`issues, he
`focused
`on
`the
`requirement that inferior officers be designated “by
`law” which he considered to be “highly relevant”
`although “Congress’ leeway is not, of course,
`
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`17
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`absolute.” Id. at 2062. Thus, in deciding questions
`such as this, he concluded that the Court “should
`give substantial weight to Congress’ decision,” id.,
`because the Clause provides Congress with
`“constitutional leeway.” Id. at 2063.5
`
`Other Justices have expressed similar
`sentiments regarding deference to the political
`branches, where they are in agreement on the
`status of the officer as they are here:
`Where a private citizen challenges action of
`the Government on grounds unrelated to
`separation
`of
`powers,
`harmonious
`functioning of the system demands that we
`ordinarily give some deference, or a
`presumption of validity, to the actions of the
`political branches
`in what
`is agreed,
`between themselves at least, to be within
`their respective spheres. But where the issue
`pertains to separation of powers, and the
`political branches are
`(as here)
`in
`disagreement, neither can be presumed
`correct.
`Morrison, supra, 487 U.S. at 704-05 (Scalia, J.
`dissenting) (emphasis added). In this case, both
`Congress and the President agree that APJs are
`inferior officers,
`thereby strengthening
`the
`presumption. See also Ex Parte Siebold, 100 U.S.
`
`
`5 This Court has recognized at least one situation in which
`the judgment of Congress might be overridden: inappropriate
`interbranch appointments of inferior officers. Morrison, 487
`U.S. at 675.
`
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`18
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`371, 397-98 (1879) (“But as the Constitution
`stands, the selection of the appointing power, as
`between
`the
`functionaries named,
`is
`a
`matter resting in the discretion of Congress. And,
`looking at the subject in a practical light, it is
`perhaps better that it should rest there, than that
`the country should be harassed by the endless
`controversies to which a more specific direction on
`this subject might have given rise.”).
`
`Second, the deference given to Congress is
`neither “dispositive,” Sealed Case, 838 F.2d at 532,
`nor “absolute,” Lucia, 138 S. Ct. at 2062. However,
`it is only in those rare cases, where the officer has
`very significant policy-making duties, that the
`Court should not defer to Congress’ judgment
`regarding an inferior officer. In this case, there is
`no aspect of the duties assigned to APJs that would
`suggest that they are principal officers.
`They have relatively small roles in the PTAB
`that is headed by the Director, that has three other
`statutorily designated officers
`(who are not
`appointed as principal officers), and that (at last
`count) has 266 APJs. APJs do not supervise
`anyone (except perhaps law clerks or clerical staff),
`and they have no policymaking roles. Regulations
`regarding inter partes review are issued by the
`Director, and they are entirely procedural or
`administrative. See 35 U.S.C. §§ 1(a), 316.
`Individual APJs have no law enforcement powers,
`nor any ability to investigate a matter or commence
`a proceeding. Their responsibility is to apply the
`
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`19
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`laws governing novelty and nonobviousness to the
`facts that the parties develop and to render an
`opinion
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