Nos. 19-1434, 19-1452, 19-1458
`In the
`Supreme Court of the United States
`
`UNITED STATES OF AMERICA,
`
`Petitioner,
`
`– v. –
`ARTHREX, INC., et al.,
`
`Respondents.
`(Caption Continued on Reverse Side of Cover)
`————————————————
`ON WRIT OF CERTIORARI TO
`THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`BRIEF AMICUS CURIAE FOR
`FAIR INVENTING FUND
`IN SUPPORT OF ARTHREX, INC.
`
`
`
`
`
`
`
`MATHEW B. TULLY
` Counsel of Record
`MICHAEL W. MACOMBER
`ALLEN A. SHOIKHETBROD
`CHERI L. CANNON
`MICHAEL C. FALLINGS
`GREGORY J. MELUS
`JOHN GNIADEK
`PHILIP B. BANASZEK
`Counsel for Fair Inventing Fund
`TULLY RINCKEY PLLC
`2001 L. St., NW, Suite 902
`Washington, D.C. 20036
`(202) 787-1900
`MTully@tullylegal.com
`
`
`In the
`Supreme Court of the United States
`
`UNITED STATES OF AMERICA,
`
`Petitioner,
`
`– v. –
`ARTHREX, INC., et al.,
`
`Respondents.
`(Caption Continued on Reverse Side of Cover)
`————————————————
`ON WRIT OF CERTIORARI TO
`THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`BRIEF AMICUS CURIAE FOR
`FAIR INVENTING FUND
`IN SUPPORT OF ARTHREX, INC.
`
`
`
`
`
`
`
`MATHEW B. TULLY
` Counsel of Record
`MICHAEL W. MACOMBER
`ALLEN A. SHOIKHETBROD
`CHERI L. CANNON
`MICHAEL C. FALLINGS
`GREGORY J. MELUS
`JOHN GNIADEK
`PHILIP B. BANASZEK
`Counsel for Fair Inventing Fund
`TULLY RINCKEY PLLC
`2001 L. St., NW, Suite 902
`Washington, D.C. 20036
`(202) 787-1900
`MTully@tullylegal.com
`
`
`
`
`SMITH & NEPHEW, INC., et al.,
`
`– v. –
`ARTHREX, INC., et al.,
`
`Petitioners,
`
`Respondents.
`————————————————
`ARTHREX, INC.,
`
`Petitioner,
`
`– v. –
`SMITH & NEPHEW, INC., et al.,
`Respondents.
`
`
`
`
`
`(i)
`
`TABLE OF CONTENTS
`
`
`
`
`
`
`
`
`
`Page(s)
`
`
`
`
`
`TABLE OF AUTHORITIES ..............................
`
`iii
`
`INTEREST OF AMICUS CURIAE ..................
`
`SUMMARY OF ARGUMENT ...........................
`
`ARGUMENT .....................................................
`
`I. SUBSTANTIAL DISPARITIES EXIST
`IN THE PATENTS GRANTED TO
`MINORITY INVENTORS ...........................
`
` A. Significant Gaps Persist In The
`Number African-American, Hispanic,
`And Female Inventors .................................
`
` B. Congress Sought To Promote
`Innovation For Minority Small Inventors ..
`
`1
`
`3
`
`4
`
`4
`
`5
`
`8
`
`II. CONGRESS INTENDED TO PROTECT
`SMALL INVENTORS DURING THE
`POST-GRANT
`REVIEW
`PROCEEDINGS ...........................................
`
`10
`
`
`
`
`
`
`
`
`(ii)
`
`TABLE OF CONTENTS - CONTINUED
`
`
`
`
`
`
`Page(s)
`
`
`
`
`
`
`
`LEGISLATIVE
`III.MAINTAINING
`REVIEW OF THE APJS PROTECTS
`SMALL INVENTORS FROM UNFAIR
`REVIEW .......................................................
`
` A. The Court Should Affirm That APJs
`Are Principal Officers Because Of The
`Lack Of Review By A Principal Officer .......
`
` B. Severing The Civil Service Protections
`Of APJs
`Is Unconstitutional And
`Increases Political Pressure ........................
`
` C. Judicial Independence Is Crucial To
`Protect The Interests Of Small Inventors ...
`
`CONCLUSION ..................................................
`
`
`16
`
`16
`
`18
`
`22
`
`26
`
`
`
`Page(s)
`
`
`CASES:
`Alaska Airlines, Inc. v. Brock,
` 480 U.S. 678 (1987) ............................................. 20
`
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320 (Fed. Cir. 2019) ............... 17, 19, 21
`
`(iii)
`
`TABLE OF AUTHORITIES
`
`
`Ass’n of Am. R.Rs. v. U.S. Dep’t of
`Transp.,
` 821 F.3d 19 (D.C. Cir. 2016) ............................... 18
`
`Bowsher v. Synar,
` 478 U.S. 714 (1986). ............................................ 20
`
`Dep’t of Trans. v. Ass’n of Am. R.Rs.,
` 575 U.S. 43 (2015) ............................................... 18
`
`Edmond v. United States,
` 520 U.S. 651 (1997) ................................. 16, 17, 20
`
`Free Enterprise Fund v. Public Company
`Accounting Oversight Board,
` 561 U.S. 477 (2010) ............................................. 18
`
`Freytag v. Commissioner,
` 501 U.S. 868 (1991) ............................................. 18
`
`
`
`
`(iv)
`
`TABLE OF AUTHORITIES - CONTINUED
`Page(s)
`
`
`In Oil States Energy Servs., LLC v.
`Greene's Energy Grp., LLC,
` 138 S. Ct. 1365 (2018) ......................................... 14
`
`Lucia v. SEC,
` 138 S. Ct. 2044 (2018) ................................... 18, 23
`
`Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co.,
` 868 F.3d 1013 (Fed. Cir. 2017) ..................... 13, 23
`
`
`
`
`
`NLRB v. SW Gen., Inc.,
` 137 S. Ct. 929 (2017) ............................................. 9
`
`United States v. Booker,
` 543 U.S. 220 (2005) ................................. 19, 20, 22
`
`
`STATUTES:
`Ethics in Government Act of 1978, PUB.
`L. NO. 95-521, amended by the Ethics
`Reform Act of 1989, PUB. L. NO. 101-
`194, 103 STAT. 1716, 5 U.S.C. app. §§
`101-111 (2012) ..................................................... 23
`
`
`
`
`
`
`
`
`(v)
`
`TABLE OF AUTHORITIES - CONTINUED
`Page(s)
`
`
`Leahy-Smith America Invents Act, PUB.
`L. 112-29, 125 STAT. 284 (2011) ...................... 8, 12
`
`
`SUCCESS Act. PUB. L. 115–273, 132
`STAT. 4158 (2018) .............................................. 5, 8
`
`
`35 U.S.C. § 1 (2012) ............................................... 23
`
`35 U.S.C. § 6(a) (2012) ..................................... 15, 20
`
`REGULATIONS:
`Office Patent Trial Practice Guide, 77
`FED. REG. 48,756, 48,756-57 codified at
`37 C.F.R. § 42 ...................................................... 10
`
`
`LEGISLATIVE MATERIALS:
`H.R. REP. NO. 112-98 (2011) ............................ 11, 20
`
`HOUSE FLOOR DEBATE 157 CONG. REC.
`H4480-H4505 (2011 – 2012) ................................. 9
`
`
`157 CONG. REC. S1496-97 & S1497 (Mar.
`9, 2011) ................................................................ 11
`
`
`157 CONG. REC. 12,984 (Sept. 6, 2011) ................. 20
`
`
`
`
`
`(vi)
`
`TABLE OF AUTHORITIES - CONTINUED
`Page(s)
`
`
`
`
`OTHER AUTHORITIES:
`Alex Bell, et al. Who Becomes an Inventor
`in America? The
`Importance
`of
`Exposure to Innovation 1 (Nov. 2018) .................. 5
`
`
`Greg Reilly, BRIDGING THE GAP BETWEEN
`THE FEDERAL COURTS AND THE UNITED
`STATES PATENT & TRADEMARK OFFICE,
`23 B.U.J. SCI. & TECH. L. 377 (Summer
`2019) .............................................................. 12, 21
`
`
`Joe Matal, A Guide to the Legislative
`History of the America Invents Act: Part
`II of II, Fed. Cir. Bar Review Vol. 21, No.
`3. (2012) ............................................................... 10
`
`
`Jyoti Madhusoodanan, Why Do Women
`Inventors Win Fewer Patents? YALE
`INSIGHTS April 09, 2018 (available at
`https://insights.som.yale.edu/insights/w
`hy-do-women-inventors-win-fewer-
`patents) ................................................................. 7
`
`
`
`
`
`
`
`
`(vii)
`
`TABLE OF AUTHORITIES - CONTINUED
`
`
`
`
`
`
`Page(s)
`
`
`
`Kyle Jensen, et al., Gender Differences in
`Obtaining and Maintaining Patent
`Rights, NATURE BIOTECHNOLOGY vol.
`36, p. 307 (April 2018) .......................................... 5
`
`
`Lisa D. Cook, Policies
`to Broaden
`Participation in the Innovation Process,
`The Hamilton Project, 8-10, 12-13
`(2020). ............................................................ 8, 12
`
`
`Matthew Bultman, For Black Inventors,
`Road to Owning Patents Paved with
`Barriers, BLOOMBERG LAW (2020). ................. 6, 11
`
`
`Progress and Potential 2020 Update on
`U.S. Women. Office of the Chief
`Economist of the PTO (July 2020) ....................... 6
`
`
`PTAB, Standard Operating Procedure 1
`(Revision 15) Assignment of Judges to
`Panels,
`https://www.uspto.gov/sites/default/file
`s/documents/SOP%201%20R15%20FIN
`AL.pdf (last visited Dec. 29, 2020) ..................... 15
`
`
`
`
`
`
`(viii)
`
`TABLE OF AUTHORITIES - CONTINUED
`
`
`
`
`
`
`Page(s)
`
`
`
`Report to Congress Pursuant to PUB. L.
`NO. 115-273, SUCCESS Act. USPTO &
`SBA (Oct. 2019) ................................................. 5, 6
`
`
`Richard H. Fallon, Jr., Of Legislative
`Courts, Administrative Agencies, and
`Article III, 101 HARV. L. REV. 915, 915-
`16 (March 1998) .................................................. 23
`
`
`Ryan Davis, USPTO Docs Shed Some
`Light On Secretive SAWS Program,
`Law360 (July 24, 2018) ................................ 14, 15
`
`
`Ryan Gatzmeyer, Are Patent Owners
`Given a Fair Fight: Investigating the
`AIA Trial Practices, 30 BERKLEY TECH.
`L. J. 531 (2015) ................................................ 9, 24
`
`
`The Federalist
` No. 78 (Hamilton) ............................................... 22
`
`
`
`
`
`
`
`
`
`
`
`
`1
`
`INTEREST OF AMICUS CURIAE
`The amicus herein is the Fair Inventing Fund
`(https://www.fairinventing.org/).1 The Fair Inventing
`Fund was established in 2020 and advocates for the
`rights of people who invent, but are not included in
`the patent ecosystem. The process of creating,
`securing, commercializing, and protecting patents is
`capital intensive. This poses barriers to entry for
`those without access to capital; a condition that
`disproportionately impacts women, people of color,
`and people living in socioeconomically deprived areas,
`which discourages them from engaging with the
`patent ecosystem. The Fair Inventing Fund has
`established an amicus brief committee of signatories
`who believe that equal protection and due process
`standards of review in the patent process would
`enable more diverse sources of invention that can be
`rewarded for their ingenuity and labor of the mind.
`The Amicus Committee of the Fair Inventing Fund
`consists of the following individuals, all of whom have
`
`
`1 Pursuant to this Supreme Court Rule 37.6, amicus affirms that
`no counsel for any party authored this brief in whole or in part,
`and that no person other than amicus, its members, and its
`counsel made a monetary contribution to its preparation or
`submission. Pursuant to Supreme Court Rule 37.3(a), the parties
`have consented to the filing of this brief. Pursuant to Supreme
`Court Rule 33.1, amicus affirms that the instant brief does not
`exceed 8,000 words.
`
`
`
`2
`
`agreed to be signatories on the attendant amicus
`brief:
`
`Audra M. Watson, Bronx
`1.
`Brice Rosenbloom, Manhattan
`2.
`Cameron Dubes, Andes
`3.
`Chymeka Olfonse, Bronx
`4.
`Colin Miles Campbell, Manhattan
`5.
`Courtnay Saunders, Manhattan
`6.
`Dawn Barber, Manhattan
`7.
`Del Newton, Philadelphia
`8.
`Fabio Nieto, Miami
`9.
`10. Gigi Lucas, Manhattan
`11. Golden Baker, Manhattan
`12.
`Jonny Kapps, Brooklyn
`13. Lee Gabay, Manhattan
`14. Marva Allen, Beacon, New York
`15. Melanie Butler, Manhattan
`16. Ricardo Carlota, Brooklyn
`17. Ryan Hughes, Washington D.C.
`18.
`Sonja Nuttall, Manhattan
`19. Tristan Louis, Manhattan
`20. Gregg Semler, Portland, OR
`21. Robert Blinn, Manhattan, New York
`The amicus encourage this Court to guarantee the
`independence of the Patent and Trial Appeals Board
`by affirming the Federal Circuit’s holding that
`Administrative Patent Judges are principal officers
`and must be appointed as such under Article II of the
`United States Constitution. Furthermore, the amicus
`
`
`
`3
`
`advocates the Court to vacate the Federal Circuit’s
`holding which
`severed
`the
`statutory
`tenure
`protections of Administrative Patent Judges because
`the
`court’s
`remedy does not
`comport with
`Congressional
`intent to promote
`inclusion and
`underrepresented communities.
`SUMMARY OF ARGUMENT
`Before the Court is a critical opportunity to achieve
`important policy objectives to promote the inclusion of
`inventors in underrepresented groups by protecting
`the independence of the Patent and Trial Appeals
`Board (PTAB). The Court may now remedy the United
`States Court of Appeals for the Federal Circuit’s
`misguided decision to sever the portion of the America
`Invents Act
`(AIA)
`regarding
`the
`tenure of
`Administrative Patent Judges (APJ), who adjudicate
`patentability issues before PTAB.
`The Federal Circuit’s decision is a valiant, but
`clumsy effort to satisfy the Appointments Clause of
`the United States Constitution. The Federal Circuit
`correctly affirmed that APJs are principal officers and
`must be appointed as such pursuant to the
`Appointments Clause
`of
`the United States
`Constitution. In doing so, however, the Federal
`Circuit incorrectly severed the tenure provision from
`the AIA.
`
`
`
`4
`
`The Federal Circuit’s decision contradicts Congress’
`aim to enable and protect inventors who are
`underrepresented in the patent ecosystem. Congress
`intended to promote equity and inclusion, and the
`judicial independence of the PTAB is important to
`achieve that aim. The legislative intent evidences
`Congress’ interest to further protections for these
`inventors. One of the most important protections for
`these inventors adopted by the AIA were the civil
`service provisions and review of the APJs. The
`Congressional record supports the intent to protect
`those inventors by placing the appointment of APJs
`under the political oversight of Congress to ensure the
`goals of equity and
`inclusion are achieved.
`Regretfully, those policy objectives remain unfulfilled.
`This Court has a unique opportunity to ensure that
`the PTAB continues to make progress to improve
`participation from all sectors of our society by
`ensuring that Congress’ policy objectives when
`passing the AIA are being satisfied.
`ARGUMENT
`I. SUBSTANTIAL DISPARITIES EXIST IN
`THE PATENTS GRANTED TO MINORITY
`INVENTORS
`Amicus advocates the Court to weigh the effects of
`its decision on inventors from underrepresented
`communities. Several studies have documented the
`issues faced by underrepresented groups, including
`
`
`
`5
`
`African-American, Hispanic, and female inventors, in
`securing patents. During passage of the AIA,
`Congress was mindful of the disproportionate effects
`of patent reform on small inventors generally, and
`female and minority
`inventors specifically. In
`response, eight years after passage of the AIA, the
`SUCCESS Act, PUB. L. 115–273, 132 STAT. 4158
`(2018), was enacted in an effort to document the
`issues faced by these inventors.
`A. Significant Gaps Persist In The Number
`Of African-American, Hispanic, And
`Female Inventors
`Because the Patent and Trademark Office (PTO)
`does not collect data on the personal characteristics of
`inventors, trends are difficult to identify. Alex Bell, et
`al. Who Becomes an Inventor in America? The
`Importance of Exposure to Innovation 1 (Nov. 2018)
`(“most sources of data on innovation (e.g., patent
`records) do not record even basic demographic
`information, such as an inventor's age or gender.”).
`Cross-referencing the names of inventors with other
`publicly available data, however, provides insight into
`how different demographics of inventors are being
`impacted. Kyle Jensen, et al., Gender Differences in
`Obtaining and Maintaining Patent Rights, NATURE
`BIOTECHNOLOGY vol. 36, p. 307 (April 2018).
`In October 2019, the PTO released the “Report to
`Congress Pursuant to Pub. L. No. 115-273, SUCCESS
`
`
`
`6
`
`Act.” The report noted the “impediments” that
`African-American inventors have traditionally faced
`“including the lack of financing for development and
`commercialization
`of
`inventions[.]” Report
`to
`Congress Pursuant to PUB. L. NO. 115-273, SUCCESS
`Act. USPTO & SBA p. 12 (Oct. 2019). This trend
`continues today as “Blacks or African Americans and
`Hispanics born
`in
`the U.S. are significantly
`underrepresented among innovators” when compared
`to their white counterparts.2 Id. at 12. The statistics
`regarding participation of African-Americans are
`troubling: “African-Americans make up 13% of the
`U.S. native-born population but comprised less than
`1% of the U.S.-born innovators it surveyed.” Matthew
`Bultman, For Black Inventors, Road to Owning
`Patents Paved with Barriers, BLOOMBERG LAW (2020).
`In a companion report, on July 4, 2020, the PTO also
`noted such disparities between males and females in
`a report titled “Progress and Potential 2020 Update
`on U.S. Women.” See generally Office of the Chief
`Economist (July 2020). The report observed that
`female participation increased; however, substantial
`
`
`2 Noting that, “Blacks or African Americans represent 11.3% of
`U.S.-born Americans and only 0.3% of the innovators who
`responded to their survey.” And “that observed gaps in patenting
`rates between Whites and racial/ethnic minorities cannot be
`explained by differences in parental income or performance on
`school tests.”
`
`
`
`
`7
`
`disparities remain.3 Id. at 4, 5. Additional studies
`demonstrate that women’s patent applications were
`“more likely to be rejected than those filed by teams of
`men.” Jyoti Madhusoodanan, Why Do Women
`Inventors Win Fewer Patents? YALE INSIGHTS April 09,
`2018 (last visited December 29, 2020) (available at
`https://insights.som.yale.edu/insights/why-do-
`women-inventors-win-fewer-patents)
`(“Essentially
`women inventors must pass greater degrees of
`scrutiny.”).
`Researchers found that, overall, women inventors’
`patents were more likely to be rejected than those
`filed by men. Gender Differences in Obtaining and
`Maintaining Patent Rights, Nature Biotechnology, vol.
`36, p. 307–309 (2018). Id. When rejected, those
`applications were 2.5% less likely to be appealed. Id.
`When applications were granted, these patents often
`had more phrases or words added that reduced the
`scope of their patents. Id. (‘An examination of the
`prosecution
`and maintenance
`histories
`of
`approximately 2.7 million US patent applications
`indicates that women have less favorable outcomes
`than men.”).
`
`
`
`3 Noting that, “The average women inventor rate (AWIR) for
`2007-2019 was 14.2%, up from 13.6% for 2007-2016.”
`
`
`
`8
`
`B. Congress Sought To Promote Innovation
`For Minority Small Inventors
`The SUCCESS Act aimed to address the “significant
`gap in the number of patents applied for and obtained
`by women and minorities.” PUB. L. 115–273, 132 STAT.
`4158 (2018). The Act expressed:
`[T]he sense of Congress that the United
`States has the responsibility to work
`with the private sector to close the gap
`in the number of patents applied for
`and obtained by women and minorities
`to harness the maximum innovative
`potential and continue to promote
`United States leadership in the global
`economy.
`Id. at Sec. 2
`The SUCCESS Act was a continuation of many
`Congressional efforts to provide protections and
`promote the interests of inventors from traditionally
`underrepresented communities. For example, the
`original AIA, adopted Section 29, which mandated
`that the Director of the PTO conduct statistical
`studies of the race and gender of inventors similar to
`the mandate of the Leahy-Smith America Invents Act,
`PUB. L. 112-29, SEC. 29, 125 STAT. 284, 339 (2011);
`HOUSE FLOOR DEBATE 157 CONG. REC. H4480-H4505
`(2011 – 2012).
`
`
`
`9
`
`The legislative record provides many examples of
`Congress’ efforts to protect the interests of African-
`American, Hispanic, and female inventors as the
`“small inventor.” More often than not, the small
`inventor is a woman or a minority individual who does
`not have access to the capital nor the institutional
`support that other inventors enjoy. See Lisa D. Cook,
`Policies to Broaden Participation in the Innovation
`Process, THE HAMILTON PROJECT, 8-10, 12-13 (2020).
`Parsing the Congressional record for the “extra-
`textual evidence” reveals that the purpose of the
`statute is to balance the needs to protect the small,
`non-corporate inventor before the PTAB, and allow
`greater efficiency and uniformity of patent decisions.
`NLRB v. SW Gen., Inc., 137 S. Ct. 929, 950 (2017)
`(Sotomayor, J., dissenting) (citing “legislative history,
`purpose, and post-enactment practice”).
`The fears of the disproportionate effect of the AIA on
`African-American, Hispanic, and female inventors is
`well-founded. Today, the PTAB is extremely popular
`with large corporate entities due to the more favorable
`standards and procedures to challenge patents. See
`Ryan Gatzmeyer, Are Patent Owners Given a Fair
`Fight: Investigating the AIA Trial Practices, 30
`BERKLEY TECH. L. J., 531, 531-32 (2015) (noting the
`popularity of the PTAB is due to additional rights to
`challenge patents including the one-year statutory
`timeline, lower costs, and more favorable standards
`for challengers, including a lower preponderance-of-
`
`
`
`10
`
`evidence standard for demonstrating unpatentability,
`and the broadest reasonable claim construction
`standard that potentially encompasses a greater
`amount of invalidating prior art) see also Office Patent
`Trial Practice Guide, 77 FED. REG. 48,756, 48,756-57
`codified at 37 C.F.R. § 42.
`Underrepresented communities do not have the
`same or equal access to capital nor funding as these
`corporate entities; thereby, causing a significant
`disproportionate amount
`of African-American,
`Hispanic, and
`female
`small
`inventors and
`detrimentally impacting Congressional intent at
`promoting diversity and inclusion.
`II. CONGRESS INTENDED TO PROTECT
`SMALL INVENTORS DURING THE POST-
`GRANT REVIEW PROCEEDINGS
`The primary concerns of advocates for small
`inventors are the post-grant review proceedings that
`provide an opportunity to invalidate patents before
`the PTAB. See generally Joe Matal, A Guide to the
`Legislative History of the America Invents Act: Part II
`of II, Fed. Cir. Bar Review Vol. 21, No. 3. (2012). The
`initiation of the PTAB was described by its creators as
`the most comprehensive patent law reform in sixty
`years. The Act was revolutionary and possibly the
`most sweeping change to United States patent law
`since the
`first patent was
`issued by George
`
`
`
`11
`
`Washington on July 31, 1790. H.R. REP. NO. 112-98,
`at 51 n. 52 (2011).
`In transitioning to the “first-to-file” system,
`Congress sought to “improve patent quality and limit
`unnecessary and counterproductive litigation costs.”
`H.R. REP. NO. 112-98, at 40 (2011). However, this
`transformation was not without controversy, as
`Congress’ efforts to modernize and harmonize the
`first-to-file system was viewed as favoring large
`corporations that have more resources to file patent
`applications early and make amendments
`if
`necessary. 157 CONG. REC. S1496-97 & S1497 (Mar. 9,
`2011)
`(statement of Sens. Hatch & Leahy
`respectively).
`A thorough examination of the Congressional record
`reveals that, despite Congress’ intent to modernize
`the “first-to-file” system, considerations were made for
`the effect on traditionally disadvantaged inventors
`and small inventors.” See H.R. REP. NO. 112-98, at 40
`fn. 14 (2011) (noting the importance of a grace period
`of one (1) year for small inventors). Among those with
`the most potential to benefit from the decreased costs
`in filing and defending patents in the PTAB are
`minority and women inventors, who, for numerous
`historical, political, and societal reasons, have
`traditionally been excluded and marginalized from
`the patent process. See Lisa D. Cook, Policies to
`Broaden Participation in the Innovation Process, THE
`HAMILTON PROJECT, 8-10; 12-13 (2020); see also
`
`
`
`12
`
`Matthew Bultman, For Black Inventors, Road to
`Owning Patents Paved with Barriers, BLOOMBERG
`LAW (2020). The lower barriers to challenge patents
`and “the high rates of invalidation in the PTAB
`sparked, at least initially, significant concern in the
`patent community, resulting in the overly dramatic
`characterization of the PTAB panels as death squads
`killing property rights.” Greg Reilly, Bridging the Gap
`Between the Federal Courts and the United States
`Patent & Trademark Office, 23 B.U.J. Sci. & Tech. L.
`377, 379
`(Summer 2019)
`(internal quotations
`omitted).
`Despite mixed review of the impact of the PTAB on
`small inventors, many sections of the AIA were
`enacted to monitor the effect of the newly enacted
`PTAB on small inventors to protect them from bias.
`Section 28 of the AIA established a patent
`ombudsman program that provides “support and
`services relating to patent filings of small business
`concerns and independent inventors.” Leahy-Smith
`America Invents Act, PUB. L. 112-29, SEC. 28, 125
`STAT. 284, 339 (2011). Section 29 requires the Director
`to “establish methods for studying the diversity of
`applicants . . . who are minorities, women, or
`veterans.” Id. at SEC. 29. Section 32 requires the
`Director to “work with and support intellectual
`property law associations across the country in the
`establishment of pro bono programs designed to assist
`financially under-resourced independent and small
`
`
`
`13
`
`businesses.” Id. at SEC. 32. Lastly, Section 3(l)
`required the Small Business Administration to
`conduct a study of the impact of the adoption of the
`first-to-file system on small business. Id. at SEC. 3(L).
`Since enactment of the PTAB, small, non-corporate
`inventors have much to fear from the potential issues
`that arise
`from
`lack
`of
`transparency and
`independence of the PTAB. In the short time since the
`PTAB was
`inaugurated, several
`instances of
`procedural “shenanigans” by the PTAB concerned the
`federal judiciary sufficiently to merit mention in oral
`argument and decisions. In Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., for example,
`Circuit Judges Dyk and Wallach wrote separately to
`note their concerns of the Board and incorporated the
`PTO’s admission of its potentially unconstitutional
`purpose to add additional APJs in its own brief when:
`[T]he PTO expands administrative
`panels to decide requests for rehearing
`in order to
`‘secure and maintain
`uniformity of the Board's decisions.’
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1020 (Fed. Cir. 2017) (quoting the
`brief filed on behalf of the PTO Director).
`The Government reasserted that position, during
`oral argument in Oil States Energy Servs., LLC,
`explaining that the Chief Judge of the PTAB
`
`
`
`14
`
`increased the number of APJs during an adjudication,
`stating it was:
`[C]oncerned that the panel as initially
`composed was likely to diverge from
`general PTAB precedent with respect
`to a matter that bore on the institution
`decision . . . It's not clear whether the
`chief judge picked judges that he had a
`particular reason to think would be
`sympathetic to a particular view.
`See Tr. of Oral Arg. p. 47 ln 20 to p. 48 ln. 4 In Oil
`States Energy Servs., LLC v. Greene's Energy Grp.,
`LLC, 138 S. Ct. 1365
`(2018)
`(available at
`https://www.supremecourt.gov/oral_arguments/argu
`ment_transcripts/2017/16-712_7kh7.pdf)
`(argument
`of Mr. Stewart on behalf of the Government). In
`response to those concerns, J. Gorsuch raised the
`issue of whether the PTAB appeared to be stating that
`it will “stack the deck with judges who we like.” Id. at
`p. 43 ln. 19-23. Chief Justice John Roberts noted that
`adding additional judges give the appearance that the
`Board is a “tool of the executive activity, rather than
`anything resembling a determination of rights.” Id. at
`p. 34 ln. 15, p. 35 ln. 1. Other salacious examples of
`“unethical” action have surfaced demonstrating
`purported bias at the PTO. Ryan Davis, USPTO Docs
`Shed Some Light On Secretive SAWS Program,
`Law360 (July 24, 2018) (As described by former
`Commerce Department Inspector General Todd
`
`
`
`15
`
`
`the secretive Sensitive
`Zinser). For example,
`Application Warning System (SAWS) program was an
`extra-judicial
`layer of review
`intentionally and
`systemically hidden across the Agency that interfered
`with every step of the patent process. Id.
`Pursuant to the statute, PTAB
`judges were
`appointed by the Secretary of Commerce,
`in
`consultation with the Director of the PTO, both of
`whom are political appointees and serve at the
`pleasure of the President. 35 U.S.C. § 6(a) (2012). The
`PTO Director determines PTAB
`judges' salary,
`performance reviews, discipline, and removal. Id.
`Further political influence is evidenced as political
`appointees may even be able to designate particular
`panels of PTAB judges to hear particular cases. PTAB,
`Standard Operating Procedure 1 (Revision 15)
`Assignment
`of
`Judges
`to
`Panels,
`https://www.uspto.gov/sites/default/files/documents/S
`OP%201%20R15%20FINAL.pdf (last visited Dec. 29,
`2020). This lack of oversight and review results in
`adverse consequences for underrepresented groups,
`including African-American, Hispanic and female
`inventors, respectfully, which Congress sought to
`protect through legislative action.
`
`
`
`
`
`16
`
`III. MAINTAINING LEGISLATIVE REVIEW
`OF THE APJS PROTECTS SMALL
`INVENTORS FROM UNFAIR REVIEW
`A significant question before the Court is whether
`APJs are principal officers, inferior officers, or mere
`employees, and whether severing the civil service
`protections of APJs cures the constitutional defect of
`their
`appointments.
`To maintain
`judicial
`independence and protect small inventors, the Court
`should affirm that APJs are principal officers, and
`vacate the ruling that severs the civil service
`protections for the APJs.
`A. The Court Should Affirm That APJs Are
`Principal Officers Because Of The Lack Of
`Review Of Their Decisions By A Principal
`Officer
`
`
`the
`identified
`The Federal Circuit correctly
`controlling principle outlined in Edmond v. United
`States, 520 U.S. 651, 663 (1997) to differentiate
`principal officers from inferior officers. Edmonds held
`that “‘inferior officers’ are officers whose work is
`directed and supervised at some level by [principal
`officers] who are appointed by Presidential
`nomination with the advice and consent of the
`Senate.” Id. While the Federal Circuit correctly
`affirmed that APJs are principal officers, the court’s
`ruling incorrectly prioritized the importance of “the
`official’s power to remove the officers” over “the
`
`
`
`17
`
`reviewability of the officers’ decisions.”4 Ultimately,
`this error led the Federal Circuit to fashion an
`inappropriate and ineffective remedy of severing the
`civil service protections for the APJs from the statute.
`Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320,
`1338 (Fed. Cir. 2019).
`In Edmond, the Court held that Coast Guard Court
`of Criminal Appeals judges were inferior officers. 520
`U.S. at 666. In reaching this conclusion, the Court
`found it “significant” that Coast Guard judges “have
`no power to render a final decision on behalf of the
`United States unless permitted to do so by other
`Executive officers.” Id. at 665. The Court further
`distinguished these decisions from those of Tax Court
`judges, noting that the decisions of Tax Court judges
`“are appealable only to courts of the Third Branch.”
`Id. at 665-666.
`This Court has repeatedly affirmed that the
`principle of reviewability is the determining factor for
`the question of whether an officer is a principal or
`
`
`4 The three factors to consider in determining whether officers
`are principal or inferior: “(1) whether [a presidentially]
`appointed official has the power to review and reverse the
`officers’ decision; (2) the level of supervision and oversight an
`appointed official has over the officers; and (3) the appointed
`official’s power to remove the officers.” Edmond v. United States,
`520 U.S. 651 (1997).
`
`
`
`
`18
`
`inferior officer.5 The principle that consistently drives
`the Court’s reasoning is that the authority to speak on
`behalf of the United States solely belongs to a
`principal officer. Because Congress imbued the APJs
`with this authority in the AIA, the Federal Circuit
`correctly determined that APJs are principal officers.
`The Constitution requires the President, with the
`advice and consent of the Senate, to appoint them. As
`such, the Court should affirm that aspect of the
`Federal Circuit’s holding.
`B. Severing The Civil Service Protections Of
`APJs Is Unconstitutional And Increases
`Political Pressure
`The Federal Circuit indicated that by severing the
`statutory tenure provision of APJs, it hoped to achieve
`
`5 See, e.g., Lucia v. SEC, 138 S. Ct. 2044 (2018) (affirming that
`that SEC Administrative Law Judge decisions are ultimately
`subject to review by the Commission and do not become a final
`decision until the Commission declines review); Free Enterprise
`Fund v. Public Company Accounting Oversight Board, 561 U.S.
`477 (2010) (holding PCAOB members inferior officers, the Court
`noted that its adjudications were subject to the review and
`approval of the SEC); Freytag v. Commissioner, 501 U.S. 868
`(1991) (holding that the Tax Court’s “special trial judges” are
`inferior officers because the Tax Court ultimately had the
`authority to review their decisions); Ass’n of Am. R.Rs. v. U.S.
`Dep’t of Transp., 821 F.3d 19, 39 (D.C. Cir. 2016), remand Dep’t
`of Trans. v. Ass’n of Am. R.Rs., 575 U.S. 43 (2015) (agreeing with
`J. Alito’s concerns that that an arbitrator could issue a final
`decision with no principal officer review).
`
`
`
`19
`
`cure a
`to
`remedy necessary
`the narrowest
`constitutional defect. Arthrex, Inc. v. Smith &
`Nephew, Inc., 941 F.3d 1320, 1338 (Fed. Cir. 2019).
`The court noted that “severing the restriction on
`removal of APJs renders them inferior rather than
`principal off
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