Amicus Curiae Brief — United States, Petitioner v. Arthrex, Inc., et al.

Nos. 19-1434, 19-1452, and 19-1458

IN THE

UNITED STATES OF AMERICA,

Petitioner,

v.

ARTHREX, INC. ET AL.,

Respondents.

On Writs of Certiorari to the

United States Court of Appeals for the Federal Circuit

BRIEF OF U.S. LUMBER COALITION AS

AMICUS CURIAE URGING AFFIRMANCE IN

PART AND REVERSAL IN PART, SUPPORTING

RESPONDENTS IN NOS. 19-1434 & 19-1452 AND

PETITIONER IN NO. 19-1458

Kevin K. Russell

Counsel of Record

Erica Oleszczuk Evans

GOLDSTEIN &

RUSSELL, P.C.

7475 Wisconsin Ave.

Suite 850

Bethesda, MD 20814

(202) 362-0636

kr@goldsteinrussell.com

(additional captions on inside cover)

SMITH & NEPHEW, INC., ET AL.,

Petitioners,

v.

ARTHREX, INC. ET AL.,

Respondents.

ARTHREX, INC. ET AL.,

Petitioner,

v.

SMITH & NEPHEW, INC., ET AL.,

Respondents.

i

TABLE OF CONTENTS

TABLE OF AUTHORITIES ........................................ ii

INTEREST OF THE AMICUS CURIAE .................... 1

SUMMARY OF ARGUMENT ..................................... 2

ARGUMENT ................................................................ 5

I.

APJs Are Principal Officers Because They

Make Final Decisions On Behalf Of The

Executive Branch On Important Matters Of

Federal Law ........................................................... 5

A. APJs Are “Officers Of The United States”

Because Their Decisions Control A

Federal Agency’s Execution Of Federal

Law. ................................................................. 6

B. APJs Are Principal Officers Because Their

Decisions Are Not Subject To Review By

Any Other Executive Branch Official............ 8

II. The Constitutional Problem Cannot Be

Remedied By Simply Invalidating APJs’

Tenure Protections .............................................. 20

CONCLUSION........................................................... 23

ii

TABLE OF AUTHORITIES

Cases

Auffmordt v. Hedden,

137 U.S. 310 (1890) .................................................. 7

Buckley v. Valeo,

424 U.S. 1 (1976) ...................................................... 7

Coal. for Fair Lumber Imports v. United States,

471 F.3d 1329 (D.C. Cir. 2006) ................................ 1

Dep’t of Transp. v. Ass’n of Am. R.Rs.,

575 U.S. 43 (2015) ................................................ 8, 9

Edmond v. United States,

520 U.S. 651 (1997) ......................................... passim

Free Enter. Fund v. Pub. Co. Acct. Oversight Bd.,

561 U.S. 477 (2010) ......................................... passim

Freytag v. Comm’r,

501 U.S. 868 (1991) .................................... 11, 18, 19

Griffin v. Thompson,

43 U.S. (2 How.) 244 (1844) ................................... 12

Intercollegiate Broad. Sys., Inc. v. Copyright

Royalty Bd.,

684 F.3d 1332 (D.C. Cir. 2012) .............................. 14

Kappos v. Hyatt,

566 U.S. 431 (2012) ................................................ 13

Morrison v. Olson,

487 U.S. 654 (1988) .................................. 4, 8, 19, 20

Myers v. United States,

272 U.S. 52 (1926) .................................................. 12

NLRB v. SW Gen., Inc.,

137 S. Ct. 929 (2017) .............................................. 20

iii

Pennsylvania v. U.S. Dep’t of Health & Human

Servs.,

80 F.3d 796 (3d Cir. 1996) ..................................... 14

Printz v. United States,

521 U.S. 898 (1997) .......................................... 12, 14

Seila Law LLC v. CFPB,

140 S. Ct. 2183 (2020) ..................................... passim

United States v. Allred,

155 U.S. 591 (1895) ................................................ 12

United States v. Germaine,

99 U.S. 508 (1879) .................................................... 7

Constitutional Provisions

U.S. Const. art. II, § 1, cl. 1 ......................................... 6

U.S. Const. art. II, § 2, cl. 2 ................................ passim

U.S. Const. art. II, § 3 ........................................ 4, 6, 15

U.S. Const. art. III, § 1 .............................................. 11

U.S. Const. amend. I .................................................. 16

Statutes

Act of Apr. 10, 1790, ch. 7, 1 Stat. 109...................... 13

Act of Apr. 30, 1798, ch. 35, 1 Stat. 553.................... 12

Act of Feb. 20, 1792, ch. 7, 1 Stat. 232 ...................... 12

Act of July 4, 1836, ch. 357, 5 Stat. 117.................... 13

Act of Mar. 3, 1839, ch. 88, 5 Stat. 353 ..................... 13

Veterans’ Benefits Improvement Act of 1994,

Pub. L. No. 103-446, 108 Stat. 4645...................... 14

5 U.S.C. § 557(b) ........................................................ 14

26 U.S.C. § 7443A(c) .................................................. 19

35 U.S.C. § 6 ............................................................. 5, 8

35 U.S.C. § 318(b) ........................................................ 5

iv

Rules

Sup. Ct. R. 37.6 ............................................................ 1

Other Authorities

Steven G. Calabresi & Gary Lawson, The

Unitary Executive, Jurisdiction Stripping, and

the Hamdan Opinions: A Textualist Response

to Justice Scalia, 107 Colum. L. Rev. 1002

(2007) ...................................................................... 11

Dep’t of Veterans Affairs, VA History in Brief,

https://www.va.gov/opa/publications/archives/

docs/history_in_brief.pdf ........................................ 14

P.J. Federico, Evolution of Patent Office

Appeals, 22 J. Pat. Off. Soc’y 838 (1940) ............... 13

Lee S. Liberman, Morrison v. Olson: A

Formalistic Perspective on Why the Court Was

Wrong, 38 Am. U. L. Rev. 313 (1989). ................... 20

Thomas Sheridan, A Complete Dictionary of the

English Language (2d ed. 1789) .............................. 9

Noah Webster, An American Dictionary of the

English Language (3d ed. 1830) .............................. 9

1

INTEREST OF THE AMICUS CURIAE1

The U.S. Lumber Coalition is a non-profit

corporation representing large and small softwood

lumber producers from around the country, joined by

their employees, and woodland owners, working to

address Canada’s unfair lumber trade practices.

Those practices have led the United States to impose

antidumping and countervailing duties on certain

Canadian softwood lumber, duties that Canada has

challenged pursuant to the dispute resolution

provisions of the North American Free Trade

Agreement (NAFTA). The Coalition has an interest in

the proper interpretation of the Appointments Clause

because NAFTA’s dispute resolution provisions (which

were carried over into the United States-MexicoCanada Agreement) raise serious Appointments

Clause questions. See Coal. for Fair Lumber Imports

v. United States, 471 F.3d 1329, 1330-31 (D.C. Cir.

2006) (per curiam) (explaining that under NAFTA, a

binational panel of private arbitrators can review the

United States’ compliance with U.S. antidumping and

countervailing duty laws and order the relevant U.S.

agencies to change or eliminate the duties if the panel

decides the agencies misapplied federal law); id. at

1332-33 (finding that settlement agreement between

United States and Canada revoking such duties

rendered particular constitutional challenge to

NAFTA dispute resolution provisions nonjusticiable).

1

Pursuant to Supreme Court Rule 37.6, amicus affirms

that no counsel for a 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. All parties have filed blanket consents to the filing of

amicus briefs with the Clerk’s office.

2

SUMMARY OF ARGUMENT

I. It is undisputed that in many circumstances,

administrative patent judges (APJs) of the Patent and

Trademark Office (PTO) have the final word within

the Executive Branch on whether a patent will issue

or a previously issued patent will be revoked. On any

reasonable understanding of the text, history, and

purposes of the Appointments Clause, that makes

APJs principal officers who must be nominated by the

President and confirmed by the Senate.

A. To start, officials whose decisions control a

federal agency’s execution of federal law are “Officers

of the United States” and therefore their

appointments are subject to the restrictions of the

Appointments Clause.

While this Court has

sometimes

treated

individuals

who

provide

temporary,

partial

assistance

in

agency

decisionmaking as employees or contractors, the Court

has never suggested that Congress could delegate an

agency’s core functions to non-officers and thereby

avoid the Constitution’s structural protections against

arbitrary or abusive exercise of federal power.

B. Nor has this Court ever suggested that

someone with the final say in an agency’s exercise of

such powers would be anything other than a principal

officer. As a matter of common understanding, the

person who makes the final decisions with respect to

an agency’s core functions—here, issuing and revoking

patents—is a principal officer of that department.

Those who must abide by those decisions—including,

here, the PTO’s Director—are naturally understood to

be subordinate to that final authority. A judge whose

vote counts no more than her law clerks’ is not the

principal officer of her chambers.

3

That view is consistent with historical practice.

From the beginning, a unifying feature of inferior

officers authorized by Congress was that their

decisions were subject to review and revisions by the

principal officers of their department. Indeed, even

today, the independence of the APJs in the PTO is an

aberration.

The traditional arrangement, under which

inferior officers’ decisions are subject to review and

countermand by a principal officer, is exactly what the

drafters of the Appointments Clause intended. The

Clause is part of a broader constitutional design that

protects liberty by ensuring that a popularly elected

President has ultimate control—and therefore

accountability—for all the operations of the Executive

Branch. Because the President cannot realistically

review all (or even a small fraction of) the lawenforcing decisions made by federal agencies, it is vital

that the principal officers the President has chosen

can exercise that kind of control. Otherwise, the

President could shirk his responsibility to the People

by explaining that he and his principal officers lacked

the power to change what the federal government has

done.

Importantly, the People have a right to hold the

President—and the President has the right to hold his

principal officers—accountable for every significant

exercise of federal power. It is not enough that the

President or an agency head has the power to

determine the general direction of a department, or

how it enforces federal law in the run of cases. The

President has taken an oath to “take Care that the

Laws be faithfully executed.” U.S. Const. art. II, § 3.

There is no exception for case-specific failures that the

4

President could not prevent because he and his

principal officers lacked final authority over the

matter.

Here, however, were the public to decry the PTO’s

grant or invalidation of an important patent, the

President would turn to the Director of the PTO, who

could credibly claim that he lacked the power to avoid

that result. Indeed, it is entirely possible that the

Director would have sat on the panel that issued the

decision, but was outvoted by his supposed

subordinates.

None of this Court’s decisions countenance that

result. To the contrary, the Court has repeatedly

emphasized that the decisions of those it has deemed

inferior officers were subject to review by other

principal officers within the Executive Branch. The

only possible exception is the independent counsel in

Morrison v. Olson, 487 U.S. 654 (1988). But that

exception proves the rule that such insulation requires

an extraordinary justification and significant

compensating limitations, none of which is present

here.

II. Simply eliminating APJs’ tenure protections

would not remedy the constitutional problem. Being

able to fire (or reassign) APJs at will is far too blunt

an instrument to allow the PTO Director to control the

outcome of particular cases and, therefore, to be truly

accountable for them.

Indeed, the cause of political accountability would

be set back, not advanced, by telling the Director that

he should direct the outcome of particular cases

through behind-the-scenes threats of termination.

The coerced result would be portrayed to the world as

the fair judgment of apolitical experts, allowing the

5

Director to evade responsibility for what may (or may

not) be his own decision, undertaken for reasons kept

secret from the public. Even if Congress would have

preferred that result to broader invalidation, the

constitutional design cannot endure it.

ARGUMENT

I.

APJs Are Principal Officers Because They

Make Final Decisions On Behalf Of The

Executive Branch On Important Matters Of

Federal Law.

The PTO is assigned responsibility for issuing and

revoking patents. From the Founding until the middle

of the twentieth century, the final responsibility for

that exercise of governmental power lay in the hands

of officials who were nominated by the President and

confirmed by the Senate. See No. 19-1434 Pet. App.

21a. Today, the final decision whether to issue or

revoke a patent is made by the Patent Trial and

Appeal Board (PTAB), a panel of APJs, who are

appointed by the Secretary of Commerce without

Senate approval. See ibid; 35 U.S.C. § 6. A PTAB’s

decision is not subject to review or revision by any

other official in the PTO and, unless reversed by a

court, binds all other Executive Branch officials,

including the PTO’s Senate-confirmed Director. See

35 U.S.C. § 318(b).

The question here is whether the Constitution

permits Congress to lodge final authority for such

decisions in officials who are not nominated by the

President or confirmed by the Senate. The answer is

no.

The Constitution protects liberty through careful

distribution of authority among the officials of the

6

federal government. See, e.g., Free Enter. Fund v. Pub.

Co. Acct. Oversight Bd., 561 U.S. 477, 501 (2010). The

power to enforce the Nation’s law is lodged with the

Executive. U.S. Const. art. II, § 1, cl. 1. A principal

protection against the abuse of that power is the

People’s right to elect and hold accountable a single

Chief Executive who is given exclusive responsibility

to “take Care that the Laws be faithfully executed.”

Id. art. II, § 3; see, e.g., Free Enter. Fund, 561 U.S. at

492-93. To empower the President to fulfill that

obligation, and to provide an additional check on the

potential for abuse, the Appointments Clause requires

that the President nominate, and the Senate confirm,

all “Officers of the United States,” with the exception

that “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.” U.S. Const. art. II, § 2, cl. 2.

This Court has not “set forth an exclusive criterion

for distinguishing between principal and inferior

officers for Appointments Clause purposes.” Edmond

v. United States, 520 U.S. 651, 661 (1997). But the

Court has never before condoned Congress assigning

the principal functions of a government department to

inferior officers whose decisions are shielded from

review or revision by any other Executive Branch

official. The text, purposes, and history of the

Appointments Clause precludes that effort here.

A. APJs Are “Officers Of The United States”

Because Their Decisions Control A

Federal Agency’s Execution Of Federal

Law.

As an initial matter, APJs are “Officers of the

United States,” as opposed to mere employees, because

7

they exercise “significant authority pursuant to the

laws of the United States.” Edmond, 520 U.S. at 662

(citation omitted).2 Indeed, the PTAB exercises not

only significant, but ultimate authority over the

principal governmental function of the PTO, issuing

final decisions for the office on whether to issue or

revoke patents.

To be sure, this Court has occasionally held that

individuals who provide partial, temporary assistance

to an agency’s decisionmakers can be employees or

contractors rather than officers. For example, in

United States v. Germaine, 99 U.S. 508 (1879), the

Court held that a surgeon hired to conduct physical

examinations to assist the Government in making

pension benefit determinations was not an officer, but

merely a contractor, because the surgeon’s “duties are

not continuing and permanent,” but “occasional and

intermittent.” Id. at 512 (emphasis omitted); see also

Auffmordt v. Hedden, 137 U.S. 310, 326-27 (1890)

(same for “merchant appraiser” contracted to assist

agency in resolving import duty disputes).

Those cases are distinguishable, of course,

because the APJ’s duties are continuing and

permanent. See 35 U.S.C. § 6. But more importantly,

the Court has never suggested that Congress can

assign employees or contractors even temporary

authority to make final decisions on behalf of a federal

agency regarding its enforcement of federal law. See,

2

See also Buckley v. Valeo, 424 U.S. 1, 131 (1976) (per

curiam) (constitutional term “Officers of the United States” was

“taken by all concerned to embrace all appointed officials

exercising responsibility under the public laws of the Nation”); id.

at 132 (“No class or type of officer is excluded because of its special

functions.”).

8

e.g., Morrison v. Olson, 487 U.S. 654, 671-72 (1988)

(special counsel given responsibility for deciding

whether to bring a criminal prosecution on behalf of

the United States is an officer, despite significant

limits on the counsel’s jurisdiction and tenure); Dep’t

of Transp. v. Ass’n of Am. R.Rs., 575 U.S. 43, 63 (2015)

(Alito, J., concurring) (reading a statute to permit

private arbitrators to resolve disputes over the content

of federal regulations would “raise serious questions

under the Appointments Clause”); id. at 87-88

(Thomas, J., concurring in the judgment) (“Although

no provision of the Constitution expressly forbids the

exercise of governmental power by a private entity,

our so-called ‘private nondelegation doctrine’ flows

logically from the three Vesting Clauses.”).

Because APJs dictate the PTO’s exercise of some

of its most important and basic law enforcement

responsibilities, they are undoubtedly Officers of the

United States, subject to the Appointments Clause.

B. APJs Are Principal Officers Because

Their Decisions Are Not Subject To

Review By Any Other Executive Branch

Official.

Because they are officers, APJs must either be

nominated by the President and confirmed by the

Senate (which they are not) or qualify as “inferior

officers” within the meaning of the Appointments

Clause. While the Court has eschewed bright-line

rules for distinguishing between principal and inferior

officers, a critical consideration should be whether the

official has the “power to render a final decision on

behalf of the United States” in particular cases.

Edmond, 520 U.S. at 665. Where, as here, an official’s

case-specific exercise of Executive authority is not

9

subject to review and reversal by any other Executive

Branch official, the official should be considered a

principal officer absent some unusual justification

that is absent here. That conclusion flows naturally

from the text, history, and purposes of the

Appointments Clause, as well as this Court’s

decisions.

Text. The Constitution does not define the term

“inferior officer,” but its ordinary meaning denotes

subordination to a superior. See Edmond, 520 U.S. at

662 (“Whether one is an ‘inferior’ officer depends on

whether he has a superior.”); Inferior (def. 4), Noah

Webster, An American Dictionary of the English

Language 450 (3d ed. 1830) (“Subordinate; of less

importance”); Inferiour, Thomas Sheridan, A Complete

Dictionary of the English Language (2d ed. 1789)

(“Lower in place; lower in [s]tation or rank of life; lower

in value or excellency; [s]ubordinate”). And being a

subordinate ordinarily entails having one’s significant

decisions subject to review and revision by a superior.

See, e.g., Seila Law LLC v. CFPB, 140 S. Ct. 2183,

2199 n.3 (2020) (inferior officer is one whose “work is

directed and supervised by a principal officer”)

(internal quotation marks omitted); Ass’n of Am.

R.Rs., 575 U.S. at 63 (Alito, J., concurring) (“[A]n

officer who acts without supervision must be a

principal officer.”) (citing Edmond, 520 U.S. at 663).

Petitioners do not deny that the PTO’s Director

lacks the authority to review and countermand

particular PTAB decisions. They claim instead that

no such power is necessary for the PTAB to be inferior

to the Director. See U.S. Br. 37; S&N Br. 35-36. But

that position cannot be squared with any common

understanding of what it means to be an “inferior”

10

officer. A principal officer’s power of direction and

supervision necessarily includes the power to direct

how the inferior will exercise government power in

particular instances. An army general is surely

entitled to review, revise, and countermand an inferior

officer’s particular battle plans, not just to dictate a

broader strategy for the conflict. If control over such

essential military functions were vested in majors

rather than generals, we would understand the major

to be the principal officer and the general to be the

subordinate, inferior officer.

It is particularly difficult to reconcile petitioners’

view of an “inferior” officer in the context of an

adjudicative body. A magistrate judge whose reports

and recommendations bind a district court would not

be described as the “inferior” officer in that

relationship. A judge whose decisions are controlled

by a vote of her law clerks is not the principal officer

of her chambers. And the reason the Constitution

describes the lower federal courts as “inferior Courts”

is precisely because their decisions are subject to

review by this Court, not because this Court hires or

fires lower court judges (responsibilities reserved for

Congress and the President). U.S. Const. art. III, § 1.3

3

While the Constitution permits Congress to control this

Court’s appellate jurisdiction over the lower courts, the Framers

would not have described those courts as “inferior” if no appellate

review at all had been permitted or contemplated. Cf. Steven G.

Calabresi & Gary Lawson, The Unitary Executive, Jurisdiction

Stripping, and the Hamdan Opinions: A Textualist Response to

Justice Scalia, 107 Colum. L. Rev. 1002 (2007) (noting serious

constitutional questions that would arise if Congress attempted

to make some categories of lower court decisions unreviewable by

this Court). In this case, the PTAB’s decisions are never subject

to review or countermand by any other Executive Branch official.

11

Indeed, it is nearly impossible to construct an

English sentence describing someone as having

“inferior” status in a hierarchy when that person

wields the ultimate, unreviewable authority to make

the organization’s most important decisions.4

In this case, it is all but definitional that the

person who has the final say about whether the PTO

will issue or revoke a patent is a principal officer of the

Patent Office. And to say that the rest of the Office is

bound to adhere to that decision is to say that the

others are subordinate to the PTAB with respect to the

Office’s essential responsibilities.

History. Petitioners’ position also runs headlong

into history. See Seila Law, 140 S. Ct. at 2201

(“‘Perhaps the most telling indication of a severe

constitutional problem with an executive entity is a

lack of historical precedent’ to support it.”) (citation

omitted and cleaned up); Printz v. United States, 521

U.S. 898, 905 (1997) (“[C]ontemporaneous legislative

exposition of the Constitution . . ., acquiesced in for a

long term of years, fixes the construction to be given

its provisions.”) (quoting Myers v. United States, 272

U.S. 52, 175 (1926)) (ellipses in original).

As the Court explained in Edmond, the First

Congress subjected early inferior officers to the

plenary control of principal officers. For example, in

4

At best, a person might have principal authority for some

category of responsibilities and a subordinate position with

respect to others. But giving a principal officer additional inferior

responsibilities does not eliminate the need for presidential

appointment and Senate confirmation. Cf. Freytag v. Comm’r,

501 U.S. 868, 882 (1991) (“Special trial judges are not inferior

officers for purposes of some of their duties under § 7443A, but

mere employees with respect to other responsibilities.”).

12

establishing the office of the “Chief Clerk” of the

Department of Foreign Affairs and the Department of

War, Congress provided that this “inferior officer”

should be “employed” as the principal officer “shall

deem proper.” 520 U.S. at 663-64 (citations omitted).

Congress provided the same unrestricted authority

over inferior officers in the Post Office and Navy. See

Act of Feb. 20, 1792, ch. 7, § 3, 1 Stat. 232, 234 (Deputy

Postmaster subject to “such regulations” “as may be

found necessary” by the Postmaster General); Act of

Apr. 30, 1798, ch. 35, §§ 1-2, 1 Stat. 553, 553-54

(Principal Clerk in Department of the Navy to be

“employed in such manner as [Secretary of the Navy]

shall deem most expedient”).

Likewise, in United States v. Allred, 155 U.S. 591

(1895), this Court explained that commissioners of the

federal courts—who performed some of the functions

of modern magistrates, including issuing warrants—

were inferior officers who had long been understood to

be “subject to the orders and directions of the court

appointing them.” Id. at 595; see also Griffin v.

Thompson, 43 U.S. (2 How.) 244, 257 (1844) (“There is

inherent in every court a power to supervise the

conduct of its officers, and the execution of its

judgments and process.”).

The first Patent Act similarly assigned final

responsibility for issuing patents to principal officers,

namely a commission comprised of the Secretary of

State, the Secretary of War, and the Attorney General.

See Act of Apr. 10, 1790, ch. 7, 1 Stat. 109, 109-10.

Congress continued the pattern after it transferred

that authority to the Patent Office, generally

subjecting the decisions of patent examiners to review

by the presidentially appointed and Senate-confirmed

13

Commissioner of Patents. See, e.g., Kappos v. Hyatt,

566 U.S. 431, 440 (2012) (“Under the 1870 Act, an

applicant denied a patent by the primary examiner

could appeal first to a three-member board of

examiners-in-chief, then to the Commissioner for

Patents, and finally to an en banc sitting of the

Supreme Court of the District of Columbia.”).5

Critically, petitioners and their numerous amici

are unable cite any Founding-era pattern of Congress

giving an inferior officer statutory authority to make

important decisions on behalf of a department while

immune from case-specific review by a principal

officer. Indeed, petitioners are able to cite only a

smattering of allegedly similar statutes in the entire

history of the country. See S&N Br. 38-42 (citing

Copyright Royalty Board (established in 2004),6 Board

5

For a period of less than three years, between July of 1836

and March of 1839, certain decisions of the Commissioner were

subject to revision by a three-person board of examiners

appointed by the Secretary of State. See P.J. Federico, Evolution

of Patent Office Appeals, 22 J. Pat. Off. Soc’y 838, 839-41, 842-43

(1940) (discussing Act of July 4, 1836, ch. 357, § 7, 5 Stat. 117,

119-20, superseded by Act of Mar. 3, 1839, ch. 88, § 11, 5 Stat.

353, 354-55). The 1836 statute did not directly address whether

the Secretary of State could review and revise the board’s

decisions. Compare § 7, 5 Stat. at 120 (the board’s opinion “being

certified to the Commissioner, he shall be governed thereby in

further proceedings to be had on such application”), with id. § 1,

5 Stat. at 118 (Commissioner shall perform duties “under the

direction of the Secretary of State”). The issue apparently never

came up, perhaps because the board of examiners heard a total of

nine cases under this regime. See Federico at 841.

6

See Intercollegiate Broad. Sys., Inc. v. Copyright Royalty

Bd., 684 F.3d 1332, 1334-35 (D.C. Cir. 2012) (describing Board’s

origins, but holding that its members are principal officers).

14

of Veterans’ Appeals (established in 1994),7 and the

Departmental Appeals Board of the Department of

Health and Human Services (established in the

1970s)8). But examples “of such recent vintage . . . are

no more probative than the statute before us of a

constitutional tradition that lends meaning to the

text.” Printz, 521 U.S. at 918. Indeed, petitioners’

handful of examples illustrates that even today,

insulating administrative adjudications from review

by principal officers is an aberration. See also, e.g., 5

U.S.C. § 557(b) (provision of Administrative Procedure

Act providing for agency review of decisions by

administrative law judges); Arthrex Br. 30.

Purposes.

The ordinary meaning of the

constitutional text, as illuminated by historical

tradition, is strongly reinforced by the Appointments

Clause’s purposes.

The Appointments Clause is part of a

constitutional design intended to consolidate

Executive power in a single, nationally elected

President charged with the ultimate responsibility to

“take Care that the Laws be faithfully executed.” U.S.

Const. art. II, § 3; see, e.g., Seila Law, 140 S. Ct. at

2203. Under this plan, “individual executive officials

7

The Board was established in the 1930s. See Dep’t of

Veterans Affairs, VA History in Brief 12, https://www.va.gov/opa/

publications/archives/docs/history_in_brief.pdf. In 1994, Congress

directed that the Board’s members other than the Chairman

would be appointed by the Secretary of the Department of

Veterans Affairs without Senate confirmation. See Veterans’

Benefits Improvement Act of 1994, Pub. L. No. 103-446, tit. II,

§ 201(a)(1), 108 Stat. 4645, 4655.

8

See Pennsylvania v. U.S. Dep’t of Health & Human Servs.,

80 F.3d 796, 800 (3d Cir. 1996) (describing history).

15

will still wield significant authority, but that authority

remains subject to the ongoing supervision and control

of the elected President.” 140 S. Ct. at 2203. “Through

the President’s oversight, ‘the chain of dependence [is]

preserved,’ so that ‘the lowest officers, the middle

grade, and the highest’ all ‘depend, as they ought, on

the President, and the President on the community.”

Ibid. (quoting 1 Annals of Cong. 499 (J. Madison))

(alteration in original).

The Appointments Clause ensures this chain of

dependance and accountability. See, e.g., Edmond,

520 U.S. at 663. The President cannot fulfil his

obligation to “take Care that the Laws be faithfully

executed,” U.S. Const. art. II, § 3, unless the President

can effectively direct how subordinates in the

Government actually execute the laws. See, e.g., Free

Enter. Fund, 561 U.S. at 484. Accordingly, the

Constitution vests in the President the power not only

of “appointing” but also “overseeing, and controlling

those who execute the laws.” Id. at 492 (citation

omitted, emphasis added).

Of course, given the size of the federal

government, the President cannot direct official’s

exercise of executive power in every instance. The

President must rely on principal officers.

But

principal officers can perform their function, and

maintain the constitutional lines of political

accountability, only if principal officers have actual,

effective control over their agencies’ exercise of

governmental power.

Importantly, it is not enough that a principal

officer has some power to influence the way in which

subordinates exercise power generally; the principal

officer must also have the authority to direct the

16

outcome in particular cases. The President has the

responsibility to ensure the faithful execution of the

law in every instance, and the public may rightfully

complain whenever a federal agency fails in its

execution of its legal powers. That is why the People

are given a constitutional right to petition their

Government, including the Executive Branch, for

redress of any kind of grievance, including complaints

about particular government decisions in individual

cases. See U.S. Const. amend. I. Indeed, such casespecific complaints are predictably far more common

than generalized grievances about how federal

agencies conduct themselves in the run of cases.

But the President, and his principal officers,

cannot be held responsible for individual outcomes

they lack the power to control. The PTAB is a perfect

illustration. Suppose that the PTAB wrongly

invalidates (or sustains) a patent that is vital to an

important national industry. To whom should those

dissatisfied with the result complain? The President

would turn to the PTO’s Director, but the Director

would rightly claim that he lacked the power to avoid

the result. Indeed, it is entirely possible that the

Director would have sat on the panel but was outvoted

by his putative subordinates. See U.S. Br. 6-7. Left

with principal officers who are powerless to direct how

their agencies execute their most important duties,

the President cannot “be held fully accountable for

discharging his own responsibilities; the buck would

stop somewhere else.” Free Enter. Fund, 561 U.S. at

514.

This Court’s Precedents. It is not so strange,

then, that petitioners are also unable to cite any

comparable case in which this Court has held that an

17

official given unreviewable authority to direct an

agency’s exercise of federal powers was an inferior

officer under the Appointments Clause.

For example, petitioners rely significantly on

Edmond, in which the Court held that civilian

members of the Coast Guard Court of Criminal

Appeals were inferior officers. See U.S. Br. 25-26;

S&N Br. 19-20. In that case, the Court described the

various ways in which the Coast Guard’s Judge

Advocate General (JAG)—like the PTO Director in

this case—could affect the work of the court indirectly

and in general, while lacking the power to directly

review and reverse particular decisions. See Edmond,

520 U.S. at 664 (JAG could “formulate policies and

procedures in regard to review of court-martial cases”

and remove judges from judicial assignments without

cause) (citation omitted). But the Court did not find

that this was sufficient to render the judges inferior

officers. To the contrary, after noting the JAG’s lack

of “power to reverse decisions of the court,” this Court

went on to explain that this “latter power does reside,

however, in another Executive Branch entity, the

Court of Appeals for the Armed Forces.” Ibid. What

was constitutionally “significant,” the Court

explained, “is that the judges of the Court of Criminal

Appeals 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.

Petitioners latch on to Edmond’s statement that

an inferior officer is one “whose work is directed and

supervised at some level by” a principal officer. 520

U.S. at 663 (emphasis added); see U.S. Br. 34; S&N Br.

20. That suggests that a principal officer need not be

able to review every detail of the way in which inferior

18

officers reach their decisions on how to enforce federal

law. But the Court’s application of its test in Edmond

itself—particularly its reliance on the ability of the

Court of Appeals for the Armed Forces to engage in

case-specific review of the inferior officers’ decisions—

belies any claim that an inferior officer’s ultimate lawenforcing decisions can be immune from review by a

principal officer, at least in the absence of some

extraordinary justification.

Petitioners can find no support in Freytag v.

Commissioner, 501 U.S. 868 (1991), either. There, the

Court treated the special trial judges of the Tax Court

as inferior officers.9 But the Court explained that the

judges generally “lack[ed] authority to enter a final

decision” for the court. Id. at 881.10 And to the extent

there were a handful of minor exceptions, id. at 882,

the delegated authority to issue decisions on behalf of

the Tax Court was “subject to such conditions and

review as the [Tax] court may provide,” 26 U.S.C.

§ 7443A(c). Even if the Tax Court may have elected to

give special trial judges significantly independent

authority in some cases, what matters for

Appointments Clause purposes is that the principal

officers of the Tax Court had the authority to supervise

the decisions in particular cases, and therefore could

9

The question in Freytag was whether special trial judges

were officers at all, not whether they were principal or inferior

officers. See 501 U.S. at 880. Accordingly, the Court had no

occasion to decide whether the special trial judges were

sufficiently supervised to qualify as inferior officers.

10

The Tax Court’s members were appointed by “the

President, by and with the advice and consent of the Senate.” 501

U.S. at 871 (citing 26 U.S.C. § 7443).

19

be held politically accountable for the results they

chose to leave unreviewed.

Indeed, to amicus’s knowledge, there is only one

case in which this Court has ever treated an official as

an inferior officer even though no principal officer had

the statutory authority to review the official’s casespecific decisions. In Morrison, the Court held that a

special counsel appointed to criminally investigate,

and potentially prosecute, certain high-level

government officials was an inferior officer, even

though the counsel’s prosecutorial decisions were

largely insulated from the Attorney General’s review.

See 487 U.S. at 671-73.

The decision in Morrison turned on special

circumstances that do not arise in this case, including

the counsel’s limited jurisdiction and duties. See 487

U.S. at 671-72. Of particular importance, there was a

special need in Morrison to insulate the special

counsel given the nature of her responsibilities. See

Seila Law, 140 S. Ct. at 2200 (explaining that the

power of the special counsel “was trained inward to

high-ranking Governmental actors identified by

others, and was confined to a specified matter in which

the Department of Justice had a potential conflict of

interest”). Petitioners can identify no comparable

special justification here. To the contrary, the PTAB’s

work is not materially different from that performed

by numerous adjudicative bodies in other federal

agencies where the decisions of administrative law

20

judges are subject to appeal to the agency’s politically

accountable director or board. See supra pp. 14-15.11

II. The Constitutional Problem Cannot Be

Remedied By Simply Invalidating APJs’

Tenure Protections.

The constitutional flaws in the PTAB’s structure

cannot be remedied by simply removing APJ tenure

protection while continuing to deprive the PTO

Director of any power to review and reverse PTAB

decisions.

1. To be sure, this Court has recognized that the

“power to remove officers . . . is a powerful tool for

control.” Edmond, 520 U.S. at 664. For that reason,

limitations on the President’s power to remove

principal officers raises serious constitutional

questions. Seila Law, 140 S. Ct. at 2191-92. But

giving unfettered removal authority to the PTO

Director is an inadequate remedy in this case for two

reasons.

First, the Court’s prior decisions invalidating

tenure provisions to remedy separation-of-powers

violations all concerned congressional interference

with the President’s authority over principal officers.

11

The Court’s decision in Morrison has been subject to

substantial criticism over the years, including by members of the

Court. See, e.g., NLRB v. SW Gen., Inc., 137 S. Ct. 929, 947 n.2

(2017) (Thomas, J., concurring) (“Although we did not explicitly

overrule Morrison in Edmond, it is difficult to see how Morrison’s

nebulous approach survived our opinion in Edmond.”); Lee S.

Liberman, Morrison v. Olson: A Formalistic Perspective on Why

the Court Was Wrong, 38 Am. U. L. Rev. 313 (1989). At best, the

special counsel statute lies at the outer limits of what the

Appointments Clause permits. The statutes structuring the

PTAB fall on the other side of the line.

21

See Seila Law, 140 S. Ct. at 2209; Free Enter. Fund,

561 U.S. at 508. But the President is able to supervise

the work of federal agencies through his power to

select and remove principal officers only because those

officers have far greater control and responsibility over

the day-to-day operations of their departments.

Indeed, there would be little point in the President

firing a principal officer over a particular agency

action if the principal officer lacked the power to direct

that agency decision.

To exercise the necessary degree of control,

principal officers need the authority to review and

countermand

particular

decisions

by

their

subordinates. In this case, for example, it implausible

for petitioners to claim that the PTO Director would

be able to use the power of at-will removal to correct

errors in particular PTAB decisions. Petitioners cite

no evidence that the Director has ever removed an APJ

from judicial duties simply because the Director

believed the APJ voted wrongly in a single case.

Particularly when APJs confront difficult questions for

which there is no clear right answer, the Director’s

disciplinary powers are a blunt and largely useless

instrument for supervising the PTAB’s execution of

patent law in particular instances.

Indeed, expecting the Director to control the

outcome of cases by threatening to fire APJs would

dramatically undermine political accountability. The

result would be a decision that is portrayed to the

world as the genuine views of a board of independent

expert APJs when, in fact, the outcome may (or may

not) have been attributable to decisions the PTO

Director made in secret, for reasons that will never be

disclosed.

22

The system petitioners propose thus bears no

resemblance to the kinds of administrative

adjudications Congress has traditionally established,

in which neutral administrative law judges make

decisions insulated from political influence, but their

decisions are subject to review by politically

accountable principal officers who must publicly

acknowledge that they are overturning the decision of

their internal experts and take responsibility for that

action.

2. Petitioners suggest that the Director’s removal

power would be supplemented by his ability to issue

policy guidance and to gerrymander assignment of

APJs to particular cases. See U.S. Br. 27-29; S&N Br.

25-26, 35. But the power to issue policy guidance is no

substitute for the right to review and reverse actual

PTAB decisions. Even setting aside that the Director’s

policies cannot possibly resolve every significant

question an APJ will confront, it is also inevitable that

APJs will sometimes fail to follow the directions that

are given (just as it is inevitable that patent examiners

will sometimes fail to follow the instructions that they

were given, which is the entire reason for having a

PTAB in the first place). And when APJs fail to

correctly implement PTO policy, or otherwise err in

applying federal law, the PTO Director has no power

to correct the mistake, and hence, cannot be held

responsible for the result.

As for the Director’s ability to control panel

assignments, it is unlikely the Director could

effectively use that power to dictate the results of

many cases, and doing so would undermine political

accountability even if he could. That is, it is expecting

a lot to ask the Director to not only decide the right

23

outcome of a case prior to assigning a panel, but also

to identify and assign to the case particular APJs who

will share his views on the matter. It is asking even

more to expect the public to understand that even

though the Director lacks the power to openly reverse

a bad PTAB decision, he should nonetheless be held

accountable for it because he supposedly could have

avoided it by a more effective use of his assignment

powers.

CONCLUSION

For the foregoing reasons, the judgment of the

Federal Circuit should be affirmed insofar as it held

the PTAB’s structure unconstitutional, but reversed

with respect to the proper remedy for that

constitutional violation.

Respectfully submitted,

Kevin K. Russell

Counsel of Record

Erica Oleszczuk Evans

GOLDSTEIN &

RUSSELL, P.C.

7475 Wisconsin Ave.

Suite 850

Bethesda, MD 20814

(202) 362-0636

kr@goldsteinrussell.com

December 30, 2020