Amicus Curiae Brief — Chestek PLLC, Petitioner v. Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office

No. 23-1217

IN THE

Supreme Court of the United States

_________________________

CHESTEK PLLC,

Petitioner,

v.

KATHI VIDAL, DIRECTOR, UNITED STATES

PATENT AND TRADEMARK OFFICE

Respondent.

_________________________

On Petition for Writ of Certiorari

to the United States Court of Appeals

for the Federal Circuit

_________________________

BRIEF AMICUS CURIAE OF THE

NEW CIVIL LIBERTIES ALLIANCE

IN SUPPORT OF PETITIONER

_________________________

Gregory Dolin

Counsel of Record

Mark Chenoweth

NEW CIVIL LIBERTIES ALLIANCE

1225 19th St. NW, Suite 450

Washington, DC 20036

(202) 869-5210

Greg.Dolin@ncla.legal

i

TABLE OF CONTENTS

TABLE OF CONTENTS .............................................. i

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

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

BACKGROUND .......................................................... 2

SUMMARY OF ARGUMENT ..................................... 4

ARGUMENT ............................................................... 7

I. THE FEDERAL CIRCUIT’S READING OF § 2

CONFLICTS WITH TRADITIONAL CANONS OF

STATUTORY CONSTRUCTION ................................ 7

A. The Federal Circuit’s Reading of the

Statute Renders an Entire Subsection

Superfluous and Without Meaning ...............7

B. The Federal Circuit’s Reading of the

Statute Ignores the Primacy of Specific

Provisions over the General Ones ............... 12

II. THE DECISION BELOW ENFEEBLES DEMOCRATIC

OVERSIGHT OF THE PATENT OFFICE .................. 14

CONCLUSION .......................................................... 16

ii

TABLE OF AUTHORITIES

Page(s)

Cases

Air Transp. Ass’n of Am. v. Dep’t of Transp.,

900 F.2d 369 (D.C. Cir. 1990) ............................ 4, 13

Chrysler Corp. v. Brown,

441 U.S. 281 (1979)..................................................3

Clarian Health W., LLC v. Burwell,

206 F. Supp. 3d 393 (D.D.C. 2016) .................. 12, 13

Cooper Techs. Co. v. Dudas,

536 F.3d 1330 (Fed. Cir. 2008) ............................ 3, 9

Hoctor v. U.S. Dep’t of Agric.,

82 F.3d 165 (7th Cir. 1996) ................................... 14

In re Chestek PLLC,

92 F.4th 1105 (Fed. Cir. 2024) .......................... 9, 10

Linoz v. Heckler,

800 F.2d 871 (9th Cir. 1986) ...................................3

Merck & Co. v. Kessler,

80 F.3d 1543 (Fed. Cir. 1996) .............................. 2, 8

Nat. Res. Def. Council v. EPA,

643 F.3d 311 (D.C. Cir. 2011) ..................................6

RadLAX Gateway Hotel, LLC v. Amalgamated

Bank,

566 U.S. 639 (2012)................................................ 13

Rumsfeld v. Forum for Acad. & Institutional

Rights, Inc.,

547 U.S. 47 (2006).................................................. 11

iii

Stone v. INS,

514 U.S. 386 (1995)................................................ 11

United States v. Jicarilla Apache Nation,

564 U.S. 162 (2011)..................................................5

Weyerhaeuser Co. v. Costle,

590 F.2d 1011 (D.C. Cir. 1978) ................................4

Statutes

15 U.S.C. 1071(a)(1) ....................................................6

35 U.S.C. § 141 ............................................................6

35 U.S.C. § 2(a)(1) .......................................................2

35 U.S.C. § 2(b)(2) ................................................... 2, 5

35 U.S.C. § 3(a) .......................................................... 15

35 U.S.C. § 316 (2011) .................................................8

5 U.S.C. § 551 ...................................................... 10, 13

5 U.S.C. § 553 .................................................... 3, 7, 13

Administrative Procedure Act,

Pub. L. 79-404 (June 11, 1946)................................7

American Inventors Protection Act of 1999,

Pub. L. 106-113 (Nov. 29, 1999) ..............................8

Patent Act of 1952,

Pub. L. 82-593, 66 Stat. 793

(July 19, 1952) ..................................................... 5, 7

Other Authorities

Antonin Scalia & Bryan A. Garner,

Reading Law: The Interpretation of Legal Texts

(2012)...................................................................... 11

iv

Emily S. Bremer,

The Undemocratic Roots of Agency Rulemaking,

108 Cornell L. Rev. 69 (2022) ............................ 6, 15

Gregory Dolin & Irina D. Manta,

Taking Patents, 73 Wash. & Lee L. Rev. 719

(2016)...................................................................... 16

H. Rep. 106-287 § 612 (106th Cong. Aug. 3, 1999) .. 12

In re Complaint No. 23-90015,

No. 23-01 (C.C.D. Feb. 7, 2024) ...............................6

Michael Sant’Ambrogio and Glen Staszewski,

Democratizing Rule Development,

98 Wash. U.L. Rev. 793 (2021) .............................. 14

Richard J. Pierce, Jr.,

Administrative Law Treatise § 6.8

(4th ed. 2002) ......................................................... 14

USPTO,

Intellectual Property and the U.S. Economy:

Third Edition (March 2022) .................................. 16

1

INTEREST OF AMICUS CURIAE

The New Civil Liberties Alliance (“NCLA”) is a

nonpartisan, nonprofit civil rights organization and

public-interest law firm devoted to defending

constitutional freedoms from the administrative

state’s depredations. Professor Philip Hamburger

founded NCLA to challenge multiple constitutional

defects in the modern administrative state through

original litigation, amicus curiae briefs, and other

advocacy. 1

The “civil liberties” of the organization’s name

include rights at least as old as the U.S. Constitution

itself, such as jury trial, due process of law, and the

right to have laws made by the nation’s elected

lawmakers through constitutionally prescribed

channels (i.e., the right to self-government). These

selfsame civil rights are also very contemporary—and

in dire need of renewed vindication—precisely

because Congress, the President, federal agencies,

and even sometimes the Judiciary, have neglected

them for so long.

NCLA aims to defend civil liberties—primarily by

asserting

constitutional

constraints

on

the

administrative state. Although the American People

still enjoy the shell of their Republic, there has

developed within it a very different sort of

government—a type, in fact, that the Constitution

was designed to prevent. This unconstitutional state

1 No counsel for any party to this case

authored this brief in

whole or part, and no party or counsel other than amicus curiae

and its counsel made a monetary contribution intended to fund

the preparation or submission of this brief. Counsel for amicus

curiae notified Petitioner and Respondent of NCLA’s intention to

file this brief on May 31, 2023. See S. Ct. R. 37.2.

2

within the Constitution’s United States is the focus of

NCLA’s concern.

NCLA is particularly disturbed by the Federal

Circuit’s evisceration of the requirement that the

United States Patent and Trademark Office (“the

PTO” or “the Office”), like all other federal agencies,

comply with a basic principle of administrative law.

To wit, prior to promulgating rules an agency must

provide notice and a public opportunity to comment on

those proposed rules. The Federal Circuit’s decision

flies in the face of explicit Congressional decision to

hold the Patent Office to the same standards as other

administrative agencies, and thus deprives the public

of the rights that Congress saw fit to protect. It

cannot be allowed to stand.

BACKGROUND

The United States Patent and Trademark Office is

an agency within the Department of Commerce that

is “responsible for the granting and issuing of patents

and the registration of trademarks.” 35 U.S.C.

§ 2(a)(1). In carrying out its duties, the PTO is

permitted to “establish regulations … which shall

govern the conduct of proceedings in the Office.” Id.

§ 2(b)(2)(A). In 1999, Congress clarified that these

regulations must be promulgated in compliance “with

section 553 of title 5,” id. § 2(b)(2)(B), which in turn

requires notice and comment prior to the

promulgation of any rules.

Unlike numerous other agencies within the federal

government, the PTO is not authorized to promulgate

“substantive” or “legislative-type” rules. Merck & Co.

v. Kessler, 80 F.3d 1543, 1549-50 (Fed. Cir. 1996)

(“[T]he broadest of the PTO’s rulemaking powers …

3

authorizes the Commissioner to promulgate

regulations directed only to the conduct of proceedings

in the PTO; it does NOT grant the Commissioner the

authority to issue substantive rules.”) (cleaned up;

emphasis in original). In other words, the PTO is

without power to promulgate rules that “affect[]

individual rights and obligations,” Chrysler Corp. v.

Brown, 441 U.S. 281, 302 (1979), or which “effect a

change in existing law or policy,” Linoz v. Heckler, 800

F.2d 871, 877 (9th Cir. 1986). To the contrary, the

Office’s rulemaking power is strictly limited to the

regulation of conduct of the proceedings before it.

Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1335 (Fed.

Cir. 2008). Given the limited grant of rulemaking

powers, the tension between §§ 2(b)(2)(A) and

2(b)(2)(B) becomes evident. On the one hand, under

§ 2(b)(2)(B), prior to issuing its procedural rules (since

it cannot issue any other kind of rules), the PTO is

required to comply with 5 U.S.C. § 553, which requires

following notice-and-comment procedures. On the

other hand, § 553 exempts from its strictures

“interpretative rules, general statements of policy, or

rules of agency organization, procedure, or practice.”

5 U.S.C. § 553(b)(4)(A). However, the tension is only

superficial and is easily resolved when the text and

history of both provisions are fully taken into account.

Because the Federal Circuit failed to do so, it

essentially read § 2(b)(2)(B) out of the statute. This

Court’s intervention is needed so as to restore the

Congressionally mandated checks on the PTO’s

rulemaking power and to reaffirm the basic rights of

individuals to be involved in lawmaking.

4

SUMMARY OF ARGUMENT

The notice-and-comment rulemaking process is

designed to ensure “openness, explanation, and

participatory democracy,” Weyerhaeuser Co. v. Costle,

590 F.2d 1011, 1027 (D.C. Cir. 1978), all of which are

critical ingredients for the rule of law.

The

Administrative Procedure Act furthers these goals by

requiring that agencies engage in a robust notice-andcomment process, id., and are excused from following

that process only in a narrow set of circumstances.

See Air Transp. Ass’n of Am. v. Dep’t of Transp., 900

F.2d 369, 375 (D.C. Cir. 1990), vacated, and remanded

by 498 U.S. 1077 (1991), and vacated as moot by 933

F.2d 1043 (D.C. Cir. 1991) (“[W]e have consistently

afforded a narrow cast to the exceptions to section 553,

permitting an agency to forgo notice and comment

only when the subject matter or the circumstances of

the rulemaking divest the public of any legitimate

stake in influencing the outcome.”).

The decision below is wrong for two reasons. First,

contrary to the established methods of statutory

interpretation, it reads out of the statute a provision

that Congress deliberately added. On top of that, the

Federal Circuit’s decision simply ignored a separate

provision in the Administrative Procedure Act, which

subordinates its own provisions to those. Second, the

decision below ignores and undermines a deliberately

chosen Congressional policy in favor of public

participation in the PTO’s rulemaking. The Federal

Circuit’s opinion has the effect of uniquely isolating

the PTO—an agency that has a profound effect on the

national economy—from democratic oversight.

5

The PTO was given power to “establish

regulations, not inconsistent with law, for the conduct

of the proceedings in the Patent Office.” Patent Act of

1952, § 6, Pub. L. 82-593, 66 Stat. 793 (July 19, 1952).

At the time, neither the Patent Act itself, nor the

Administrative Procedure Act (enacted six years

prior), required the PTO to subject its regulations to

notice and comment. Over the next several decades,

Congress modestly expanded the PTO’s rulemaking

power, but never linked it to the APA’s requirements.

However, in 1999, Congress revised the 1952 Patent

Act and for the first time required the PTO to issue its

regulations “in accordance with section 553 of title 5.”

35 U.S.C. § 2(b)(2)(B). 2 This addition would be

entirely meaningless and pointless had Congress

meant to continue excluding PTO’s procedural rules

from the notice-and-comment requirements of § 553.

Since the PTO can issue only procedural rules, the

pre-1999 language already permitted it to avoid the

notice-and-comment process, and the newly added

language would serve no purpose. This Court has

repeatedly cautioned against “adopt[ing] an

interpretation of a congressional enactment which

renders superfluous another portion of that same

law,” United States v. Jicarilla Apache Nation, 564

U.S. 162, 185 (2011) (quoting Mackey v. Lanier

Collection Agency & Service, Inc., 486 U.S. 825, 837

(1988)), yet this is precisely what the Federal Circuit

has done as its decision renders § 2(b)(2)(B) entirely

without effect.

The Federal Circuit’s erroneous holding leaves the

PTO in a unique position among federal agencies—it

2 As part of the Patent Act’s revision, Congress moved the old

Section 6 into what is now Section 2 of the Act.

6

is now perhaps the only agency that can issue rules,

which have a profound effect on the national economy,

without the benefit of public input and consideration

of all the relevant information. See Nat. Res. Def.

Council v. EPA, 643 F.3d 311, 321 (D.C. Cir. 2011)

(“[T]he very purpose of [the notice-and-comment

process] is to give interested parties the opportunity

to participate in rulemaking and to ensure that the

agency has before it all relevant information.”). See

also Emily S. Bremer, The Undemocratic Roots of

Agency Rulemaking, 108 Cornell L. Rev. 69, 77 (2022)

(“Over time, administrative law has come to

understand § 553 primarily as a tool for ensuring

democratic participation and accountability in the

rulemaking process.”); id. at 130 (“[Congress] grafted

onto § 553 the democratic values of transparency and

public participation.”).

This perverse outcome—

leaving PTO uniquely in the federal government

without democratic accountability—cries out for

correction by this Court. 3

3 Although there is no circuit split on this issue, given the Federal

Circuit’s exclusive jurisdiction over appeals from the Patent

Office, see 15 U.S.C. 1071(a)(1) (exclusive appeal to the Federal

Circuit in trademark cases); 35 U.S.C. § 141 (exclusive appeal to

the Federal Circuit in patent cases), no such circuit split is

possible. Furthermore, in light of the recent turmoil in the

Federal Circuit, see In re Complaint No. 23-90015, No. 23-01

(C.C.D. Feb. 7, 2024), that Court’s own internal diversity of

opinion has suffered mightily.

7

ARGUMENT

I.

THE FEDERAL CIRCUIT’S READING OF § 2

CONFLICTS WITH TRADITIONAL CANONS OF

STATUTORY CONSTRUCTION

A.

THE FEDERAL CIRCUIT’S READING OF

THE STATUTE RENDERS AN ENTIRE

SUBSECTION

SUPERFLUOUS

AND

WITHOUT MEANING

When Congress enacted the 1952 Patent Act, it

conferred upon the Director of the Patent Office very

limited rulemaking power, authorizing him to

“establish regulations, not inconsistent with law, for

the conduct of the proceedings in the Patent Office.”

Patent Act of 1952, § 6. At the time of the enactment,

the Administrative Procedure Act was already six

years old and subjected administrative agencies to the

requirements of notice-and-comment whenever they

engaged in rulemaking. Administrative Procedure

Act, §§ 2, 4, Pub. L. 79-404 (June 11, 1946) (codified in

5 U.S.C. §§ 551 and 553 respectively). The APA then,

as it does now, exempted from the notice-andcomment process the “rules of agency organization,

procedure, or practice.” 5 U.S.C. § 553 (a)(2). Thus,

the rulemaking authority under the original 1952

Patent Act, which was limited to rules “for the conduct

of the proceedings in the Patent Office,” was not

constrained by the APA’s notice-and-comment

requirements.

Over the next 40 years, although Congress had

modestly expanded the PTO’s rulemaking authority,

that authority remained confined to procedural rules,

and thus remained exempt from the APA’s notice-andcomment requirements. The Federal Circuit’s 1996

8

opinion in Merck & Co. v. Kessler put to rest any

doubts regarding the limits on PTO’s rulemaking

authority. See 80 F.3d at 1549-50.

In 1999, however, Congress chose to revise the

Patent Act by passing the American Inventors

Protection Act of 1999, Pub. L. 106-113 (Nov. 29,

1999). The key feature of this Act was the creation of

a new post-issuance patent review process—the inter

partes reexamination. This new provision allowed for

contested proceedings within the PTO that could

challenge (and eventually lead to a cancellation of) a

previously issued patent. See 35 U.S.C. § 316 (2011)

(“In an inter partes reexamination proceeding … the

Director shall issue and publish a certificate canceling

any claim of the patent finally determined to be

unpatentable ….”) (repealed by America Invents Act,

Pub. L. No. 112-29, 125 Stat. 284 (2011)).

Given the entirely new proceedings that the

American Inventors Protection Act created, the

Patent Office was charged with the task of

promulgating rules to implement them.

Likely

recognizing that despite the “procedural” nature of

these rules they will create a significant economic

impact, Congress, for the very first time, required the

PTO to promulgate its rules consistent with “section

553, of title 5.” At the time, the PTO itself recognized

that the addition of this new language meant that new

rules should be promulgated only following a noticeand-comment process. Thus, when the PTO issued its

inaugural Rules to Implement Optional Inter Partes

Reexamination Proceedings, it did so following the

notice-and-comment procedure. See 65 Fed. Reg.

76756, 76756 (Dec. 7, 2000) (“In response to the 1999

Public Law 106-113, a notice of proposed rulemaking

9

was published in the Federal Register on April 6,

2000, at 65 FR 18154-18186, and in the Official

Gazette on May 23, 2000, at 1234 O.G. 93-123. The

2000 notice of proposed rulemaking addressed, and

took into consideration, the comments received in

response to the 1995 proposed [but not implemented]

rules.”).

Oddly enough, even though the PTO itself thought

that the promulgation of these rules required noticeand-comment, and proceeded accordingly, when one of

the rules was challenged on the merits, the Federal

Circuit held that the PTO did not need to engage in

the notice-and-comment process, because 5 U.S.C.

§ 553 exempts from its ambit procedural and

interpretive rules. See Cooper Techs., 536 F.3d at

1336-37. 4 The dicta in Cooper Technologies had little

effect on the outcome of that case. But that dictum

was erroneously relied on in the present case, and that

misplaced reliance was outcome-determinative.

In the present case, the Federal Circuit did not

retreat from its long-standing understanding that the

Patent Office lacks authority to promulgate anything

other than procedural rules, and it simultaneously

held that these types of rules are exempt from the

APA’s notice-and-comment requirements. See In re

Chestek PLLC, 92 F.4th 1105, 1108-10 (Fed. Cir.

2024). This holding essentially reads § 2(b)(2)(B) out

of the Patent Act and returns the Act to its pre-1999

version. Bizarrely, it once again did so despite PTO’s

4 It is not at all clear why the Federal Circuit chose to opine on

this matter, as neither party appears to have raised the noticeand-comment issue in their briefing. See Br. of Cooper Techs.

Co., 2008 WL 700931 (filed Feb. 11, 2008); Br. of Jon W. Dudas,

Director, USPTO, 2008 WL 1376364 (filed March 25, 2008).

10

own understanding that notice-and-comment process

is generally required. In this very case, the PTO

(which again, can issue only procedural rules),

“engaged in notice-and-comment rulemaking to

require trademark applicants, registrants, or parties

to a trademark proceeding with domiciles outside the

United States or its territories to be represented by

United States licensed counsel.” Chestek, 92 F.4th at

1107 (citing Requirement of U.S. Licensed Attorney

for Foreign Trademark Applicants and Registrants,

84 Fed. Reg. 4393 (Feb. 15, 2019) and Requirement of

U.S. Licensed Attorney for Foreign Trademark

Applicants and Registrants, 84 Fed. Reg. 31498 (July

2, 2019)). The PTO, however, did not subject the

particular provision challenged here (the requirement

that “[a]n applicant or registrant provide and keep

current the address of its domicile” to that process.

The Federal Circuit, despite the PTO’s own practices,

held that notice-and-comment was not required for

any of the rules, and therefore not required for the

domicile provision either. But this conclusion drains

all meaning from § 2(b)(2)(B).

As explained above, prior to 1999, the PTO was

not required to engage in notice-and-comment

procedures precisely because its rulemaking power

was limited to procedural rules. All throughout the

1952 to 1999 period, de jure, the APA applied to the

PTO’s rulemaking processes much like it applied to

any other agency. See 5 U.S.C. § 551 (defining an

agency as “each authority of the Government of the

United States.”). However, because the APA exempts

procedural rules from the reach of its notice-andcomment requirements, de facto, the APA’s

requirements did not affect the PTO’s operations.

11

There was thus no need to reconfirm, by new statutory

language, what has been understood and practiced for

over 45 years. This in turn means that § 2(b)(2)(B)

must bear some meaning beyond authorizing the PTO

to continue its operations in the same manner it had

already been authorized to do for nearly half a

century.

It is well understood that “statutory amendments

are meant to have real and substantial effect.” Stone

v. INS, 514 U.S. 386, 397 (1995). “If the legislature

amends or reenacts a provision other than by way of a

consolidating statute or restyling project, a significant

change in language is presumed to entail a change in

meaning.” Antonin Scalia & Bryan A. Garner,

Reading Law: The Interpretation of Legal Texts 256

(2012). See also Rumsfeld v. Forum for Acad. &

Institutional Rights, Inc., 547 U.S. 47, 57-58 (2006)

(“We refuse to interpret the Solomon Amendment in a

way that negates its recent revision, and indeed would

render it a largely meaningless exercise.”). Under the

Federal Circuit’s view, however, the inclusion of

§ 2(b)(2)(B) is entirely superfluous because it would

have merely reconfirmed the PTO’s exemption from

the notice-and-comment requirements. But “[h]ad

Congress intended” the PTO’s rulemaking processes

to continue along this well-worn path “there would

have been no reason for Congress to have included

the” requirement that PTO’s rulemaking be

consistent with 5 U.S.C. § 553. Stone, 514 U.S. at 397.

“The reasonable construction is that the amendment

was enacted as an exception [to the APA’s

inapplicability to procedural rulemaking], not just to

state an already existing rule.” Id.

12

That Congress intended to require the PTO (unlike

other agencies) to engage in notice-and-comment

processes even for procedural rules is further

confirmed when one consults the committee draft of

the bill which eventually became the American

Inventors Protection Act of 1999.

The original

language of what became 35 U.S.C. § 2(b)(2)(B)

required the PTO, prior to issuing any rules, to

provide “notice and opportunity for full participation

by interested public and private parties.” H. Rep. 106287 § 612 (106th Cong. Aug. 3, 1999). The quoted

provision was eventually amended to the text

presently appearing in § 2(b)(2)(B), but there is no

evidence to suggest that the amendment was

anything more than stylistic, rather than substantive.

In short, the statute’s text, history, purpose, and

PTO’s own practices show that the Federal Circuit’s

perfunctory analysis, which rejected the notice-andcomment requirement for PTO’s rulemaking, is wrong

and requires this Court’s correction.

B.

THE FEDERAL CIRCUIT’S READING OF

THE STATUTE IGNORES THE PRIMACY OF

SPECIFIC

PROVISIONS

OVER

THE

GENERAL ONES

The Administrative Procedure Act sets forth a

general default rule—administrative rules and

regulations can be promulgated only following a

notice-and-comment process. See Clarian Health W.,

LLC v. Burwell, 206 F. Supp. 3d 393, 410 (D.D.C.

2016), rev’d and remanded on other grounds sub nom.

by Clarian Health W., LLC v. Hargan, 878 F.3d 346

(D.C. Cir. 2017) (“[S]tatutory exemptions represent a

departure from the default notice-and-comment

13

requirement.”).

The APA also provides some

(narrowly construed) exceptions to this default

requirement. See id.; Air Transp. Ass’n of Am., 900

F.2d at 375; 5 U.S.C. § 553(b). However, these

(already narrow) exceptions are themselves subject to

an exception. The APA exempts procedural rules from

notice-and-comment requirements only where there is

not a separate statute that itself requires “notice or

hearing.” 5 U.S.C. § 553(b). In other words, the

general rules of the APA give way whenever there is

a more specific governing statute that imposes more

robust requirements than the APA’s floor. Section

2(b)(2)(B) of the Patent Act is just such a statute.

Had Section 2(b)(2)(B) continued not to exist

(much like it did not exist between 1952 and 1999),

there is little dispute or doubt that operations of the

PTO would be governed by APA’s general rules. See 5

U.S.C. § 551. The 1999 addition of § 2(b)(2)(B) meant

that the PTO was now governed by a more specific

statute than the APA. To be sure, the procedures

required by § 2(b)(2)(B) are the same as those required

by the APA, which is why § 553 is incorporated by

reference into the amended Patent Act. But that the

Patent Act’s own notice-and-comment requirements

mirror those of the APA in no way undermines the

conclusion that this specific provision of the Patent

Act triggers the “exception to the exception” provision

of § 553(b).

“It is a commonplace of statutory construction that

the specific governs the general.” RadLAX Gateway

Hotel, LLC v. Amalgamated Bank, 566 U.S. 639, 645

(2012) (quoting Morales v. Trans World Airlines, Inc.,

504 U.S. 374, 384 (1992)). In this case it means that

the specific provisions applicable to the proceedings in

14

the PTO govern and supersede the general provisions

(and exclusions) of the Administrative Procedure Act.

Yet, the Federal Circuit’s holding runs directly

contrary to this canon and ignores the “exception to

the exception” proviso in the APA. Thus, the decision

below misconstrues not only the Patent Act, but the

APA itself.

II.

THE

DECISION

BELOW

ENFEEBLES

DEMOCRATIC OVERSIGHT OF THE PATENT

OFFICE

The purpose of the notice-and-comment process is

to confer democratic legitimacy on agencies’ political

and policy choices. See Hoctor v. U.S. Dep’t of Agric.,

82 F.3d 165, 170-71 (7th Cir. 1996) (“Legislators have

the democratic legitimacy to make choices among

value judgments …. When agencies base rules on

arbitrary choices they are legislating, and so these

rules are legislative or substantive and require notice

and comment rulemaking, a procedure that is

analogous to the procedure employed by legislatures

in making statutes.”); Michael Sant’Ambrogio and

Glen Staszewski, Democratizing Rule Development,

98 Wash. U.L. Rev. 793, 796 (2021) (“Public

engagement also enhances the democratic legitimacy

and accountability of federal agencies and the

regulations they promulgate. … Requiring agencies to

consider and respond to public comments in a

reasoned fashion improves the democratic legitimacy

and accountability of agency action from a variety of

theoretical views.”); Richard J. Pierce, Jr.,

Administrative Law Treatise § 6.8, at 368 (4th ed.

2002) (noting rulemaking’s democratic character).

15

As Professor Emily Bremer pointed out, prior to

the APA, agencies engaged in a “consultative” process

that “entailed the targeted solicitation of views from

representatives of organized industry or interest

groups,” Bremer, supra at 104, and that such a

process raised “concern that [it] was too closed or

might

sometimes

produce

insufficiently

representative information,” id. at 108. The noticeand-comment proceedings were adopted in response

to these criticisms and to ensure broader public

participation in agency rulemaking. Id. at 119-21.

Eventually, recognizing the enormous importance

that the Patent Office has to the American economy,

Congress applied the strictures of the APA to that

agency as well (while also keeping its rulemaking

authority strictly limited). The Federal Circuit’s

decision, however, frees the Patent Office from any

democratic accountability because under the Federal

Circuit’s logic, the PTO need not subject any of its

rules to the (legitimacy conferring) notice-andcomment process.

This exemption is particularly problematic in the

context of the Patent Office. First, the Office is

headed by a single Director, see 35 U.S.C. § 3(a)(1),

rather than a multi-member commission. This means

that, at least under the Federal Circuit’s view, when

promulgating rules, the Director can act without any

input whatsoever, either from the public or from

fellow Commissioners who could bring a different

perspective to bear. Thus, in some sense, under the

Federal Circuit’s view, the PTO’s rulemaking

processes can now be even less democratic than what

various agencies were prior to the enactment of the

APA. See Bremer, supra at 108. Second, the PTO’s

16

impact on the economy is simply enormous. As the

Patent Office itself reports, “[i]n 2019, the group of IPintensive industries accounted for $7.8 trillion in

GDP.” USPTO, Intellectual Property and the U.S.

Economy: Third Edition at 3 (March 2022) (emphasis

added), available at https://tinyurl.com/mubp38hj.

The PTO’s “procedural” rules can have a profound

impact on the value of intellectual property. See, e.g.,

Gregory Dolin & Irina D. Manta, Taking Patents, 73

Wash. & Lee L. Rev. 719, 787 (2016) (noting that

“post-issuance review procedures … change[d] the

scope of existing patents and greatly diminished their

value.”). If any agency needs robust public input into

its rulemaking, it is the PTO. The Federal Circuit’s

erroneous conclusion to the contrary not only

contradicts the statutory text of the Patent Act and

the APA, but also fundamentally threatens

democratic governance of vast aspects of the national

economy.

CONCLUSION

The Court should grant certiorari and vacate the

decision of the court below.

17

Respectfully submitted,

Gregory Dolin

Counsel of Record

Mark Chenoweth

NEW CIVIL LIBERTIES ALLIANCE

1225 19th St. NW, Suite 450

Washington, DC 20036

(202) 869-5210

Greg.Dolin@ncla.legal

6/13/2024

Counsel for Amicus Curiae

New Civil Liberties Alliance