Who is left from the In re Alappat panel?

Back on Friday, July 29, 1994, the CAFC decided In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994). (A memorable date for me, as I was taking the Colorado bar exam on that date.) The opinion was a highly fractured one with multiple dissents. One of the main issues of contention was whether the Federal Circuit had jurisdiction to hear the appeal, because it stemmed from an enlarged panel decision at the Board. Whether the USPTO had the authority to use such enlarged panels under the statute in place back then had to be determined to decide if the appellate court had jurisdiction.

Judges RICH, NEWMAN, LOURIE and RADER, voted in favor of the court having jurisdiction.

Judges ARCHER, Chief Judge, NIES and PLAGER, concurred in the conclusion.

Judges MAYER, MICHEL, CLEVENGER and SCHALL dissented.

This issue seems relevant to me because Alappat was mentioned again today in the concurrence in Polaris v. Kingston.

The Arthrex panel’s underestimation of the Director’s power is particularly evident in light of this court’s prior en banc decision in In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994), abrogated on other grounds by In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). Alappat contained strong language about the ability to control the composition and size of panels. See, e.g.id. at 1535 (noting that “the Board is merely the highest level of the Examining Corps, and like all other members of the Examining Corps, the Board operates subject to the Commissioner’s overall ultimate authority and responsibility”). While the duties of the Board and the Director have changed since Alappat was decided, the authority to determine the Board’s composition for reconsideration of an examiner’s patentability determination mirrors the current authority with respect to inter partes review. Compare 35 U.S.C. § 6(c) (2012) (giving the Director authority to designate “at least 3 members of the Patent Trial and Appeal Board” to review “[e]ach appeal, derivation proceeding, post-grant review, and inter partes review”), with 35 U.S.C. §7(b) (1988) (giving the Commissioner power to designate “at least three members of the Board of Appeals and Interferences” to review “adverse decisions of examiners upon applications for patents”). Therefore, I believe the panel should have at least discussed how Alappat’s view of the power to control the Board might impact the Appointments Clause analysis.

Polaris v. Kingston, slip opinion at footnote 5 (Fed. Cir. January 31, 2020)(Judges Hughes and Wallach in concurrence).

One should keep in mind that the Alappat decision was highly fractured. Three of the majority remain on the court, as do three of the dissenters. However, an en banc panel from an appeal of either Arthrex or Polaris would only include full time circuit judges — not senior judges. Therefore, Judges Newman and Lourie would be the only surviving members from Alappat to serve on such an en banc panel.

This prior post provides some historical context for Alappat, as well: [Zanaflex].

Since Judge Hughes compared the current statute to a previous statute with respect to the Board, I wonder if there is any merit in going back further in time to when the Supreme Court decided Brenner v. Manson? See this earlier post for more on that, including Supreme Court audio: [Bactrim medication].

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