Margaret Peterlin Gets to Keep Her Job

    By Kevin E. Noonan --

Judge James Robertson of the U.S. District Court for the District of Columbia has dismissed a private lawsuit challenging the appointment of Margaret Peterlin as Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office.

The suit was brought by Greg Aharonian, noted intellectual property crusader; David Lentini and David Pressman, both patent attorneys and authors; and Steven Morsa, an inventor, based on the provisions of 35 U.S.C. § 3(b)(1) that the person holding Ms. Peterlin's office must be a "citizen of the United States who has a professional background and experience in patent or trademark law."  Ms. Peterlin, a former Capitol Hill staffer, has no known experience relevant to her position.  According to the Complaint, she is not registered to practice before the U.S. Patent and Trademark Office, never "interacted" with a patent or trademark examiner, never prepared a legal opinion regarding validity or non-infringement of a patent or trademark, never drafted or prosecuted a patent or trademark application, never litigated a patent or trademark lawsuit, never published as legal or scholarly article on patent or trademark law, has never been a member of a legal (e.g., AIPLA) or industry (e.g., INTA or AUTM) group concerned with patents or trademarks, and does not have a science or engineering background.  Even as a staffer, Ms. Peterlin allegedly was not involved in intellectual property matters when working for Representative Hastert (R-IL) in Congress.

None of this mattered to the Court, which did not reach the merits.  The Court dismissed the complaint on the grounds that Congress expressly did not provide a private cause of action with regard to two of plaintiffs' grounds for the complaint.  First, that Ms. Peterlin's (at left) alleged lack of statutory competence for her position was relevant to an asserted "serious deterioration in the quality of issued patents and trademarks, the timeliness of examination of patent and trademark applications, and the overall morale of patent and trademark examiners, as a result of senior management who lack professional experience in patent and trademark law" (emphasis added).  Second, that the U.S. Patent and Trademark Office "has a history of labor relations problems with the corps of examiners that is exacerbated by the lack of professional patent and trademark experience in among the most senior USPTO managers."  Defendants had made this argument in their motion to dismiss, which was undisputed (or, at least, unopposed) by plaintiffs, and thus the Court easily dismissed the complaint on these grounds, citing FDIC v. Bender, 127 F.3d 58, 67-68 (D.C. Cir. 1997) that "when a plaintiff files an opposition to a motion to dismiss addressing only certain arguments raised by the defendant, a court may treat those arguments that the plaintiff failed to address as conceded."

The third basis for the complaint, that appointment of Ms. Peterlin violated the Administrative Procedures Act (APA) by being "arbitrary, capricious or contrary to law," garnered more consideration by the Court but ultimately led to the same result.  The Court said that while the APA provided a cause of action, the patent statute, specifically § 3(b)(1), precluded judicial review because the statute "lacks standards that a court could meaningfully use in evaluating this type of high-level personnel decision."  The Court said that the vagueness and "highly subjective" standard enunciated by the statute made the decision of whom to appoint to the Deputy Director position properly "committed to agency discretion by law," citing 5 U.S.C. § 701(a)(2) and Webster v. Doe, 486 U.S. 592 (1988).  The Court set forth a number of considerations that could be raised (and some of which were raised in the complaint), and could find no statutory guidance from Congress on which of these criteria should be applied.  The Court also cautioned that, should the APA provide judicial review of this type of appointment, the determination of who was qualified for an executive position would not only be outside the province of the executive branch, but would fall to the judiciary absent an explicit expression of Congressional intent.  The Court deigned not to find this responsibility in the judiciary absent more direct instructions in the statute.

Ms. Peterlin thus has another thirteen months or so to make whatever mark she will on the procedures and practices of the U.S. Patent and Trademark Office.  Although not subject to judicial expulsion, it is not too much to hope that she will acknowledge whatever deficiencies are in her background and experience that limit or prevent her from exercising the duties of her office effectively, and reach out to her various constituencies - patent and trademark examiners, inventors and applicants, the patent and trademark bar, and the public - that could help her be most effective.  Besides holding out the prospect of actually addressing the real problems besetting the Office, any such behavior from Ms. Peterlin would be a refreshing change from the hostility and adversarial stance taken in recent times by Patent Office management.

Comments

[Jim Demers]

The statute may be vague, but it does not lack "standards that a court could meaningfully use." Surely, had the court reached the merits, Peterlin would have been found not to meet any rational interpretation of a "professional background and experience in patent or trademark law". Is the court saying that it's within agency discretion to violate the statute?

[Kevin E. Noonan]

Dear Jim:

The court said that the question of Ms. Peterlin's competence for her post was not sufficiently set forth in the statute for judicial review, because there was insufficient specificity in the statute for the court to determine whether her apppointment was "arbitrary and capricious" under the APA.

Many have commented that plaintiffs didn't help matters any by inadequately arguing the procedural point. Had they submitted persuasive testimony that the statutory standards were sufficient for the court to determine whether the Peterlin appointment was arbitrary and capricious, then the court might have gotten to the merits. And I think I know how many in the patent constituency think THAT would turn out.

But it didn't. Opportunity lost, a little more than 400 days to go.

Thanks for the comment.

[Robert]

From what I've read the case will return. This woman (though smart) is clearly unqualified. I
am nauseated that the USPTO is being run by such an incompetent. So much for the Peter principle.