PTAB Judges and the Lack of an Applicable Ethics Code

Someone reached out to me and pointed out that Gene Quinn over on ipwatchdog is quite upset by the fact that there is no code of judicial ethics specific to PTAB judges and the like. His latest article, of many, is here.  That’s a good idea.

There should be a specific and distinct set of ethical rules applicable to them. I’m not sure there isn’t one already. 28 USC 455 applies to all federal judges, including somewhat analogous magistrates, and could be interpreted to extend to them. (I doubt it, but I haven’t researched it.)  If it doesn’t, the USPTO could by regulation (or internal operating procedure, perhaps) simply adopt the language of Section 455 and get this done.  And it should.

Mr. Quinn goes on at length about alleged personal unethical conduct, and makes some sharp accusations and personal attacks that I don’t want to leave any impression that I agree with.

But some of his accusations arise from his belief about legal ethics or federal law that go directly to the idea of the substance of a code and so I’ll touch on those limited ones, and only some of those.  For example, Mr. Quinn writes  “there is no time limit on a duty to a former client, at least if you are a patent practitioner. So the 1-year recusal period is wholly without precedent and inappropriate for PTAB judges.”  Likewise, Mr. Quinn states that federal law governing Article III judges “has specific provisions that would seem to absolutely prohibit a judge from handling a case where a litigant is a former client.”

Neither argument should be taken seriously in crafting a PTAB code.

With respect to lawyers, pretty much every jurisdiction recognizes there is a “time limit” (as he puts it).  It works this way:  I can be adverse to a former client if information I learned from the former representation has become generally known or has become “stale.”  So there is a “time limit” of sorts, by rule in most jurisdictions and in case law in others so far as I know.

As for judges, there is no prohibition against a judge ever adjudicating a dispute involving even a former client the lawyer personally represented.  No, the federal statute regulating Article III judges (and magistrates) (28 USC 455) and the Code of Judicial Conduct don’t state some  minimum amount of time that must pass after a lawyer represents a client before she can judge a dispute involving that former client. But, with the federal judiciary, two years seems to be the outside long “norm” for a judge to wait before adjudicating cases involving former clients the judge actually and personally represented.  See, e.g., Sphere Drake Ins. Ltd. v. All Am. Life Ins. Co., 307 F.3d 617, 621-22 (7th Cir. 2002) (“The norm among new appointees to the bench is that once two years pass, perhaps even earlier, a judge is free to sit in controversies involving former clients”) (emph. added)).

My point is that having a set of rules specific to adjudicative officials is probably a good idea.  I do hope the USPTO takes the idea to adopt a set of rules applicable to adjudicative officials seriously, both to encourage confidence in the system and to avoid subjecting officials to criticism unanchored to a well-known standard like Section 455.

New Patent Assertion Entity Flying Above the Radar: Blackbird

Perhaps there are other entities like this, but if so they haven’t made the boom that this one has.  Blackbird Technologies was founded by former big-firm (WilmerHale, Kirkland Ellis) patent litigators. It buys (or somehow obtains rights to assert) patents and asserts them with its own in-house staff of litigators.  Its “news” page reports a number of suits — at least 100 in its short life — and reports that it settled many.

It came onto my radar because of an interesting case involving a prosecution bar.  A defendant pointed out that because Blackbird’s business is buying patents to assert, no lawyer at it should see the defendant’s highly confidential information because those lawyers could then go acquire patents that covered the defendant’s planned products.  The court resolved the issue by requiring the company to covenant not to sue with respect to future products, an interesting resolution of the problem.  A pertinent part of the order in Blackbird Tech LLC v. Service Lighting and Electrical Supplies, Inc., et al., C.A. No. 15-53-RGA (D. Del. May 18, 2016) (Andrew, J.) provides:

the Court will require that Blackbird agree to a covenant not to sue any of these Defendants for infringement of patents involving lighting technology that are acquired during the time between the entry of the protective order and one year after the conclusion of the litigation. To be clear, if Blackbird acquires a patent on any lighting technology6 during the restricted time period, it may never assert that specific patent against these Defendants.

(As an aside, I would love to see how it acquires patents, since some interesting ethical issues could arise from its acquisition practices, since it’s a corporation but it’s practicing law, it seems.  There are some very odd issues that arise sometimes.)

Then I read that Blackbird has sued Cloudflare (Blackbird Tech LLC v. Cloudflare, Inc., which it seems is an Internet security company.  In response, Cloudfare put a “bounty” on every Blackbird patent.  That story is reported widely, including here and here, for example.

Blackbird states that it is designed to help small inventors overcome the obstacles of patent litigation, including the obstinate, more powerful defendant.  I am know that small inventors, and small companies, sometimes face the 800 pound gorilla defendant who refuses to deal fairly, and so the benefit that something like Blackbird can bring is real.  It will be interesting, however, to see if that is what Blackbird is, or if it is going to bring a bunch of nuisance suits, which Cloudflare believes it has done, as it has stated here.

Nova Chemicals v. Dow Chemical: Does 285 Apply to Independent Actions to Set Aside Judgments and Does the CAFC Have Subject Matter Jurisdiction?

This one, Nova Chemicals Corp. v. Dow Chemical Co., __ F.3d __ (Fed. Cir. May 11, 2017) (here) is interesting because of the issue it doesn’t raise, but more on that in a moment.  Patentee Dow sues and obtains a judgment against Nova.  Years later, the defendant believes that the judgment had been obtained by fraud, and brings an independent action in equity (as allowed by FRCP 60) to set aside that earlier judgment.  Basically, Nova asserted that Dow had lacked standing, basing its argument on some later testimony in an unrelated case, and that the infringement proofs had been misleading.

To set aside a judgment under these circumstances, through an independent action, requires proof of fraud on the court or a truly grave miscarriage of justice.  The district court dismissed the complaint and the CAFC affirmed that dismissal under Rule 36, without any opinion.

Then Dow moved in the district court for fees.  The district court granted them under Section 285, which of course allows a court in patent cases which are “exceptional” to award fees.  Nova never argued 285 did not apply, and the CAFC noted that on appeal.

The CAFC affirmed the district court’s findings, and it’s an odd case not likely to recur, so the substance of the panel’s 285 analysis isn’t too revealing.

But what is interesting to me are two things.  First, the apparent concession by Nova that 285 applies to equitable actions to set aside judgments. I’m not sure that is so clear but presumably they looked at that.  But it is also interesting to me, and is related to that, that this appeal (and the earlier appeal) was taken to the Federal Circuit, not to a regional circuit.  The Federal Circuit’s appellate jurisdiction is limited to civil actions arising under the patent laws, which an independent action to set aside a judgment is not, one would think…

The Jenner & Block Contingent Fee Case Heads to SCOTUS… the Client Hopes

I’ve discussed a few times this fight over whether a patent assertion entity should be required to pay full hourly fees, or anything, to a firm that dumped it after losing the case on summary judgment, when the client hired another firm, got the case reversed on appeal by paying hourly rates to the new firm, and later settled the case for significant money.  The last post on it was here, and, full disclosure: I was an expert opposed to Jenner & Block, which was awarded money in the arbitration and prevailed in the state court fight over confirmation of that award.

Generally, the question before the Supreme Court is whether the Federal Arbitration Act preempts a state from setting aside an award if it violates a state public policy.

An amicus brief in support of cert was just filed by the Eagle Forum (yes, Phyllis Schafly’s outfit), which is interesting in and of itself.  A link to that brief is here.  According to it, there is a circuit split on this issue. If, as apparently the courts below held, an arbitration award cannot be challenged even if it requires enforcement of an unethical fee agreement, it’d be nice to have the Supreme Court make that point, so the rest of us can take corrective action in legislatures.  Can you imagine the holding, if the allegations are true:  “an unreasonable fee can be enforced in arbitration because that’s what Congress intended when it adopted the FAA in 1925…”

It seems to me that if this is the law, maybe every lawyer-client arbitration clause will need to say: “In addition to losing your right to trial by jury, any ethical limitation on our fees will not apply…”

Think on that one.

Alleged Unethical Payments to Experts Who “Volunteered” to Testify

I serve as an expert witness, and there are a variety of difficult ethical issues that being one presents, but whether you can say you’re not being paid when you are isn’t one of the difficult issues.

The case where experts allegedly were being paid when the jury was told they weren’t isn’t a patent case, but it’s interesting.  At trial, the plaintiff’s lawyer allegedly told the jury that his experts weren’t being paid, but had volunteered out of concern for people injured by the product, a hip replacement device made by the defendant, J&J.

J&J loses, and it’s not just any loss, but a “bellwether” case — the first case in a series of cases, and so its outcome will affect the value of the rest of the cases. And it’s not just a loss, it’s a $500m judgment, reduced to “only” $150m under tort reform caps.  And it’s not just a series of cases: there apparently 9,000 similar cases pending.

J&J has moved under 60(b) to set aside the judgment because, it asserts, in fact the experts knew they were going to be paid and were paid after trial, and a charitable donation was made.  The case is on appeal in the Fifth Circuit, and there’s a longer story about it, here.

IP Firm Sues Former Lawyer for Improperly Soliciting Clients Before Departure

Lawyers leaving a firm are often tempted to try to persuade clients to go with them, to make copies of files that may not be their property, and to engage other activity that may constitute breach of fiduciary duty to their current firm.  Some of that — and more allegedly happened in Houston, resulting in the filing of JL Salazar Firm v. Friedrich.  An article about the case is here.

I’ve walked lawyers through departures many times, and most states have bar opinions providing step-by-step “instructions” for what can, and cannot be done.  Often lost in the desire to leave, and to make a new start, is the fact that the clients don’t “belong” to anyone.


Supreme Court Affirms Causal Requirement for Sanctions under Inherent Power

In patent litigation, as in all civil litigation, district courts have various means to impose sanctions for litigation misconduct.  Rule 11, Rule 37, Section 1927, and, of course, Section 285 are rule- or statutorily-based means to impose costs on those who litigate improperly.

Federal courts also have the “inherent power” to impose sanctions even if one of those rules or statutes is not violated.  But, because it is judicial in nature and cannot be used to swallow the rule, inherent power has long been somewhat cabined. Among other things, the Court has always held that any sanctions imposed must be causally related to the misconduct.

The Court affirmed that requirement in a non-patent case, Goodyear Tire & Rubber Co. v. Haeger (Apr. 18, 2017).  In that case, Goodyear engaged in a years-long effort to hide key documents from the plaintiffs, who, not knowing of them, settled the case.  When they sought sanctions, the district court awarded all of the litigation fees the plaintiff had incurred from the time when the scheme had begun:  $2.7 million.  It also held, conditionally, that $2 million was caused directly by the shenanigans.

The Ninth Circuit affirmed, but the Court reversed, unanimously.  It reiterated that in some cases — such as when the entire defense or entire claim are brought in bad faith — a shifting of all fees is proper, but found that was not the case here.  Instead, unable to discern if the $2 million conditional award was appropriate, it remanded for the courts below to decide what amount had actually been caused by Goodyear’s misconduct.

Section 285 is often the myopic focus of patent litigators.  While the Goodyear opinion confirms the causation requirement of inherent power, it also should remind litigators to think of all available means to seek compensation for improper litigation conduct.

Employee’s use of Employer’s Email Server Waives Privilege

Many employers allow employees to use email, but have policies that state that the employer is free to monitor email.  Many cases have held that, depending on the facts, the employee cannot assert privilege under those circumstances:  both in claims between employee and the employer and between the employee and a third party.

This doctrine bit another employee recently, in a New York Appellate Division case, Peerenboom v. Marvel Entertainment, LLC, (N.Y. App. Div. March 16, 2017), available here.  The court found spousal privilege and attorney client privilege waived because the employee (the chair of the company) lacked a reasonable expectation of privacy based upon application of the four factors from the leading case.

Any time a lawyer is aware that his client is sending emails from an employer, he should consider whether privilege will be deemed waived, and, conversely, lawyers should look to see if the opponents are doing this, and so waiving privilege.

This is not a new body of law, but it continues to bite people.

Pleading Infringement, Pre-Suit Investigation, and a New Ruling

As you know, it used to be you could file a complaint for patent infringement using Form 18, which barely said anything beyond “Plaintiff owns a patent, and you infringe it.”  Nowadays, patent infringement complaints, like all others, must comply with Iqbal and Twombly, which require pleading factual material that, if taken as true, plausibly states a claim upon which relief can be granted.

A while back, I wrote about how this is going to be difficult to do in some cases: how do you gather a Rule 11 basis to plead plausible facts when, for example, the claimed method is practiced by a corporation inside its well-guarded factory?

A recent decision, Harvard v. Micron (17-11249, D. Mass. Jan. 31, 2017) (available here), gives a real world example of this.  The original complaint alleged that the patented method was commonly used to perform the accused process.  The defendant moved to dismiss, asserting that this was not enough to make it “plausible” that, in fact, the defendant used the method.

The district court granted the motion, and the plaintiff re-pled. The defendant moved to dismiss again, saying the amendment was futile because it still failed to show plausibility.  The judge denied the motion:

Harvard admitted there are multiple methods of achieving the film found on Micron’s chips, and Harvard had no way of demonstrating Micron used the patented “common” method and not one of the other procedures. Tr. Mot. Dismiss 5:13-6:16. Hence, all Harvard plausibly could argue with regard to Micron is that Micron’s chips possessed a film (which itself is not patented), and Harvard’s patented method is one of a number of possible ways to create that film. That is, Harvard suggested that it is possible that Micron uses Harvard’s patented precursors without rendering it plausible that Micron does so.

A complaint that merely argues it is possible the defendant infringes is insufficient under the Twombly standard. See Garcia-Catalan 734 F.3d at 104-05. In its amended complaint, however, Harvard does more than simply state that Micron might use the patented method because it is common. Harvard alleges that Micron has publicly contemplated using the patented precursors, as evidenced by Micron’s own patents. Am. Compl. ~ 44. In the ‘725 Patent, Micron suggests using alkylamides as an ALD precursor. Def.’s Opp’n, Ex. B, ‘725 Patent col.S, 11.24-30, ECF No. 39-3. Alkylamides are amongst the precursors encompassed by claim 24 of Harvard’s ‘539 Patent. Compl., Ex. B, ‘539 Patent col.32, 11.17-22. This explicit identification of a patented precursor makes it plausible to believe that Micron infringed upon the ‘539 Patent, and that plausibility is all that is needed to survive a motion to dismiss, see Twombly, 550 U.S. at 559-60. Because the amended complaint survives the Twombly standard, its filing would not be futile.

While all well and good, the problem is that often this evidence will not be available, allowing infringement to go unchecked.  Further, this pleading problem means that patent drafters should think of ways to claim the method in such was as to avoid the problem.  That may not always be possible, of course.

My Amicus Brief in In re Silver: Texas Should Defer to Federal Circuit Law on Existence of Patent Agent-Client Privilege

I wrote about this issue below:  a Texas appellate court held that the Federal Circuit’s law on privilege did not apply to a claim involving a breach of contract, and so communications that (might?) be privileged under federal law were discoverable in state court.  There’s a ton of briefing between the parties and other amicus on whether, or not, Texas state courts should recognize a patent agent-client privilege.

I chimed in and said that under existing choice of law principles in Texas, it should defer to federal law.  My brief is here.

No clue how the Court will rule, but for the sake of certainty and expense, I hope they agree with my views.


Nice post on ethics of docketing software

It’s available here.

Of course, most of you are using good docketing software.  Please do.  And use redundant systems and verification of data entry.  Missing a deadline is one of those “easy targets” that will get you sued.

Although I understand why it is so, I often joke that patent prosecutors seem to miss only deadlines for the very valuable patents….

Another Case Implying Joint-Attorney-Client Relationships in Prosecution

It is common for different entities to have input into prosecution, as where a licensee has input into prosecution of pending applications.  In such circumstances, the parties likely can assert a “common interest” privilege so that third parties cannot access their communications.  However, courts continue to conflate the existence of a common interest with implied joint attorney client relationships.

In the most recent example (others are in our book), DePuy Orthopaedics, Inc. (“DePuy”) entered into a research agreement with Orthopaedic Hospital (“OH”).  OH would develop products and DePuy would pay a royalty if any were commercialized. Some patent applications were filed. OH later contended that DePuy had developed products that required it pay OH a royalty; DePuy refused, and OH brought a declaratory judgment.  See DePuy Orthopaedics, Inc. v. Orthopaedic Hosp., 2016 WL 7030400 (Dec. 1, 2016).

In the course of the lawsuit, OH moved to compel all documents from DePuy related to prosecution of the patent applications.  DePuy refused to provide the documents. In doing so, it conceded that the parties shared a common interest with respect to the patent applications, but contended that DePuy’s in-house attorney did not jointly represent both OH and DePuy when doing so.

The court held that as a matter of law DePuy’s in-house lawyer represented both it and OH.  In doing so, it applied the test for determining whether a lawyer represents a client.  Thus, because the lawyer jointly represented both OH and DePuy, nothing was privileged between them in this dispute.

As I’ve written, this is legally incorrect.  The issue isn’t whether DePuy’s in-house lawyer represented one client, but whether she represented two.  When that is the issue, courts that appropriately analyze this issue recognize that a different analysis is required.  For example, implying a joint-client relationship can create conflicts of interest.  Further still, with respect to in-house counsel, this could create the unauthorized practice of law (for example, if she were not licensed in the state where the activities occurred, but registered by the state, and the “representation” went beyond that necessary to practice before the USPTO.  It could also result in liability by in-house counsel to third parties, and in-house counsel typically don’t have malpractice insurance.

This same fact pattern has bitten several outside firms and in-house counsel before.  Any time a lawyer is prosecuting patents where there is some agreement where a “non-client” has input — a joint venture agreement, a license, a joint development agreement — the lawyer should be extremely careful to ensure that the “non-client” knows it is not a client.

ABA: If moving to withdraw for non-payment of fees, try to say as little as possible to the court.

This is probably obvious, but while nonpayment of fees (or expenses) may under some circumstances permit a lawyer to withdraw from a case, it does not permit the lawyer to reveal confidential information.  What does a lawyer do if (as sometimes happens) the client objects to withdrawal?

The ABA in ABA Formal Ethics Op. 476 (Dec. 19, 2016) (here), said that the lawyer should (a) in the initial motion say nothing more than “professional considerations” or the like; (b) if pressed by the court, point out that the court should rule without requiring disclosure; and (c) only if pressed or in the alternative, offer to provide the information for in camera review.

E.D. Texas imposes 285 Liability on Lawyer, Client, Others, Jointly.

I’d written about the potential for 285 to be used to shift fees, not onto the losing party, but onto the losing party’s lawyer, here.  Ya’ll told me I was nuts.

In an unusual order dated January 25, 2017 in Iris Connex v. Dell (E.D. Tex 2:15-cv-1915-JRGJ) (here), after finding no infringement, Judge Gilstrap allowed post-judgment discovery and concluded that the case was exceptional. Stripping it way down, because the infringement contention was frivolous (and other things), Judge Gilstrap imposed joint and several liability among the corporate plaintiff, its parent company and the plaintiff’s sole officer (a lawyer) (in effective, piercing the corporate veil) for the fees awarded under 285.

The case may, as a result, be useful tool to combat shell patentees run by lawyers to shake down legitimate businesses through nuisance settlements.  This is of course, when claims are frivolous, in need of policing. Then-Chief Judge Rader, Professor Chien and I, wrote about that a while back, and I wrote about the need to police this, and also to watch out for strategic behavior by defense lawyers, well before then!

There are a lot of questions I have about this order that are to the side of the primary issue, but nonetheless may mean it is wrong. For example,  why on earth joinder of the lawyer was required by Rule 19 is a  mystery to me. But, with any luck, at least we’ll know whether this is a viable strategy.


E.D. Magistrate Love Orders Disclosure of Whether Mock Trial Done, Other Info In Camera

This is interesting and the case name (wait for it) sort of ironic.  The district judge ordered the parties to disclose to each other whether they had done a mock trial, to keep a list of participants, and to cross-check participants against potential jurors and notify the other side if there was a match.  In addition, the judge ordered the parties to disclose in camera a list of participants.

Obviously, I think, a lawyer who knows that a potential juror participated in a mock trial has to disclose that fact, but this goes beyond that and is not something I’d seen before.

The case is 3rd Eye Surveillance, LLC v. City of Ft. Worth (E.D. Tex. Jan. 12, 2017), here.

A Resource for In-House Lawyers

Patent lawyers who are not licensed should register or should be extremely careful to limit their practice to “practice before the patent office” or various unauthorized practice of law issues, privilege waiver, and other problems can result.  In-house lawyers have to be really careful to ensure the state registration includes advice to affiliates, and not just the corporate employers, and any kind of charge by the employer for the lawyer’s services can raise lots of issues.  (Fun times.)

So, I’m writing a paper on privilege (patent agent, and patent lawyers who are in-house but not licensed in the state they practice in). In the course of doing so , I’ve been reading these state statutes and also thinking about them.  I compiled a list and thought I’d share it. The ABA’s first, since it compiles them, but many links are broken and so the correct ones follow.  So, if you don’t see your state, go to the ABA site.  If you see your state, use this link.

If you haven’t thought through the privilege issues, you should give  your in-house friends a heads up. You can also use lack of authority to attack many things, like opinions of counsel, privilege…

  • AL:
  • CA:
  • DE: RULE 55.2
  • ID: RULE 225
  • IA: RULE 31.16
  • KS: RULE 712
  • KY:
  • MI: RULE 5
  • MN:
  • NE:
  • RI: RULE 9
  • TN: SECTION 10.01
  • VA:

New Decision Addressing How to Handle Discovery Adverse to Current or Former Client

Suppose you’re representing a party to a lawsuit, and you have no conflicts, but you need to take discovery of a client, or a former client and the lawsuit is related to your work for your former client.  While your representation of the party in the suit isn’t adverse, some courts hold that taking discovery is adverse, and so if it’s taken from a current client, that’s a conflict, and if taken from a former client, that’s adverse and can’t be done if the matter for the former client is “substantially related” to the discovery requests.

A solution is to use separate counsel to take the discovery.  What limits are there on replacement counsel?  A recent case amplified on the sparse case law that there is on that point.  After discussing the case law limiting what “conflicts counsel” — replacement counsel for discovery — can do, the court wrote:

In light of these decisions, and my prior opinion, I think conflicts counsel in this case should be walled off from the McAndrews firm. Conflicts counsel need not be walled off from local counsel. Conflicts counsel may be provided with any and all (unredacted) filings on the docket. They may be further provided with any discovery served or received to date, including any infringement or validity contentions. Further, to the extent Plaintiff has any relevant written expert (including consulting expert) opinions, they may be provided to conflicts counsel. On the other hand, conflicts counsel does not get any tutorial from McAndrews, and does not get any draft Broadcom discovery. Conflicts counsel, if it needs expert advice beyond that identified above, will need to obtain its own expert(s). Conflicts counsel will need to formulate its own discovery requests to Broadcom, but is not prohibited from copying discovery requests already made to the parties or to other third parties. Conflicts counsel will need to serve any Broadcom subpoenas, deal with any Broadcom counsel, take any Broadcom depositions, and collect any Broadcom documents. Any discovery obtained by conflicts counsel may be provided to local counsel, and local counsel may provide the discovery to McAndrews. McAndrews may decide which discovery to provide to its experts, and which discovery to use at trial. The wall will continue at least through the close of discovery, but, it seems to me, it will have to be relaxed at some point before trial, since McAndrews will need to be in charge of trying Plaintiffs case. If any Broadcom witnesses appear at trial, however, any examination (or, more likely, cross examination) will need to be done by conflicts counsel.

TQ Delta LLC v. Pace PLC (D. Del. Civil Action No. 13-1835-RGA Jan. 5, 2017).

Federal Circuit Affirms District Court’s Sanctions; Enters its Own for Frivolous Appeal

The case — Walker v. Health Int’l. Corp. (CAFC Jan. 6, 2017)  (here) — isn’t written very well, and doesn’t seem to break a lot of new ground, but it’s rare for the CAFC to enter sanctions on its own, so it’s worth a read.  From what I can tell, the lawyer was sanctioned by the district court because he settled a case, but then consistently asserted that he hadn’t; he was sanctioned on appeal for making some unsupported arguments and falsely attacking opposing counsel, it seems.

My Letter to the USPTO About Duty of Candor Amendments



Dear Mr. Sked:

I write solely in my personal capacity as someone who advises patent practitioners on ethical issues and litigates patent cases.  These views are not those of my employer or my clients.

I have one broad concern and several more specific ones.

The USPTO Should Interpret the Patent Act Correctly and not Give False Security to Practitioners. 

            At a broad level, I agree uniformity is a good thing.  However, there will not be uniformity because of the different claim constructions given in litigation than in proceedings before the Office. I also agree with the USPTO that it need not follow the Federal Circuit’s definition of materiality (or anything else) from Therasense. However, it seems incongruous for the agency, as the entity charged by Congress with implementing the Patent Act, to adopt a definition that it rejected. Given than uniformity will not exist, what does the USPTO believe is required by the Patent Act of applicants?

More troublesome, however, is the real likelihood that the narrow definitions from Therasense will be rejected by the Supreme Court.  The Supreme Court has in recent years routinely rejected the Federal Circuit’s rigid, cabined interpretations of the Patent Act.  While no one knows what the future holds, today’s practitioner’s conduct may be judged by a more stringent standard than suggested in Therasense and proposed here. That has happened with eligibility, obviously.  Given that the Supreme Court could hold that the Patent Act requires more than avoiding intentionally obtaining a patent that you know you shouldn’t get, and given that that interpretation will likely be applied to all issued patents, and given the USPTO’s statement that it hopes that the new definition will result in less disclosure, one can see a trap for the unwary practitioner.  This may give practitioners a false sense of security.

My more specific comments relate primarily to “who” is covered by these rules.  They don’t make sense.

Rule 1.56 Makes Sense as to Who is Covered; Rule 1.555 Does Not.

As written, Rule 1.56 applies to “[e]ach individual associated with the filing and prosecution of a patent application,” and is further narrowed by subsection (c) which requires “substantive involvement.”  The rule ties the individual to substantive involvement in prosecution or filing.

Rule 1.555, in contrast, is (I think) unintentionally broad.  It states that the duty is owed by “the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved on behalf of the patent owner.”  The way this is worded, every attorney and other person “associated with” the patent owner must disclose material information, even if the person has no involvement whatsoever in the reexamination. I believe if the sentence were written much like 1.56(c) is, this would clear this up: “The persons who owe a duty to disclose to the Office all information known to them to be material to patentability in a reexamination proceeding are every person who is substantively involved in the reexamination and who is associated with the patent owner, including each attorney or agent who represents the patent owner in the proceeding.”

            Who, in Both Rules, can Commit “Affirmative Egregious Misconduct?”

             The amendment to Rule 1.555 seems to limit who can commit “affirmative egregious misconduct” to the patent owner and those who act “on behalf of” the patent owner.  Rule 1.56 is not so limited, and is also written in the passive voice.

These differences and wordings raise three questions.

First, as noted above, the definition for reexamination would seem to allow for a patent to be held unenforceable due to conduct by every person “associated with” a patent owner, whether that person was involved in the reexamination, or not.  Granted, it likely won’t be affirmative egregious misconduct if the person wasn’t involved, but having a clear definition may help.

Second, under Rule 1.555, can someone other than “the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved on behalf of the patent owner” in a reexamination commit affirmative egregious misconduct?  Presumably so; but is that the intent of the Office? Again, the comment in the prior paragraph may make this an academic point, but the way the rule is worded the person doesn’t need to be substantively involved in prosecution (and, as noted above, presumably substantive involvement is what was intended).

Third, when read in pari materia, Rule 1.56 is broader than Rule 1.555, since Rule 1.56’s “affirmative egregious misconduct” prong is not limited in the same way as Rule 1.555.  When read together, under Rule 1.56 a person’s conduct can result in non-issuance of a patent even if that person was not acting on behalf of the patent owner.  This seems harsh and unintended.  My suggestion would be to make the two provisions in the different rules have the same scope, and affirmative egregious conduct “by or on behalf of the patent owner” probably is reasonably clear and meaningfully limited in scope.

A Closing Thought:  Uniformity.

In closing, as noted at the outset, uniformity can be a good thing.  To that end, the USPTO has rules that relate to the same general concept – candor and disclosure – but which cover different groups of people. While there may be a policy basis to make the distinctions the rules make, I am not able to guess them.

For example, in addition to the differences discussed above, I note that Section 42.11 – the “rule 11” of IPR — applies to “parties and individuals involved” in an IPR.  Section 42.11 does not require “substantive involvement,” just “involvement.”  Further, because it includes “parties,” it creates the same problem discussed above with respect to Rule 1.555:  everyone who works for a “party” apparently is covered by 42.11, even if that person has nothing to do with the IPR.  As a final example of the varying coverage of these somewhat related rules, Section 42.51(b)(1)(iii) – the obligation in IPR to disclose inconsistent information — requires disclosure by “inventors, corporate officers, and persons involved in the preparation or filing of the documents or things.” Again, substantive involvement is not required, merely “involvement,” but “parties” are not subject to this rule.

It may be helpful to strive toward a single definition in these different rules is my point in closing.  These create practical problems and potential traps and needless litigation.

Glad to provide further information if I can.

Very truly yours,


David Hricik