Is the ethical bar for practitioners higher than it is for PTAB judges?

Over the last week we have written several times (here and here) about a Patent Trial and Appeal Board (PTAB) situation that, in my opinion, symbolizes everything that is wrong with a tribunal that is out of touch with reality. Prior to being hired in March 2013 by the U.S. Department of Commerce to become an Administrative Patent Judge (APJ) on the PTAB, Matthew R. Clements represented Apple as patent infringement defense counsel while working for Ropes & Gray. Since September 2014, APJ Clements has been assigned to numerous petitions, mostly CBMs but some IPRs, filed by Apple, his former client. Clements’ record in deciding cases, perhaps predictably, is tilted overwhelmingly in Apple’s favor.

None of these facts suggest that there is anything legally erroneous about the decisions made by Clements in these Apple petitions, but the appearance of impropriety is palpable. Anyone who denies the horrific optics is just fooling themselves. Especially when Apple is well known as one of the largest and most regular filers of petitions at PTAB.

I’ve searched for a Code of Conduct applicable to APJs on the PTAB, but have not been able to find one. I’ve inquired of many industry experts, none of whom were able to cite or identify a Code of Conduct applicable to APJs on the PTAB. I even asked the Patent Office if there was a Code of Conduct applicable to APJs on the PTAB akin to the Code of Conduct that is applied to Article III federal judges. While the Patent Office declined to comment on our reporting of what appears to be a serious conflict of interest, inquiries about a Code of Conduct applicable to APJs were simply ignored.

Yesterday PatentsPostGrant published an article severely criticizing our coverage of this matter for a variety of reasons. Among them was the fact that we identified the APJ by name who represented Apple as defense counsel and who has been deciding Apple post grant petitions. We’ve received this type of criticism in the past, which strikes me as both odd and petty. I suppose we could have referred to the PTAB judge in question as APJ X, the way the Patent Office referred to Examiner A when it came to light that he/she submitted over 700 hours in fraudulent time sheets. But referring to APJ X and then providing the citations to the cases and links that factually verify our reporting would seem to be a peculiar game of smoke and mirrors. We don’t protect the identities of Article III judges when writing about their cases, decisions, speeches or possible ethics violations, and neither does the Office of Enrollment and Discipline with respect to patent attorneys and patent agents. And the PTAB has openly compared themselves in Patent Public Advisory Committee (PPAC) meetings as doing more patent litigation casework than the most active Article III courts.

PatentsPostGrant also took issue with our claim that there is a problem with Clements deciding the post grant petitions of his former defense client, citing to a generic USPTO ethics document that they claim applies to PTAB judges. The document does not mention the PTAB, nor does it mention the word “judge.” Instead, it is the general policy that applies to all USPTO employees. The claim is made that this applies to PTAB judges, and by its express terms allows employees to work on matters as soon as 1 year after they have ceased representing a former client (see page 7). So the claim is made that Clements acted ethically because he did not decide any petitions of his former patent infringement defense client for 18 months.

I don’t know whether PatentsPostGrant is right or wrong when it is claimed that the generic USPTO all employees ethics policy is the proper and only Code of Conduct applicable to PTAB judges. But if that is correct serious questions need to be asked of the Patent Office. Why does anyone think it is proper for a judge to decide a post grant petition dealing with a former client 366 days after ceasing representation? Moreover, why aren’t there any specific policies, rules, guidelines or Code of Conduct applicable to APJs? Does it make sense to have the same policy that applies to all USPTO employees be the only policy that applies to a judge, particularly judges as powerful as PTAB judges?

While I don’t know whether PatentsPostGrant is right or wrong, I’m happy to say that I shouldn’t have personally jumped to the conclusion that an APJ deciding cases involving a former client is unethical even if that would be the case in an Article III court. Because, as ridiculous as it sounds, it seems PTAB judges can ethically decide cases dealing with their former patent infringement defense clients as soon as 1 year after ceasing representation without violating USPTO ethics rules.

Still, the fact that the USPTO rules seem to allow for a PTAB judge to decide petitions filed by their former patent infringement defense clients after a 1-year recusal period is astonishing. These rules absolutely must be changed. They are wholly and completely inconsistent with any sensible notion of what it means to have a conflict of interest.

Interestingly, had APJ Clements not been a member of the PTAB and one of the patent owners – let’s say Smartflash for example – had come to him and asked him to represent them in a PTAB proceeding against Apple, the conflict of interest question would have been a much easier question. Having represented Apple previously as defense counsel it would seem that the duty to a former client under 37 CFR 11.109 would prevent Clements from representing the patent owner adverse to Apple and now charging Apple with patent infringement, which is a prerequisite to the filing of a CBM petition. Had Clements represented Smartflash in any of the CBM proceedings brought by Apple on which he sat as a judge there would seem to be a direct and irreconcilable violation of the ethics rules applicable to patent attorneys and patent agents. How truly ironic, and pathetically sad, it would be if the ethical bar set for practitioners is so much higher than the ethical bar the USPTO sets for its own Administrative Patent Judges. How could that possible? In what universe would it make any sense to have a lower ethical bar for judges deciding cases than for patent practitioners?

PTAB judge are appointed by the Secretary of Commerce, which makes them far more than mere employees of the USPTO. They should be held to a higher standard than a generic all employees policy. It is also unacceptable, and completely nonsensical, for APJs to have less stringent conflict standards than for the attorneys appearing before them. Simply put, if an APJ couldn’t represent both parties in the case that APJ should not ethically be allowed to issue a decision in the case, period.

President Trump campaigned on draining the swamp that is Washington, DC. Many on the left and the right have tried to do so in the past, so we will have to wait and see just how successful President Trump is at delivering on this fundamental campaign promise. But if President Trump is at all serious about draining the swamp and preventing insiders from accessing influence, how can the Department of Commerce justify allowing one of its hand picked PTAB judges to hear and decide cases dealing with the interests of a former defense client? If the facts create a conflict for an Article III judge and would also prevent a private citizen patent practitioner from engaging in representation, surely the facts should disqualify a PTAB judge, right?