On Thursday, May 11, 2017, I submitted a Freedom of Information Act (FOIA) request (see bottom) to the United States Patent and Trademark Office (USPTO). My FOIA request seeks a copy of any and all rules of judicial conduct, ethical policies and/or codes of professional or judicial conduct that apply to Administrative Patent Judges (APJs) of the Patent Trial and Appeal Board (PTAB).
This request is provoked due to a revelation that at least two APJs have been assigned to hear cases, and have been deciding cases and issues, relating to post grant challenges filed by former clients. See here, here and here. In both situations the challenger has been Apple, and in both instances the APJs formerly represented Apple as defense counsel in patent infringement proceedings.
Several weeks ago I made a request of the Communications Office, which is fairly typical for a publication to do. I pointed to the Code of Judicial Conduct applicable to Article III judges appointed pursuant to the U.S. Constitution. I asked if there was a similar code of conduct that applied to APJs of the PTAB. That inquiry had gone unanswered and unacknowledged. I assume at this point I will not receive an answer, or even an acknowledgement of its receipt. Therefore, my FOIA request became necessary.
I have been made aware of an all employees ethics policy that does not mention the PTAB or APJs specifically. This all employees ethics policy seems to be the only ethics policy applicable to the PTAB, which if true would be extraordinary given it only requires employees to recuse themselves for a single year after having worked for an employer. There is no time limit on the need to recuse for an Article III judge, and neither is there any time limit on the requirement to refuse representation when one has a conflict created by the opposing side being a former client. See Is the ethical bar for practitioners higher than for PTAB judges? Therefore, a single year being sufficient for an APJ on the PTAB seems wholly without precedent and lenient beyond belief.
Furthermore, 37 CFR 11.803 seems to contemplate the existence of rules of judicial conduct applicable to APJs. According to §11.803, a practitioner commits an breach of the rules of ethics if the practitioner becomes aware that an APJ has violated the “applicable rules of judicial conduct” and does not report such violation to the appropriate authority. Thus, it seems there must be rules of judicial conduct that are applicable to APJs somewhere.
In any event, the USPTO has confirmed receipt of my FOIA request and has informed me that a response is anticipated no later than Monday, June 12, 2017. Stay tuned!
To Whom It May Concern:
37 CFR 11.803 reads: “A practitioner who knows that a judge, hearing officer, administrative law judge, administrative patent judge, or administrative trademark judge has committed a violation of applicable rules of judicial conduct that raises a substantial question as to the individual’s fitness for office shall inform the appropriate authority.”
Therefore, USPTO regulations contemplate the existence of some “rules of judicial conduct” that must apply to the Administrative Patent Judges (APJs) that make up the Patent Trial and Appeal Board (PTAB). I have searched for these judicial conduct rules that are applicable to the APJs of the PTAB and have been unable to locate any. To date all I’ve been able to find is a generic ethics policy that applies to all USPTO employees and does not mention APJs, the PTAB or judicial conduct. Several weeks ago I asked the Communications Office for information on such conduct rules. I have not received even an acknowledgement regarding that request, so I assume at this point I will not receive any response through those channels.
With this in mind, I request a copy of any and all rules of judicial conduct, ethical policies and/or codes of professional or judicial conduct that apply to Administrative Patent Judges of the Patent Trial and Appeal Board.
Please let me know if you have any questions regarding this request.
Join the Discussion
12 comments so far.
Michael E. McCabe, Jr.May 20, 2017 10:47 am
The definition of “practitioner” in 37 CFR 11.1 is very broad and includes attorneys who are registered to practice before the Office in patent matters. All of the Rules of Professional Conduct set forth in 37 CFR 11.101 et seq apply to “practitioners.” The definition does not exempt any particular class of individuals based upon their job title. Thus, why wouldn’t the APJs all be subject to the same Rules of Professional Conduct as every other “practitioner”? It would seem to me that even if there is or is not a special set of ethics rules that apply only to Article I judges at the USPTO, then those special rules would be in addition to, not a substitute for, the general ethics rules that apply to all registered practitioners.
This concept that judges (Article I or otherwise) are subject to more than one set of ethics rules appears to be supported by the Model Code of Judicial Conduct, which notes in the preamble that “The Model Code of Judicial Conduct establishes standards for the ethical conduct of judges and judicial candidates. It is not intended as an exhaustive guide for the conduct of judges and judicial candidates, who are governed in their judicial and personal
conduct by general ethical standards as well as by the Code.”
But even assuming, arguendo, that the specific ethics rules applicable to judges and judicial candidates preempts “general ethics standards”–such as the standards of Rules of Professional Conduct adopted by the States and the USPTO–it would seem to me that such preemption only works if there is another body of ethics laws that overrides those general ethical standards applicable to us mere mortal attorneys. If there is no special code of professional conduct applicable only to APJs, then there would be no predicate for the applicability of a preemption-type analysis.
Surely, an APJ cannot seriously be heard to argue that they are immune from their state or USPTO Rules of Professional Conduct based on their status as administrative law judges and are only subject to the Code of Judicial Conduct, which does not exist for them, so therefore they are immune from those as well.
That would be non-sensical.
Which leaves us, in the USPTO/APJ context, with the Rules of Professional Conduct of the USPTO. I would submit that the APJs qualify as practitioners, and thus they are bound to follow all of the regulations applicable to all other practitioners.
It also seems to me that, as federal government employees, the APJs are subject to a host of ethics statutes and rules applicable to Executive Branch employees. Those federal ethics laws are designed to prevent the types of conflicts of interest, impartiality, and similar issues that are typically found in various Codes of Judicial Conduct. The Office of Government Ethics has written a book compiling the Federal ethics laws. The “compilation” is over 100 pages long and is available online at the OGE’s website. I have not tried to cull from that compilation those provisions that might apply to APJs in general, but it does seem that these federal employees have to answer to quite a few ethics laws, regulations, and rules.
In any event, I will be very interested in hearing what you get in response to your FOIA request. Good luck!
EGMay 17, 2017 10:41 am
Sorry, in the 5th line of my comment, it should read “challengeable,” not “changeable.” Also, for some who might misconstrue what I said and meant in my first sentence, I’m looking at representation by the APJ of that party other than in the case before the PTAB panel that this APJ sits on.
EGMay 17, 2017 07:02 am
Yeah, I figured you “weren’t going to hold your breath.” And if the USPTO has no such canon, or won’t admit whether or not it has such a canon, PTAB has a serious issue whenever an APJ sits on a PTAB panel where that APJ has previously represented one of the parties in a proceeding before that PTAB panel-at the very least, it creates a presumptive lack of impartiality that should be changeable on appeal to the Federal Circuit, as well as a potential violation of APA. Also, it would add yet another ground for why IPRs proceedings violate constitutional “due process” when compared to those in a courtroom with an Article III judge-there’s no corresponding requirement that the adjudicator be free from even the “appearance of impropriety.”
Gene QuinnMay 16, 2017 03:56 pm
I’m not going to hold my breath. If I get nothing, however, that will be telling in and of itself. So either we find out that there is some policy/code or I get nothing and it is confirmed that there is no specific policy that applies to APJs. Either way it is a step forward to figuring out this mess.
Gene QuinnMay 16, 2017 03:54 pm
Thanks. I learned my lesson the last time around. I was trying to be reasonable. Perhaps at some time in the future a reasonable approach will work with the USPTO once again. I personally don’t think the problem is the career folks and communication professionals. The Obama Administration communication strategy was to issue press release after press release that said very little and then claim they were being transparent. It looks like the Trump Administration communication strategy is to say nothing, very carefully word everything to the point where what is said is arguably misleading, and not care.
Eric BerendMay 16, 2017 01:43 pm
This enormous farce does not end, or reach the beginning of its end, until all constituencies concerned with intellectual property rights, even Appellate Court Judges, realize that “patent troll” is a mere pejorative derogatory non sequitur canard – and that said canard has been inculcated as part of influence peddling by legislators captive to the exclusive benefit of a very few special interests, and to the harm of the U.S. Constitutional public interest (e.g., “…promote the general welfare.”).
Of course, said canard is but a part of what has sufficed to excuse the CAFC’s corrupt conduct in this area of U.S. law in their own minds, as recently performed in lieu of their Constitutionally empowered and authorized roles.
That I, a mere private party, a U.S. citizen inventor, should dare to publish such an allegation against said persons normally presumed to be of high character and integrity, to even be considered for their respective positions on the Court; is either wholly unwarranted and contemptuous, or is tragically appropriate and indicative of a terrible harm perpetrated upon the entire U.S. patent system and its practice and jurisprudence of at least some 220 years, at the time of the U.S. passage of the “America Invents Act”.
EGMay 16, 2017 08:00 am
Sorry, the 4th line of my comment should read ” impartiality of rulings by PTAB and that they’re unbiased where there’s no specific ethical canon.”
EGMay 16, 2017 07:57 am
I hope your FOIA request gets a response, but as others have suggested, I wouldn’t hold my breath. The fact that the USPTO does not have the equivalent of an ethical canon for APJs comparable to that for court judges is disgraceful-how in the world does the USPTO expect anyone to believe in the impartiality of rulings by PTAB and they’re unbiased whether there’s no specific ethical canon to hold the APJs accountable to? And would the Federal Circuit find such an oversight by the USPTO to be anything but a serious omission?
PoesitoMay 16, 2017 01:30 am
It may not be as bad as it appears. It might be just another example of government oversight.
Paul MorinvilleMay 15, 2017 10:26 pm
Jeff Lindsay, “the arrogance and grand loftiness of the ruling class is astounding” It surely is. Michelle Lee must go.
Jeff LindsayMay 15, 2017 09:46 pm
Whoa, you mean it takes a freedom of information request to try to force the people’s own government to tell the people they serve what code of ethics, if any, they follow? And until you force this information out of them with lawyers and law, they won’t share a thing? Does this sound like the republic we are supposed to have under the US Constitution? Silly question, I know, but on this issue the arrogance and grand loftiness of the ruling class is astounding.
AnonMay 15, 2017 09:00 pm
Excellent Gene – and thankfully you did not provide an easy “weasel” out this time.