USPTO Judges, Management, Accused of Bias—This Time at the TTAB

A motion filed on Friday, October 15, with the U.S. Court of Appeals for the Federal Circuit (CAFC) requests that the appellant, Charles Bertini, be allowed to present evidence not of record in order to demonstrate that bias at the Trademark Trial and Appeal Board (TTAB) may have had a negative impact on his case.

Bertini owns the mark APPLE JAZZ, which was registered in New York state in 1991 for entertainment services. He began using the mark well before that, in 1985. Unaware that he did not have a federal registration, Bertini filed an opposition against Apple, Inc.’s federal registration for “Apple Music” in 2016, along with an application to register APPLE JAZZ with the USPTO.

Appearance of Bias

The TTAB and Apple agreed there was a likelihood of confusion, and Bertini’s motion for summary judgment was partially granted in 2019 by a panel of three TTAB administrative law judges (ALJs)—Frances Wolfson, George Pologeorgis, and Linda Kuczma (“the Original Board”). However, the Original Board was subsequently mostly replaced, without explanation or notice, and a final decision to dismiss the opposition was made by a new panel of ALJs—Jonathan Hudis, Thomas Shaw and Linda Kuczma (“the New Board”). Jennifer Elgin also replaced Michael Webster as the Interlocutory Attorney (IA), who advises the ALJs.

The crux of the problem, according to the motion, is that Hudis and Elgin both have had extensive relationships with the Kilpatrick Townsend attorneys representing Apple in the case. Elgin served as Of Counsel to Kilpatrick for five years, and Hudis collaborated on books and in professional organizations with two of the attorneys. This created an appearance of bias, or actual bias, that affected the outcome of the case, according to Bertini.

The motion calls to mind complaints that have been made over the years about Patent Trial and Appeal Board (PTAB) panels, as well as research conducted by IPWatchdog regarding the appearance of bias by certain PTAB administrative patent judges (APJs).

Duty to Disqualify

Here, Bertini argues that Hudis had a duty to disqualify himself under 28 U.S.C. § 455. The motion also argues that TTAB management improperly reassigned the ALJs knowing that it would negatively affect both the outcome of the case and the mission of the TTAB. With respect to the latter, the motion explains that management replaced the ALJs already familiar with the case with ALJs who were not, creating more work for their staff. The motion also contends that assignment of TTAB ALJs is not random and occurs via “an opaque process that is not described in any document available to the public.” The motion continues:

This is contrary to the practice at federal district courts – and probably at most/all state trial courts – where judges are randomly assigned. No notice is placed on the record regarding assignments, removals, replacements, and therefore litigants have no opportunity to object to a conflict or appearance of bias. Generally, even the first names of the ALJs are not listed on decisions.

The motion also notes that the New Board ignored the legal arguments of the Original Board on trademark tacking, as well as the genericness standard.

Extraordinary Circumstances

Bertini is asking to supplement the record with documents that will demonstrate the relationship between Hudis/ Elgin and the Kilpatrick attorneys, outlines why such documents are material, and also cites relevant case law warranting a finding of “exceptional circumstances” under which a court of appeals may exercise authority to allow a party to supplement the record.  This will “advance the principles of fairness, truth, or judicial efficiency,” Bertini argues.

The motion concludes:

Switching judges and an IA after one party’s MSJ is partially granted resulting in changed legal positions by the new judges is truly an extraordinary circumstance, especially when that judge has had professional relationships with two of the attorneys representing one party.

Apple, Inc. plans to file an opposition in response to the motion.

IPWatchdog reached out to Kilpatrick Townsend attorneys for a statement, but had not received a response as of the time of publication.