Are conflicts of interest at the PTAB leading to preferential decisions for Apple?

By Steve Brachmann
April 28, 2017

American flag. Conflicts of interest.On May 26th, 2016, a panel of administrative patent judges (APJs) at the Patent Trial and Appeal Board (PTAB) entered a final written decision ending the proceedings of a covered business method (CBM) review of U.S. Patent No. 8336772, titled Data Storage and Access Systems. The final decision declared that four of the patent’s claims, including claim 1, were directed to subject matter that was invalid under 35 U.S.C. Section 101. The patent, owned by tech licensing firm Smartflash, covers data storage and access systems, which enable downloading and paying for many types of data, including audio, video, software, games and text.

The petition for the CBM review was originally filed on November 25th, 2014, by Cupertino, CA-based tech giant Apple Inc. (NASDAQ:AAPL) The ‘772 patent is one of six patents asserted by Smartflash in a patent infringement action filed against multiple defendants, including Apple, on May 29th, 2013, a year and a half before Apple’s CBM petition on the ‘772 patent at PTAB.

The Code of Conduct for United States Judges sets the rules judges presiding over federal courtrooms must adhere. In rules regarding the fair, impartial and diligent performance of a judge’s duties, the code of conduct outlines the circumstances under which a federal judge must disqualify himself or herself from a case because of reasonable questions of impartiality. These circumstances include when a judge has a personal bias concerning a party or the proceeding; when the judge served as a lawyer in the matter in controversy; or a judge has a financial interest in either the subject matter or a party in the case.

The lead APJ serving on the panel of multiple CBM reviews petitioned by Apple, who also wrote the final written decision on at least one CBM review petitioned by Apple and invalidated claims of the ‘772 patent, was Administrative Patent Judge Matt Clements. According to Clements’ LinkedIn profile, he has served as an administrative patent judge at PTAB since March 2013; up until that time he served as a patent attorney at international law firm Ropes & Gray going as far back to September 2006. While at Ropes & Gray, Clements was part of a legal team that represented Apple in patent infringement cases. According to legal party data made available by Law360, Clements served as counsel for Apple up to December 2012 and served on a team with fellow Ropes & Gray lawyer James Batchelder as well as Eric Albritton of the Albritton Law Firm. Both Batchelder and Albritton were counsel of record representing Apple in the Smartflash infringement case where the ‘772 patent was asserted against Apple. Batchelder and Clements both worked at Ropes & Gray’s East Palo Alto offices, where Batchelder served as managing partner, so there’s a distinct likelihood that Clements reported directly to Batchelder in his work with Ropes & Gray. The November 2014 petition by Apple for CBM review of the ‘772 patent was also filed by counsel from Ropes & Gray including Ching-Lee Fukuda, another one of the lawyers representing Apple in the Smartflash action. These types of relationships would have led to the recusal of a federal judge on a matter, but obviously did not affect the participation and decision making of APJ Clements.

When reached for comment on what appears to be a very troubling, actual and direct conflict of interest involving APJ Clements, a USPTO spokesperson declined to comment, saying: “The USPTO does not comment on cases.”

In recent years, Smartflash has been the victim of a corporate drubbing at PTAB and has faced a total of 46 petitions for CBM review filed against the patents it has asserted in its infringement case against Apple, including 10 CBMs targeting the ‘772 patent alone. Most of the petitions have been filed by Apple, although Korean consumer tech conglomerate Samsung Electronics (KRX:005930) and Mountain View, CA-based Internet services giant Google, now held by Alphabet Inc. (NASDAQ:AAPL), have also filed petitions against patents asserted by Smartflash in other patent infringement actions against those companies.

Given the fact that a potential conflict of interest exists with at least one of the APJs sitting on the PTAB panel deciding the validity of Smartflash’s claims, counsel representing Smartflash submitted a Freedom of Information Act (FOIA) request to the U.S. Patent and Trademark Office (USPTO) for the disclosure of documents and information held by the federal government pertaining to two items: the applications for APJ positions at the PTAB of all current APJs including job applications, submitted resumes, submitted references and records of contacting references; and records pertaining to PTAB procedures for assigning APJs to panels for CBM or inter partes review (IPR) proceedings including standard operating procedures, prior versions of standard operating procedures and records indicating why changes were made to standard operating procedures.

On March 17th, 2017, the USPTO sent an interim response to the FOIA request, which included documents pertaining to standard operating procedures for assigning APJs to reviews; the agency was still reviewing documents related to applications for all current APJs. Of the 57 pages of documents identified by USPTO as responsive to Smartflash’s request for operating procedure documentation, a total of 52 pages have been withheld, two pages have been partially redacted and only three pages related to the distribution of cases by trial type and technology are released in full. The two partially redacted pages include e-mails from a sender whose identity remains confidential, including a July 2014 e-mail distributed to America Invents Act (AIA) trial judges which asked those judges to return data on cases in which they were responsible for drafting a decision to institute or a final written decision.

In Smartflash’s case against Apple in the Eastern District of Texas (E.D. Tex.), Smartflash prevailed on all of the Section 101 invalidity challenges put forward by Apple in the case. A report and recommendation issued by an E.D. Tex. magistrate judge on January 21st, 2015, in response to Apple and Samsung motions for summary judgment for invalid subject matter under Section 101 found that the asserted claims of the Smartflash patents satisfied step two of the Alice/Mayo framework and thus were directed to patent-eligible subject matter. The magistrate judge’s rejected Apple’s argument that the Smartflash patents were similar to the claims invalidated in 2014’s Ultramercial Inc. v. Hulu LLC, a case in which patents which covered methods for viewing copyrighted content at no cost in return for viewing an advertisement were invalidated. E.D. Tex. officially adopted the magistrate judge’s findings and denied the motions for summary judgment on February 13th, 2015. Apple tried to reopen the Section 101 validity challenge by filing a renewed motion for judgment as a matter of law (JMOL) under Federal Rule of Civil Procedure 50(b). In a court order filed July 8th, 2015, the court declined to revise its summary judgment, stating that “The § 101 issue has already received full and fair treatment.”

Smartflash also prevailed on patent validity challenges raised under 35 U.S.C. Section 102 (novelty) and 35 U.S.C. 103 (non-obviousness) in Apple’s CBM petitions on the ‘772 patent. As the petition for CBM review filed by Apple notes, PTAB had previously denied institution to Apple’s petitions challenging validity under §102 and §103 because the Board concluded that Apple had not shown that it was likely it would prevail in demonstrating that cited combinations of prior art rendered obvious limitations of the Smartflash claims. In switching to its challenges of the ‘772 patent under §101, Apple argued that claims directed to “a data access terminal” essentially comprised a “general purpose computer.” Of course, it doesn’t take a computer expert to understand that general purpose computers in October 1999, the priority date of the application for the ‘772 patent, were not capable of the kind of data access technology covered by the ‘772 patent. It’s also important to note here that the ‘772 claims are directed to a handheld multimedia terminal. If those claims are directed to a “general purpose computer,” then what does that say about the patents Apple continues to obtain which are directed at computer-implemented methods?

On February 21st, 2017, Smartflash filed an opening brief with the U.S. Court of Appeals for the Federal Circuit in which Smartflash asks the Federal Circuit to consider whether the PTAB erred in determining that its patents were subject to CBM reviews and whether claims directed to a specific network architecture and distribution of functionalities, which enable convenient purchases of digital content while preventing piracy and allowing only permitted uses of proprietary content, are patent-eligible under 35 U.S.C. Section 101. Smartflash’s brief argues that while payment is an aspect of the claims, the inventions themselves are not used in any financial product or service. Further, the claims that have been deemed ineligible by the PTAB as “abstract ideas” actually describe novel distributions of functions among devices in a computer network, teaching specific solutions to technological problems associated with the distribution of content over the Internet. Smartflash’s brief cites numerous cases as a basis for this argument, including Federal Circuit decisions in 2014’s DDR Holdings, LLC v. Hotels.com, L.P., et. al. and 2016’s BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, et. al. Further, Smartflash argues that the conclusions of the PTAB were legally erroneous by dismissing individual claim elements as conventional without considering the claims as an ordered combination in violation of the standard set by the Federal Circuit in 2016’s Enfish, LLC v. Microsoft Corporation, et. al.

The current incarnation of the U.S. patent system is a nightmare for smaller players fighting legitimate claims of infringement against large, entrenched corporate interests, and every branch of the federal government has been complicit in the destruction of Constitutionally-protected property rights. The PTAB was created by Congress through passage and enactment of the AIA in 2011. The executive branch, which is ultimately responsible for the activities of the USPTO and PTAB, has failed to create a code of conduct which requires recusal and therefore cannot provide any reasonable assurance that justice is actually being served in the face of conflicts of interest. The swell of invalidity challenges under §101 are the direct result of the Supreme Court’s controversial decisions in Alice Corp. v. CLS Bank International and Mayo Collaborative Services v. Prometheus Laboratories, Inc. Normally one dead canary is enough to realize that it’s time to get out of the mine. The floors of PTAB are littered with an entire flock’s worth of dead claims that have been declared invalid, and it appears that those claims might be invalidated more at the behest of Apple and other tech giants than any cohesive rule of law.

Readers who are piqued by this story should stay tuned; this is not the last report we’ll have on the legal issues raised by the proceedings in Smartflash v. Apple.

The Author

Steve Brachmann

Steve Brachmann is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He has become a regular contributor to IPWatchdog.com, writing about technology, innovation and is the primary author of the Companies We Follow series. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 42 Comments comments. Join the discussion.

  1. Brian Edmond April 28, 2017 11:43 am

    Well researched article. The conflict issue seems real and is very troubling.

  2. Scott Benning April 28, 2017 4:32 pm

    So the question it seems boils down to this: Will anyone within the Trump administration care about what is happening here? Are they glad it’s happening? Or perhaps are they unhappy but are too ignorant or lazy to do anything about it? I recall Peter Thiel was an ‘inside man’ with Trump on tech issues; perhaps a little lobbying of Peter might pay some benefits here. My last question is: do small inventors have a voice anywhere within the 3 branches of government? I am completely discouraged that America has lost her way in this too-important area that has in the past made America great.

  3. Scott McQuarrie April 28, 2017 6:35 pm

    Public confidence in the integrity of the judicial system is part of the necessary foundation of democracy. Without it, the judicial branch loses it legitimacy in the eyes of the public. That PTAB is a tribunal, and not part of our judicial branch, does not excuse it from this necessity. To discharge its quasi judicial function effectively requires the same public confidence in its competence and impartiality.

    Unfortunately, and for legitimate reason, there is no confidence in either. Many parties are complicit, most of all the large corporations (some mentioned in this article) who pushed for AIA knowing they would be able to “efficiently infringe” successfully most of the time and by doing so increase their bottom line.

    What has been happening at PTAB is appalling, disgraceful and certainly has the appearance of impropriety, if not more. It is harming not only many patent holders, but also, and more importantly, the country as a whole.

    It is past time for this nightmare to end. Until it does, how much harm (and deprivation of property without due process of law) must occur before our government takes the action necessary to reform USPTO?

  4. Paul Morinville April 28, 2017 7:35 pm

    This is what happens in third world property right systems like the USPTO has become. It’s happening in Venezuela and dozens of African nations. When one person has full control of the creation and destruction of a property right, corruption seeps in. It is not possible to stop it. The only way to fix the PTAB is to eliminate it.

  5. Troy April 28, 2017 8:28 pm

    More melodramatic nonsense from the TMZ of patent law. And the usual cackling hens just eat it up. LOL

  6. Bp April 28, 2017 11:58 pm

    8. A data access terminal for controlling access to one or more
    content data items stored on a data carrier, the data access
    terminal comprising:
    a user interface;
    a data carrier interface;
    a program store storing code implementable by a processor; and
    a processor coupled to the user interface, to the data carrier
    interface and to the program store for implementing the stored code the code comprising:
    code to request identifier data identifying one or more
    content data items stored on the data carrier;
    code to receive said identifier data;
    code to present to a user via said user interface said
    identified one or more content data items available from the data
    carrier;
    code to receive a user selection selecting at least one of
    said one or more of said stored content data items;
    code responsive to said user selection of said selected
    content data item to transmit payment data relating to payment
    for said selected content item for validation by a payment
    validation system;
    code to receive payment validation data defining if said
    payment validation system has validated payment for said
    content data item; and
    code to control access to said selected content data item
    responsive to the payment validation data.

    Why didn’t the author of this article actually quote the claims involved in this case?

  7. Paul Antonio April 29, 2017 6:20 am

    What About USPTO Director who served Google for 10 years?

  8. anonymous April 29, 2017 9:23 am

    @4 because this website does not want to have an opportunity to attack the PTAB wasted by something as irrelevant as facts. They prefer a guilt by association story about a judge who has done some work for real world companies before he became he a judge.

    If you want to recruit judges who know what they are talking about,you cannot (and should not) avoid that they have some history with part of the companies he will see in court. It is only a conflict of interest if he is still payed by Apple and it is only a problem if his decisions are not in line with the facts and the law.

    This claim is obviously not describing an invention of any sorts. A user selects data items and pays for it. The software validates the payment and allows the user to access the content data item. That’s all. Nothing more. This has been done on computers at least since Musk started Paypal in 1998, and in the real world since at least 10,000 BC.

  9. Paul Morinville April 29, 2017 9:36 am

    Bp @4. The article is about a conflict of interest, which looks pretty obvious to me. The claims have nothing to do with the decision if the kangaroo court is corrupt. The integrity of the court comes first.

  10. Anon April 29, 2017 10:15 am

    Bp,

    I echo Mr. Morinville’s reply in that you seek to “kick up dust” and switch the focus to some type of “defend the claim” game.

    To then provide a short and direct answer to your question of “why,”: because the answer you seek (inclusion of claims) is not pertinent to the legal issue being discussed.

  11. Gene Quinn April 29, 2017 10:56 am

    Troy @5-

    Thanks for the compliment! Obviously, this is not nonsense. Only someone truly ignorant and unfamiliar with the law on even the most rudimentary level would think (let alone say) that this clear breach of ethics is nonsense.

    -Gene

  12. Gene Quinn April 29, 2017 10:59 am

    anonymous @8-

    What a truly ignorant comment. APJ Clements acted in an unethical way, full stop! You cannot adjudicate a matter involving a former client. There are thousands of cases filed at the PTAB every year. Clements didn’t represent every stakeholder. It would be EASY for him to recuse himself from matters dealing with former clients. That is what federal judges do every day. It is what attorneys do every day. An attorney who engaged in this type of ethical breach would be sanctioned, period.

    So you can pretend this is irrelevant, or there are no facts to support what is reported. You are, however, only fooling yourself. Thank god you used a fake name so you didn’t embarrass yourself!

    -Gene

  13. anonymous April 29, 2017 11:33 am

    @12 As an attorney, you cannot work for Apple and Samsung simultaneously. But you can stop working for Apple and start working for Samsung. Not at day one, and not on the same cases you worked on before, but you can. And it is what most attorneys do. Otherwise they may run out of clients pretty fast. When you switch firms (or when your client does), you have to be able to continue working in the same technical area.

    Judges are supposed to rule based on facts. When there are serious signals that a judge makes decisions that do not align with the facts, alarm bells should ring and his professional history may indeed become very relevant. But if you want to ring that alarm bell, you should at least show where and how this judge made a wrong decision. In this case, the patent was obviously invalid and the judge clearly made the right decision.

    Off-topic: the hostility from this website against some companies, public officials, government organizations, judges, the PTAB and anyone else who dares to have a slightly different opinion is becooming quite annoying and does not do a good service to the IP profession in general.

    When people who express a different opinion on you website don’t dare to use their own name, that could indeed be an attempt to hide their stupidity, but it may also be because the aggressiveness and hostility they know they can expect.

  14. Gene Quinn April 29, 2017 12:33 pm

    anonymous @13-

    I am happy to have an in depth ethical discussion with you if that is what you want to do. It will not, however, take place with you remaining anonymous. I have no interest in debating with an ethically challenged, anonymous commenter.

    I’ll just point out the obvious stupidity of your comment. You say: “But if you want to ring that alarm bell, you should at least show where and how this judge made a wrong decision.” That isn’t how ethics work. You do not absolve yourself of an actual conflict by pointing out that substantively no legal wrong occurred. A lawyer should know this.

    Judges cannot be allowed to decide cases involving former clients, period. It is a very simple concept. One that everyone should understand. And one that you absolutely would understand if an APJ on the panel had previously represented Smartflash. You and so many others like you would be screaming at the top of your lungs that there was bias involved and unethical behavior.

    -Gene

  15. Gene Quinn April 29, 2017 12:39 pm

    anonymous @12-

    One more thing… if we are so openly hostile and you can’t stomach what we publish and my comments in particular, why do you keep reading? The easy solution is to stop visiting and go elsewhere. As far as I can tell we are one of the few, perhaps only, publications that challenges the powers that be. You should very easily be able to find all kinds of articles and commentary from those who think patents are evil, the PTAB is brilliant, the Supreme Court is doing a fantastic job on patents, examiners who never issue patents should receive medals, and the Federal Circuit should simply deny all patent owner appeals without explaining why.

    Seriously, I’m getting tired of trolls like you coming here and lecturing me. If you don’t like what we have to say then stop visiting.

    Of course, I note that you and others like you can never point to anything we get factually incorrect. Funny how we are hostile yet always factually accurate.

    -Gene

  16. anonymous April 29, 2017 1:06 pm

    It’s not all black and white, Gene. There are positions possible somewhere in between all out war and thinking that “the PTAB is brilliant, the Supreme Court is doing a fantastic job on patents, examiners who never issue patents should receive medals, and the Federal Circuit should simply deny all patent owner appeals without explaining why”

    If you were white and that guy at Techrights were black, I’d consider myself off-white. But no matter what my opinions are, I like to also read and discuss others’. Do you only read opinions and websites that you like? That would certainly explain the atmosphere here.

    Apparently, dissenting opinion are considered trolling here. No problem, I’ll stop commenting here (and I just started). This was the last one.

    Have fun! See you in court!

  17. Bp April 29, 2017 2:01 pm

    If the claim is not patentable, then apple did not get a preferential decision. the claims are very relevant to the article. There have been numerous software related 101 cases from the fed. cir. during all this. To say that the claims don’t matter when the article asserts that apple is getting “preferential treatment” is….not reasonable.

  18. Shawn Ambwani April 29, 2017 2:03 pm

    Actually, Gene, there are a lot of things that you say that are factually incorrect. I am happy to point them out and have in the past, but they are so numerous it is difficult to sometimes keep up. Also, I am always happy to say who I am and my affiliation, Unified Patents. Have a great weekend.

  19. Paul Morinville April 29, 2017 2:21 pm

    Bp. You can’t take the result to justify the action that brought the result. Perhaps the same result may have been reached had the judge recused himself, but that cannot be proven. What can be proven is the judge should have recused himself because of a conflict. Because he didn’t and he was obviously conflicted, his integrity is in question and therefore the integrity of the result is in question.

    I’m not a lawyer, and it appears you are not either, but even I can tell that your logic is not sound.

  20. Paul Morinville April 29, 2017 2:29 pm

    Shawn Ambwani, you have been silent until recently. Now you stalk this blog and my LinkedIn posts. You built your company on an obscenely unfair law that has wrecked the capitalization of startups here and sent them to China. You worry that your house of cards is about to collapse and now you arrogantly attack those who bring light to the corrupted system. Thank you for posting and have a nice day.

  21. Scott McQuarrie April 29, 2017 3:45 pm

    Appearances matter. A lot. Why? Because they directly impact the public’s confidence in the integrity of the judicial process. Such confidence is a requisite of the “consent of the governed.” It must never be taken for granted (study history).

    Regardless of whether corruption (usually concealed and difficult to prove) can be proven, what happened here does not pass the “smell test.” APJs, wielding the power that they have, should be required to avoid putting, and when not required, should instinctively know better than to put, themselves in this situation.

    Apparently, there is no rule at USPTO that would require an APJ to recuse himself from a particular case where he had previously (and recently) represented one of the parties (not to mention representation of that party in the same field, where similar legal issues and his knowledge, and former advocacy, of his former client’s strategic position regarding those issues could be relevant).

    Apparently, there is no rule at USPTO that would require that an APJ who recently practiced with a particular law firm recuse himself where that firm (not to mention his former colleagues and supervisor there) represent one of the parties in the case before him.

    Apparently, the culture at USPTO is not such that an APJ, in the absence of such a rule, would know, or be expected, to recuse himself under either of those circumstances.

    All of these represent, among other things, an obvious failure of USPTO leadership. An organization’s culture is the responsibility of its leaders. Rules are one important, but not the only, tool. Active communication, and enforcement, of cultural expectations is another.

    It is shocking that nobody knew any better. Or, did they? This is, at best, a dereliction that should trouble every ethical lawyer, regardless of what side of the bar they practice for. At worst, we are left to wonder. The impact on public confidence on USPTO integrity is unarguable.

    In the jurisdictions (state and federal) in which I have practiced for 30+ years, none of these would have happened (and I saw sua sponte recusals with regularity). It is stunning that in 2017 this could be happening in any agency of the federal government.

    Those having oversight responsibility for USPTO surely understand the importance of the public’s confidence in government, particularly where that agency wields so much power over people’s livelihood. Ignoring festering problems such as this, which erode public confidence in the integrity of the judicial process, and thereby infect the lifeblood of democracy, will only increase the temperature in the pot.

    Action is way overdue.

  22. David April 29, 2017 3:58 pm

    Steve B,

    If you are interesting in researching this issue further, I recommend the following:

    Compare the rules governing Article III district court recusals with the rules governing PTAB APJ recusals.

    Witout a frame of reference, the discussion devolves into finger pointing.

  23. Anon April 29, 2017 4:23 pm

    Compare the rules governing Article III district court recusals with the rules governing PTAB APJ recusals.

    Do you have a link?

  24. David April 29, 2017 4:53 pm

    No anon, I don’t. But perhaps we will after Steve writes the article!

  25. Scott McQuarrie April 29, 2017 7:04 pm

    Here is a start.

    Code of Conduct for United States Judges. http://www.uscourts.gov/judges-judgeships/code-conduct-united-states-judges

    This applies to Article III judges. Don’t know whether something elsewhere (such as a USPTO regulation) makes it, or something similar, applicable to USPTO APJs.

    ” Canon 2: A Judge Should Avoid Impropriety and the Appearance of Impropriety in all Activities

    (A) Respect for Law. A judge should respect and comply with the law and should act at all times in a manner that promotes public confidence in the integrity and impartiality of the judiciary.

    ….

    COMMENTARY

    Canon 2A. An appearance of impropriety occurs when reasonable minds, with knowledge of all the relevant circumstances disclosed by a reasonable inquiry, would conclude that the judge’s honesty, integrity, impartiality, temperament, or fitness to serve as a judge is impaired. Public confidence in the judiciary is eroded by irresponsible or improper conduct by judges. A judge must avoid all impropriety and appearance of impropriety. This prohibition applies to both professional and personal conduct. A judge must expect to be the subject of constant public scrutiny and accept freely and willingly restrictions that might be viewed as burdensome by the ordinary citizen. Because it is not practicable to list all prohibited acts, the prohibition is necessarily cast in general terms that extend to conduct by judges that is harmful although not specifically mentioned in the Code. Actual improprieties under this standard include violations of law, court rules, or other specific provisions of this Code.

    Canon 3: A Judge Should Perform the Duties of the Office Fairly, Impartially and Diligently

    The duties of judicial office take precedence over all other activities. In performing the duties prescribed by law, the judge should adhere to the following standards:

    (C) Disqualification.

    (1) A judge shall disqualify himself or herself in a proceeding in which the judge’s impartiality might reasonably be questioned, including but not limited to instances in which:
    [(a)-(e) list circumstances that would, by example, fall within this category]”

    Now, assume you are litigating a case, and the judge to which the case is assigned worked in recent years at the firm of your opposing counsel, with your actual opposing counsel, and was supervised there by one of your opposing counsel, and, while at that firm, represented your adversary party, and did so in the same, substantive (and evolving) legal field as that which is involved in your case.

    If a “reasonable mind” (not necessarily all minds) could conclude that the judge’s impartiality, under those circumstances, would be impaired, “an appearance of impropriety” exists. “Public confidence in the judiciary is eroded by irresponsible or improper conduct by judges. A judge must avoid all impropriety and appearance of impropriety.”

    What should happen is pretty straight-forward.

    The judge should either recuse himself or, if he thinks his impartiality would not be impaired, disclose to all counsel all relevant facts, allow them to confer outside his hearing as to whether all parties waive the potential conflict, and then proceed only if all agree in writing that he may continue (see Canon 3D).

    If these, or similar, rules do not apply to APJs, why not?

  26. Ternary April 29, 2017 8:13 pm

    I have noticed (on this blog and on the “other” blog) that comments and opinions regarding disputable court and PTAB decisions and procedures on validity of patents are sometimes countered with opinions on the quality of an invention.

    A response may proclaim that the invention is bad, known, well known, very well known, irrelevant, stupid. The implication seems to be that because of the proclaimed lack of quality of an invention, any violation of rules and procedures is fine, because the invention is undeserving of a patent.

    As a patent owner I would expect that a judge who worked for an opponent in a case would recuse her/himself automatically to prevent even the slightest whiff of corruption. Why is this even a point of discussion?

    “Normally one dead canary is enough to realize that it’s time to get out of the mine. The floors of PTAB are littered with an entire flock’s worth of dead claims that have been declared invalid….” The rules are sufficiently stacked against patent owners and independent inventors. We really should not add worries about potentially prejudiced judges to that already toxic mix. Great investigative article Steve. Keep them coming.

  27. Anon April 30, 2017 10:42 am

    The implication seems to be that because of the proclaimed lack of quality of an invention, any violation of rules and procedures is fine, because the invention is undeserving of a patent.

    This has been identified as an “Ends justify the Means” approach.

    Those employing this approach have been routinely put on notice as to the very view that you are expressing here, and those employing this approach have been asked to NOT use such an approach.

    Nonetheless, that admonition is actively ignored and the fallacious method continues unabated. One can only summarize that those employing such an approach and continuing to do so after notice provided are NOT interested in anything except spreading propaganda.

    To anonymous of posts 8, 13, and 16:

    I for one have championed the use of anonymous and pseudonymous posting – even by those whose positions I find unethical and/or reprehensible.

    But anonymous and pseudonymous posting is not to be confused with the point that Gene made regarding false data in order to post. To that extent, your reply misses the mark, as there is NO “retribution fear” that accompanies such provisions of false data.

    This site has been the target of purposefully disruptive people, clearly armed with only a script and lacking any actual knowledge of the topics and the system. The use of false data simply is not synonymous with anonymity or pseudonymity.

    To pretend otherwise is to merely try to enable attacks on what is being discussed here in a (more) civil and (properly) controlled manner. To say that this sight only wants a certain viewpoint is beyond preposterous given the active courting and posting of views antithetical from any “desired narrative.”

    One should not confuse the tight leash given to spurious or downright incorrect views with any notion that a “echo chamber” is a desired result.

    The plain fact of the matter is that not all views are indeed equal. Anyone can have an opinion, but if you insist on having an uninformed opinion and you want to post material that is simply not in accord with facts or law, you should not expect to be able to do so when those around you have attempted to inform you.

    Gene dutifully provides notice to those truly new to posting here. But by attempting to bypass the proper safeguards and falsifying information that is not posted anyway, people – and I know several in particular – seek to avoid the requirement of NOT spreading mere uninformed propaganda.

    That is not a bug, but a feature of this blog. I too would be indignant as to those who would lecture on “ethics” and simply get the facts wrong on the very controls in place that govern and help to ensure ethics here.

    I truly do not mind strong emotions or even strong writings. I DO mind those who employ such and who are also unwilling to employ critical thinking on counter points presented. I DO mind those who employ such and who are unwilling to understand the actual facts and law involved in discussion points. I DO mind those who only want to get up on a soapbox, give their opinion, and then do not want to take in any replies to that opinion. I do mind – and mind very much – the difference between monologues and dialogues.

    I have no use whatsoever of monologues from people who cannot be bothered with understanding the topic upon which they want to monologue about. I am perfectly willing to hear out people in the first instance and gather new viewpoints. But if the person espousing that viewpoint is not going to bother engaging – and I do mean engaging in an inte11ectually honest manner – then I have very little use for that person, and that person deserves a very short leash.

    As I have noted, this blog has seen quite the amount of evidence of being targeted by “hit-and-run” posters who attempt to abuse the ability to post anonymously and pseudonymously. I will continue to defend the ability to post thusly, no matter the content of the postings, but make no mistake as to why the attempts to post falsely are distinguished and what those differences really mean.

    If you truly want to engage, then by all means stick around. if you only wanted to monologue, then your absence will be cherished.

  28. Anon April 30, 2017 10:48 am

    Bp @ 17,

    Your reply is what is not reasonable. Read again my counter at 10 and realize that you are imbibing in a fallacy of “the Ends justify the Means.”

  29. Gene Quinn April 30, 2017 11:48 am

    anonymous-

    What is consider trolling is coming here and making really ridiculous arguments and then saying that you don’t know why you come here (but you still do) because all the information is hostile, wrong, bad, etc. If everything here is hostile, wrong, bad, etc. why do you or others come? That is why I characterized what you said as trolling.

    As far as the substance of what you said, you know as well as I do (if you really are an attorney) that is it wholly inappropriate for a judge on any level to participate in a case where a former client is a litigant, period. That is an egregious lapse of judgment.

    I’ll also note that your comment lacks substance, asks me about what others think of me and doesn’t take issue with the fact that what we report here and in other articles is factually accurate. Funny.

    I’d love to see you in court. Can’t imagine why you’d sue me, but if you do let’s rock and roll. At least then you wouldn’t be able to remain anonymous in the weeds.

    -Gene

  30. Gene Quinn April 30, 2017 11:50 am

    Shawn-

    You say: ” I am happy to point them out and have in the past…”

    Interesting… last time you did that I went point by point and provided citation after citation to prove that you were wrong. Hardly shocking coming from an infringer shill like yourself who characterizes all patent owners as NPEs and then characterizes all NPEs as patent trolls. You are wrong about pretty much everything you say, so I get you need to deflect and project.

    -Gene

  31. Anon April 30, 2017 1:17 pm

    Gene,

    A post with multiple citations (but no hyperlinks) is being bounced with a message of “page has been moved.”

  32. Gene Quinn April 30, 2017 3:32 pm

    Anon-

    I’m not sure why that is happening. I will alert our web team. Sorry for any inconvenience.

    -Gene

  33. Anon April 30, 2017 4:54 pm

    Gene,

    I am thinking that it may be a copyright flag issue…

    Here is an attempt with part of it:

    Scott @ 25,

    Thanks for the start.

    May I add the following as stated by the editors of the below noted source ( a bit dated perhaps, as my shelf source is dated 2013):

    Federal Provisions on Conflicts, Confidentiality, and Crimes

    Editors’ Introduction. This chapter reprints a number of federal statutes and regulations that govern lawyers. Many of the provisions also govern nonlawyers, including lawyers’ clients. These federal statutes and regulations amplify, reinforce, and sometimes supersede the obligations imposed by state rules of professional conduct. For example,

  34. Anon April 30, 2017 5:00 pm

    and part one of the second half..

    …lawyers who work for the federal government (or who have previously worked for the federal government) are governed not only by state rules of professional conduct on conflicts and confidentiality equivalent to ABA Model Rules 1.6, 1.9 and 1.11, but also by stringent federal statutes such as 18 [_] 207. Lawyers who appear and practice before the federal [Omitted] in the representation of securities issuers are governed by rules found at 17 [_] Part 205.

    [Omitted].

  35. Anon April 30, 2017 5:01 pm

    and part one of the second half.. (might be entered twice)

    …lawyers who work for the federal government (or who have previously worked for the federal government) are governed not only by state rules of professional conduct on conflicts and confidentiality equivalent to ABA Model Rules 1.6, 1.9 and 1.11, but also by stringent federal statutes such as 18 [_] 207. Lawyers who appear and practice before the federal [Omitted] in the representation of securities issuers are governed by rules found at 17 [_] Part 205.

    [Omitted].

  36. Anon April 30, 2017 6:51 pm

    The last part I cannot get through (list of usc and cfr sections.

  37. Gene Quinn May 2, 2017 7:47 pm

    Responding to my post at 11 above…

    If you can believe it, deciding cases of former defense clients is not a breach of any ethical duty apparently. The PTO only requires employees to recuse themselves within the first year after they were employed. So deciding matters for a former defense client petitioning to kill patents 366 days after you became a judge is perfectly ethical.

    See: https://www.uspto.gov/sites/default/files/documents/sge_summary_of_ethics_rules_2015.pdf

    and

    http://www.patentspostgrant.com/ethical-guidelines-for-ptab-judges

    Not sure why the Patent Office refused comment, and why they refused to answer whether there is a Code of Conduct for PTAB judges.

    Clearly, this 1 year period is laughably ridiculous and absolutely must be changed. Patent owners fighting for their patents don’t deserve to have judges who formerly defended the petitioner in patent infringement matters.

    -Gene

  38. Scott McQuarrie May 3, 2017 2:09 am

    Responding to 37. That APJs are not required to recuse themselves unless they represented a former client within the preceding 1 year does not much change the criticisms voiced in 21 and 25, above.

    Notably, the rules offered by the author of the cited article appear to apply to all USPTO employees. If there are any further rules specifically for APJs, they were not cited. If there are no further rules for APJs, there should be.

    Any APJ presiding over a contested case should be required to avoid the appearance of impropriety as set forth in the Code of Judicial Conduct. Public confidence in the integrity of the judicial process requires, among other things, avoidance of any circumstance that has even the appearance of impropriety. USPTO rules applicable to APJs apparently contain no such general requirement. That is unarguably a failure of USPTO leadership.

    Moreover, any lawyer in the position the APJ in the cited case was in should know, without regard to USPTO rules, that acting as a judge in the case would have the appearance of impropriety and thus erode the public’s confidence in the integrity of the process. In that regard, was there any rule that prevented the APJ from recusing himself? Could he have done so? If he could have, why didn’t he? If he could not have, why?

    The argument that compliance with USPTO rules ends the inquiry is astounding. Any attorney who, in a contested case where the judge assigned to the case had worked as an attorney for the opposing party just 18 months ago (in the same substantive and evolving legal field, giving insight into that party’s strategies), and did so while at the opposing counsel’s law firm, with the opposing counsel, and supervised there by one of the opposing counsel, would be incredibly naive to accept such as proper. Instead, these circumstances are a good example of the “appearance of impropriety” that should (and anywhere that I practiced in my career, would) be avoided, whether or not required by a specific rule.

    People who live and work in DC should go out into the hinterlands occasionally. They would learn why there is a clamor to “drain the swamp.” We are drifting in a very unhealthy direction, where educated people have increasingly come to accept, sometimes at the expense of adhering strictly to the rule of law, the premise that the ends justify the means. That slippery slope can lead to a very unhappy ending for everyone, particularly those who cherish our hard won freedoms, which history should tell us ought not be taken for granted.

  39. Anon May 3, 2017 8:22 am

    The item that I mention above is from a book by Gillers, Simon, and Perlman; published by Wolters Kluwer.

    It touches upon the fact that those in the government may have additional ethical restraints – additional to any that may already exist for those in law (lawyers and non-lawyers alike).

  40. CT May 3, 2017 1:55 pm

    The Federal Circuit reversed the E.D. Tex. decision cited here on March 1, 2017 (2016-1059, 2017 U.S. App. LEXIS 3833), and held that the ‘772 patent was invalid under Section 101. Regardless of APJ’s ethical duties (which the readers of this publication proved were not violated), the PTAB decision had no bearing on the patent owner’s rights. Not to mention, given its alignment with the Federal Circuit, the PTAB got it right where the district court failed. Whichever commentator above surmised that this article was “well-researched” was sorely mistaken.

  41. LLdc May 8, 2017 12:03 pm

    Administrative Patent Judge Matt Clements should be disbarred and fired. Matt Clements most likely has undisclosed financial interests in Apple. Time to get off the gravy train. Fire Administrative Patent Judge Matt Clements.

  42. Mark Syman May 10, 2017 10:30 am

    Can anyone cite any decisions on how long after former representation do conflict of interest fade away? That would be helpful to know. My guess is that it takes at least 10 years for conflicts of interest for former clients fade away. In any case, APJ Matt Clements would have done better better to disclose his former representation of Apple. “In the interests of full disclosure” is the best policy.

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