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

By Gene Quinn
May 3, 2017

Ethical barOver 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?

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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 21 Comments comments. Join the discussion.

  1. David May 3, 2017 5:42 pm

    Because PTAB APJs lack lifetime tenure, the subconscious bias is that they might return to representing their clients someday. This is a principal distinction with Article III judges.

    Rules governing conflicts of interests should be clearly set out and publicly known. Also, rules governing standard PTO employees are probably insufficient where dealing with former patent litigators now sitting in judgment of issued patents.

  2. Anon May 3, 2017 6:00 pm

    David,

    I am not sure as to which direction the distinction you offer should tilt the ethics question (at least, which direction YOU feel the direction should tilt based on that factor).

    Personally, I would view that difference as necessitating an even more stringent level of ethical scrutiny, since the possibility of post-judicial employ raises the possibility of explicit and implicit favor-granting.

  3. David May 3, 2017 6:09 pm

    Anon – I agree. The rules should, as a bare minimum, match those in the Article III courts. Or, more realistically, given the lack of tenure, exceed the Article III reqs.

    But, as you and I both know, the PTO will do whatever it wants. Queen Michelle K. Lee calls the shots, and her army of Benedict Arnold PTAB lawyer$ will do her bidding

  4. Night Writer May 3, 2017 8:47 pm

    This is crazy. The patent judge could have just not taken the case. Seems like patent owners are treated like felons.

  5. Paul Antonio May 4, 2017 6:02 am

    What about code of Conduct applicable on USPTO Director?

  6. John May 4, 2017 10:29 am

    I wonder if there is at least a mechanism to require the USPTO to address possible APJ bias on the record. How about 5 USC 556(b)? “The functions of presiding employees and of employees participating in decisions in accordance with section 557 of this title shall be conducted in an impartial manner. A presiding or participating employee may at any time disqualify himself. On the filing in good faith of a timely and sufficient affidavit of personal bias or other disqualification of a presiding or participating employee, the agency shall determine the matter as a part of the record and decision in the case.”

  7. EG May 4, 2017 10:32 am

    “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.”

    Hey Gene,

    There’s nothing petty (and especially wrong) about identifying public officials (this APJ is one those) for potential misfeasance and even potential malfeasance in their role as a public official. That this APJ can’t understand how such a conflict should cause recusal and how failure to do so casts severe doubts on the impartiality of the PTAB is just mind-boggling. Such failure is why I, like many other Americans, have a dim view of government generally and especially the current USPTO operation specifically

  8. Night Writer May 4, 2017 1:12 pm

    @7 EG

    And, this really is Lee’s fault. She is in charge of the PTAB and I’ll bet this issue went to her and she decided it was fine.

  9. JJ May 4, 2017 1:37 pm

    Are we not just jumping to conclusions that a conflict exists? I’m pretty sure the APJ had to file a financial disclosure, and his financial interests if any fall under the acceptable limits when it comes to Apple. So he used to defend Apple at his previous job? Why does that automatically show bias? Most people have no allegiance to any company after the paychecks stop flowing, and I’m sure there are many more who are biased against their former employers than those that are biased in favor of them.

    You even stated it in your article “None of these facts suggest that there is anything legally erroneous about the decisions made by Clements in these Apple petitions”, so it seems at this moment you are just trying to rake this mans name through the mud without any evidence of bias or wrong doing.

  10. Scott McQuarrie May 4, 2017 2:10 pm

    “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.”

    No, Gene, they can’t be deciding cases under such circumstances and be doing so “ethically.” Your instinct (that it sounds ridiculous) should have led you to a different characterization.

    Your definition of “ethical” assumes (incorrectly) that the applicable rules are adequate to ensure both the absolute morality of the process and the public’s confidence in that process. As you point out, they are not.

    What is “ethical” is defined not just by whatever applicable rules happen to exist and what those rules may require or permit. Here, as you point out, the only rule (apparently) permitted conduct that we both agree should have been prohibited. That regulatory failure (of USPTO leadership) does not at all make the ensuing conduct “ethical.” All it means is that the conduct did not violate USPTO rules.

    As you point out, an APJ wields enormous power over the livelihood of inventors, just as Article III judges do. Ethical behavior requires that APJs avoid the appearance of impropriety because the public’s confidence in government is essential to the success of democracy.

    This point is often overlooked by people in Washington because they take the public’s confidence in government for granted. Outside of Washington, whatever confidence there is in government is minimal. That is a danger to democracy that we citizens want Washington to understand and act upon. It’s not hard.

    The rationale for the Code of Conduct governing Article III judges applies with equal, if not greater, force to APJs (who, as has been pointed out, unlike Article III judges, could easily return to the private sector for their “reward.”)

    It provides, in relevant part:
    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.

    Apart from that explicit, and broad, standard, what this APJ did would not pass the “smell” test out here in the hinterlands. While the olfactory sensibilities of those who live in the swamp necessarily have become dulled, that should not influence how the alligators are characterized. This conflict stinks, it erodes public confidence in the integrity of USPTO, and it should be prohibited. And yes, it’s unethical.

  11. Night Writer May 4, 2017 2:45 pm

    @9 Remember that Lee is the one that ultimately approved this.

  12. Gene Quinn May 4, 2017 4:19 pm

    JJ-

    No one is saying that because Clements previously represented Apple it automatically shows bias. It would absolutely be a conflict for an attorney to take a client adverse to the interest of a former client though.

    As far as you saying I’m trying to drag him through the mud, that comment demonstrates you are unfamiliar with lawyer and judicial ethics. If you were you would understand the issues and not think this is a small matter. This is no small matter. The PTAB and the USPTO will at some point have a lot of explaining to do. This is a major black-eye, if not far more.

    -Gene

  13. Jeff Lindsay May 5, 2017 4:09 am

    What will it take to require an accounting of this egregious ethical failure? I would love to see a Congressional hearing grilling the USPTO about their ethics. Ideally the hearing would also explore the ethics of taking money from inventors as they fight for a patent and then giving away 80% of those rights to their opponents for money (albeit subsidized by diverted funds from the inventors) to declare that the USPTO made a mistake and never should have granted those patents in the first place. Might also be good to grill about the influence of Google and Silicon Valley on the systems and attitudes that are destroying innovation in the US.

  14. Lldc May 8, 2017 12:08 pm

    And, this really is Lee’s fault. She is in charge of the PTAB and I’ll bet this issue went to her and she decided it was fine.

    I 2nd that.

    Michelle Lee and PTAB read the ABA Model Rules sometime.

  15. CT May 8, 2017 12:39 pm

    37 CFR 11.109, cited as support that Clements could not have represented a patent owner adverse to Apple, only bars subsequent adverse representation regarding the “same or substantially related matter.” The author has failed to provide any evidence that Clements’s representation of Apple was the same or substantially related to any of his decisions as a PTAB judge. Given the previous articles on this topic, I am not surprised that author failed to provide cogent analysis of even the question asked in the headline.

  16. Gene Quinn May 8, 2017 2:16 pm

    CT-

    The author did provide cogent analysis and attorneys understand why this is an enormous problem for the Patent Office.

    When one represents Apple as defense counsel in a patent infringement action they learn an awful lot about Apple’s business and philosophy, all of which is confidential. Apple would NEVER allow one of their former litigation counsel to switch sides and represent a patent owner against them in a patent dispute. It is not unrealistic at all to expect that a Judge should be required to be able to represent both parties in a dispute. Clements clearly could not.

    As far as the “same or substantially related matter,” patent defense is substantially related. That you don’t understand that doesn’t mean the author is wrong. It just means you don’t understand.

  17. CT May 8, 2017 3:00 pm

    Gene –

    You said “patent defense is substantially related.” What is “patent defense” related to?

    The regulation you cited does not support the proposition that representing a party in any patent litigation case would somehow bar an attorney from all subsequent adverse patent-related representation, regardless of whether the issues are related. If Clements’s representation was about batteries and a subsequent case was about WiFi, are the cases substantially related under 37 CFR 11.109? Do you have any authority to support this? Should we just take your word for it?

    There may be a substantial relationship between Clements’s previous representation and the Smartflash case, but you failed to even make that argument. In other words, I didn’t accuse you of being wrong. I accused you of being sloppy. With pointed arguments like “patent defense is substantially related,” you seem to be doing a great job refuting that accusation.

  18. Gene Quinn May 8, 2017 3:39 pm

    CT-

    The way you read 11.109 is exceptionally narrow and too cute by half for an ethics code.

    Are you an attorney? You seem completely unfamiliar with the concept of owing a duty to a former client, keeping confidences of former clients, and the fact that a former client decides whether you can switch teams and represent the other side.

    So was I sloppy? No. The fact that you don’t understand and are unfamiliar with the ethical regulation of the practice of law is the issue.

    So why don’t you let us know whether you are an attorney or not, and if you are an attorney what jurisdiction you are admitted to practice. Of course, if you are not an attorney (which I suspect) the fact that you don’t understand how attorney ethics rules are interpreted would hardly be shocking.

  19. Gene Quinn May 8, 2017 3:46 pm

    CT-

    One more thought. You are focusing on my comparison of APJ Clements to a practitioner. What you are not challenging is that there is a clear and undeniable appearance of impropriety associated with deciding a case where you previously represented the petitioner. I realize you haven’t taken issue with the clear and undeniable appearance of impropriety because, of course, you cannot. There is a clear and undeniable appearance of impropriety. Judges that are governed by a judicial code are mandated to recuse or disqualify themselves when there is even an appearance of impropriety, regardless of whether there is no actual impropriety.

    -Gene

  20. CT May 8, 2017 4:45 pm

    Gene –

    The comparison of an APJ to a practitioner is literally the title of your article. Interesting that you now imply the topic is not worthy of commentary.

    Also, you are incorrect that in successive representation “a former client decides whether you can switch teams and represent the other side.” Disqualification is not automatic and (at least in California) only occurs where the former client shows there is a substantial relationship between the cases. See, e.g., Flatt v. Superior Court, 9 Cal. 4th 275, 283 (Cal. 1994) (“[W]here a former client seeks to have a previous attorney disqualified from serving as counsel to a successive client in litigation adverse to the interests of the first client, the governing test requires that the client demonstrate a ‘substantial relationship’ between the subjects of the antecedent and current representations.”). In California, courts apply a factor test to determine whether the successive representations are substantially related for the purpose of disqualification: “(1) factual similarities between the two representations, (2) similarities in legal issues, and (3) the nature and extent of the attorney’s involvement with the case and whether he was in a position to learn of the client’s policy or strategy.” See Adams v. Aerojet-General Corp., 86 Cal. App. 4th 1324, 1332 (Cal. App. 3d Dist. 2001).

    If you disagree with this, please provide actual support for your position. Conclusory generalizations are not what most attorneys would consider “cogent analysis.” Just to be clear, I’m now accusing you of being sloppy and wrong.

  21. Gene Quinn May 9, 2017 12:49 pm

    CT @20

    You say: “The comparison of an APJ to a practitioner is literally the title of your article. Interesting that you now imply the topic is not worthy of commentary.”

    Nice try, but obviously I did not say or suggest anything of the sort. I guess if you can’t win a debate you must have been taught to misrepresent. I understand it is easier to prevail when you divert like that, but you can comment on whatever you want.

    As for what you say about about disqualification, you are wrong. The former client does NOT have to prove anything. The former client has to giver permission! How else would a former client even know in many cases that a practitioner is going to represent one against their interests? That is why Rules of Conduct for attorneys require the attorney to seek permission from the former client. It is up to the former client to give permission or not. That is the law whether you like it or not. In this case APJ Clements did not raise the issue as far as I can tell, so none of the parties were alerted to this issue or given an opportunity to object.

    You say: “Just to be clear, I’m now accusing you of being sloppy and wrong.”

    You can accuse me of whatever you want. This is a free country and everyone, including anonymous individuals like you are entitled to be wrong (which you are by the way.)

    The comments to Model Rule 1.9, which relate to duties to former clients and is the Rule in place at the USPTO and followed by virtually all jurisdictions, says:

    “Matters are “substantially related” for purposes of this Rule if they involve the same transaction or legal dispute or if there otherwise is a substantial risk that confidential factual information as would normally have been obtained in the prior representation would materially advance the client’s position in the subsequent matter.”

    It also says: “knowledge of specific facts gained in a prior representation that are relevant to the matter in question ordinarily will preclude such a representation.”

    Clearly, in defending Apple for patent infringement the attorneys would learn all kinds of confidential and sensitive information about Apple, their business and legal philosophies, how they treat patent owners, whether they intend to settle or take licenses ever, whether they will engage in a war of attrition, etc. etc. There is no way that any attorney could represent a party adverse to Apple in a patent infringement matter after having represented Apple. First, Apple would NEVER allow it. Second, there is no way you could competently represent the new client without using knowledge of confidential and sensitive information learned, period.

    Furthermore, based on the legal test you put forward, the similarity in the legal issues will be nearly identical given that patent defense will always challenge the validity of patents and the whole point of post grant proceedings is to challenge the validity of patents. And the nature of the attorney’s involvement would be particularly problematic because it seems that the team representing Apple in the post grant proceedings was the same (minus Clements) as in the previously mentioned district court litigation. The overlap is real and substantial in terms of issues, substance, legal team, and there is no way one could defend Apple in a patent matter in district court without learning confidential information about their views, philosophies and legal strategies. This is particularly true, as would be known by any patent attorney, because proceedings at the PTAB are not independent of proceedings in district court. In 80% of situations they are a prelude to or concurrent with district court proceedings. So you can try and fool yourself, and those who don’t understand patents and the patent procedures and relationship between district court proceedings and the PTAB, but you are making yourself look like a fool (or worse) here by denying the obvious.

    Finally, the fact that you may advocate one act in an unethical fashion doesn’t make me wrong or sloppy. That you advocate engaging in activities that would require either (1) failure to competently and zealously represent a new client; or (2) use confidential information learned from a former client, does not make me wrong or sloppy. But that should be self evident to you and everyone else reading and familiar with the ethical rules applicable to attorneys.

    So why don’t you tell us who you are, whether you are an attorney, if you are at all familiar with patent defense and PTAB, and what your agenda is here?

    Cheers.

    -Gene

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