Pro-Apple TTAB Bias Case Heats Up at CAFC

By Eileen McDermott
November 2, 2021

“Such administrative changes are inherently part of the nature of the TTAB as an executive branch adjudicatory body…. Even a cursory review of proceedings before the TTAB reveals that the composition of panels frequently changes at various stages of the proceedings.” – Apple Brief in Opposition

https://depositphotos.com/121757024/stock-illustration-isolated-line-art-apple-icon.htmlFollowing a motion filed in mid-October with the U.S. Court of Appeals for the Federal Circuit (CAFC) accusing the United States Patent and Trademark Office (USPTO) and its management of facilitating the appearance of bias at the Trademark Trial and Appeal Board (TTAB) in favor of Apple, Inc., Apple has now filed its opposition to that motion. Apple contends there is no precedent for allowing the motion, as it requests to supplement the record with documents that were not part of the trial record; that the TTAB is “an executive adjudicatory body” within the USPTO, which is “an executive agency within the Department of Commerce, and the TTAB’s administrative law judges are not subject to the recusal requirements set out in 28 U.S.C. § 455”; and that the documents Charles Bertini is asking to submit “reflect merely routine and fleeting professional contacts” that “fall far below the threshold of the personal contacts necessary to support disqualification on the basis of bias or prejudice.”

Bertini, owner of the mark APPLE JAZZ, brought the motion because he claims a different panel of TTAB judges with ties to Apple’s attorneys dismissed his opposition to Apple’s request to register APPLE MUSIC, despite a finding of likelihood of confusion and partial grant of summary judgment by the original panel. The original panel was mostly replaced, for unexplained reasons, and Bertini 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.”

Apple Bites Back

In its brief in opposition, Apple explains that a motion to supplement the record under Rule 10(e)(2) is directed to evidence omitted from the record “by error or accident” only, and not to new evidence that was not in the district court record. While Bertini argues that the CAFC has allowed new evidence to be introduced in “extraordinary circumstances,” this does not qualify, according to Apple. Far from an insidious attempt to favor Apple, it is “not unusual for one TTAB panel to rule at an intermediate stage of a proceeding and a different panel to rule at trial,” says Apple in its brief. It adds:

Such administrative changes are inherently part of the nature of the TTAB as an executive branch adjudicatory body. As this Court noted in Piano Factory, the “Director has discretion regarding the size and composition of TTAB panels, which the Director can exercise pursuant to his authority to establish rules and regulations governing procedures before the TTAB.” Piano Factory, 11 F.4th at 1372. Even a cursory review of proceedings before the TTAB reveals that the composition of panels frequently changes at various stages of the proceedings.

Similarly, since the TTAB is an administrative body, its judges are not subject to 28 U.S.C. § 455, which governs disqualification of “[a]ny justice, judge, or magistrate judge of the United States.” They sit in the executive branch and are instead governed by the Department of Commerce’s ethical guidelines, which require recusal in circumstances where one of the parties is (or is represented by):

  • someone with whom the TTAB judge has
    or seeks a financial or business relationship;
  • a close relative;
  • a household member;
  • an employer (or prospective employer); or
  • a client of a parent, spouse, or dependent child or an organization in which they of them serves as an officer or director;
  • a former employer or client for a period of one year after the TTAB judge left employment or two years for a political appointee or if the TTAB judge received an extraordinary severance payment; or
  • an organization in which the TTAB judge is an active participant.

“Neither Apple nor its counsel fall into any of those enumerated categories,” Apple argues in its brief.  And furthermore, Judge Hudis, whom Bertini argues had a duty to disqualify himself due to his contacts with Apple’s lawyers, would not even have to disqualify himself under the standard used in trial court, because “all of the documents summarized in his motion reflect at most routine and fleeting professional contacts between Judge Hudis and two lawyers representing Apple in this matter.”

Appearance of Bias

James Bertini, who is representing Charles Bertini, filed a reply to Apple’s opposition, countering each of Apple’s arguments. In particular, Bertini claims that Judge Hudis meets two of the criteria for recusal under the Department of Commerce’s ethical guidelines, namely “(i) someone with whom the TTAB judge has or seeks a financial or business relationship; (vii) an organization in which the TTAB judge is an active participant.”

He also denies that he could have presented the documents to the TTAB with his Motion for Reconsideration because the TTAB does not allow parties to file new documents after trial. Bertini also questions how relationships among Hudis and Apple’s attorneys “stretching back a decade” can qualify as “routine and fleeting”. Finally, Bertini explains that he is not asking for Judge Hudis to disqualify himself, but for a chance to show that “his failure to do so demonstrates the appearance of bias when considered with the documents showing the relationships among the parties.”

Image Source: Deposit PHotos
Author: jpgon
Image ID: 121757024 

The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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There are currently 1 Comment comments. Join the discussion.

  1. Pro Say November 2, 2021 3:08 pm

    The Patent Office never, ever. ever . . . shows favoritism to Apple.

    Just ask VirnetX.

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