United States: Motions To Disqualify Opposing Counsel In Patent Trial And Appeal Board Proceedings

Motions to disqualify opposing counsel often raise difficult issues of legal ethics. Behind any motion to disqualify, two competing interests are implicated: the client's right to the attorney of its choice versus the need to maintain ethical standards of professional responsibility. Few things are as disconcerting to a litigant as the loss of access to trusted counsel.1 For these reasons and others, disqualification proceedings can be heated battles. Motions to disqualify opposing counsel in proceedings before federal courts are not uncommon,2 with such motions being used for both legitimate reasons and "purely tactical reasons, such as delaying the trial."3

With the enactment of the Leahy-Smith America Invents Act (the "AIA"),4 the filing of motions to disqualify counsel may become increasingly common in proceedings before the United States Patent and Trademark Office ("USPTO"). The AIA ushered in a new era of administrative trials before the Patent Trial and Appeal Board ("PTAB" or the "Board"), with such trials including inter partes review ("IPR") proceedings, postgrant review ("PGR") proceedings, covered business method ("CBM") patent proceedings, and derivation proceedings. Under 37 C.F.R. § 42.2, these trials are "contested cases"—adversarial proceedings that are "adjudicatory in nature and constituting litigation."5 In such contested cases, parties may increasingly seek to file disqualification motions for both legitimate and tactical reasons. Under 37 C.F.R. § 42.10(d), the PTAB is expressly given the authority to rule on disqualification motions.

Parties seeking to use disqualification motions to their advantage may need to temper their expectations, however, as prevailing on such a motion before the PTAB—or even obtaining authorization to file the motion—appears to be an uphill battle. The USPTO has stated, unequivocally, that motions to disqualify counsel are "disfavored."6 Decisions by the PTAB indicate that it will act in accordance with this notion: as of the date of publication of this Commentary, the PTAB has denied authorization to file motions to disqualify counsel in multiple proceedings and has not granted authorization in any.7 Further, the PTAB's decisions indicate that it will likely follow the lead of its predecessor, the Board of Patent Appeals and Interferences ("BPAI"), which set a high bar for disqualification of counsel in interference proceedings.

This Commentary details the statutory and regulatory bases for the PTAB's authority to act on disqualification motions, along with the rules and BPAI decisions that are likely to guide the PTAB in ruling on these motions. The PTAB's negative treatment of parties' requests for authorization to file disqualification motions thus far is described.

The PTAB's Authority to Conduct Disqualification Proceedings

Under 35 U.S.C. § 2(b)(2)(D), the USPTO has the power to establish rules and regulations to govern the conduct of attorneys appearing before the Office. Additionally, under 35 U.S.C. § 32, the Director of the USPTO may, after notice and opportunity for a hearing, suspend or exclude from further practice before the USPTO an attorney who does not comply with the rules and regulations established under section 2(b)(2)(D).

In accordance with this statutory authority, as part of its consolidated set of rules relating to PTAB trial practice for IPR, PGR, CBM, and derivation proceedings, the USPTO promulgated 37 C.F.R. § 42.10(d), which expressly delegates to the PTAB the authority to disqualify counsel for cause after notice and opportunity for hearing. The PTAB's authority to conduct disqualification proceedings exists "while the Board has jurisdiction over a proceeding."8

In its rulemaking related to the AIA, the USPTO did not establish specific rules governing disqualification proceedings.9 However, the USPTO's responses to written comments from intellectual property organizations, businesses, and others (as included with the PTAB's Final Rules of Practice10) provide some guidance as to when the PTAB might initiate such proceedings and how they might be conducted. In its responses, the USPTO notes, generally, that "[t]he determination whether to disqualify counsel is based on the facts and circumstances of the case, including any response by counsel to the allegation."11 Other statements indicate that the USPTO endorses a restrained approach to disqualification of counsel. Specifically, the Office states that "[m]otions to disqualify opposing counsel are disfavored because they cause delay and are sometimes abused."12 Finally, the USPTO provides an example situation in which disqualification may be necessary: "Some situations . . . are likely to trigger consideration of whether to disqualify a counsel, e.g., egregious misconduct."13

In conducting a disqualification proceeding, the PTAB will likely look to the USPTO Rules of Professional Conduct ("USPTO Rules").14 These rules apply to all attorneys appearing before the Office,15 and the BPAI previously applied a similar code of professional responsibility (the Patent and Trademark Office Code of Professional Responsibility ("USPTO Code")) in disqualification proceedings.16 Pursuant to the authority provided in 35 U.S.C. §§ 2(b)(2)(D) and 32, the USPTO Rules were promulgated in 2013, replacing the USPTO Code to which attorneys appearing before the Office were previously required to conform.17 The USPTO Rules conform to the Model Rules of Professional Conduct of the American Bar Association, versions of which have been adopted by forty-nine states and the District of Columbia.18

"[B]y far the most common ground for a motion for disqualification is a claim of some form of conflict of interest that either harms the moving party or calls into question the integrity of judicial process at hand."19 Thus, sections of the USPTO Rules addressing conflicts of interest may be of particular importance in disqualification proceedings before the USPTO. In the USPTO Rules, Section 11.107 addresses conflicts of interest involving current clients. Under this rule, generally, a current client of an attorney may prevent the attorney from being adverse to it in any matter: "[A] practitioner shall not represent a client if the representation involves a concurrent conflict of interest."20 A concurrent conflict of interest exists, for example, if the "representation of one client will be directly adverse to another client."21

Section 11.109 of the USPTO Rules addresses duties to former clients. Under Section 11.109(a), a former client of an attorney may prevent the attorney from being adverse to it if the matter against the former client is "substantially related" to the work the attorney previously did for the client.22 Alternatively, under Section 11.109(b), the former client may prevent the attorney from being adverse to it if the attorney acquired confidential information during the former representation that likely can be used against the client in the subsequent adverse representation.23 The substantial relationship test of Section 11.109(a) "generally serves as a surrogate for proof that a lawyer obtained confidential information in the initial representation; no proof that the lawyer actually obtained confidences is required. In contrast, to disqualify a lawyer for actually possessing relevant confidences [under Section 11.109(b)], the former client must generally show that the lawyer did in fact obtain such information."24

Although it is clear that the PTAB may conduct disqualification proceedings under 37 C.F.R. § 42.10(d) and that the PTAB may look to the USPTO Rules of Professional Conduct in conducting the proceedings, these rules may raise more questions than they answer. For example, Section 11.107 of the USPTO Rules uses the "substantial relationship" test in former-client conflicts, but the nature of this test varies significantly among the federal circuits,25 and the rules governing the PTAB provide no guidance in determining when two matters are "substantially related." Further, the rules provide no indication as to the extent to which federal court decisions should govern or influence the PTAB in disqualification proceedings.

For guidance in answering these questions, one may look to decisions from the PTAB's predecessor, the BPAI. As noted above, the IPR, PGR, CBM, and derivation proceedings currently conducted by the PTAB are "contested cases."26 To understand how the PTAB may handle disqualification motions in these new contested cases, BPAI decisions in other types of contested cases—namely, interference proceedings—may be instructive. BPAI decisions on disqualification in the context of interference proceedings are described below.

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[1] See Keith Swisher, The Practice and Theory of Lawyer Disqualification, 27 Geo. J. Legal Ethics 71, 128 (2014); Kenneth R. Adamo, Attorney Disqualification in Patent Litigation, 1 Alb. L.J. Sci. & Tech. 177, 179 (1991).

[2] See Allegaert v. Perot, 565 F.2d 246, 251 (2d Cir. 1977) (noting that disqualification motions are "common tools" of the litigation process).

[3] Armstrong v. McAlpin, 625 F.2d 433, 437 (2d Cir. 1980) (en banc).

[4] Pub. L. 112-29, 125 Stat. 284 (2011).

[5] ScentAir Techs., Inc. v. Prolitec, Inc., No. IPR2013-00179, Paper 9, at 4 (P.T.A.B. Apr. 16, 2013).

[6] 77 Fed. Reg. 48630 (Aug. 14, 2012), eff. Sept. 16, 2012.

[7] See TD Ameritrade Holding Corp. v. Trading Techs. Int'l, Inc., No. CBM2014-00131, -00133, -00135, -00136, -00137, Paper 10 (P.T.A.B. July 24, 2014); ScentAir Techs., No. IPR2013-00179.

[8] 77 Fed. Reg. 48618; see also 37 C.F.R. § 41.5(b)(1).

[9] Id. at 48630. In response to the notice of proposed rulemaking relating to PTAB trial practice, the USPTO received several comments that "sought clarification" regarding the disqualification proceedings authorized by 37 C.F.R. § 42.10(d). Id. The USPTO stated that such comments were "noted" but "not adopted." Id.

[10] See Final Rules of Practice, 77 Fed. Reg. 48612-78 (Aug. 14, 2012), eff. Sept. 16, 2012.

[11] Id. at 48630.

[12] Id.

[13] Id.

[14] See 37 C.F.R. §§ 11.101-11.901.

[15] Final Rule, Changes to Representation of Others Before The United States Patent and Trademark Office, 78 Fed. Reg. 20195 (Apr. 3, 2013), eff. May 3, 2013.

[16] See Anderson v. Eppstein, 59 U.S.P.Q.2d 1280, 1285 (B.P.A.I. 2001). The BPAI stated that "[w]hile the PTO has no specific rules which govern disqualification [proceedings], generally the provisions of the PTO Code of Professional Responsibility, aided by decisions of federal courts, govern resolution of a disqualification." Id.

[17] 78 Fed. Reg. 20180.

[18] Id.

[19] W. William Hodes, Getting Lawyer Disqualification Straight Book Review, Lawyer Disqualification: Conflicts of Interest and Other Bases by Richard E. Flamm, Banks and Jordan Law Publishing Co., 2003. PP. XXIX, 802, 17 Geo. J. Legal Ethics 339, 341 (2004).

[20] 37 C.F.R. § 11.107(a) (2013).

[21] Id. § 11.107(a)(1). Determining whether representation of a potential client will be adverse to another client can be difficult in patent litigation. For example, those involved in patent litigation must seek to recognize when representation of one potential client, though not directly across the "v" from a current client, nonetheless will cause substantial, practical harm to the current client. For a full discussion of such issues, see David Hricik, Seeing Adversity in Patent Litigation, 7 Landslide 12 (2015).

[22] Id. § 11.109(a).

[23] Id. § 11.109(b).

[24] David Hricik, Trouble Waiting to Happen: Malpractice and Ethical Issues in Patent Prosecution, 31 AIPLA Q.J. 385, 423 (2003).

[25] Hricik, supra note 27, at 423.

[26] 37 C.F.R. § 42.2 (2012).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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