False Statements to CAFC Lead to Attorney Discipline


Each year, PLI holds its annual Patent Litigation seminar. I will be speaking at the New York Patent Litigation 2014 program, which will take place from November 10-11, 2014. There will be an earlier presentation of the program in Chicago, IL, from October 6-7, 2014. In addition to discussing the relatively new ethics rules applicable to patent attorneys, I will discuss a variety of ethics decisions from the Office of Enrollment and Discipline at the United States Patent and Trademark Office.

In one particular enforcement decision that I will discuss during my presentation — In the Matter of James Hicks — the Office of Enrollment and Discipline instituted an enforcement proceeding against James Hicks, who is an attorney admitted to practice in the State of California. Although Hicks is not a patent attorney duly admitted to practice before the United States Patent and Trademark Office, he had been permitted to practice before the Office in trademark and other non-patent matters, as can any attorney admitted to practice.

Hicks, a litigator, was alleged to have engaged in conduct prejudicial to the administration of justice. In Rates Technology, Inc. v. Mediatrix Telecom, Inc., No. 05-CV-2755, the United States District Court for the Eastern District of New York entered an order sanctioning him and his client for failing to comply with the court’s discovery orders. Indeed, the abuses were such that the district court ultimately dismissed the case and imposed monetary sanctions against Mr. Hicks and Rate Technology in the amount of $86,965.81, to be split evenly between them.

Additionally, on appeal to the United States Court of Appeals for the Federal Circuit, the Federal Circuit found that Hicks made misleading and improper statements in the brief he submitted challenging the sanction levied against him by the district courtSee Rates Technology, Inc. v. Mediatrix Telecom, Inc.

During the ethics proceeding, Hicks continued to disagree with the Federal Circuit’s statements and findings of the district court relative to the discovery sanctions, but the Office of Enrollment and discipline pointed out that he did not seek further appellate review. Those familiar with OED enforcement can attest to the fact that there is little tolerance for disagreeing with previously adjudicated matters and attempts to relitigate them in a disciplinary proceeding when appeal was available but not pursued.

The USPTO charged that Hicks violated 37 C.F.R. 10.20 et seq.[1]  Ultimately, Hicks acknowledged that he violated 37 C.F.R. 10.23(b)(5), which prohibited “conduct that is prejudicial to the administration of justice.” He was publicly reprimanded and ordered to serve a one year probationary period. Hicks was allowed to continue to practice trademark and other non-patent law before the USPTO during his probationary period unless his probation is revoked or he is suspended by order of the Director of the USPTO.

While, at the end of the day, Hicks was subjected only to a public reprimand, the fact that the Office of Enrollment and Discipline decided to go after a litigator should send a chilling shot across the bow. Patent litigation is at least as contentious as any other area of litigation, if not far more contentious than most. We have probably all seen statements in briefs and memos that stretch the truth to the point that they are clearly misleading, if not outright false. It is noteworthy that the OED is taking the position that such actions amount to conduct prejudicial to the administration of justice, and should give everyone pause.

The fact that OED pursued discipline against Hicks is troubling for a number of reasons:

  1. Under new Rule 11.804(d), conduct that is prejudicial to the administration of justice continues to be ethical misconduct.
  2. Under new Rule 11.303(a)(1), a practitioner is prohibited from making a false statement of law or fact to any tribunal, which is defined under Rule 11.1 to mean “the Office, a court, an arbitrator in a binding arbitration proceeding or a legislative body, administrative agency or other body acting in an adjudicative capacity.”
  3. Under new Rule 11.803, a practitioner who knows that another has committed an ethical violation “that raises a substantial question as to that practitioner’s honesty, trustworthiness or fitness as a practitioner” is required to report the violation to OED.

Thus, Hicks may stand for the proposition that a practitioner must inform OED if they know that another practitioner has made a false, misleading or improper statement to a tribunal, or as Hicks did, cites a non-precedential opinion to a tribunal. If that is the case, OED may be flooded with complaints.


[1]  Since the alleged misconduct occurred prior to May 3, 2013, the USPTO Code of Professional Responsibility was applicable to the case, not the newly modified USPTO Rules of Professional Conduct.

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