Patent Law Practice Center

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.

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Chief Judge Rader Apologizes for Recusals

On Friday, May 23, 2014, right before the long holiday weekend, news began to circulate that Chief Judge Rader had announced that he would be stepping down as Chief Judge of the United States Court of Appeals for the Federal Circuit.

Immediately, the Wall Street Journal and Law.com began speculating that Judge Rader’s decision to step down was tied to an email endorsing attorney Edward Reines, a patent lawyer at Weil Gotshal & Manges LLP and president of the Federal Circuit Advisory Council. This speculation picked up when Rader released a letter (see below) to the public addressed to the other members of the Federal Circuit apologizing for the appearance of impropriety associated with his email to Reines (whom he did not name directly), which necessitated his several recent recusals.

I find myself speechless, which doesn’t happen often. On the one hand, those that know Judge Rader know that he is extremely strong-willed and always eager for a vigorous substantive debate. The thought that any familiarity with someone who appears before him would lead to any advantage strikes me as thoroughly nonsensical. On the other hand, ethics for lawyers and even more so for judges is not about truth, but rather appearances.

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Patent Practitioner Discipline

Over the last several years, I have given the ethics lecture part of PLI’s Patent Law Institute, which grants those in attendance (or viewing via webcast, in most states) one ethics credit toward CLE compliance. This year, I will once again give the ethics presentation at the 8th Annual Patent Law Institute sponsored by the Practising Law Institute, which will take place in New York at the beginning of February 2014, and which will be reprised live in San Francisco in mid-March 2014.  Materials are due early so that PLI can put everything into book form for attendees, so I have been writing to ensure enough to support one credit hour of CLE, and starting the planning of my hour-long presentation generally.

A big part of what I like to do when I give an ethics lecture is to review recent decisions of the Office of Enrollment and Discipline to see what OED has been focusing on and what trouble our fellow members of the patent bar are getting into. This not only gives us insight into the OED approach, but also gives us an opportunity to review the ethics rules practitioners are charged most frequently with violating. It also gives us an opportunity to discuss the process you will be afforded if you should find yourself on the wrong side of an OED complaint.

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OED Suspends Attorney for False Statements in Petition to Revive

As I feverishly continue my review and summary of OED ethics decision in advance of my presentation on ethics at the 7th Annual Patent Law Institute, I recently found an interesting case about discipline of an attorney practicing trademark law. The case is In the Matter of Michelle A. Massicotte (May 16, 2012). This case has significance for patent attorneys because the action taken by the Office of Enrollment and Discipline (OED) was as the result of false statements made in a petition to revive three trademark applications after failure to respond to an Office Action.

The tale starts like this: Michelle A. Gallagher, formerly known as Michelle A. Massicotte, is an attorney licensed to practice law by the Commonwealth of Massachusetts. Massicotte is not a registered patent practitioner and is not authorized to practice patent law before the USPTO. She was not engaging in any patent law practice before the Office, yet what she was charged with doing is the type of response that patent attorneys do file with some frequency, so her discipline is quite instructive.

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OED Takes Action on Unauthorized Practice of Law

I will be speaking at the 7th Annual Patent Law Institute sponsored by the Practising Law Institute live from New York City on February 4-5, 2013, and live from San Francisco, CA on March 18-19, 2013, with the San Francisco location also being webcast. My topic this year is ethics, and those who attend my presentation live or via webcast will earn 1 ethics CLE credit. In addition to discussing the impact of the America Invents Act on ethics, specifically from a malpractice standpoint, I will also discuss the enforcement efforts of the Office of Enrollment and Discipline (OED) during 2012.

One of the cases from 2012 that has caught my attention is The Matter of David P. Gaudio, which was decided on December 12, 2012, and was the last action taken by OED during 2012.

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