A.S. v. B.R

THIS OPINION IS A PRECEDENTIAL OPINION
The opinion in support of the decision being entered
today is binding precedent of the Board of Patent
Appeals and Interference. The decision was enterd
December 2, 1998.
Paper No. 10
Filed by: Trial Section
Box Interference
Washington, D.C. 20231 Entered
Tel: 703-308-9797 2 December 1998
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
A.S.
Junior Party,
v.
B.R.,
Senior Party.
_______________
Patent Interference No. 104,___
_______________
Before: STONER, Chief Administrative Patent Judge,
HARKCOM, Vice-Chief Administrative Patent Judge,
McKELVEY, Senior Administrative Patent Judge, and
SCHAFER and LEE, Administrative Patent Judges.
McKELVEY, Senior Administrative Patent Judge.
MEMORANDUM OPINION AND ORDER
A. Findings of fact
1. The interference was declared on 13 November 1998.
See NOTICE DECLARING INTERFERENCE (Paper 1).

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2. On 20 November 1998, at approximately 7:19 a.m.,
counsel for the senior party sent the following e-mail (Paper 8)
to an administrator assigned to the Trial Section of the Board of
Patent Appeals and Interferences:
There is an obvious bozo error in the count of this newly
declared interference. Do we need a conference call with
the judge in order to correct it, or can I just tell you and
have you (or the judge) take care of correcting it via a
supplemental order?
3. The e-mail identified the interference number of
this interference.
4. There is no indication in the e-mail that the
e-mail was sent electronically to, or otherwise served on,
counsel for the junior party.
5. Upon becoming aware of the existence of the
e-mail, the administrative patent judge designated to handle this
interference determined, reluctantly, that a telephone conference
call was an appropriate manner in which to address the e-mail.
6. Pursuant to his determination, personnel assigned
to the Trial Section arranged for a telephone conference call to
take place.
7. On Monday, November 30, 1998, at approximately
10:00 a.m., a telephone conference call was held involving:
(1) Counsel for the junior party;
(2) Counsel for the senior party; and

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(3) the Administrative Patent Judge designated to
handle this interference.
8. During the conference call, counsel for the senior
party explained the error in Count 1.
9. Counsel for the junior party agreed that Count 1
contained an error.
10. Counsel for the junior party also confirmed that
he had not received a copy of the e-mail.
11. The administrative patent judge designated to
handle this interference determined that Count 1 as set out in
the NOTICE DECLARING INTERFERENCE contained an error.
12. An ORDER REDECLARING INTERFERENCE (Paper 9) is
being entered simultaneously with this MEMORANDUM OPINION AND
ORDER. The ORDER REDECLARING INTERFERENCE substitutes Count 2
for Count 1.
B. Discussion
We take this opportunity to comment on ex parte
communications in interference cases with administrative patent
judges, administrators and other personnel at the Board,
including those assigned to the Trial Section.
1. Ex parte communications in interference cases
a. Canons and rules applicable to practitioners
before the Patent and Trademark Office

A "practitioner" includes an attorney registered to practice before the	1
Patent and Trademark Office in patent cases. 37 CFR § 10.1(r). Counsel for the
senior party is a "practitioner."
A communication in the form of an e-mail falls within the meaning of the	2
word "communicate" in §10.93(b).
An administrative patent judge is a "judge" within the meaning of 37 CFR	3
§ 10.93(b).
Administrative patent judges, administrators and other individuals	4
employed at the Board are "Office employees."
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The Code of Professional Responsibility of the Patent and
Trademark Office provides as follows (37 CFR § 10.93(b)):
In an adversary proceeding, including any inter partes
proceeding before the Office, a practitioner shall not	[1]
communicate, or cause another to communicate, as to the	[2]
merits of the cause with a judge, official, or Office	[3]
employee before whom the proceedings is pending, except:	[4]
(1) In the course of the official proceedings in
the cause.
(2) In writing if the practitioner promptly
delivers a copy of the writing to opposing counsel ***.
(3) Orally upon adequate notice to opposing
counsel ***.
(4) As otherwise authorized by law.
The interference rules require that a copy of each paper
filed in the Patent and Trademark Office in an interference shall
be served upon all opponents. 37 CFR § 1.646. As noted earlier,
there is no indication on the face of the e-mail of 20 November
1998, that the e-mail had been served by counsel for the senior
party on opposing counsel.

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b. Canons relevant to administrative
patent judges
There are no canons of judicial ethics, as such, directly
applicable to administrative patent judges. However, regulations
of the Department of Commerce provide the following (15 CFR
§ 0.735-10a (1997)):
An employee [of the Patent and Trademark Office, a unit
of the Department of Commerce,] shall avoid any action,
whether or not specifically prohibited by this subpart,
which might result in, or create the appearance of:
***
(b) Giving preferential treatment to any person;
***
(d) Losing complete independence or impartiality;
(e) Making a government decision outside official
channels; or
(f) Affecting adversely the confidence of the public
in the integrity of the Government.
Likewise, the Standards of Conduct of the Office Personnel
Management provide (5 CFR § 2635.101(b)(8) (1997)):
Employees [of the U.S. Government] shall act
impartially and not give preferential treatment to any
private organization or individual.
The Code of Conduct for United States Judges is not directly
applicable to administrative patent judges. Nevertheless, the
functions performed by a United States Judge and an
administrative patent judge are similar. Both decide cases and

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concrete controversies between adverse parties on a record based
on the admissible evidence. Accordingly, the Code of Conduct
for United States Judges can provide meaningful guidance as to
what conduct might be viewed as (1) giving, or appearing to
give, preferential treatment to a particular person, (2) losing,
or appearing to lose, impartiality, (3) making, or appearing to
make, decisions outside official channels, and/or (4) affecting,
or appearing to affect, the confidence of the public in the
integrity of the board within the meaning of 15 CFR § 0.735-10a
(1997) and 5 CFR § 2635.101(b)(8) (1997).
The Code of Conduct for United States Judges provides in
Canon 2(A) (1997) as follows:
A judge *** should act at all times in a manner that
promotes public confidence in the integrity and
impartiality of the judiciary.
Canon 2(b) provides:
A judge should not *** convey or permit others to
convey the impression that they are in a special
position to influence the judge.
Canon 3(A)(4) provides:
A judge should *** neither initiate nor consider ex
parte communications on the merits, or procedures
affecting the merits, of a pending or impending
proceeding.

Insofar as we are aware, there are no provisions made by law for ex	5
parte communications with an administrative patent judge. Administrative patent
judges do not issue temporary restraining orders or other emergency orders.
Hence, there is no practical reason for an ex parte communication relevant to the
merits of a case.
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The Canons of Judicial Ethics of the American Bar
Association, as long ago as 1971, provided in Section 17 that:
A judge should not permit private interviews,
arguments or communications designed to influence ***
judicial action, where interests to be affected thereby
are not represented before *** [the judge], except in
cases where provision is made by law for ex parte
communications.[5]
While the conditions under which briefs of
argument are to be received are largely matters of
local rule or practice, *** [a judge] should not permit
the contents of such brief *** to be concealed from
opposing counsel. Ordinarily all communications of
counsel to the judge intended or calculated to
influence action should be made known to opposing
counsel.
In adjudications required by law to be conducted before
an administrative law judge (ALJ), "an ex parte communication
relevant to the merits of the proceeding" (emphasis added) cannot
be made by counsel to the ALJ. 5 U.S.C. § 557(d)(1)(A).
Likewise, the ALJ is not to initiate an ex parte communication
relevant to the merits of the proceeding. 5 U.S.C.
§ 557(d)(1)(B). Something which is "relevant" to the merits
includes the merits and the procedure to be followed in

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establishing a record upon which a decision on the merits will be
based.
2. Past practice at the Board of
Patent Appeals and Interferences
It is our understanding that in the past there probably have
been two types of ex parte communications in connection with
interference cases between counsel and personnel of the Board,
including judges.
One type of ex parte communication has been for general
information. General information would include, for example,
(1) a call to the Clerk's Office to determine the hours the
office is open; (2) after notice to an opponent, a call to an
administrator to arrange for a conference call with a judge, (3)
a call to an administrator to determine whether papers and files
had arrived at the board which were sent by an examiner to the
board for declaration of an interference and (4) a call to an
administrator concerning general procedure apart from any
particular interference (not included would be a so-called
"hypothetical" when the person making the call has a particular
interference in mind).
A second type of ex parte communication which unfortunately
may have occurred in the past is one to an administrative patent
judge to determine procedure to be followed in a particular

Evidence of this fact is apparent from an e-mail sent to the Chief Judge	6
on 1 December 1998 (16:01 hours) by counsel for the senior party which states in
part "In the old days [prior to establishment of the Trial Section], you called
an APJ directly ***."
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interference pending before that judge or the board, or perhaps	6
to discuss the merits of a particular interference pending before
that judge or the board.
We encourage the former and cannot condone the latter.
When, if ever, is an ex parte communication in connection
with a particular interference proper? To the extent there is
any difficulty determining whether a proposed ex parte
communication is proper, the solution to any difficulty is easy:
if there is any doubt, do not make the ex parte communication.
Instead, counsel can file a paper and serve the paper on opposing
counsel. Alternatively, counsel can communicate with opposing
counsel so that a mutual time can be agreed upon for placing a
telephone conference call to an administrator or the
administrative patent judge.
A good first general rule would be that if a practitioner is
communicating ex parte with an administrative patent judge for
the purpose of changing, or determining how to change, the status
quo of an interference, there is probably a 100% chance that the
ex parte communication is not proper. This first general rule is
consistent with Canon 3(A)(4) of the Code of Conduct for United
States Judges which provides that there should be no ex parte
communications "on the merits, or procedures affecting the

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merits, of a pending *** proceeding" (emphasis added). Compare
also 5 U.S.C. § 557(d)(1)(A), supra.
A good second general rule would be that if a practitioner
is communicating ex parte with an administrator the purpose of
changing the status quo of an interference, there is probably a
100% chance that the ex parte communication is not proper. On
the other hand, questions of a procedural nature, such as those
discussed earlier in this opinion, are acceptable.
In our view, the e-mail of 20 November 1998 was an improper
ex parte communication. Superficially, the e-mail might be
viewed as a question of a procedural nature to an administrator.
In other words, what may have been intended by counsel for the
senior party was the following:
There is an obvious *** error in the count of this newly
declared interference. Do we need a conference call with
the judge in order to correct it ***?
But, the "or can I just tell you and have you (or the judge) take
care of correcting it via a supplemental order" plausibly can be
construed as an ex parte request seeking sua sponte action by the
administrative patent judge to correct the "obvious" error.
After all, if the error is as "obvious" as the e-mail suggested,
then it is an error which the administrative patent judge
designated to handle the interference could have readily
appreciated and changed without any input from counsel.

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Interestingly enough, during the conference call, counsel for the
senior party was not able to readily state the precise change
which needed to be made to the count. Rather, the suggested
change to be made came from counsel for the junior party.
Independently, it was both (1) the "or can I just tell you
and have you (or the judge) take care of correcting it via a
supplemental order" and (2) the lack of any indication of notice
to opposing counsel that gave pause to personnel of the Board.
So that the record be entirely clear, we make known that the
administrator receiving the e-mail, as well as numerous
administrative patent judges, at least upon initial reading of
the e-mail, concluded that the e-mail was an improper ex parte
attempt to change the status quo in this interference through
"sua sponte" action by the administrative patent judge designated
to handle this interference.
The error uncovered by counsel for the senior party could
have been called to the attention of the Trial Section by way of
a paper served on counsel for the junior party. Alternatively, a
conference call could have been sought through the administrator
by counsel for the senior party, after notice to counsel for the

It has come to our attention that there have been situations where	7
(1) counsel for a party calls an administrator to arrange for a
telephone conference call (the administrator has presumed that the call was being
made after notice to opposing counsel);
(2) the administrator advises counsel when the conference call is
to be placed; and
(3) counsel then "announces" to counsel for the opponent that "the
judge will receive our call at 3:00 p.m."
All telephone calls by counsel to schedule a telephone conference call with an
administrative patent judge should be made only after opposing counsel is
notified that the call will be placed to the administrator and opposing counsel
(a) agrees that counsel may place an ex parte call to the administrator or (b)
declines to cooperate or participate in a telephone conference call unless
ordered by the judge. If opposing counsel indicates that the telephone
conference call itself to the administrator should be by way of an inter partes
conference call, then the call to the administrator must be by way of a
conference call.
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junior party. The difficulty with the e-mail, as a whole, is	7
that if the Trial Section had corrected the "obvious" error sua
sponte, counsel for the junior party may not have learned of the
ex parte communication to the Trial Section. Even if counsel for
the junior party had eventually learned of the ex parte
communication, the overall impression counsel for the junior
party may have been left with is that counsel for the senior
party somehow has an "in" with the Trial Section.
The public, the inventors and their assignees involved in
interferences, counsel for the inventors and their assignees and
our reviewing courts are entitled to assume that cases before the
Patent and Trademark Office are conducted with impartiality and
without improper ex parte communications. Improper ex parte
communications (1) undermine the administration of justice in
cases before the Patent and Trademark Office, (2) undermine the

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public's confidence in the impartiality of officials of the
government whose duty it is to decide in an even-handed manner
cases and controversies between adversary parties and (3) erode
the very foundation upon which the American system of deciding
cases and controversies is based.
In this particular case, we give the author of the e-mail
the benefit of any doubt. However, through this opinion we
announce that, in the future, practitioners in interference cases
should adhere strictly to the well-established principles that
most ex parte communications with a judge are improper and that
improper ex parte communications will not be condoned. We would
be remiss if we did not note that it is just as bad for a judge
to receive and act in any manner on an improper ex parte
communication as it is for an attorney to make the improper ex
parte communication in the first place.
As noted in Finding 5, the administrative patent judge
designated to handle this interference, with some reluctance,
determined that a telephone conference call was an appropriate
manner to respond to the improper ex parte communication. His
reluctance was bottomed on (1) the failure of the e-mail to
contain any indication that it has been "served" on counsel for
the junior party and (2) the fact any response to the e-mail
might have the appearance of giving special treatment to counsel
who sent the e-mail to the administrator. The conference call

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took place essentially to determine whether counsel for the
junior party had received the e-mail.
In the future, any e-mail received by the Trial Section
plausibly related to a particular interference will be returned
unanswered if it does not on its face indicate "service" by
e-mail upon opposing counsel. Moreover, e-mail cannot take the
place of pleadings which are to be filed in the manner required
by the rules. Any e-mail sent to the Trial Section must also be
sent by e-mail to opposing counsel. If opposing counsel does not
have e-mail, then a party may not communicate inter partes with
the Board through e-mail in a specific interference.
C. Order
Upon consideration of the record, it is
ORDERED that a copy of this opinion without identifying
the parties or counsel shall be published.

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FURTHER ORDERED that the Clerk shall mail a copy of
this MEMORANDUM OPINION AND ORDER to counsel of record.
______________________________
BRUCE H. STONER, JR, Chief )
Administrative Patent Judge )
)
)
______________________________)
GARY V. HARKCOM, Vice Chief )
Administrative Patent Judge )
)
)
______________________________)
FRED E. McKELVEY, Senior ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
______________________________)
RICHARD E. SCHAFER, )
Administrative Patent Judge )
)
)
______________________________)
JAMESON LEE, )
Administrative Patent Judge )