Anderson v. Eppstein

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The opinion in support of the decision being entered
today is not binding precedent of the Board
Paper 361
Filed by: Trial Section Motions Panel
Box Interference
Washington, D.C. 	20231 	Filed
Tel: 	703-308-9797 	11 May 2001
Fax: 	703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
W. FRENCH ANDERSON, R. MICHAEL BLAESE
and STEVEN A. ROSENBERG,
Junior Party
(Patent 5,399,346),
v.
DEBORAH A. EPPSTEIN, PHILIP L. FELGNER, THOMAS R. GADEK,
GORDON H. JONES and RICHARD B. ROMAN,
Senior Party
(Application 08/609,702).
Disqualification Case No. 98-1
(Interference 103,708)
Before McKELVEY, Senior Administrative Patent Judge, and
GARDNER-LANE, and MEDLEY, Administrative Patent Judges.
MEDLEY, Administrative Patent Judge.
DECISION ON ANDERSON PETITION TO DISQUALIFY

This is a decision on Anderson  s petition to disqualify
Paul N. Kokulis, Esq. ("Kokulis"), and the law firm of Pillsbury,
Madison and Sutro, LLP (now believed to be Pillsbury Winthrop
LLP) ("Pillsbury") from representing Eppstein in Interference
103,708.
During a conference call on April 4, 2001, counsel for
Anderson and Eppstein orally waived a hearing, including an
evidentiary hearing.1 	For reasons that follow, Anderson  s
petition is denied.
A. 	Findings of fact
1. 	The real party in interest with respect to
Anderson is the United States of America, as represented by the
Department of Health and Human Services (HHS).
2. 	The National Institutes of Health (NIH) is an
agency within HHS.
3. 	At all times relevant to any issue raised by
Anderson's petition for disqualification, W. French Anderson is
believed to have been an employee of NIH.
1 	See 35 U.S.C. § 32, which provides that 		 	[t]he Commissioner may,
after notice and opportunity for a hearing, *** exclude [i.e., disqualify],
either generally or in any particular case  	an individual from practice before
the U.S. Patent and Trademark Office (PTO). 	A disqualification proceeding is a
proceeding under 35 U.S.C. § 32. 	The panel is designated to conduct the hearing
required by § 32.
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4. 	The 07/365,567 (  567) application is the first	 of
a series of continuing applications that led to the grant of the
Anderson patent involved in Interference 103,708.2
5. 	Anderson has been accorded the benefit for the
purpose of priority of four earlier filed U.S. applications,
including the 		 	567 application, filed June 14, 1989, now
abandoned.
6. 	Eppstein was added as a party to Interference
103,708 after it had been declared. 	(Int. 103,708, Paper 308).
7. 	On March 18, 1998, counsel for Anderson received a
Notice of Lead Counsel filed on behalf of Eppstein, naming
Kokulis, of Pillsbury, as lead counsel (Anderson Ex. 6).
8. 	Anderson alleges that Kokulis and his former firm,
Cushman, Darby & Cushman ("Cushman"), now part of Pillsbury,
represented Anderson in connection with the preparation and
prosecution of 		 	567.
9. 	Based on the alleged representation, Anderson
petitions for disqualification of Kokulis and Pillsbury.
10. 	It is not disputed that Cushman represented NIH
with respect to at least some patent matters from about 1988
until 1995.
2 	Anderson  s involved patent is said to be (1) a continuation of
07/904,662, which is said to be (2) a continuation in part of 07/868,794, which
is said to be (3) a continuation in part of 07/807,446, which is said to be (4) a
continuation in part of 07/365,567 ('567).
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11. 	A contract between NIH and Cushman is dated
June 15, 1988, and was signed by (1) an individual said to be an
NIH contracting officer and (2) Watson T. Scott (now deceased)
(Scott), then a partner in the former Cushman law firm.
(Eppstein Ex. 3).
12. 	The contract specifies that Cushman is to provide
secondary patent legal services for a period of twelve (12)
months with two additional option years. 	(Eppstein Ex. 3 at 2,
block 15B).
13. 	Apparently, the contract sets forth, in
generalities, work to be performed by Cushman for NIH. 	However,
individual "task orders" were to be generated for specific work
to be performed on individual projects, e.g. the preparation and
prosecution of particular patent applications.
14. 	It is not disputed that Kokulis signed a task
order, accepting for Cushman the task of preparing and filing the
567 application. 	(Anderson Ex. 2 and Eppstein Opp. ¶ 8 at 5).
15. 	It further is not disputed that Kokulis and
several partners of Cushman are listed in a Power of Attorney in

(Anderson Pet. ¶ 12 at 3 and Eppstein Opp. at 5).

Anderson relies on the declaration testimony of



James C. Haight, Esq. ("Haight"), of the NIH Office of Technology
Transfer ("OTT") to establish that certain events occurred.
17. 	Haight's declaration is dated August 7, 1998.

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18. 	Haight testifies that prior to June 14, 1989, NIH
retained Cushman to prepare an Anderson patent application
related to a gene therapy invention. (Haight decl. ¶ 6).
19. 	Haight alleges that Kokulis, 		 	as the 		 	project
director  , was personally involved in considering and allocating
Cushman law firm professionals to the Anderson engagement. 
(Haight decl. ¶ 7).
20. 	Haight further alleges that upon signing the task
order for 		 	567, Kokulis certified that there was no conflict
between the interests of the Government and any other Cushman
clients. 	(Haight decl. ¶ 7, Anderson Ex. 2).
21. 	According to Haight, professionals affiliated with
Cushman, including Kokulis, acted as attorneys for Anderson
(actually NIH) in the preparation and prosecution of 		 	567.
(Haight decl. ¶ 10).
22. 	Haight asserts that in addition to Kokulis and
Scott, four other unnamed individuals, who are not listed on the
Power of Attorney, also worked on 		 	567. 	(Haight decl. ¶ 10).
23. 	Haight further asserts that several of the Cushman
partners listed in the Power of Attorney in 		 	567 are currently
partners at Pillsbury. 	(Haight decl. ¶ 12).
24. 	Haight concedes, however, that he was 		 	mostly
responsible for overseeing patent prosecution matters at OTT
[only] since 1991. 	 	(Haight decl. ¶ 1).
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25. 	Nevertheless, Haight purports to testify with
respect to certain activities that occurred prior to 1991.
26. 	Based on Haight  s testimony, it is not apparent
that (1) Haight was an employee at NIH prior to 1991, or (2) in a
position to have had first-hand knowledge of events related to
'576 which are said to have occurred prior to 1991.
27. 	Eppstein relies on the declaration testimony of
Kokulis and Howard D. Doescher, Esq. (Doescher) in support of its
opposition to the disqualification petition.
28. 	Doescher testifies that from November 1986 until
August 1995, he was "Of Counsel" to Cushman. 	(Doescher decl.
¶ 2).
29. 	Doescher states that Cushman merged with Pillsbury
in September 1995,3 where he remained "Of Counsel" until
December 1997, when he retired. 	(Doescher decl. ¶ 2).
30. 	Doescher states that (1) Scott was the Cushman
partner responsible for performance of the contract between NIH
and Cushman and (2) Scott was responsible for determining who in
the Cushman firm would prepare and prosecute NIH patent
applications. 	(Doescher decl. ¶ 4).
31. 	Doescher states that Scott would generally sign
specific task orders, unless he was unavailable, in which case
3 	Kokulis indicates that the merger occurred in September 1996. 	Haight
has also indicated that the merger occurred in September 1996. 	For purposes of
the decision, it is irrelevant whether the merger took place in 1995 or 1996.
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someone else, e.g., Kokulis might sign the task order. 	(Doescher
decl. ¶ 5).
32. 	Doescher testifies that (1) information regarding
NIH and their records were not made available to all Cushman
staff and (2) the availability of such information was limited to
Scott and those individuals he designated to assist him in the
preparation and prosecution of patent applications. 	(Doescher
decl. ¶ 8).
33. 	Doescher further testifies that while a Power
of Attorney submitted with patent applications prepared and
prosecuted by Cushman named all of the Cushman partners, not all
of the partners would customarily be involved in the prosecution
of the application. 	(Doescher decl. ¶ 9).
34. 	Kokulis is now a partner at Pillsbury. 	(Kokulis
decl. ¶ 1).
35. 	Prior to the merger with Pillsbury, Kokulis was a
partner with Cushman. 	(Kokulis decl. ¶ 2).
36. 	Kokulis testifies that when he accepted the
position of lead counsel for Eppstein, he did not appreciate that
Cushman had been involved with an earlier Anderson application.
(Kokulis decl. ¶ 3).
37. 	Kokulis further testifies that Cushman was not
involved with any of the latter continuing Anderson applications
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that led to the issuance of the Anderson patent involved in
Interference 103,708. 	(Kokulis decl. ¶ 4).
38. 	Kokulis still further testifies that toward the
end of March 1998 he realized that Cushman had worked on the 		 	567
application and informed Eppstein  s patent counsel, William
Schmonsees, Esq., of the firm of Heller, Ehrman, White &
McAuliffe of Palo Alto, California (Heller). 	(Kokulis decl. ¶ 4
and 5).
39. 	According to Haight, and Kokulis agrees, the
Heller firm contacted counsel for NIH. 	Counsel for NIH advised
that NIH would object to Kokulis serving as counsel for Eppstein.
(Haight decl. ¶ 15-16 and Kokulis decl. ¶ 5).
40. 	Apparently, there were communications between
counsel for Anderson and Eppstein regarding consideration of a
possible waiver for Kokulis. 	However, agreement as to a waiver
could not be reached. 	(Haight decl. ¶ 17-19 and Kokulis decl.
¶ 5).
41. 	On May 13, 1998, a conference call took place
between counsel for the parties and Administrative Patent Judge
Andrew H. Metz. 	A summary of that conference call indicates
that, at the time Kokulis accepted the position as lead counsel
for Eppstein, Kokulis was unaware that Scott or anyone else in
his firm had been involved with 		 	567. 	(Anderson Ex. 11).
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42. 	Anderson asserts that Kokulis made
misrepresentations during May 13th conference call; Kokulis is
said to have indicated that only Scott (and no one else) was
involved in the preparation and prosecution of 		 	567.
43. 	It was only after Anderson filed its petition that
Kokulis became aware of the task order that he had signed in
connection with the 		 	567 application. 	(Kokulis decl. ¶ 6).
44. 	Kokulis testifies that he (1) has no recollection
of signing the task order or the preparation of 		 	567 and (2) now
believes he signed the task order in the absence of Scott who was
the partner in charge of NIH work. 	(Kokulis decl. ¶ 6).
45. 	Kokulis further testifies that while the task
order refers to him as the 		 	Project Director  , the director of
the project (  567), in fact, was Mr. Scott.	 	(Kokulis decl. ¶ 7).
46. 	Kokulis still further testifies that he was not
involved in the preparation or prosecution of 		 	567. 	(Kokulis
decl. ¶ 7 and 14).
47. 	Kokulis lastly testifies that he does not recall
seeing any disclosures describing 		 	567 or having any discussions
with anyone about the subject matter of 		 	567. 	(Kokulis decl.
¶ 7).
48. 	With respect to the preparation and prosecution of
567, Kokulis states that (1) he believes that only Scott and

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Karen Krupen ("Krupen") recorded time with respect to 		 	567, and
(2) records indicate that for the hundreds of hours Cushman
attorneys billed time to NIH projects, Kokulis billed one half
hour to an unrelated NIH project (i.e. not the 		 	567 application).
(Kokulis decl. ¶ 7 and 22, King decl. ¶ 6 and 7).
49. 	The 		 	567 application was filed, on behalf of NIH,
by Scott. 	A response filed in the PTO, dated March 18, 1991 was
signed by Doescher for Scott. 	(  567 application, Kokulis decl.
¶ 9).
50. 	Kokulis believes that only Scott, Doescher, Krupen
and Mary Wilson ("Wilson") (along with a secretary and possibly
technical assistant Barbara Gibson ("Gibson")) prepared and
prosecuted 		 	567. 	(Kokulis decl. ¶ 9-11).
51. 	Scott left Cushman in 1994 and died in 1997.
52. 	Krupen left Cushman in 1991.
53. 	Doescher retired from Cushman at the end of 1997.
54. 	Wilson left Cushman in 1993.
55. 	Gibson left Cushman a number of years ago.
56. Contrary to assertions by Haight, Kokulis testifies that
none of the individuals that prepared and prosecuted 		 	567 are now
with Pillsbury. 	(Kokulis decl. ¶ 9-11, 14 and 20).
57. 	Kokulis indicates that (1) he did not see an
invention disclosure of 		 	567, and (2) he has no recollection of
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any information that Anderson (i.e., NIH) made to Scott or
Krupen. 	(Kokulis decl. ¶ 12).
58. 	Kokulis further indicates that it was standard
practice for Cushman to list all partners as having power of
attorney in patent applications, and that he believes that is the
standard practice of other firms. 	(Kokulis decl. ¶ 23).
59. 	The 		 	567 application file that Cushman at one time
had in its possession was returned to NIH in 1994. 	(Anderson
Ex. 8).
60. 	Eppstein submits that Cushman  s obligation to
certify the absence of a conflict regarding individual task
orders was in connection with brief information about a general
technical area, such that the task description was generally
considered sufficient to determine whether or not there might be
a conflict. 	(Doescher decl. ¶ 7, Eppstein Opp. ¶ 42 at 13,
Eppstein Ex. 3, Appendix II).
61. 	According to the file of Interference 103,708,
Anderson does not intend to rely on 		 	567 for purposes of priority
in the interference.4 	(Interference 103,708, Paper 140 and
Eppstein Ex. 10).
4 	Morgan filed a preliminary motion 1 attacking the benefit for the
purpose of priority accorded to Anderson in the notice declaring interference as
to 		 	567. 	In its opposition, Anderson states that it does not rely on 		 	567 for
purposes of priority and does not intend to oppose Morgan preliminary
motion 1.
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62. 	Anderson had a right to cross-examine Kokulis and
Doescher; it waived that right.
63. 	Eppstein had a right to cross-examine Haight; it
waived that right.
B. 	Discussion
Disqualification petitions in PTO proceedings are authorized
by 35 U.S.C. § 32 and 37 CFR § 10.130(b). 	Rule 10.130(b)
provides that 		 	petitions to disqualify a practitioner ... will be
handled on a case-by-case basis under such conditions as the
Commissioner deems appropriate. 	 	While the PTO has no specific
rules which govern disqualification petitions, generally the
provisions of the PTO Code of Professional Responsibility, aided
by decisions of federal courts, govern resolution of a
disqualification.
Petitions to disqualify an attorney are within the
discretion of the deciding tribunal, and such rulings will be
overturned only upon showing of an abuse of discretion.
Telectronics Proprietary, Ltd. v. Medtronic, Inc., 836 F.2d 1332,
1335, 5 USPQ2d 1424, 1427 (Fed. Cir. 1988); Fred Weber, Inc. v.
Shell Oil Co., 566 F.2d 602, 608 	(8th Cir. 1977), cert. denied,
436 U.S. 905 (1978), overruled on other grounds, In Re
Multi-Piece Rim Products Liability Litigation, 612 F.2d 377 (8th
Cir. 1980), vacated and remanded, 449 U.S. 368 (1981)
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(disqualification is a matter of discretion with the deciding
tribunal).
Disqualification is resolved on a case-by-case basis, where
the moving party bears a heavy burden of proving facts showing
that disqualification is necessary. 	Evans v. Artek Sys. Corp.,
715 F.2d 788, 791 (2d Cir. 1983). 	See also Government of India
v. Cook Industries, Inc., 569 F.2d 737, 739 (2d Cir. 1978).
Further, when determining if disqualification is appropriate, it
is necessary to balance the interest of a party  s right to retain
counsel of its choice versus preserving the integrity of the
adversary process. 	In re ML-Lee Acquisition Fund II, L.P.
Litigation, 848 F.Supp. 527, 556 (D. Del. 1994).
Anderson argues that Kokulis has violated Canons 1 and 4 of
the PTO Code of Professional Responsibility and should be
disqualified. 	(Anderson Pet. at 11). 	Specifically, Anderson
argues that disqualification of Kokulis and Pillsbury is
appropriate under the 		 	substantial relationship 	 	test applied by
the various federal courts.
A practitioner should preserve the confidences and secrets
of a client. 	37 CFR § 10.56. 	See also In re Del-Val Financial
Corp. Sec. Litig., 158 F.R.D. 270, 273 (S.D.N.Y. 1994). 	An
attorney may be disqualified based on this principle as explained
in the seminal case of T.C. Theatre Corp. V. Warner Bros.
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Pictures, Inc., 113 F.Supp. 265 (S.D.N.Y. 1953). 	The holding in
T.C. Theatre is as follows, 113 F. Supp at 268-69:
[T]he former client need show no more than that
the matters embraced within the pending suit wherein his
former attorney appears on behalf of his adversary are
substantially related to the matters or cause of action
wherein the attorney previously represented him, the
former client. 	The Court will assume that during the
course of the former representation confidences were
disclosed to the attorney bearing on the subject matter
of the representation. 	It will not inquire into their
nature and extent. 	Only in this manner can the lawyer's
duty of absolute fidelity be enforced and the spirit of
the rule relating to privileged communications be
maintained.
To compel the client to show, in addition to
establishing that the subject of the present adverse
representation is related to the former, the actual
confidential matters previously entrusted to the
attorney and their possible value to the present client
would tear aside the protective cloak drawn about the
lawyer-client relationship.
On some occasions, the term 		 	substantially related 	 	has been
narrowly interpreted to mean identical or essentially the same.
New York Marine & General Insurance Co. v. Tradeline and Deepak
Fertilizers and Petrochemicals Corp., 186 F.R.D. 317 (S.D.N.Y.
1999). 	In our view, Anderson must demonstrate that (1) the
subject matter of the 		 	567 application is identical or
essentially the same as the subject matter in the Anderson patent
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involved in Interference 103,708, and (2) the relationship
between Kokulis and Anderson is a 		 	prior representation 	 	within
the meaning of the substantial relationship test.
Anderson relies on case law to support its position that the
subject matter of 		 	567 is substantially related to the subject
matter in the interference. 	(Anderson Pet. at 14). 	However, in
none of the cases relied upon by Anderson are the facts the same
as the facts before us. 	Unlike the facts in the cases Anderson
cites, here the Cushman firm prepared and prosecuted only the
first of a series of several continuing applications that
ultimately led to the granting of the Anderson patent. 	Most of
the applications in the Anderson chain are continuations-in-part
of a prior application. 	The specification in the file of the
involved Anderson patent is 37 pages versus the 		 	567
specification which is 21 pages, indicating that the two are not
the same. 	This is not a situation, as in Sun Studs, Inc. v.
Applied Theory Associates, Inc., 772 F.2d 1557, 1565 (Fed. Cir.
1985), where the same law firm and attorney prepared and
prosecuted the patent application to issuance (from beginning to
end).
Anderson further argues that (1) 		 	567 is specifically
referenced in the Anderson patent, (2) the disclosure of 		 	567 is
incorporated in its entirety into the Anderson patent
specification, (3) the 		 	567 figures are the same as several of
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the Anderson patented figures, and (4) the examples in 		 	567 are
also found in the Anderson patent. 	(Anderson Pet. at 15).
While there may be some overlap between the Anderson patent
disclosure and the 		 	567 disclosure, Anderson has failed to
demonstrate, for example, that the 		 	567 application describes or
essentially describes the interfering subject matter (i.e., the
subject matter of Anderson  s claims involved in Interference
103,708). 	Until that is demonstrated, we decline to find that
similar facts and legal issues were involved in the prosecution
of '576 and in Interference 103,708.
Anderson directs us to a chart comparing certain Anderson
patent claims with certain 		 	567 claims to demonstrate that a
substantial relationship exists. 	Anderson then concludes that
since all of the Anderson patent claims have been designated as
corresponding to the count, then the subject matter in 		 	567 is
substantially related to the Anderson patent. 	(Anderson Pet. at
16-17). 	That facially there appears to be some overlap between a
few of the 		 	567 claims and a few of the Anderson patent claims
does not, without more, demonstrate that 		 	567 is substantially
the same or identical to the Anderson patent. 	Anderson has
failed to demonstrate that the claims it compares are identical
or essentially the same subject matter. 	There are at least two
noted differences in the claims that Anderson compares. 	The 		 	567
claim 1 recites enhancing blood cells that are infused in a
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patient. 	The Anderson patented claim 1 recites introducing
modified cells into a human. 	The 		 	567 claim 1 recites inserting
the modified cells into the same patient from whom the cells were
taken. 	The Anderson patented claim 1 recites introducing
modified cells into a human (not necessarily the same human from
whom the cells were taken, but any human).
Anderson provides no explanation of any differences between
the two sets of claims in its chart. 	We further note that
Anderson no longer relies on the 		 	567 application for purposes of
priority in the interference. 	(Finding 61). 	Accordingly, there
is an inference that 		 	567 and the Anderson application are not
identical or essentially the same. 	Anderson has failed to
overcome the inference.
Further, we will not take up the role of counsel in the
first instance and compare 		 	567 with the Anderson patent to
ascertain whether the two are essentially the same, i.e. that the
interfering subject matter is described in 		 	567. 	That is the
role of counsel. 	Ernst Haas Studio, Inc. v. Palm Press, Inc.,
164 F.3d 110, 112, 49 USPQ2d 1377, 1379 (2d Cir. 1999) (declining
invitation to scour record to make out a party's case for it).
"Judges are not like pigs, hunting for truffles buried in
briefs." 	United States v. Dunkel, 927 F.2d 955, 956 (7th Cir.
1991).
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For the reasons stated above, Anderson has failed to
demonstrate that the subject matter in 		 	567 is essentially the
same or identical to the subject matter in the Anderson patent.
Andereson arguably could prevail if it could successfully
demonstrated that Kokulis actually received confidential
information. 	See, e.g., Original Appalachian Artworks v. May
Dept. Stores, 640 F.Supp 751, 756 (N.D. Ill. 1986). 	Anderson
says Kokulis received confidential information, relying on the
fact that (1) Kokulis was listed on the Power of Attorney in 		 	567
and (2) Kokulis signed off on the task order for preparing and
prosecuting 		 	567. 	(Findings 13 and 14). 	Anderson concludes
that, for Kokulis to sign his name to the task order certifying
that there was no conflict between the interest of the Government
and other clients of the firm, Kokulis had to be intimately
involved with the subject matter of 		 	567.
We agree with Eppstein that listing all partners in a law
firm as having power of attorney is customary and does not
properly convey the idea that all of the listed attorneys are
actually involved in the preparation and prosecution of an
application. 	We take official notice that it is common knowledge
that not every attorney listed as having power of attorney is
responsible or even involved in the preparation and prosecution
of a patent application. 	Fed. R. Evid. 201; see also, In re
Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420-21 (CCPA 1970)
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(PTO tribunals, where it is found necessary, may take notice of
facts beyond the record which, while not generally notorious, are
capable of such instant and unquestionable demonstration as to
defy dispute).
Kokulis testifies that he did not receive any information
regarding 		 	567. 	(Findings 46-48). 	Kokulis further testifies,
along with supporting evidence, that he had no involvement in the
preparation or prosecution of 		 	567. (Findings 46 and 48).
Kokulis still further testifies that he believes that he signed
the specific task order in the absence of Scott. 	Both Kokulis
and Doescher testify that Scott, not Kokulis, was the project
director for all NIH projects. 	(Findings 30 and 45). 	Further,
there is no indication that Kokulis, upon signing the task order,
had to be intimately involved with the subject matter of 		 	567 to
signify that there was no conflict of interest. 	(Finding 60).
The record convincingly establishes that the Cushman attorneys
that actually worked on the 		 	567 application are no longer
affiliated with the Pillsbury law firm. 	(Findings 50-56).
Eppstein further submits evidence that demonstrates that the
567 file was returned to NIH, indicating that individuals at
Pillsbury currently do not have information with respect to 		 	567,
apart from that received in Interference 103,708. 	(Finding 59).
The record further establishes that while Cushman was responsible
for the preparation and prosecution of the 		 	567 application, it

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was not responsible for the preparation and prosecution of any
subsequent continuing applications that led to the Anderson
patent. (Finding 37).
We find that the declaration testimony of Kokulis and
Doescher is highly credible. 	In this respect, we credit the
declaration testimony of Eppstein's witnesses Kokulis and
Doescher over the declaration testimony of Anderson's witness
Haight whenever there is a conflict.5 	Cf. Semiconductor Energy
Laboratory Co. v. Samsung Electronics Co., 4 F.Supp.2d 477, 483
n.8, 46 USPQ2d 1874, 1879 n.8 (E.D. Va. 1998) ("In this regard,
and indeed generally, the Court credits the testimony of
Samsung's witnesses Dr. Fonash, Dr. Tsai, and Dr. Meyerson over
SEL's witnesses Dr. Lucovsky and Dr. Yamazaki whenever there is a
conflict."), aff'd, 204 F.3d 1368, 1376, 54 USPQ2d 1001, 1007
(Fed. Cir. 2000) ("As a generally matter, we first note that the
district court found Dr. Yamazaki and SEL's other witnesses to be
not credible. 	Instead, the district court credited the testimony
of Samsung's witnesses over that of SEL's whenever there was a
conflict.").
5 	The parties were entitled to an evidentiary hearing in this matter,
where witnesses could have been cross-examined and their demeanor observed. 	As
noted earlier, however, both parties waived a hearing and cross-examination.
Hence, our credibility determinations are made on the basis of declarations. 	See
Purdue Pharma L.P. v. Boehringer Ingelheim GmbH, 237 F.3d 1359, 1366, 57 USPQ2d
1647, 1651 (Fed. Cir. 2001), where Chief Judge Mayer for the court notes that
"[t]he district court credited the testimony via declaration of Robert F. Kaiko,
one of the named inventors ***, together with three exhibits that it found
demonstrated conception and [actual] reduction to practice" (emphasis added).
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Haight testifies to events that occurred prior to his
apparent 1991 employment or involvement with NIH. 	(Finding 24).
Haight does not testify as to how he is knowledgeable of the
events that took place prior to 1991. 	Kokulis and Doescher have
first-hand knowledge of Cushman practices and their involvement,
if any, with respect to 		 	567. 	Haight, on the other hand, has no
knowledge of pre-1991 events and practices at Cushman.
When one lawyer at a firm possesses client confidences
gained in the course of a prior representation, it can be
presumed that the confidences were shared with other attorneys
within the lawyer  s firm.	 	However, the presumption is
rebuttable. 	In re Del-Val Financial Corp. Securities Litig., 158
F.R.D. 270, 274 (S.D.N.Y. 1994). 	Based on the record before us,
Eppstein has sufficiently rebutted any presumption that
confidences were shared by Scott with Kokulis or any attorney now
at Pillsbury.
Anderson further argues that Kokulis has violated PTO
Canon 9 and therefore should be disqualified. 	(Anderson Pet.
at 17). 	It is true that under 37 CFR § 10.110, a practitioner
should avoid even an appearance of professional impropriety.
However, as we see it, courts generally are loath to utilize
Canon 9 for disqualification. 	Canon 9 "should not be used
promiscuously as a convenient tool for disqualification when the
facts simply do not fit within the rubric of other specific
- 21

ethical and disciplinary rules." 	Graciano Rocchigiani v. World
Boxing Counsel, 82 F.Supp.2d 182, 192 (S.D.N.Y. 2000), citing
International Elecs. Corp. v. Flanzer, 527 F.2d 1288, 1295
(2d Cir. 1975).
In the cases Anderson cites to support its position, there
was a determination that the current subject matter was
substantially related to a prior representation, leading to a
conclusion of the appearance of impropriety. 	In this case,
however, Anderson has failed to sufficiently meet its burden to
demonstrate that the subject matter described in 		 	567 and the
subject matter claimed in the Anderson patent involved in the
interference are substantially related. 	The cases relied upon by
Anderson are thus not controlling. 	Anderson has failed to
demonstrate that PTO Canon 9 provides a cogent reason for
disqualifying Kokulis.
Anderson lastly argues that Kokulis has violated several PTO
and D.C. Bar disciplinary rules6 (Anderson Pet. at 18).
According to Anderson, those violations include (1) alleged
misrepresentations on the part of Kokulis and (2) Kokulis 
continued representation of Eppstein upon becoming aware of a
potential conflict. 	Eppstein has called our attention to Federal
6 	The Code of Professional Responsibility of the District of Columbia is
not applicable in PTO. 	35 U.S.C. § 2(b)(2)(D), formerly 35 U.S.C. § 31. 	Hence,
we decline to address Anderson's reliance on provisions of the D.C. Code, and we
express no views whatsoever concerning any alleged violation by Kokulis of that
Code.
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court decisions which demonstrate that a violation of
professional ethics does not automatically result in
disqualification of counsel. 	See, e.g., W.T. Grant Co. v.
Haines, 531 F.2d 671, 677 (2d Cir. 1976) (  [T]he business of the
court is to dispose of litigation and not to act as a general
overseer of the ethics of those who practice in the court unless
the questioned behavior taints the trial of the cause before
it 	 ); Professional Services Industries, Inc., v. Kimbrell, 758
F.Supp. 676, 680 (D. Kan. 1991) (courts do not exist to
discipline attorneys, but to resolve disputes).
In any event, we have considered Anderson  s arguments and
conclude, based on the record before us, that Anderson has failed
to sufficiently demonstrate that Kokulis or the Pillsbury law
firm violated a disciplinary rule. 	Anderson argues that Kokulis
has (1) wrongfully accepted a representation adverse to Anderson,
and (2) falsely represented his prior representation in 		 	567 to
Administrative Patent Judge Andrew H. Metz and to his client
Eppstein. 	(Anderson Pet. at 19). 	On this record, the evidence
does not sufficiently establish that Kokulis intentionally misled
"anyone" about "anything."
Anderson argues that statements by Kokulis during the
conference call with Judge Metz (Finding 41) 		 	fly in the face of
Mr. Kokulis 	 	role as Project Director for Anderson I. 	 	(Anderson
Pet. at 20). 	As stated above, the record does not support a
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finding that Kokulis was the "director" of any project involving
567 (Anderson I). 	The record, if anything, establishes that
(1) Scott, not Kokulis, was the project director for 		 	567 (and
all other NIH projects in which Cushman may have been involved)
and (2) Kokulis signed the task order in the absence of Scott.
(Findings 30-31 and 45-46). 	Anderson has failed to establish
that Kokulis intentionally misled or made false statements.
Anderson further argues that Kokulis should not have
accepted the position of lead counsel in face of a potential
conflict. 	(Anderson Pet. at 22). 	However, Kokulis 	 	declaration
indicates that he never thought his representation of Eppstein
presented a conflict.
Anderson argues that disqualification of Pillsbury is
proper, since the Pillsbury law firm contains at least 15
partners that had an attorney-client relationship with Anderson.
(Anderson Pet. at 24). 	Anderson relies on the testimony of
Haight to support its position. 	Haight asserts that numerous
partners now at the Pillsbury firm worked on 		 	567 (apparently
solely on the basis that they were listed as having power of
attorney in 		 	567). 	(Finding 23). 	Haight's "wish" cannot be
converted into a finding supported by the record. 	As stated
earlier, the record establishes, and we take official notice that
it is customary that not all attorneys listed on a Power of
Attorney in a patent application are actually involved in the

24

patent application. 	The record further convincingly establishes
that (1) no one remaining at Pillsbury worked on 		 	567
(Findings 50-56), (2) no one remaining at Pillsbury received
confidential information regarding 		 	567 (Finding 32) and
(3) Pillsbury has no files regarding 		 	567 in its possession
(Finding 59).
"	%	 %
Anderson through counsel has alleged that Kokulis (bold
added):
(1) 	made "misrepresentations" to an Administrative
Patent Judge of this Board (Motion to Disqualify,
page 21),
(2) 	"sought to mislead the APJ" (Motion to Disqualify,
page 19),
(3) 	made "false and misleading statements" (Motion to
Disqualify, page 18),
(4) 	misrepresented facts to NIH (Motion to Disqualify,
page 20),
(5) 	"falsely represented his prior representation"
(Motion to Disqualify, page 19) and
(6) 	"engaged in a course of conduct involving
misrepresentations to the NIH, PTO and his client,
Eppstein" (Motion to Disqualify, page 22).
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The real party in interest in this matter is the United
States, not a private party. 	It is true that through some form
of a contract arrangement private counsel, not attorneys of the
Department of Justice, represents the United States in this
particular interference. 	Cf. 28 CFR § 0.45(f). 	We believe it is
appropriate to remind private counsel that when it represents the
United States, it, like all other Government attorneys, is bound
by the both the letter and the spirit of an observation made by
the Supreme Court in Berger v. United States, 295 U.S. 78, 88
(1935):
The United States Attorney is the representative not of
an ordinary party to a controversy, but of a sovereignty
whose obligation to govern impartially is as compelling
as its obligation to govern at all; and whose interest,
therefore, in a criminal prosecution is not that it
shall win a case, but that justice shall be done. 	As
such, he is in a peculiar and very definite sense the
servant of the law, the twofold aim of which is that
guilt shall not escape or innocence suffer. 	He may
prosecute with earnestness and vigor -- indeed, he
should do so. 	But, while he may strike hard blows, he
is not at liberty to strike foul ones. 	It is as much
his duty to refrain from improper methods calculated to
produce a wrongful conviction as it is to use every
legitimate means to bring about a just one.
It is our view that the obligation of attorneys representing
the Government applies equally to civil matters, including inter
- 26

partes, interference proceedings before the PTO. 	It is further
our view that the assertions of "false" and "misleading"
representations alleged to have been made by Kokulis are "foul"
blows.
We cannot imagine that an attorney for the Department of
Justice, on this skimpy record, would have even considered
alleging that Kokulis (1) sought to "mislead" an APJ (which he
did not), (2) made misrepresentations to the PTO and others
(which he did not) or (3) made "false" statements (which he did
not). 	These unfounded allegations should not have been made by
private counsel representing any client, but particularly counsel
representing the United States.
The Government, like any other client, is entitled to
zealous representation of its interests. 	However, when it
litigates, both before courts and administrative agencies, the
Government must not only be fair to its citizens, but it also
must appear to be fair. 	Accordingly, in the future, we expect
private counsel, and any NIH employee, representing the United
States in this or any related matter, to conduct litigation in
the manner in which we know it would have been conducted by the
Department of Justice attorneys. 	To the extent private counsel
may see this obligation as constituting having one hand tied
behind its back (which it is not), we observe that that is the
price an attorney pays for the privilege of representing the
- 27

%%
interests of the United States, a sovereign which has a long
tradition, and a firm policy, of conducting litigation against
its citizens only in a just and fair manner.
"
C. 	Order
Upon consideration of Anderson's petition to disqualify
Kokulis and Pillsbury, and for the reasons given, it is
ORDERED that the petition is denied.
FURTHER ORDERED that the Clerk shall transmit a copy of
this DECISION ON ANDERSON PETITION TO DISQUALIFY to all counsel
of record in Interference 103,708.
FURTHER ORDERED that the Clerk shall also transmit a
copy of this DECISION ON ANDERSON PETITION TO DISQUALIFY to the
Department of Justice at the addresses indicated below.
______________________________
FRED E. McKELVEY, Senior 	)
Administrative Patent Judge 	)
)
)
______________________________)
SALLY GARDNER-LANE 	) BOARD OF PATENT
Administrative Patent Judge 	) 	APPEALS AND
) INTERFERENCES
)
______________________________)
SALLY C. MEDLEY 	)
Administrative Patent Judge 	)
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103,708
cc (via Federal Express)
Attorney for Anderson
(real party in interest
United States of America as
represented by the Department
of Health and Human Services;
licensee Genetic Therapy, Inc.):
John Kilyk, Jr., Esq.
Jeffrey B. Burgan, Esq.
Bruce M. Gagala, Esq.
LEYDIG, VOIT & MAYER, LTD
Two Prudential Plaza
Suite 4900
Chicago, IL 	60601
Tel: 	312-616-5600
Fax: 	312-616-5700
E-mail: 	jkilyk@leydig.com
E-mail: 	jburgan@leydig.com
E-mail: 	bgagala@leydig.com
James C. Haight, Esq.
NATIONAL INSTITUTES OF HEALTH
Office of Technology Transfer
6011 Executive Blvd.
Suite 325
Rockville, MD 	20852-3804
Tel: 	301-496-7056 - ext. 242
Fax: 	301-402-0220
E-mail: 	jh34m@nih.gov
Attorneys for Selden
(real party in interest
Transkaryotic Therapies, Inc.):
Charles E. Lipsey, Esq.
Kenneth J. Meyers, Esq.
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.
1300 	I 	Street, N.W.
Washington, D.C. 	20005-3315
Tel: 	202-408-4000
Fax: 	202-408-4400
E-mail: 	charles.lipsey@finnegan.com
- 29

E-mail: 	ken.meyers@finnegan.com
E-mail: 	michael.siekman@finnegan.com
E-mail: 	None
Attorneys for Eppstein
(real party in interest
Roche Bioscience):
Paul N. Kokulis, Esq.
Michael R. Dzwonczyk, Esq.
PILLSBURY WINTHROP LLP
1100 New York Avenue, N.W.
9th Floor, East Tower
Washington, D.C. 	20005-3918
Tel: 	202-861-3000
Fax: 	202-822-0944
E-mail: 	pkokulis@pillsburywinthrop.com
E-mail: 	mdzwonczyk@pillsburywinthrop.com
William Schmonses, Esq.
HELLER, EHRMAN, WHITE & McAULIFFE
525 University Avenue
Palo Alto, CA 	94301-1900
Tel: 	650-324-7000
Fax: 	650-324-0638
E-mail: 	wschmonsees@hewm.com
Attorneys for Morgan
(real party in interest
Whitehead Institute for Biomedical Research;
Somatix Therapy Corporation; and Cell Genesys, Inc.):
Thomas E. Friebel, Esq.
Samuel B. Abrams, Esq.
PENNIE & EDMONDS LLP
1155 Avenue of the Americas
New York, NY 	10036-2711
Tel: 	212-790-9090
Fax: 	212-869-9741
E-mail: 	friebelt@pennie.com
E-mail: 	abramss@pennie.com
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Attorney for the United States [28 CFR § 0.45(f)]:
Hon. Vito J. DiPietro
Director
Commercial Litigation
Civil Division
U.S. Department of Justice
Washington, D.C. 	20530
Hon. Vito J. DiPietro
Director
Commercial Litigation
Civil Division
U.S. Department of Justice
1100 L Street, N.W.
Room 11116
Washington, D.C. 20530
Tel: 	202-514-7223
Fax: 	202-307-0345
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