University of New Mexico v. Fordham University

Trial Section Panel NONPRECEDENTIAL
BOX INTERFERENCE
WASHINGTON DC 20231
703-308-9797
703-305-09 42 (fax)
Paper No. 47
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
UNIVERSITY OF NEW MEXICO
(5,747,332),
Junior Party,
v.
FORDHAM UNIVERSITY
(09/090,754),
Senior Party.
Interference No. 104,761
Before STONER, Chief Administrative Patent Judge, McKELVEY, Senior Administrative
Patent Judge, and TORCZON, Administrative Patent Judge.
TORCZON, Administrative Patent Judge.
DECISION ON REQUEST FOR RECONSIDERATION
(PURSUANT TO 35 U.S.C. 32)
INTRODUCTION
Junior party University of New Mexico (UNM) has requested reconsideration (Paper
No. 44) of a determination by a single administrative patent judge against recommending the
disqualification of Fordham University's counsel (Paper No. 43).
According to UNM, the administrative patent judge erred by analyzing its petition under
the wrong standard. Specifically, UNM argues that the administrative patent judge applied the

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standard applicable to former-client conflicts, despite having found that UNM is a current client
(at least at the time the conflict initially occurred). According to UNM, if the case had been
analyzed under the current-client standard for disqualification, then a recommendation for
disqualification should have resulted.
Fordham contends that UNM is not a client of its counsel, Pennie & Edmonds (P&E)
(Paper No. 32). The relationship between P&E and UNM is certainly attenuated: P&E
prosecuted a patent application on an unrelated technology on behalf of a third-party, where a
UNM employee was a co-inventor. UNM gave P&E a power of attorney and appears to be a co-
assignee on the application. Federal Circuit precedent illustrates the complexity in determining
whether an attorney-client relationship exists. See e.g., University of West Virginia v.
VanVoorhies, 278 F.3d 1288, 1304, 61 USPQ2d 1449, 1459 (Fed. Cir. 2002) (inventor-assignor
not a client despite interaction with the prosecuting attorneys); Sun Studs, Inc. v. Applied Theory
Assocs., 772 F.2d 1557, 1568, 227 USPQ 81, 89 (Fed. Cir. 1985) (power of attorney does not
necessarily create an attorney-client relationship); Telectronics Pty. Ltd. v. Medtronic, Inc.,
836 F.2d 1332, 1336, 5 USPQ2d 1424, 1427 (Fed. Cir. 1988) (assignment of interest does not
transfer status as client). In the present case, however, the administrative patent judge assumed,
without deciding, that UNM was a client of P&E. It is on the basis of that assumption that this
reconsideration must proceed.

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1 Interestingly, UNM's original petition cited this section, not § 1.613(c), as the basis for its request (Paper
No. 23 at 7).
2 Other recent Commissioner decisions on disqualification include:
Gilman Corp. v. Gilman Bros., 20 USPQ2d 1238 (Comm'r Pats. 1991) (former client);
Unico Am. Corp. v. Unico Banking Grp., 223 USPQ 684 (Comm'r Pats. 1984) (former client); and
(continued...)
DISCUSSION
Authority for disqualification
The authority for disqualification under 37 C.F.R. § 1.613(c) stems from the Director's
authority to suspend practitioners under 35 U.S.C. 32:
The Director may, after notice and opportunity for a hearing, suspend or exclude,
either generally or in any particular case[.]
A disqualification under § 1.613(c) is a limited delegation to the Board to exclude a practitioner
in a particular case. Cf. 37 C.F.R. § 10.130(b) (excluding disqualifications petitions from the
ambit of investigations and disciplinary proceedings under 37 CFR Part 10).1 The Director of
Enrollment and Discipline is charged with general responsibility for enforcement of the
Disciplinary Rules. 37 C.F.R. § 10.2(b)(2).
Relevant case law
A party requesting reconsideration bears the burden of demonstrating an error in the
determination under review. Cf. 37 C.F.R. § 1.655(a) ("The burden of showing that an
interlocutory order should be modified shall be on the party attacking the order."). UNM has
alleged that the wrong standard for disqualification was used. The first question is whether there
is binding authority requiring the application of a particular standard to the facts of this case.
UNM has cited the following Commissioner decisions:2

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2 (...continued)
Zavodu Vseob ecneho Strojire nstvi v. K.K. Toyoda Jidoshokki Se isaku, 2 USPQ2d 1222 (Comm 'r Pats.
1986) (not a client).
American Sigma, Inc. v. QED Enviromental Sys., 1989 Comm'r Pat. LEXIS 18;
Beghin-Say v. Rasmussen, 212 USPQ 614 (Comm'r Pats. 1980);
Halcon Int'l., Inc. v. Werbow, 1980 Comm'r Pat. LEXIS 1;
Plus Prods. v. Con-Stan Indus., 221 USPQ 1071 (Comm'r Pats. 1984); and
Sunkist Growers, Inc. v. Ansehl Co., 221 USPQ 1077 (Comm'r Pats. 1984).
All but Beghin-Say involved former clients. In Beghin-Say, the Deputy Commissioner
determined the attorney in question had not been Beghin-Say's attorney. UNM has not pointed to
a precedent of this agency setting a standard for disqualifying counsel with a current-client
conflict.
UNM has only cited one Federal Circuit decision, Picker Int'l v. Varian Assocs., 869 F.2d
578, 10 USPQ2d 1122 (Fed. Cir. 1989). The Federal Circuit applies the law of the regional
circuit in disqualification matters. Panduit Corp. v. All States Plastics Mfg. Co., 744 F.2d 1564,
1574-75, 223 USPQ 465, 471 (Fed. Cir. 1984). The Picker Int'l court applied the law of Sixth
and Tenth Circuits, where the certifying district courts were located. The court neither applied a
United States Patent and Trademark Office standard nor announced its own standard.
In Picker Int'l, a law firm representing Picker in suits against Varian merged with a firm
representing Varian in another matter. Varian refused to waive the conflict so the merged firm
tried to withdraw from its representation of Varian. The Federal Circuit held that the district
courts involved did not abuse their discretion in holding that Varian had been a client when the

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3 The precise sequence of events is not clear from the record. Either event, the addition of a new client or the
initiation of litigation against another party, should have been a trigger for a conflicts check. The fact that P&E identified
the conflict after the interference was declare d strongly suggests that it could have been identified earlier with reason able
diligence.
4 The evidence provided (UNM Exhibits 2013 & 2014) is hearsay accounts of what the third-party co-assignee
told UNM employees.
5 One exhibit re ports that the third par ty was "reluctant to sign a d eclaration on UN M's behalf if it would
interfere with the long-term relationship between" the third party and P&E (UNM Exhibit 2013 at ¶17). This statement
suggests that the third pa rty, at least, was not really droppe d as a client.
6 The dissent w ent further in its reje ction of any per se rule , noting the potential for abu se in disqualification
motions. 869 F.2d at 584, 10 USPQ2d at 1128. The Federal Circuit had previously endorsed a "restrained approach
towards disqualific ation". Tele ctronic s Pty., 836 F.2d at 1336, 5 USPQ2d at 1430, citing Second Circuit practice.
conflict arose (i.e., a "current" client). The court then applied Disciplinary Rule 5-105(B) (duty
of undivided loyalty) to conclude that the merged firm had impermissibly picked one client over
another. The court agreed with the district courts that the injury to Picker (having to hire
alternative counsel, which it had done) was outweighed by the injury to Varian, particularly in
light of the merged firm's failure to take reasonable steps to protect Picker's interests.
Analysis
There are several similarities between the present case and Picker Int'l. First, although
there is no merger in this case, the conflict arose when an attorney joined P&E and brought his
UNM-related work with him, while P&E was trying to provoke an interference against a UNM
patent.3 Second, once the conflict was identified, P&E tried, but failed to obtain consent from
the party requesting disqualification. Third, UNM alleges4 the P&E picked Fordham's real party-
in-interest over UNM and its co-assignee as the client P&E would keep.5
The Picker Int'l court, however, expressly rejected the notion of a per se rule for
disqualfication. 869 F.2d at 581, 10 USPQ2d at 1125.6 Instead, the court expressly approved of

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7 This is a particula r concern in pa tent interferenc es, where the n umber of regula r practitioners is relative ly
small.
the balance the district court struck regarding the harms to the parties. 869 F.2d at 584,
10 USPQ2d at 1127. No comparable balance exists here.
Balance is a particularly critical consideration in this case. UNM has conceded (Paper
No. 44 at 4) (a) that there is no substantial relationship between the subject matter of the P&E's
work on UNM's patent application and the subject matter of this interference and (b) that it has
not presented facts to support a sharing of confidences with P&E sufficient to warrant
disqualification under the former-client standard. The question thus framed is whether a current-
client conflict is a strict liability offense. Picker Int'l, applying Tenth Circuit law, has answered
that question in the negative. Rejection of a per se rule is sound policy because such a rule
would permit wasteful ancillary litigation for purely tactical reasons.7
In this case, there is no relationship between (a) the harm UNM may have suffered in its
unrelated patent application and (b) its ability to act in this interference. Although there is a
presumption of harm when a conflict arises between current clients, Picker Int'l, 869 F.2d at 581
10 USPQ2d at 1125, presumptions evaporate in the face of evidence, and the standard for
showing no harm (i.e., proving a negative) is lenient. Panduit Corp. v. All States Plastic Mfg.
Co., 744 F.2d 1564, 1579, 223 USPQ 465, 475 (Fed. Cir. 1984). In the present case, the
evidence showing an, at best, attenuated attorney-client relationship combined with no showing
of shared confidences supports a finding of no meaningful harm to UNM. This lack of harm
must be balanced against the actual harm to Fordham (not just P&E) that would result from
disqualification of its chosen counsel. It would serve no purpose to force Fordham to choose

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8 Applicants may now receive day-for-day extensions of term for time spent in an interference. 35 U.S.C.
154(b)(1)(C)(i). Thus, there is an injury to the public and to parties in other interferences if the Board spends its limited
resources add ressing questions be tter left to the Director of E nrollment and D iscipline rather tha n deciding que stions of
priority.
new counsel when continued representation by P&E causes UNM no harm. To the extent that
P&E may have harmed UNM in a way unrelated to this interference, UNM can seek redress
through the Office of Enrollment and Discipline or a relevant State bar.
The federal district courts have tended to take a more active role in policing attorney
conduct than one adopted here. The Board is not a federal court: it is part of an agency with its
own integrated regulatory scheme for addressing attorney misconduct. The Director of
Enrollment and Discipline is responsible for Disciplinary Rule enforcement generally and is
competent to police the conduct of the patent bar. The Board's mandate is to decide interferences
quickly and inexpensively, as well as justly, 37 C.F.R. § 1.601. It is not consistent with that
mandate to try to right putative wrongs that have no direct connection to the interference.8
ORDER
Upon reconsideration of the determination declining to recommend disqualification, it is:
ORDERED that the requested relief be DENIED; and

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FURTHER ORDERED that this interference be remanded to the administrative patent
judge designated to handle the interference.
BRUCE H. STONER, JR.
Chief Administrative Patent Judge
FRED E. McKELVEY
Senior Administrative Patent Judge
RICHARD TORCZON
Administrative Patent Judge
BOARD OF PATENT
APPEALS AND
INTERFERENCES
INTERFERENCE
TRIAL SECTION
Entered: 2 April 2002
cc (electronic mail):
Counsel for the University of New Mexico:
Debra A. Shetka (dshetka@mofo.com)
Thomas E. Ciotti (tciotti@mofo.com)
Counsel for Fordham University (Antigenics, Inc. - licensee):
Samuel B. Abrams (abramss@pennie.com)
Michael J. Ryan (ryanm@pennie.com)