Klein v. Peterson

Citation866 F.2d 412,9 USPQ2d 1558
Decision Date19 January 1989
Docket NumberNos. 88-1578,88-1579,s. 88-1578
PartiesArthur O. KLEIN, Plaintiff-Appellant, v. Donald W. PETERSON, Deputy Commissioner of Patents & Trademarks, Donald J. Quigg, Commissioner of Patents & Trademarks, and the United States Department of Commerce, Patent & Trademark Office, Defendants-Appellees.
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

William J. Carter, Carr, Goodson, Lee & Foret, P.C., Washington, D.C., argued for plaintiff-appellant.

Harris A. Pitlick, Associate Sol., U.S. Patent & Trademark Office, Arlington, Va., argued for defendants-appellees. With him on the brief was Fred E. McKelvey, Sol. Also on the brief was Nathan Dodell, Asst. U.S. Atty., of counsel.

Before MARKEY, Chief Judge, NIES and MAYER, Circuit Judges.

NIES, Circuit Judge.

Arthur O. Klein appeals from the order of the United States District Court for the District of Columbia, Klein v. Peterson, 696 F.Supp. 695, 8 USPQ2d 1434 (D.D.C.1988), affirming the Amended Decision of the Deputy Patent Commissioner, In re Klein, 6 USPQ2d 1547 (Dec.Comm'r Pat.1987), which suspended Klein from practice before the United States Patent & Trademark Office (PTO) for two years and placed him on probation for another five years. Sanctions were imposed following a disciplinary proceeding instituted in the PTO pursuant to 35 U.S.C. Sec. 32 (1982) and 37 C.F.R. Sec. 1.348 (1984). That proceeding began when Klein was charged with four counts of misconduct during his practice before the PTO, including violation of 37 C.F.R. Sec. 1.56 (1984) by submitting eleven Certificates of Mailing to "backdate" documents filed with the PTO; 37 C.F.R. Sec. 1.344 (1984) by filing documents late, thus neglecting legal matters entrusted to him; and 37 C.F.R. Secs. 1.344 & 1.56 and certain provisions of the American Bar Association Code of Professional Responsibility by falsely answering the PTO's "Requirements for Information" during the investigation stage of the proceeding. We affirm. 1

I

The matter was initially referred to an Administrative Law Judge (ALJ) in the Department of Commerce. After an extensive period of discovery and a hearing, which was later reopened to consider additional evidence, the ALJ issued a Recommended Decision holding that each of the four charges was proven by clear and convincing evidence and recommending that Klein be disciplined. In re Klein, 6 USPQ2d 1528 (Dep't Comm.1986). The Deputy Commissioner reviewed the ALJ's holding and adopted the ALJ's recommendation with some modification. 2 In re Klein, 6 USPQ2d 1547 (Dec.Comm'r Pat.1987). Pursuant to 35 U.S.C. Sec. 32, Klein then filed a petition for review of the Deputy Commissioner's decision in the district court.

In his petition, Klein asserted three challenges to the validity of the PTO's proceedings. He attacked the disciplinary proceedings as a per se violation of due process, claiming that the statutes and regulations under which such proceedings were conducted were void for vagueness. He also urged that the proceedings, as conducted, violated due process. Finally, Klein asserted that the PTO Solicitor failed to carry the burden of proving the charges by clear and convincing evidence. The district court considered and rejected each challenge in a thorough opinion.

II

Klein urges reversible error in the district court's rulings on his procedural challenges to the propriety of the PTO's proceedings. We agree with the district court, however, that "[t]he disciplinary proceedings, as instituted against Klein, were neither per se nor in their application violative of [Klein's] constitutional right to due process." Klein, 696 F.Supp. at 698, 8 USPQ2d at 1436. Accordingly, we affirm the district court's order denying Klein's due process challenges on the basis of the court's opinion, those sections of which we adopt. Id. 696 F.Supp. at 697-98, 8 U.S.PQ2d at 1435-36.

III

We also reject Klein's substantive challenge to the merits of the rulings made by the PTO and the district court. The PTO bore the burden of proving its charges against Klein before the ALJ by clear and convincing evidence. See Jaskiewicz v. Mossinghoff, 822 F.2d 1053, 1058, 3 USPQ2d 1294, 1299 (Fed.Cir.1987). The district court recognized that its function was not that of a trier of fact, but to review "whether there was substantial evidence to support the action of the Patent Office." Klein, 696 F.Supp. at 698, 8 USPQ2d at 1436. To affirm under the substantial evidence standard, a court must conclude that the record as a whole contains "such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." Universal Camera Corp. v. NLRB, 340 U.S. 474, 477, 71 S.Ct. 456, 459, 95 L.Ed. 456 (1951); see also SSIH Equip. S.A. v. United States Int'l Trade Comm'n, 718 F.2d 365, 381-82, 218 USPQ 678, 692 (Fed.Cir.1983) (Nies, J., additional views). Thus, the precise question raised before the district court and which this court must now answer is whether a reasonable mind could have found the evidence of misconduct clear and convincing. 3

The principal charge, from which the other charges depend, is that Klein acted deliberately to mislead the PTO by representing that responses were mailed on certain dates when they were in fact mailed to the PTO after the dates specified. We hold that this charge is supported by substantial evidence.

In particular, the PTO's evidence showed that Klein experienced abnormally long delivery times for his filings with the PTO. Although the average mailing time from New York and Connecticut, where the responses were mailed, to the PTO was found to be five days, 4 the eleven certificates in question (of which Klein personally signed eight) arrived at the PTO, at best, eight days after they were certified as mailed and, at worst, over fifty days later. Klein attributes the delays to the United States Postal Service and attacks the statistical validity of the PTO's evidence, but the fact remains that no one in Klein's firm, other than Klein himself, experienced any mailing delays. Nor did other patent law firms in the same area.

Klein's firm recorded dates of PTO correspondence in a mail log. For all entries but the eleven papers in question, the "second date" entry is the date the firm received its return-receipt postcard from the PTO. In contrast, none of the relevant eleven entries showed such a date. Some entries corresponded to the PTO receipt date, some entries were simply absent, and some of the relevant log pages are missing from the log copies provided (the originals were apparently unavailable because lost in a move). Where there are entries for some of the subject papers, they are always the last entry on the log's page. Klein attributes these discrepancies to sloppy office practice and a misunderstanding of firm procedure by the employees who made the log entries. The inconsistency of the entries with all other firm mailings, however, is additional circumstantial evidence supporting the finding that the eleven certificates were not correctly dated.

Six of the eleven certificates required that fees accompany the papers when filed. In one of the six cases, the fee was charged to Klein's PTO deposit account and a check was not written. In four of the remaining cases, the dates of the checks accompanying the papers were out of chronological order when compared with the dates of the checks which bracket them. The final check was from a separate checkbook; it was apparently in sequence. Although the firm's checks generally reflect that their numerical order corresponded with chronological order, Klein pointed out that fifteen other checks, out of the approximately 400 written to the PTO during the time period examined, were out of sequential order with respect to check numbers and dates. Of those fifteen, however, nine are dated later rather than backdated in relation to the bracketing checks.

Klein's client correspondence further supports the PTO's charge. His routine practice was to inform clients when papers had been filed with the PTO by letter on the same day as the filing, or within at most two days thereafter. In eight of the eleven cases at issue, however, the letters were dated more than two days after the dates on the certificates of mailing. In all four cases for which out-of-sequence checks were written, the client letters were written late (four, six, ten, and eleven days after the certificate dates). Moreover, in all four cases the dates on the client letters corresponded with dates that would have placed the related checks in sequence. Klein does not address the client letter evidence.

Klein's contention on appeal is that the PTO did not prove its case by clear and convincing evidence and that, in order to find that it had, "the ALJ and the Deputy Commissioner chose to disbelieve all of Arthur Klein's evidence even though there was no basis stated for why they chose to disbelieve it." We disagree. First, it is not necessary to disbelieve all of Klein's evidence to find that he intended to mislead the PTO. Intent is found upon consideration of all the facts and...

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