Jaskiewicz v. Mossinghoff, No. 87-1026

CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit
Writing for the CourtBefore DAVIS, NIES and BISSELL; DAVIS; NIES
Citation822 F.2d 1053,3 USPQ2d 1294
PartiesEdmund M. JASKIEWICZ, Appellant, v. Gerald J. MOSSINGHOFF, Commissioner of Patents and Trademarks, Appellee. Appeal
Docket NumberNo. 87-1026
Decision Date19 June 1987

Page 1053

822 F.2d 1053
3 U.S.P.Q.2d 1294
Edmund M. JASKIEWICZ, Appellant,
v.
Gerald J. MOSSINGHOFF, Commissioner of Patents and
Trademarks, Appellee.
Appeal No. 87-1026.
United States Court of Appeals,
Federal Circuit.
June 19, 1987.

Page 1054

Joseph G. Dail, Jr. (argued), McLean, Va., for appellant.

Harris A. Pitlick (argued), Associate Sol., Patent & Trademark Office, Washington, D.C., for appellee. With him on the brief were Joseph F. Nakamura, Sol. and Fred E. McKelvey, Deputy Sol. Also on the brief were Joseph E. DiGenova, U.S. Atty., Royce C. Lamberth, R. Craig Lawrence, Michael J. Ryan and Robert E.L. Eaton, Jr., Asst. U.S. Attys.

Before DAVIS, NIES and BISSELL, Circuit Judges.

DAVIS, Circuit Judge.

This is an appeal from the United States District Court for the District of Columbia upholding the decision of the Patent and Trademark Office (PTO or Patent Office) to suspend appellant Edmund Jaskiewicz from practice before the PTO for a period of two years and to place him on probation for an additional five years, based on three counts of misconduct. The District Court (Curran, J.), in a Memorandum Opinion, granted appellee summary judgment and denied appellant's petition for review. We reverse Counts One and Three of the charges of misconduct, uphold Count Two, and remand for reconsideration of the penalty.

I. Background 1

Appellant was found to have committed three counts of misconduct before the PTO. Count One involved misconduct surrounding appellant's execution and filing of a patent application in the name of Pierre Baronnet. The client was a West German assignee of the inventor, Baronnet. During the course of the United States patent prosecution, Jaskiewicz sent the client a colloquial English version of the Baronnet German patent claims, together with the U.S. claims, with a request that the inventor review the translation in conjunction with the entire patent application. Appellant also requested that Baronnet sign and date an attached declaration. Under 37 C.F.R. Sec. 1.57 (Rule 57) 2 the inventor was

Page 1055

required to sign an oath or declaration in person acknowledging the specification and claims to which it applied. 3 The client, in a telephone conversation with appellant, verbally approved the colloquial English translation and requested that Jaskiewicz submit the application along with a declaration that the inventor Baronnet had signed a few months earlier in conjunction with the same application but acknowledging a literal, rather than colloquial, translation of the German claims involved. 4 The PTO charged that submission of a patent application with a noncontemporaneous declaration of the inventor was improper under both Rule 57 and 35 U.S.C. Sec. 111. 5

The misconduct alleged in Count Two sprang out of appellant's request to amend the filing date of the Baronnet application. Appellant claimed that he had deposited the Baronnet application with the PTO on March 17, 1978, but received a filing date of March 30, 1978. On receipt of the petition to change the date, the PTO sent appellant a Requirement for Information, 6 which appellant claimed not to have received. The PTO then sent appellant a duplicate Requirement for Information, which appellant completed and remitted to the PTO. The PTO felt that Jaskiewicz had not adequately answered the queries posed and subsequently sent him a Second Requirement for Information, containing questions identical to those of the First Requirement, and requiring the inventor to answer questions three through seven. Upon reviewing the answers supplied, the PTO was dissatisfied with the replies and forwarded a Third Requirement for Information containing different questions from the First and Second Requirements. In response to the third inquiry, rather than respond to the questions asked, appellant withdrew his Request for a Correction of Filing Date, and petitioned that the application be accorded the March 30, 1978 filing date. The PTO then informed appellant that, since he had failed to answer the questions put forth in the Third Requirement for Information, the application was considered abandoned and forwarded it to the Solicitor of the PTO for review in light of the questions raised. Appellant subsequently submitted his responses to the Third Requirement for Information.

In originally answering three of the questions posed by the PTO, the PTO found that appellant tried to mislead the PTO into thinking that the inventor had all the application papers (including the colloquial English version) in front of him when he signed the declaration. 7 There was, however, evidence that the inventor had signed the declaration in conjunction with an earlier, literal English translation of the German claims and, at best, only verbally ratified the later colloquial translation some months later. The PTO contended that appellant breached his obligation of candor and good faith as required under 37 C.F.R. Sec. 1.56 (Rule 56) in answering the Requirement for Information regarding the Baronnet application. The PTO further contended that appellant had engaged in fraud, deceit and misrepresentation in answering the questions, in violation of 37 C.F.R. Sec. 1.344, Canon 1 and DR 1-102(A)(4)

Page 1056

of the Code of Professional Responsibility of the American Bar Association (1970).

Count Three involved misconduct surrounding appellant's filing of a patent application in the name of Schorwerth. Appellant Jaskiewicz prepared a specification and claims and sent them, along with a blank declaration, to the patent department of his West German client with instructions that the inventor review and return all the documents to appellant so that appellant could file them with the PTO. The client sent Jaskiewicz only the signed declaration and remitted the remaining materials directly to the PTO. Jaskiewicz was unaware that the client had remitted the original application to the PTO and, in light of a potential priority deadline, independently filed the executed declaration plus a copy of the specification and claims with the PTO. Jaskiewicz's application was therefore duplicative and the Patent Office held it abandoned as unnecessary.

When questioned about the filing activity surrounding the Schorwerth Application, Jaskiewicz presented uncontroverted testimony that he communicated by telephone with the West German client after he received the signed declaration but prior to filing the application with the PTO. Appellant asserted that the client in the West German patent department was not certain whether it had already submitted the application to the PTO. Appellant testified that, because a priority deadline was approaching, he submitted the duplicate materials to the PTO in order to secure priority. Jaskiewicz also submitted notes allegedly substantiating this telephone communication, but the Administrative Law Judge (ALJ) concluded that the notes had been fabricated. The ALJ's conclusion was based, however, at least in part, on a misunderstanding of the facts in the case. Specifically, the ALJ confused the facts incident to the Baronnet application with those in the Schorwerth application. Appellant did not produce any other papers regarding the Schorwerth application, contending that he had disposed of the files upon learning that the application had been abandoned as duplicative.

The PTO concluded that Jaskiewicz knew or should have known that the Schorwerth application was improperly signed but nonetheless deposited the application in the Patent Office. The PTO alleged that such actions violated Rule 56, 37 C.F.R. Sec. 1.344, Canon 1 and DR 1-102(A)(4) of the Code of Professional Responsibility of the American Bar Association.

II. Proceedings Below

A hearing was conducted before an ALJ of the PTO on September 26, 1983. By Recommended Decision of August 16, 1984, the ALJ found that there was sufficient evidence 8 that appellant had committed the acts of misconduct charged and recommended disbarment.

On appeal to the Commissioner of Patents and Trademarks, the Commissioner adopted, with modifications, the recommended decision of the ALJ on October 1, 1984. 9 The Decision and Order stated that appellant had violated 37 C.F.R. Secs. 1.344, 1.56, and 1.57, as well as Canon 1 and DR 1-102(A)(4) of the Code of Professional Responsibility of the American Bar Association. Appellant was suspended from practice before the PTO for a period of two years and placed on probation for an additional five years.

Jaskiewicz then filed a petition in the District Court for the District of Columbia under 35 U.S.C. Sec. 32. The District Court

Page 1057

concluded that substantial evidence supported the decision of the PTO, granted summary judgment in favor of the appellee and denied appellant's petition for review. This appeal followed. 10

III. The PTO's Authority

The Government's position is essentially that, in prosecuting the Baronnet and Schorwerth patent applications, the appellant was derelict in his duty of candor and good faith in practice before the PTO, in violation of Rule 56. The Government also asserts that appellant's actions amounted to fraud, misrepresentation, and deceit in violation of 37 C.F.R. Sec. 1.344, Canon 1 and DR 1-102(A)(4) of the Code of Professional Responsibility.

Appellant urges us to adopt the position that under Rule 56, which pertains to inequitable conduct before the PTO, sanctions are limited solely to holding a patent unenforceable. Appellant therefore claims that no attorney sanctions are proper under Rule 56. 11 However, Rule 56 expressly charges the attorney with a duty of candor and good faith before the Patent Office. In instances where a person entitled to practice before the PTO has breached that duty of candor and good faith in prosecuting a patent application, it may well be appropriate or necessary to issue sanctions directly against that attorney or agent--at least in circumstances where there has been an...

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10 practice notes
  • Part II
    • United States
    • Federal Register September 21, 2004
    • September 21, 2004
    ...65 FR 54603, 54633 (Sept. 8, 2000), 1238 Off. Gaz. Pat. Office 77, 103 (Sept. 19, 2000) (final rule); see also Jaskiewicz v. Mossinghoff, 822 F.2d 1053, 1061, 3 USPQ2d 1294, 1301 (Fed. Cir. 1987) (practitioners have a duty to [[Page 56513]] and forthrightly answer requirements for informati......
  • Practice and procedure: 21st Century Strategic Plan; implementation,
    • United States
    • Federal Register September 21, 2004
    • September 21, 2004
    ...65 FR 54603, 54633 (Sept. 8, 2000), 1238 Off. Gaz. Pat. Office 77, 103 (Sept. 19, 2000) (final rule); see also Jaskiewicz v. Mossinghoff, 822 F.2d 1053, 1061, 3 USPQ2d 1294, 1301 (Fed. Cir. 1987) (practitioners have a duty to [[Page 56513]] and forthrightly answer requirements for informati......
  • Schneider (Europe) AG v. SciMed Life Systems, Inc., No. 3-91 CIV 241.
    • United States
    • United States District Courts. 8th Circuit. United States District Court of Minnesota
    • April 25, 1994
    ...but also actual knowledge of falsity, or an obligation to know it, before the threshold intent is met. Jaskiewicz v. Mossinghoff, 822 F.2d 1053, 1058 (Fed.Cir.1987). An applicant's conduct must manifest a sufficiently culpable state of mind to warrant a determination that conduct was inequi......
  • Symbol Technologies, Inc. v. Opticon, Inc., No. 90-1409
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • June 14, 1991
    ...However, we have repeatedly rejected the simple negligence standard that Opticon urges us to adopt. See, e.g., Jaskiewicz v. Mossinghoff, 822 F.2d 1053, 1058, 3 USPQ2d 1294, 1299 (Fed.Cir.1987) ("[m]ere negligence is not sufficient to infer fraud or dishonesty"). Moreover, even a ......
  • Request a trial to view additional results
8 cases
  • Schneider (Europe) AG v. SciMed Life Systems, Inc., No. 3-91 CIV 241.
    • United States
    • United States District Courts. 8th Circuit. United States District Court of Minnesota
    • April 25, 1994
    ...but also actual knowledge of falsity, or an obligation to know it, before the threshold intent is met. Jaskiewicz v. Mossinghoff, 822 F.2d 1053, 1058 (Fed.Cir.1987). An applicant's conduct must manifest a sufficiently culpable state of mind to warrant a determination that conduct was inequi......
  • Symbol Technologies, Inc. v. Opticon, Inc., No. 90-1409
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • June 14, 1991
    ...However, we have repeatedly rejected the simple negligence standard that Opticon urges us to adopt. See, e.g., Jaskiewicz v. Mossinghoff, 822 F.2d 1053, 1058, 3 USPQ2d 1294, 1299 (Fed.Cir.1987) ("[m]ere negligence is not sufficient to infer fraud or dishonesty"). Moreover, even a ......
  • Marinangeli v. Lehman, No. CIV.A. 97-2556 (JHG).
    • United States
    • United States District Courts. United States District Court (Columbia)
    • October 28, 1998
    ...of suspension, or five years, whichever is shorter. See 37 C.F.R. § 10.160(a) & (b). Marinangeli cites Jaskiewicz v. Mossinghoff, 822 F.2d 1053 (Fed. Cir.1987) and Weiffenbach v. Lett, 1101 O.G. 59 (Comm'r Pats.1989) as support for the proposition that he has been treated more unfairly ......
  • Orient Exp. Trading Co., Ltd. v. Federated Dept. Stores, Inc., No. 540
    • United States
    • U.S. Court of Appeals — Second Circuit
    • March 25, 1988
    ...Knorr-Nahrmittel Aktiengesellschaft v. Havland International, Inc., 206 U.S.P.Q. 827, 834 (T.T.A.B. 1980). Cf. Jaskiewicz v. Mossinghoff, 822 F.2d 1053, 1058 (Fed. Cir.1987) (applying same standard to attorney fraud before PTO). The allegedly fraudulent statements may not be the product of ......
  • Request a trial to view additional results

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