Klein v. Peterson, Nos. 88-1578

CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit
Writing for the CourtBefore MARKEY, Chief Judge, NIES and MAYER; NIES
Citation866 F.2d 412,9 USPQ2d 1558
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.
Decision Date19 January 1989
Docket NumberNos. 88-1578,88-1579

Page 412

866 F.2d 412
9 U.S.P.Q.2d 1558
Arthur 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.
Nos. 88-1578, 88-1579.
United States Court of Appeals,
Federal Circuit.
Jan. 19, 1989.
Rehearing Denied Feb. 15, 1989.
Suggestion for Rehearing In Banc Declined Feb. 28, 1989.

Page 413

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

Page 414

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)...

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12 practice notes
  • Practice and procedure: Patent and trademark cases rules of practice; representation of others before Patent and Trademark Office,
    • United States
    • Federal Register December 12, 2003
    • December 12, 2003
    ...In re Klein, 6 USPQ2d 1547 (Comm'r Pat. 1987), aff'd sub nom., Klein v. Peterson, 696 F. Supp. 695, 8 USPQ2d 1434 (D.D.C. 1988), aff'd, 866 F.2d 412, 9 USPQ 2d 1558 (Fed. Cir. 1989); Small v. Weiffenbach, 10 USPQ 2d 1898 (Comm'r Pat. Paragraph (2) of Sec. 11.303(e) would include as miscondu......
  • Part II
    • United States
    • Federal Register December 12, 2003
    • December 12, 2003
    ...In re Klein, 6 USPQ2d 1547 (Comm'r Pat. 1987), aff'd sub nom., Klein v. Peterson, 696 F. Supp. 695, 8 USPQ2d 1434 (D.D.C. 1988), aff'd, 866 F.2d 412, 9 USPQ 2d 1558 (Fed. Cir. 1989); Small v. Weiffenbach, 10 USPQ 2d 1898 (Comm'r Pat. Paragraph (2) of Sec. 11.303(e) would include as miscondu......
  • Dorbest Ltd. v. U.S., Slip-Op. 06-160. Court No. 05-00003.
    • United States
    • U.S. Court of International Trade
    • October 31, 2006
    ...an absolute scale, the court may determine the reasonableness of Commerce's selection of surrogate prices."); cf. Klein v. Peterson, 866 F.2d 412, 414 (Fed.Cir.1989) (reconciling an agency's duty to find clear and convincing evidence of misconduct with the court's substantial evidence ......
  • Halvonik v. Dudas, No. CIV.A. 99-863.
    • United States
    • U.S. District Court — District of Columbia
    • August 8, 2005
    ...by substantial evidence, arbitrary or capricious, or otherwise not in accordance with law. 5 U.S.C. § 706(2); see also Klein v. Peterson, 866 F.2d 412, 414 (Fed.Cir.1989). This standard of review does not detract from the PTO's burden of proving its charges against Halvonik by "clear a......
  • Request a trial to view additional results
10 cases
  • Dorbest Ltd. v. U.S., Slip-Op. 06-160. Court No. 05-00003.
    • United States
    • U.S. Court of International Trade
    • October 31, 2006
    ...on an absolute scale, the court may determine the reasonableness of Commerce's selection of surrogate prices."); cf. Klein v. Peterson, 866 F.2d 412, 414 (Fed.Cir.1989) (reconciling an agency's duty to find clear and convincing evidence of misconduct with the court's substantial evidence st......
  • Halvonik v. Dudas, No. CIV.A. 99-863.
    • United States
    • U.S. District Court — District of Columbia
    • August 8, 2005
    ...by substantial evidence, arbitrary or capricious, or otherwise not in accordance with law. 5 U.S.C. § 706(2); see also Klein v. Peterson, 866 F.2d 412, 414 (Fed.Cir.1989). This standard of review does not detract from the PTO's burden of proving its charges against Halvonik by "clear and co......
  • Hewlett-Packard Co. v. Bausch & Lomb Inc., HEWLETT-PACKARD
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • August 9, 1989
    ...the PTO. Such intent usually can only be found as a matter of inference from circumstantial evidence. See, e.g., Klein v. Peterson, 866 F.2d 412, 415, 9 USPQ2d 1558, 1560 (Fed.Cir.) ("circumstantial evidence may permit an inference of intent"), cert. denied, --- U.S. ----, 109 S.Ct. 2432, 1......
  • Black and Decker, Inc. v. Hoover Service Center, Civ. No. H-87-851(WWE).
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Connecticut)
    • April 3, 1991
    ...1031 (1990). "Intent is found upon consideration of all the facts and circumstances involving the conduct in question." Klein v. Peterson, 866 F.2d 412, 415 (Fed.Cir.), cert. denied, 490 U.S. 1091, 109 S.Ct. 2432, 104 L.Ed.2d 989 (1989). There is in the record sufficient evidence from which......
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