Lipman v. Dickinson, 96-1548

Citation174 F.3d 1363
Decision Date20 April 1999
Docket NumberNo. 96-1548,96-1548
PartiesSteven E. LIPMAN, Plaintiff-Appellant, v. Q. Todd DICKINSON, Acting Commissioner of Patents and Trademarks, Defendant-Appellee.
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Maxim H. Waldbaum, Fried, Frank, Harris, Shriver & Jacobson, of New York, New York, argued for plaintiff-appellant. With him on the brief was William K. West, Jr., Pillsbury, Madison & Sutro, LLP, of Washington, DC.

Kevin Baer, Associate Solicitor, Patent and Trademark Office, of Arlington, Virginia, argued for defendant-appellee. With him on the brief were Albin F. Drost Before NEWMAN, Circuit Judge, ARCHER, Senior Circuit Judge, * and BRYSON, Circuit Judge.

Acting Solicitor, and Nancy C. Slutter, Associate Solicitor.

Opinion for the court filed by Senior Circuit Judge ARCHER. Dissenting opinion filed by Circuit Judge PAULINE NEWMAN.

ARCHER, Senior Circuit Judge.

Steven E. Lipman appeals the July 23, 1996 judgment of the United States District Court for the District of Columbia, 95-CV-774, granting summary judgment to the Commissioner of Patents and Trademarks (Commissioner). On undisputed facts, the district court held as a matter of law that substantial evidence supported the Commissioner's determination that Lipman violated his duty of candor under 37 C.F.R. § 10.23(b)(4) and (c)(2)(ii) (1996) to the United States Patent and Trademark Office (PTO) and that the sanction imposed, a public reprimand, was not an abuse of discretion. We affirm. 1


The facts are contained in the Memorandum Opinion and Order of the district court dated July 19, 1996 and in the decisions of the Commissioner of the PTO and the ALJ. To the extent pertinent, they are set out below.

Steven E. Lipman represented Ronald Wallace whose application for registration to practice before the PTO was disapproved on March 5, 1990 by the PTO's Office of Enrollment and Discipline (OED). Wallace's application was denied despite the submission of seventeen letters and affidavits attesting to his character and reputation. These included four affidavits executed by attorneys who were members of the Vinson and Elkins (V & E) law firm. The V & E attorneys went into detail about the character and trustworthiness of Wallace, who was then an employee of that firm. In its disapproval of Wallace's application, the OED noted the supportive nature of the V & E affidavits, and specifically advised that Wallace might want to refer to the V & E affidavits if he reapplied.

Lipman prepared a draft of a petition to the Commissioner appealing the OED decision, which was due to be filed on May 7, 1990. The draft appeal petition was sent to Wallace for comment on April 27, 1990. In this draft Lipman relied heavily on the four V & E affidavits.

On April 30, 1990 Lipman received a sixteen page, single-spaced letter from J. Clark Martin, one of the V & E affiants. The letter stated that Martin and the three other V & E attorneys, who had previously filed affidavits in support of Wallace, had now changed their opinions of Wallace. Martin's letter stated that V & E had discovered new, additional facts that led the four affiants to believe that Wallace had not been candid with them or V & E's clients, had acted improperly while employed at V & E, and had acted improperly upon his separation from V & E. Martin's letter stated that the four V & E affidavits were not to be used "for any purpose whatsoever," and opined that Wallace and Lipman had a duty to notify the PTO of all of the activities outlined in his letter that bore directly on the issue of Wallace's candor and moral character. Martin's letter also asked for a copy of Wallace's appeal documents to ensure that the V & E affiants' request had been followed.

On receipt of Martin's letter, Lipman immediately telephoned Wallace and sent him a facsimile copy of the letter. Wallace told Lipman that Martin's accusations were based on misunderstandings and incorrect Lipman also consulted with Mr. Mittelberger, a lawyer in his firm, and had him modify the draft appeal petition to remove the references to the V & E attorneys by name and to remove quotations from their affidavits. The modified petition was filed with the Commissioner on May 7, 1990. The filed petition continued to refer to and rely on "seventeen" affidavits and letters, i.e. the same number as originally filed with the OED in support of Wallace's application. The number of affidavits and letters was not reduced to reflect the disavowal of the four V & E affidavits.

statements of fact. Lipman asked Wallace to prepare a written response to Martin's letter with Wallace's version of the events.

Before the modified appeal petition was filed Lipman wrote to Martin on May 4, 1990. Responding to Martin's request for a copy of the appeal documents as filed, Lipman stated that the appeal petition would not "directly refer to or quote from the Vinson & Elkins affidavits."

On May 7, 1990 Martin wrote Lipman another letter that was received by Lipman on May 8, 1990, the day after the appeal petition was filed. In this letter Martin informed Lipman that all the facts in his April 27 letter had been verified, and reiterated that the opinions of the four V & E attorneys regarding Wallace's character had changed since their affidavits were executed. Martin's letter also stated:

Mr. Wallace and you had ample time last week to disclose to the PTO in the documents you are filing today with the PTO the matters recited in my April 27, 1990 letter. However, in your May 4, 1990 letter you assert only that the papers you are filing with the PTO today no longer directly refer to our affidavits....

I am concerned that Mr. Wallace and you somehow indirectly gave the PTO the impression that our attorneys still maintain the same beliefs and opinions as are stated in the affidavits that are on file with the PTO.

In response Lipman wrote Martin on May 8, 1990, stating that he would not provide him with a copy of the appeal petition filed with the Commissioner but that a complete response to his April 27 letter would be forthcoming. On May 15, 1990 Lipman received Wallace's description of the events referred to in Martin's April 27 letter. Lipman then sent Martin a detailed 28-page letter describing Wallace's account of the events. In this letter and in a subsequent letter, Lipman asked for Martin's response.

On July 23, 1990 Lipman received a response from Martin which again confirmed the V & E affiants continued to hold their changed opinions as to Wallace's character. In the meantime, Martin had notified the PTO directly on June 29, 1990 that the four V & E affidavits were no longer valid and that they should not be relied on by the PTO. Lipman was not informed of Martin's direct contact with the PTO.

Based on Martin's response on July 23, 1990 Lipman wrote Wallace on July 30, 1990, to inform him that they must disclose to the PTO that the V & E affidavits had been withdrawn. Lipman began preparing a supplement to the appeal petition to that effect which he sent to Wallace on August 2, 1990. The supplement was not filed, however, because on August 2, 1990 Lipman received notice from the PTO that Wallace's registration proceeding was being returned to the OED in order that an investigation of the information received from Martin could be made.

In September of 1991, the OED initiated a disciplinary action against Lipman based on one count of violating his duty of candor as required, inter alia, under 37 C.F.R. § 10.23(b)(4) and (c)(2)(ii). Section 10.23(b)(4) provides that "[a] practitioner shall not engage in conduct involving dishonesty, fraud, deceit or misrepresentation." Section 10.23(c)(2)(ii) provides that "[c]onduct which constitutes a violation ... includes, but is not limited to ... knowingly giving false or misleading information or According to the OED, Lipman violated his duty of candor by misrepresenting the number of valid affidavits. The charge read as follows:

knowingly participating in a material way in giving false or misleading information ... to the [Patent and Trademark] Office or any employee of the Office."

By participating in a material way in preparing and filing a petition with the Commissioner wherein the petition relied on affidavits and opinions of the affiants when [Mr. Lipman] knew the Affiants had said the affidavits could not be used for any purpose, and by withholding from the PTO the fact that affidavits and opinions expressed therein had been withdrawn by the affiants prior to the filing of the petition, [Mr. Lipman] was not candid with the PTO, [Mr. Lipman] misrepresented facts in the petition, and [Mr. Lipman] otherwise engaged in professional misconduct.

After conducting a hearing, the Administrative Law Judge (ALJ) issued an Initial Decision on April 28, 1994 in which he concluded that the OED had proved by clear and convincing evidence that Lipman had violated his duty of candor under the above-quoted regulation sections. The ALJ recommended that Lipman receive a public reprimand. In support of his decision, the ALJ made the following specific finding:

8. By filing a petition with the Commissioner of Patents and Trademarks which referred to the 17 affidavits and letters which had previously been filed and urging their consideration despite the fact that [Mr. Lipman] had been informed and therefore knew that the opinions expressed in four of those affidavits had changed and that the affidavits had been withdrawn and therefore were no longer valid, [Mr. Lipman] knowingly gave misleading information to the PTO and in so doing [Mr. Lipman] intended to mislead the PTO in to [sic] believing the opinions expressed in those affidavits were still valid.

McLandish v. Lipman, No. D91-18, Initial Decision at 12, (April 28, 1994) (Initial Decision).

Lipman appealed this decision to the Commissioner, who adopted the factual findings and the recommended sanction of the ALJ. S...

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