A.S. v. B.R.

When a practitioner in an interference communicates with an administrative patent judge or Board administrator on the merits, or on procedure affecting the merits, or to change the status quo of the interference, without service on or notice to opposing counsel, the communication is improper under 37 CFR § 10.93(b), and the Board will not condone it. Ex parte contact with an administrator is acceptable only for general or purely procedural matters, such as arranging a conference call after notice to the opponent. E-mail to the Trial Section about a particular interference will be returned unanswered unless it shows on its face that it was served by e-mail on opposing counsel. No prior precedent directly addressed this issue. The decision acknowledges that ex parte contacts with judges may have occurred in past practice, and it announces that practitioners must now adhere strictly to the principle that most ex parte communications with a judge are improper. For the opposing party, the rule means it must be served with, or given notice of, any communication on the merits or on changing the interference's status quo. It also means a party can expect the Board to return unserved e-mail unanswered. For the party who communicates, even an apparently procedural query that invites sua sponte Board action is improper, and counsel who doubt propriety should file a served paper or arrange a mutual conference call. The Board relied on 37 CFR § 10.93(b), 37 CFR § 1.646, 15 CFR § 0.735-10a, 5 CFR § 2635.101(b)(8), Canons of the Code of Conduct for United States Judges (as guidance) and 5 U.S.C. § 557(d)(1). It cited no court decision. LEGAL TEST OR STANDARD: Under 37 CFR § 10.93(b), in an inter partes proceeding a practitioner shall not communicate, or cause another to communicate, as to the merits of the cause with a judge, official, or Office employee before whom the proceeding is pending, except (1) in the course of the official proceedings, (2) in writing if a copy is promptly delivered to opposing counsel, (3) orally upon adequate notice to opposing counsel, or (4) as otherwise authorized by law. The Board treated matters relevant to the merits as including the procedure for establishing the record. Its first general rule is that ex parte communication with a judge to change, or to determine how to change, the status quo of an interference is probably 100% improper. Its second general rule is that the same is true for ex parte communication with an administrator to change the status quo, while procedural questions are acceptable. If there is any doubt, do not make the ex parte communication. TRIGGERING FACTS: Senior party's counsel e-mailed a Trial Section administrator about an obvious error in the count of a newly declared interference. The e-mail asked whether a conference call was needed or whether counsel could just tell the administrator or the judge and have them correct it via a supplemental order. The e-mail showed no service or notice to junior party's counsel, who confirmed he never received it. The Board read the e-mail as plausibly seeking sua sponte action by the judge, and so as an improper attempt to change the status quo. Such a communication falls inside the prohibition. A served paper, or a call placed after notice to opposing counsel, falls outside it. KEY QUOTE: "In the future, any e-mail received by the Trial Section plausibly related to a particular interference will be returned unanswered if it does not on its face indicate "service" by e-mail upon opposing counsel." (Paper 10, p. 14) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: Never send the Board an unserved e-mail or call about a particular interference. Instead, file a paper served on opposing counsel, or first notify opposing counsel and agree on a mutual time for a conference call. Copy opposing counsel by e-mail on every e-mail to the Trial Section. Do not use e-mail in place of filed pleadings, and do not simply announce a call time to your opponent after scheduling it.