Motions To Disqualify Opposing Counsel In Patent Trial And Appeal Board Proceedings

Motions to disqualify opposing counsel often raise difficult issues of legal ethics. Behind any motion to disqualify, two competing interests are implicated: the client's right to the attorney of its choice versus the need to maintain ethical standards of professional responsibility. Few things are as disconcerting to a litigant as the loss of access to trusted counsel.1 For these reasons and others, disqualification proceedings can be heated battles. Motions to disqualify opposing counsel in proceedings before federal courts are not uncommon,2 with such motions being used for both legitimate reasons and "purely tactical reasons, such as delaying the trial."3

With the enactment of the Leahy-Smith America Invents Act (the "AIA"),4 the filing of motions to disqualify counsel may become increasingly common in proceedings before the United States Patent and Trademark Office ("USPTO"). The AIA ushered in a new era of administrative trials before the Patent Trial and Appeal Board ("PTAB" or the "Board"), with such trials including inter partes review ("IPR") proceedings, postgrant review ("PGR") proceedings, covered business method ("CBM") patent proceedings, and derivation proceedings. Under 37 C.F.R. § 42.2, these trials are "contested cases"—adversarial proceedings that are "adjudicatory in nature and constituting litigation."5 In such contested cases, parties may increasingly seek to file disqualification motions for both legitimate and tactical reasons. Under 37 C.F.R. § 42.10(d), the PTAB is expressly given the authority to rule on disqualification motions.

Parties seeking to use disqualification motions to their advantage may need to temper their expectations, however, as prevailing on such a motion before the PTAB—or even obtaining authorization to file the motion—appears to be an uphill battle. The USPTO has stated, unequivocally, that motions to disqualify counsel are "disfavored."6 Decisions by the PTAB indicate that it will act in accordance with this notion: as of the date of publication of this Commentary, the PTAB has denied authorization to file motions to disqualify counsel in multiple proceedings and has not granted authorization in any.7 Further, the PTAB's decisions indicate that it will likely follow the lead of its predecessor, the Board of Patent Appeals and Interferences ("BPAI"), which set a high bar for disqualification of counsel in interference proceedings.

This Commentary details the statutory and regulatory bases for the PTAB's authority to act on disqualification motions, along with the rules and BPAI decisions that are likely to guide the PTAB in ruling on these motions. The PTAB's negative...