[co-author: Stephanie Brooker, IP Legal Intern]

The Patent Trial and Appeals Board (PTAB) recently denied a Motion to Dismiss asserting the presence of a conflict of interest of USPTO Director Andrei Iancu.  In St. Jude Medical, LLC. v. Snyders Heart Valve LLC, the Patent Owner asserted that Director Iancu should be barred from participating in four inter partes review (IPR) petitions (IPR2018-00105, IPR2018-00106, IPR2018-00107, IPR2018-00108).  Prior to swearing in as Director of the United States Patent and Trademark Office, Director Iancu was the managing partner at Irell & Manella.  Director Iancu was named in and entered an Notice of Appearance in a pending infringement litigation involving the patents at issue in the IPRs.  Prior to being confirmed as Director of the USPTO, Iancu withdrew his representation of the Petitioner in the infringement suit.  Director Iancu also recused himself from the IPR proceedings and did not participate in the PTAB decision in any way.  The PTAB found that because Director Iancu recused himself, there was no basis to dismiss the four IPR petitions in view of the asserted conflict involving Director Iancu.

The Patent Owner further argued that the Administrative Patent Judges (APJs) should be barred from participation in the IPRs.  Because the APJs are subordinate employees of Director Iancu, the Patent Owner emphasized that they should be barred pursuant the ABA concept that disqualification of an attorney may be imputed to subordinates.  Finding the American Bar Association’s (ABA) Model Rules of Professional Conduct to be non-binding, the PTAB supported the view that being a subordinate of a recused Director is not enough to sufficiently establish that the APJs are “unable to carry out their pre-designated duties impartially.”