Tales From The OED Crypt: Using Forged Document To Trick Witness Can Get Counsel Treated To Discipline

Michael E. McCabe, Jr.Discipline, Patent Attorney Disciplinary Matters, Patent Litigation Ethics, USPTO Decisions1 Comment

Pumpkin headLawyers often are accused of playing “tricks” in litigation. For those who are familiar with trial tactics, the “trick” label is usually nothing more than legal “tradecraft” – the techniques of experienced litigators to weave a story through a combination of arguments, documents, and witness testimony.

Pretending to read from a document while asking a question unrelated to the substance of the document is one “trial trick” that can be effectively used.  Presenting a witness with a document the lawyer herself knows to be fabricated yet represents to be genuine, on the other hand, can cross the line from zealous advocacy to unethical behavior.

The use of a forged document to “trick” an opposing expert witness was at the heart of a disciplinary matter decided first by the USPTO and, more recently, by the District of Columbia Court of Appeals.  See In re Steven B. Kelber, Board Dkt. No. 13-ND-002 (D.C. 2014).

The USPTO Interference Proceeding 

The case arose in part from misconduct during a patent “interference” proceeding. An “intereference” is a specialized form of administrative litigation conducted before a tribunal at the United States Patent and Trademark Office (PTO) to decide which of two competing inventors is entitled to a patent as the first inventor.  The particular case in question involved two biotech companies that had submitted patent applications in connection with antibodies designed to fight breast cancer.

One company (Chiron) submitted evidence that its antibody was effective and that Genentech’s (the other party) was not. To prove its claim, Chiron submitted two declarations from its expert, in which the expert stated that she had examined the scientific evidence submitted by Genentech and concluded that the evidence did not demonstrate to her that Genentech’s antibody could be useful as a diagnostic or therapeutic agent in breast cancer.

For purposes of cross-examination, an attorney representing Genentech (Kelber) selected and altered two pages from a genuine Genentech laboratory notebook. Those pages reflected the testing the expert testified showed the potential utility of the Chiron antibody.  Kelber modified the Bates number on the cover page of the notebook and left visible on the cover page just the printed words “Laboratory Notebook” and “Genentech, Inc.,” to which he added a new Bates number. Before its adulteration, the second page at issue included scientific data and a chart displaying information on the results of an experiment by Genentech showing that opposing party-Chiron’s antibody functioned as claimed. In changing that page, Kelber switched the identification of the antibody being tested by falsely identifying it as his client’s antibody rather than Chiron’s. He also changed some experimental details related to the data, the reference notebook, and Bates numbers reflected on the reference notebook.

Kelber used the fabricated document during the deposition of Chiron’s expert.  After the deposition, Chiron learned of the forged document.  Chiron moved for sanctions, arguing to the tribunal the document was a “complete fraud” used in an attempt to “trick” and “mislead the witness during cross-examination,” and violated Kelber’s ethical obligations.  During a conference call, Kelber acknowledged that he alone had created the document in question as a “demonstrative” exhibit in order “to establish a line of cross-examination” to demonstrate bias.

Ultimately, the tribunal issued a decision finding Kelber had engaged in inappropriate conduct: “Genentech’s creation and use of manufactured evidence and failure to timely admit to such conduct detracts from the just, speedy and inexpensive determination of the interference [proceeding]. . . . [T]he use of manufactured data, without identifying it as manufactured, is truly extraordinary.” The tribunal stated that attorneys who use manufactured evidence are tempted to play semantic games to mislead both witnesses and opposing counsel.

GoblinThe Disciplinary Proceedings

A disciplinary complaint was subsequently filed by the USPTO’s Office of Enrollment and Discipline (OED). The OED sought a 3-year suspension for a wide range of alleged ethics violations, including conduct involving “dishonesty” and conduct “prejudicial to the administration of justice.”

After an evidentiary hearing, an ALJ agreed that Kelber’s use of the fabricated deposition exhibit was dishonest and prejudicial to the administration of justice.  The bad news for the patent attorney: such conduct violated the USPTO’s Code of Professional Responsibility.

Presumably much to the surprise of the OED, notwithstanding the disciplinary tribunal’s findings, the ALJ recommended imposing only a 60-day suspension.  This was a mere fraction of the nearly 1200 days demanded by the OED Director.  Since no public record exists of either party appealing the ALJ’s recommendation, the 60-day recommendation became the “final” decision of the USPTO.

In 2014, the attorney received a reciprocal 60-day suspension from the D.C. Court of Appeals.  It is unclear why the matter was not raised earlier by the District of Columbia.

In any case, in a reciprocal proceeding, the D.C. Court agreed to impose the same term of suspension. But then it went a step further and decided to stay the suspension pending Kelber’s completion of a one-year term of probation. From a disciplinary defense viewpoint, this result was a “win” for the lawyer, since he was able to continue practicing law.  In staying the suspension, the D.C. Court explained:

Staying the suspension in favor of a one-year period of probation is justified largely because Respondent has already been subject to a 60-day suspension for his misconduct. Although the Court has an independent duty to impose a disciplinary sanction on Respondent that protects the courts, the bar and the public from attorney misconduct, his prior sanction appears to have accomplished the desired result. Imposing a suspension with probation provides further deterrence and a quick and significant sanction in the event Respondent engages in any further misconduct within the next year.

Looking Back

The Kelber matter is somewhat unusual as far as ethics cases involving dishonesty are concerned.  There is much authority regarding the lawyer’s ethical duties when he or she learns her client has committed, or intends to commit, perjury. There are relatively few reported instances where the lawyer himself created a fabricated document and then used that document knowingly in the course of a judicial proceeding to obtain favorable testimony.  And this may be the only matter (at least the only reported decision) in which the use of a forged document occurred in connection with an inter partes proceeding before the USPTO.

candyIn the final analysis, things could have turned out much worse for Mr. Kelber than “simply” a brief period of suspension (from the USPTO) or the fully-probated suspension (from D.C.).  While every case has its own nuances, considering the gravity of the charges against him, Kelber could have just as easily received the 3-year suspension sought by the OED.  Indeed, the ALJ could have decided a 3-year suspension was insufficient and recommended imposing an even longer suspension than that sought by the OED Director.  Considering those alternatives, Kelber was indeed fortunate.

Experience has shown it is very difficult for practitioners to come back from a multi-year suspension and successfully petition for reinstatement to the bar.  As a practical matter, attorneys who receive such discipline simply “move on” with their lives and find different ways to make a living.  Kelber was able to get his license back after a relatively short “time out” and can continue to practice law.

What a treat!

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