                                                        2017 WI 54

                  SUPREME COURT         OF   WISCONSIN
CASE NO.:              2016AP1770-D
COMPLETE TITLE:        In the Matter of Disciplinary Proceedings
                       Against Carl J. Schwedler, Attorney at Law:

                       Office of Lawyer Regulation,
                                 Complainant,
                            v.
                       Carl J. Schwedler,
                                 Respondent.

                          DISCIPLINARY PROCEEDINGS AGAINST SCHWEDLER

OPINION FILED:         June 1, 2017
SUBMITTED ON BRIEFS:
ORAL ARGUMENT:

SOURCE OF APPEAL:
   COURT:
   COUNTY:
   JUDGE:

JUSTICES:
   CONCURRED:          A.W. BRADLEY, J. concurs, joined by ABRAHAMSON,
                       J.
  DISSENTED:
  NOT PARTICIPATING:


ATTORNEYS:
                                                                          2017 WI 54
                                                                  NOTICE
                                                    This opinion is subject to further
                                                    editing and modification.   The final
                                                    version will appear in the bound
                                                    volume of the official reports.
No.    2016AP1770-D


STATE OF WISCONSIN                              :              IN SUPREME COURT

In the Matter of Disciplinary Proceedings
Against Carl J. Schwedler, Attorney at Law:


Office of Lawyer Regulation,                                           FILED
           Complainant,                                            JUN 1, 2017
      v.                                                             Diane M. Fremgen
                                                                  Clerk of Supreme Court
Carl J. Schwedler,

           Respondent.




      ATTORNEY       disciplinary     proceeding.          Attorney's         license

suspended.


      ¶1   PER      CURIAM.   On    September       12,   2016,    the    Office      of

Lawyer Regulation (OLR) filed a complaint and motion pursuant to

Supreme Court Rule (SCR) 22.22, requesting this court suspend

Attorney     Carl    J.   Schwedler's    license          to   practice       law     in

Wisconsin for a period of six months, as discipline reciprocal

to that imposed by the United States Patent and Trademark Office

(USPTO).     The OLR asked that we order restitution as described
herein and impose costs on Attorney Schwedler.                    Upon review, we
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agree that it is appropriate to suspend Attorney Schwedler's law

license for a period of six months.               Consistent with the terms

of the decision rendered by the USPTO, if Attorney Schwedler

seeks reinstatement of his license to practice law in Wisconsin,

reinstatement may require Attorney Schwedler to demonstrate that

he has made restitution to the client.                   We decline to impose

costs on Attorney Schwedler.

       ¶2     Attorney    Schwedler    was    admitted       to   practice   law    in

Wisconsin in 1990.          He was registered as a patent attorney by

the USPTO on April 19, 1993.           He was admitted to practice law in

California in 2006 and resides in California.

       ¶3     On October 31, 2009, Attorney Schwedler's Wisconsin

law   license    was     suspended    for    failure    to    pay    State   Bar   of

Wisconsin dues.        On June 8, 2011, his Wisconsin law license was

further suspended for failure to comply with continuing legal

education      requirements.         Attorney    Schwedler's         Wisconsin     law

license remains administratively suspended.                   In 2015, the State

Bar of California transferred Attorney Schwedler to "inactive
enrollment" for his failure to timely file a response to then

pending disciplinary charges.                He was subsequently disbarred.

On    March   18,   2015,    Attorney       Schwedler    was      administratively

suspended from practice before the USPTO.                He was later excluded

from practice before the USPTO.1
       1
       The OLR advises the court that "exclusion from practice"
before the USPTO effectively means disbarment.     An attorney
"excluded from practice" before the USPTO may petition for
reinstatement no earlier than five years after being "excluded
from practice." 37 C.F.R. §11.60.


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                                                                No.       2016AP1770-D



    ¶4      On    September   12,    2016,   the    OLR    filed      a    complaint

against    Attorney     Schwedler    alleging      that,   by   virtue       of    the

public sanction imposed by the USPTO on March 21, 2016, Attorney

Schwedler    is    subject    to    reciprocal     discipline      in      Wisconsin

pursuant    to    SCR   22.22.2     On   November    30,   2016,3         this   court

    2
        The relevant portions of SCR 22.22 provide:

    (1) An attorney on whom public discipline for
    misconduct or a license suspension for medical
    incapacity has been imposed by another jurisdiction
    shall promptly notify the director of the matter.
    Failure to furnish the notice within 20 days of the
    effective date of the order or judgment of the other
    jurisdiction constitutes misconduct.

    (2) Upon the receipt of a certified copy of a judgment
    or order of another jurisdiction imposing discipline
    for misconduct or a license suspension for medical
    incapacity of an attorney admitted to the practice of
    law or engaged in the practice of law in this state,
    the director may file a complaint in the supreme court
    containing all of the following:

    (a) A certified copy of the judgment or order from the
    other jurisdiction.

    (b) A motion requesting an order directing the
    attorney to inform the Supreme Court in writing within
    20 days of any claim of the attorney predicated on the
    grounds set forth in sub. (3) that the imposition of
    the identical discipline or license suspension by the
    Supreme Court would be unwarranted and the factual
    basis for the claim.

    (3) The supreme court shall impose the identical
    discipline or license suspension unless one or more of
    the following is present:

    (a) The procedure in the other jurisdiction was so
    lacking in notice or opportunity to be heard as to
    constitute a deprivation of due process.

                                                                        (continued)
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                                                                  No.   2016AP1770-D



directed         Attorney   Schwedler   to      inform   the   court    in   writing

within 20 days of any claim by him, predicated upon the grounds

set forth in SCR 22.22(3), that the imposition of discipline

reciprocal to that imposed by the USPTO would be unwarranted,

and of the factual basis for any such claim.                   Attorney Schwedler

did not file a response.            On March 23, 2017 this court issued an

order directing the OLR to respond to a series of questions

regarding this matter.            The OLR filed a response on April 6,

2017.

       ¶5         We first observe that the USPTO, a federal agency

with       its    own   licensing     and       disciplinary    proceedings,      is



       (b) There was such an infirmity of proof establishing
       the misconduct or medical incapacity that the Supreme
       Court could not accept as final the conclusion in
       respect to the misconduct or medical incapacity.

       (c) The misconduct justifies substantially different
       discipline in this state.

       (4) Except as provided in sub. (3), a final
       adjudication in another jurisdiction that an attorney
       has engaged in misconduct or has a medical incapacity
       shall be conclusive evidence of the attorney's
       misconduct or medical incapacity for purposes of a
       proceeding under this rule.
       3
       Some delay ensued as the OLR sought to accomplish proof of
service.     The OLR served Attorney Schwedler pursuant to
SCR 22.13(1), sending, by certified mail, an authenticated copy
of the complaint and motion and the order to answer to the most
recent address Attorney Schwedler had furnished to the State Bar
of Wisconsin.    These documents were not returned to the OLR.
The OLR also sent authenticated copies of the documents to an
address on file with the State Bar of California and the USPTO,
again without response.


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                                                                               No.     2016AP1770-D



appropriately considered "another jurisdiction" for purposes of

our    reciprocal        discipline         rule,         SCR    22.22(1).           See     In     Re

Discipline of Peirce, 122 Nev. 77, 78, 128 P.3d 443, 443 (2006),

reinstatement granted sub nom. In re Reinstatement of Peirce,

No. 62091, 2014 WL 4804214 (Nev. Sept. 24, 2014); People v.

Hartman, 744 P.2d 482 (Colo. 1987); People v. Bode, 119 P.3d

1098, 1100 (Colo. O.P.D.J. 2005); In Disciplinary Counsel v.

Lapine, 2010-Ohio-6151, ¶¶12-14, 128 Ohio St.3d 87, 89-90, 942

N.E.2d 328, 330-31.

       ¶6     Accordingly,           we consider          the following facts, which

are   taken      from    the     OLR's      complaint           and    from     the     certified

documents     attached          to    the   OLR's         complaint          relating       to     the

underlying disciplinary proceeding.

       ¶7   On    October        6,    2015,        the    United           States    Office        of

Enrollment       and      Discipline         (OED)         for        the     USPTO        filed     a

disciplinary       complaint          against       Attorney      Schwedler.               Attorney

Schwedler failed to respond and the OED eventually sought a

default judgment.          On March 21, 2016, the USPTO issued an order
finding Attorney Schwedler in default, such that he was deemed

to have admitted the allegations in the OED's complaint.                                           The

USPTO then sanctioned Attorney Schwedler for numerous violations

of    the   USPTO       Rules    of     Professional            Conduct.             Essentially,

Attorney Schwedler undertook to represent a client, G.Y., in a

patent      application,         accepted       a     $1,500          retainer,        and        then

abandoned the client and the patent application, failing to take

any action on the client's behalf.                        The Administrative Law Judge


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                                                No.   2016AP1770-D



(ALJ) concluded that Attorney Schwedler violated USPTO Rules of

Professional Conduct, as follows:

    1. C.F.R §11.103 proscribes failing to act with
    reasonable diligence and promptness in representing a
    client.     Respondent  agreed   to  take   over  the
    representation of a Client on a [patent] application
    and told the Client that he would file a response to
    the June 10, 2013, Final Office Action before
    September 10, 2013. Respondent failed to file that
    response allowing the [patent] application to become
    abandoned. After the [patent] application became
    abandoned, Respondent made no efforts to revive it.
    These lapses constitute violations of 37 C.F.R.
    §11.103.

    2. 37 C.F.R. §11.104(a)(3) proscribes failing to keep
    the client reasonably informed about the status of a
    matter. Respondent agreed to submit the appropriate
    filings to the USPTO by September 10, 2013, but failed
    to do so. This resulted in the [patent] application
    becoming abandoned. Respondent did not inform the
    Client of this development or that Respondent had not
    filed the response. It was only after the Client was
    notified by Respondent's former firm of the status
    that   Respondent  resumed  communications   with  the
    Client. Such conduct constitutes a violation of 37
    C.F.R. §11.104(a)(3).

    3. 37 C.F.R. §11.104(a)(4) proscribes failing to
    promptly   comply    with     reasonable  requests for
    information. As noted [above], Respondent did not
    resume communications with the Client until after the
    Client's son began to ask about the status of the
    [patent] application. The Client's inquiries into the
    status of the [patent] application were reasonable,
    especially in light of the fact that the Client was
    notified that the application had become abandoned.
    However Respondent's responses, though prompt, were
    not   compliant   with    the    Client's requests for
    information, because Respondent purposely gave the
    Client's son incorrect information by indicating that
    'everything is normal here' when in fact the [patent]
    application had become abandoned.



                                6
                                            No.   2016AP1770-D


4. 37 C.F.R §11.115(d) proscribes failing to promptly
deliver to a client any funds or property that the
client is entitled to receive. After the Client
informed   Respondent  that  responsibility  for  the
prosecution of the [patent] application had been
transferred to another registered practitioner, the
Client requested that the prototype for the invention
be returned to the Client. Respondent, however, did
not return the prototype to Respondent [sic] as
requested. Accordingly, Respondent violated 37 C.F.R.
§11.115(d).

5. 37 C.F.R §11.116(d) proscribes failing to surrender
papers and property to which the client is entitled
and to refund any advance payment of fee or expense
that has not been earned or incurred upon termination
of the practitioner-client relationship. The Client
agreed to pay Respondent $1,500 in advance for patent
legal services to be rendered. Respondent sent a
retention letter noting the $1,500 fee to the Client,
who promptly paid the fee.    Respondent also sent the
Client a September 18th invoice for $1,500, and
described in the September 18th invoice the services
rendered for the [patent] application as follows:
'Response to Office Action from USPTO and filing
continued prosecution application.' However Respondent
never earned this fee, because he never performed the
services agreed to, and described by, the September
18th invoice. After the Client informed Respondent
that his responsibility for the prosecution of the
[patent] application had been transferred to another
registered practitioner, Respondent did not return the
$1,500 fee that the Client prepaid. Accordingly,
Respondent violated 37 C.F.R §11.116(d).

6. 37 C.F.R. §11.804(c) proscribes conduct involving
dishonesty,   fraud,   deceit, or   misrepresentation.
Respondent agreed to represent the Client and file a
response to the June 10, 2013, Final Office Action.
He did not do so. Yet, Respondent sent the Client an
invoice suggesting that he had filed the response and
was   continuing    with   the prosecution    of   the
application.   Then after the Client's son contacted
Respondent regarding the status of the [patent]
application, Respondent sent an e-mail to the son
stating, 'I have everything in order for filing the
response' when in fact, the [patent] application had

                          7
                                                                     No.    2016AP1770-D


      become abandoned. Such statements were misleading and
      constitute    conduct   involving    dishonesty    and
      misrepresentation   in   violation   of    37   C.F.R.
      §11.804(c).

      7. 37 C.F.R. §11.801(b) proscribes knowingly failing
      to respond to lawful demands for information from a
      disciplinary authority. The OED sent Respondent an RFI
      that was never answered despite two subsequent
      communications prompting Respondent that his response
      to the RFI was due. The OED has provided documentation
      indicating that Respondent received all three pieces
      of correspondence. By failing to respond to the RFI
      and subsequent demands for a response, Respondent
      violated 37 C.F.R. §11.801(b).

      8. 37 C.F.R. §11.804(d) proscribes conduct that is
      prejudicial   to   the   administration   of   justice.
      Respondent failed to respond to the RFI. Respondent's
      conduct undermines the public's confidence in the
      profession's ability to regulate itself and is,
      therefore,   prejudicial  to   the  administration   of
      justice in violation of 37 C.F.R. §11.801(d).
      ¶8     The USPTO decision deemed Attorney Schwedler's actions

"knowing and intentional" and stated that they caused "actual

injury"     to   the     client         and    warranted    "a    severe    sanction."

Attorney Schwedler was excluded from practice before the USPTO

in patent, trademark, and other non-patent cases or matters.

See   In   the   Matter       of    Carl      J.    Schwedler,   Proc.   No.   D2015-38

(USPTO Dir. Mar. 21, 2016).                   As noted, "exclusion from practice"

is effectively disbarment from practice before the USPTO.                            The

order      states      that        if    Attorney       Schwedler    were      to   seek

reinstatement,         it     may       be     conditioned,      inter     alia,    upon

restitution to the client.

      ¶9     The OLR's complaint against Attorney Schwedler alleges

the following counts of misconduct:



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                                                                         No.        2016AP1770-D


       Count One:    By virtue of the OED public sanction,
       Attorney Schwedler is subject to reciprocal discipline
       in Wisconsin pursuant to SCR 22.22.

       Count Two:   By failing to notify the OLR of his OED
       public sanction for professional misconduct within 20
       days of the effective date of its imposition, Attorney
       Schwedler violated SCR 22.22(1).
       ¶10   We conclude that the facts of record demonstrate that

Attorney Schwedler violated SCR 22.22(1) by failing to notify

the OLR of his suspension within 20 days of the effective date

of its imposition.

       ¶11   Under SCR 22.22(3), in reciprocal discipline matters,

this court shall impose the identical discipline unless one or

more    of   the    exceptions       enumerated       in       the     rule        is    shown.

Attorney Schwedler has not made any claim or showing that any of

the exceptions to the imposition of reciprocal discipline set

forth in SCR 22.22(3) apply to this case.                          The OLR acknowledges

that    "identical"       discipline    cannot        be       imposed       here       because

SCR 21.16(1m) does not include "exclusion" from practice before

a court as a form of discipline available in Wisconsin.

       ¶12   The    OLR    also      asserts        that       a    six-month           license

suspension     is   a     proper   level       of    discipline         to         impose    for

Attorney     Schwedler's     misconduct.            The    OLR      seeks      a     six-month

suspension, rather than license revocation, because it believes

that Attorney Schwedler's misconduct justifies a substantially

different     discipline      in      Wisconsin,          as       authorized           by   SCR

22.22(3)(c). Attorney Schwedler's misconduct involved neglect,

misrepresentation, and failure to refund fees.                         The OLR asserts
that    in    Wisconsin,      such     misconduct          warrants            a     six-month


                                           9
                                                                            No.    2016AP1770-D



suspension.            See In re Disciplinary Proceedings Against Hooker,

2012 WI 100, 343 Wis. 2d 397, 816 N.W.2d 310 (imposing six-month

suspension in reciprocal discipline case for practicing without

a    license,          and   for   neglect     and     lack      of    competence        in    a

bankruptcy proceeding); In re Disciplinary Proceedings Against

Coplien, 2010 WI 109, 329 Wis. 2d 311, 788 N.W.2d 376 (imposing

six-month suspension in reciprocal matter for failing to act

with   reasonable            diligence   and      promptness          in    representing        a

client, failing to keep a client reasonably informed about the

status      of    a     matter,    failing     to    make       reasonable        efforts      to

expedite litigation consistent with the interests of the client,

failing to respond to a lawful demand for information from a

disciplinary             authority,        conduct             prejudicial          to        the

administration of justice, and conduct that tends to defeat the

administration of justice or to bring the courts or the legal

profession         into      disrepute);     In      re    Disciplinary           Proceedings

Against Ring, 168 Wis. 2d 817, 484 N.W.2d 336 (1992) (imposing

six month suspension in reciprocal discipline case for failure
to   file    an        appellate   brief     and     failure      to       keep   the    client

informed, and lack of candor rising to dishonesty, deceit or

misrepresentation).

       ¶13       The     OLR    emphasizes      that       a     six-month         suspension

requires a formal reinstatement proceeding before the suspended

attorney can be reinstated to the practice of law.

       ¶14       We agree that identical discipline is not an option in

this   case       so     a   different   sanction         must    be   imposed.          It    is
apparent from the language in the USPTO's decision that Attorney
                                             10
                                                                              No.     2016AP1770-D



Schwedler's misconduct was serious.                       The sanction imposed by the

USPTO requires a reinstatement proceeding.                              Attorney Schwedler

has not responded in this matter and has not challenged the

OLR's recommended sanction.                   Accordingly, we accept the OLR's

assertion that a six-month license suspension is appropriate and

we suspend Attorney Schwedler's Wisconsin law license for six

months as discipline reciprocal to that imposed by the USPTO.

       ¶15        The OLR initially asked this court to order Attorney

Schwedler to pay restitution in the amount of $1,500 to G.Y.                                     In

its April 6, 2017 filing, the OLR revised its recommendation and

asks the Court to condition Attorney Schwedler's reinstatement

upon       making    payment      to    the   client       in    the    amount       of    $1,500,

consistent with the terms of the USPTO disciplinary order.                                       We

agree and direct that Attorney Schwedler's reinstatement may be

conditioned upon payment of restitution to G.Y.

       ¶16        Finally,   we    decline        to      impose       the    costs       of   this

proceeding          on    Attorney       Schwedler.         See    In        re     Disciplinary

Proceedings Against Hooker, 2012 WI 100, ¶26, 343 Wis. 2d 397,
816 N.W.2d 310 (noting that in reciprocal discipline cases where

a referee is not appointed, costs are generally not imposed as

there       are    no    referee       expenses     and    the     proceedings         are     less

involved).4




       4
       The OLR inadvertently requested appointment of a referee,
but later rescinded that request.


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                                                                         No.    2016AP1770-D



    ¶17     IT IS ORDERED that the license of Carl J. Schwedler to

practice    law    in    Wisconsin      is   suspended         for   a      period   of   six

months, effective the date of this order.

    ¶18     IT IS FURTHER ORDERED that, to the extent he has not

already    done    so,     Carl    J.    Schwedler        shall      comply      with     the

provisions of SCR 22.26 concerning the duties of a person whose

license to practice law in Wisconsin has been suspended.

    ¶19     IT     IS    FURTHER     ORDERED           that    compliance        with     all

conditions of this order, compliance with all conditions of the

disciplinary order imposed on him by the United States Patent

and Trade Office, In the Matter of Carl J. Schwedler, Proc. No.

D2015-38 (USPTO Dir. Mar. 21, 2016), and a showing that Carl J.

Schwedler    has    paid    restitution           to   G.Y.    may     be    required     for

reinstatement.      See SCR 22.29(4)(c).

    ¶20     IT     IS     FURTHER       ORDERED         that     the        administrative

suspension of Carl J. Schwedler's license to practice law in

Wisconsin, due to his failure to pay mandatory bar dues and

failure to comply with continuing legal education requirements,
will remain in effect until each reason for the administrative

suspension has been rectified, pursuant to SCR 22.28(1).




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                                                                   No.   2016AP1770-D.awb


      ¶21      ANN WALSH BRADLEY, J.               (concurring).         I agree with

the     court's      mandate      but    I    write     separately       to     state      my

disagreement with the court's statement in ¶14 of the opinion

which states, "We agree that identical discipline is not an

option in this case so a different sanction must be imposed."

The United States Patent and Trademark Office (USPTO) excluded

Attorney Carl J. Schwedler from practice.                       The Office of Lawyer

Regulation (OLR) has advised this court that "exclusion from

practice" before the USPTO effectively means disbarment for five

years.    Majority op., fn 1.

      ¶22      We could indeed impose identical discipline.                         We could

revoke Attorney Schwedler's license to practice law in Wisconsin

under    SCR       21.16(1m)(a).        See   In   re       Disciplinary      Proceedings

Against Peiss, 2017 WI 49, ¶24, ___Wis. 2d ___, ___ N.W.2d ___,

(Abrahamson, J. concurring, stating that "disbarment in Illinois

appears to be identical to license revocation in Wisconsin.")

Rather,     in     this    case   we    exercise      our    discretion       and    opt   to

impose a lesser sanction in the form of a six-month suspension
of Attorney Schwedler's law license.                    For the reasons set forth,

I write separately.

      ¶23      I    am    authorized     to   state     that    Justice       SHIRLEY      S.

ABRAHAMSON joins this concurrence.




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