Klock v. Kappos et al, No. 1:2009cv01003 - Document 31 (E.D. Va. 2010)
Court Description: MEMORANDUM OPINION pn Plaintiff's and Defendants' cross-Motions for Summary Judgment (Docket Nos. 14 and 17), denying Plaintiff Brian R. Klock's Motion for Summary Judgment, and granting Defendants David J. Kappos's and the USPTO& #039;s Motion for Summary Judgment because the USPTO's decision to deny Mr. Klock a filing date was not arbitrary and capricious and because Mr. Klock fails to meet the elements required for a writ of mandamus. /s/ by District Judge Gerald Bruce Lee on 7/21/10. (tbul, )
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Klock v. Kappos et al Doc. 31 IN THE UNITED STATES DISTRICT EASTERN DISTRICT OF COURT FOR THE VIRGINIA ALEXANDRIA DIVISION Brian R. Klock, Plaintiff, Case No. v. David J. Kappos, l:09-cv-1003 (GBL) et al., Defendants. MEMORANDUM OPINION THIS MATTER is before Defendants' 17). This Office's Cross-Motions case concerns (USPTO) the the the United States Court Nos. 14 & Patent and Trademark Klock's failing to state a claim. The is whether the USPTO's decision that Mr. motorcycle windshield as for shown" application failed to assert a 112, (Dkt. interpretation of Plaintiff Brian R. Klock's patent application § Plaintiff's and for Summary Judgment design patent application as issue before Court on the "The ornamental design for a was properly denied where "claim" the as required by 35 U.S.C. and was arbitrary and capricious under the Administrative Procedures Act ("APA"). The Court holds that the USPTO's decision to disallow the patent application was not arbitrary and capricious because "claim" the patent application failed to assert a and the USPTO examined the relevant data and articulated a satisfactory explanation for its decision. The Court Dockets.Justia.com accordingly denies Judgment Plaintiff Brian R. and grants Klock's Motion for Summary Defendants David J. Kappos's and the USPTO's Motion for Summary Judgment. I. Background A. The Patent Application Process When an inventor seeks to patent his invention, must submit a written application to the USPTO. 111(a)(1) (2006). The drawings, and an oath. describes the application must Id. at § 35 U.S.C. include a 111(a)(2). The invention in writing and must he or she § specification, specification "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant invention." Jd. at § 112. regards as his The inventor must draft each claim in a very technical manner because the claim "set [s] the legal boundaries for the patent owner's exclusive rights." Hyatt v. Dudas, F. 393 grounds, 492 Supp. 2d 1, F.3d 1365, 4 (D.D.C. 1370 (Fed. 2005); Cir. rev'd on other 2007). When an inventor files an application for a design patent, the application must (1) include: Design application transmittal (2) Application data (4) Specification. (5) Drawings or photographs. (6) 37 Fee (3) Executed oath or declaration. C.F.R. § transmittal form. 1.154(a) form. sheet. (2006). The fourth element, the specification, the must include six sub-sections, if applicable, in following order: (1) Preamble, title of of stating the name of the design, the applicant, and a brief description the nature and intended use of the article in which the design is embodied. (2) Cross-reference (unless to related applications included in the application data sheet). (3) Statement regarding federally sponsored research or development. (4) Description of the figure or figures of the drawing. (5) Id. Feature description. (6) A single claim. at § 1.154(b). Each of these subsections preceded by a section heading underlining or bold type." Id. When an inventor drafts claim, it must be the article claim: 37 C.F.R. ("MPEP") § as 1.153. 1.154(c). language of the design patent shown, or as shown and The Manual of Patent Examining states that the proper form of a claim is: The ornamental design for (III) § letters without "in formal terms to the ornamental design for Patent & Trademark Office, 1503.02 at the (specifying name) described." Procedure in uppercase "should be H 15.62 Manual of (5th ed. [invention] as shown." Patent Examination Procedure, rev. 2006).* Finally, "I U.S. § the MPEP 1 The exact language of the MPEP states, For proper form read: "[2] (37 claim: Examiner note: C.F.R. 1.153), the claim The ornamental design for [1] [3] amended to as shown." also states that "[t]he description of the article in the claim should be consistent in terminology with the title of the invention." Id. Once the reviews it inventor submits for completeness and, application a filing date. patent application is the invention, application is gives at § if complete, C.F.R. if it § the USPTO accords 1.53(b). the includes a description of USPTO notifies an opportunity to correct the the applicant fails to correct If the applicant and the errors. the errors allotted time period, the USPTO terminates C.F.R. However, Id. § 1.53(e)(3). revive" set under section 1.137, a forth in section 1.321. If the applicant corrects Id. the "is not at § and a fee 1.37(e). the errors within the allotted § design "petition to "terminal disclaimer," the USPTO then examines If 37 the applicant may revive a time period, 1.104. within the the proceedings. terminated design patent application by filing a the application. considered patentable, 1. In bracket 1, insert -- must be In bracket 2, insert -- I or - 3. In bracket 3, insert title of 37 C.F.R. or not --. 2. design is U.S. Id. l.53(e)(1). If as the A design and any required drawings. incomplete, the applicant 37 complete a claim, his application, (III) the We --. article in which the embodied or applied. Patent & Trademark Office, 1503.02 -- H 15.62 Manual of Patent Examination Procedure, (5th ed. rev. 2006). § considered patentable as claimed, the claims, considered unpatentable will be rejected." issues an "Office action detailing the or those Id. The USPTO then rejection and addressing the substantive matters which affect patentability." Patent and Trademark Office, United States a Guide to Filing a Design Patent Application 10, http://www.uspto.gov/web/offices/com/iip/pdf/brochure_05.pdf. If the applicant "persists in his or her application for a patent or reexamination proceeding," request reconsideration or amendment." 37 C.F.R. § If 1.111. B. Upon reply, USPTO Id. at § 1.112 the application a second time, considered a final action. Id. at § the 1.113(a). Plaintiff's Design Patent Application Mr. Klock, deposited U.S. an inventor from Mitchell, Design («»937 Application") reviewing his sent submission, Application" Klock a "Notice on March 7, (Admin. R. the USPTO denied Mr. it did not and the inventor's oath. Mr. 29/303,937 with the USPTO on February 20, Application a filing date because filing fees, South Dakota, Patent Application Serial No. Flared Windshield for a Motorcycle." USPTO with or without the the application. the USPTO rejects rejection may be "must reply and further examination, reconsiders and re-examines (2006). he or she 2008, Application's deficiencies. of at Klock's R. at "A After '937 at 9.) The Nonprovisional informing him about (Admin R. 1.) for include a claim, (Admin. Incomplete 2008, 9-10.) the '93 7 When Mr. Klock failed to timely correct the alleged deficiencies, terminated the proceedings Instead of on June 37 C.F.R. Grant of Filing Date Under original that § 1.137, Petition because "Request the C.F.R. 1.53(e)" filing date. Nine months C.F.R. in a July 6, later, 1.53(e)," (Admin. 2009, (Denial Letter, R. and (4) "Petition R. Admin. R. Klock filed a Petition for Grant of requesting at 66.) at that Klock's the USPTO The USPTO denied "Decision Denying 133-39.) four sections: (3) (1) "Discussion;" '937 Application. the (Admin. The Statute and Regulation section describes section sets forth the requirements application under 3 5 U.S.C. R. 2008, at 15.) applicable law that governs a design patent application. (Admin. for on July 2, The Background section provides history of Mr. 133-34.) of Mr. "Statute and Regulation;" "Decision." procedural at (2) '937 Application (Admin. letter titled The Denial Letter is divided into "Background;" at 14.) X937 Application again and dismissed the reconsider its dismissal. Petition"). at *937 Application the for Reconsideration of Denial the request the R. *937 Application remained incomplete. 61-64.) Filing Date Under 37 (Admin. Klock submitted a 37 2008, The USPTO reviewed the at Mr. the USPTO accord his February 20, (Admin R. 2008. filing a petition to revive under requesting 10, the USPTO 134-35.) §§ 111, R. the This for filing a design patent 112 and 37 C.F.R. § 1.153. The Discussion section states that the USPTO denied Mr. state a claim. Klock's '937 Application because The USPTO describes Mr. facts and law. (Admin. Decision section reiterates the Petition, and states action for purposes of R. at failed to Klock's arguments and systematically analyzes why each argument the it is 135-38.) unpersuasive under Finally, the the USPTO's main reason for denying that the decision is a final seeking judicial review. agency (Admin. R. at 139.) After receiving the Denial Letter, action against Klock seeks the USPTO and David J. (1) judicial review of Kappos, (2) requiring Defendants to either find that complete filing date allow Mr. Klock to amend the of J. at 9.) Cross-Motions counts of the Complaint. the '937 Application is (Compl. at 2008, that 12; or to it meets PL's Mot. Klock's for Summary Judgment on all Summ. J.; Defs.' Mot. J.) II. A. a writ of mandamus February 20, (PL's Mot. Standard of Discussion Review Under Federal Rule of Civil grant summary judgment Mr. decision under The case is now before the Court on Mr. and the Defendants' Summ. filed this its Director. X937 Application so the statutory filing requirements. Summ. Klock the USPTO's the Administrative Procedure Act and and issue a Mr. Procedure 56, the Court must if the moving party demonstrates that there is no genuine party is 56(c). entitled to judgment However, material issue of material fact at fact and that as a matter of law. the moving Fed. in an action brought under the APA, issue but only a question of R. Civ. P. there is no law: [W]hen a party seeks review of agency action under the APA before a district court, as an appellate tribunal. is a question of read, law, drawn about the Sharfstein, 988 properly about the but legal conclusion to be F.3d 860, see Marshall . 1226 . . 865 {D.C. Cir. 2009) County Health Care Auth. (D.C. Cir. the entire 1993) the district ("[W]hen an agency case on review is a Rempfer, 583 court may review agency F.3d at 865. reviewed according to the standard set Agency decisions are forth in 5 U.S.C. § which states: To the extent necessary to decision and when presented, the reviewing court relevant questions of law, and statutory provisions, shall decide interpret all constitutional and determine the meaning or applicability of the terms of an agency action. reviewing court shall (1) The compel agency action unlawfully withheld or unreasonably delayed; (2) v. law."). Under the APA, decisions. 583 F.2d 1221, action is challenged question of and the complaint, agency action. (quotations omitted); Shalala, judge sits actually presents no factual allegations, rather only arguments Rempfer v. the district The entire case on review and hold unlawful and set aside agency action, findings, and conclusions found to be 706, (A) arbitrary, capricious, discretion, an abuse of or otherwise not in accordance with law; (B) contrary to constitutional privilege, (C) in excess right, power, or immunity; of authority, statutory jurisdiction, or limitations, or short of statutory right; (D) without observance of procedure required by (E) unsupported by substantial law; case subject to sections evidence 556 in a and 557 of title or otherwise reviewed on the record of an agency hearing provided by statute; (F) this or unwarranted by the facts to the extent that the facts the reviewing court. In making the are subject to trial de novo by foregoing determinations, the court shall review the whole record or those parts of cited by a party, it and due account shall be taken of the rule of prejudicial error. 5 U.S.C. the § 706 (2006). standard of When reviewing decisions by an agency, review is presumption in favor of Valley Envtl. Cir. Coal. v. "highly deferential, finding the agency action valid." Aracoma 2009)(finding the U.S. valid under § Coal Co., agency action if 192 (4th actions the court should uphold the the agency has examined the relevant data' facts Vehicle Mfrs. State Farm Mut. Ass'n v. and its decision that includes a rational connection between the (1983). F.3d 177, Army Corps of Engineers' Generally, provided an explanation of 43 556 Ohio 706 when the Corps based its decisions on scientific studies). 29, with a found and the The reviewing court choice made." Auto Ins. Co., Motor 463 U.S. "may not supply a reasoned basis for the agency's action that given." Id. at 43. decision with less However, than ideal "even when an agency explains clarity, not upset the decision on that reasonably be discerned." v. Envtl. Prot. B. Count account a if reviewing court will the agency's path may Alaska Dep't of Envtl. 540 U.S. 461, 497 its Conservation (2004). Analysis 1. Agency, the agency itself has not I (Declaratory Judgment) The Court denies Mr. and grants Mr. Judgment Kappos' on count Klock's Motion for Summary Judgment and the USPTO's Motion I because for Summary the USPTO's decision Klock a filing date was not arbitrary, to deny Mr. capricious, an abuse of discretion or otherwise not in accordance with the law.2 section 706(a), the court must examine the agency's determine whether the agency's action was capricious. 5 U.S.C. § Aracoma Co., F.3d 177, Coal 556 706 (2006); 192 Under decisions to arbitrary or Ohio Valley Envtl. (4th Cir. 2009). an agency decision is not arbitrary and capricious Coal. v. Generally, if the agency considered the relevant data and presented a satisfactory 2 In count I, Mr. Klock seeks judicial review of the USPTO's denial of his petition to accord his %937 Application a filing date. Mr. Klock alleges that the USPTO's decision is unlawful under 5 U.S.C. §§ 706 (2) (A)-(D) and (2) (F). However, Mr. Klock does not present any arguments unlawful 706(2)(B), under Therefore, "arbitrary, § for how the USPTO's (2)(C), (2)(D), or the Court only reviews capricious, in accordance with law" [] decision is (2)(F). the USPTO's findings under the abuse of discretion, or otherwise not standard of 10 § 706(2) (A) . explanation for its connection between Vehicle Mfrs. 29, 43 States, Ass'n (1983) 371 decision that the facts v. found and 156, 168 Congress has not consider an intended it important it Auto the agency, or is ascribed to a difference expertise." so Co., Inc. v. 463 U.S. United "relied on factors which entirely failed to the problem, explanation for its decision that runs before Ins. Motor An agency ruling is to consider, aspect of choice made." Truck Lines, (1962)). arbitrary and capricious when "a rational the State Farm Mut. {citing Burlington U.S. includes counter to the evidence implausible in view or offered an that it could not be the product of agency Id. In Motor Vehicle Manufacturer's Association v. Mutual Auto Insurance Company, decision made by the National Administration (NHTSA). Id at State Farm the Supreme Court examined a Highway Traffic Safety 34. The NTHSA's decision revoked an earlier safety standard that required new motor vehicles be equipped with passive seat belts Id. The Court found that the NTHSA's because "failed to present an adequate basis and explanation it for rescinding" the decision was or air bags. to safety standard. arbitrary and capricious Id. Specifically, NTHSA failed to provide any findings or analysis decision, and gave "no indication of the basis agency exercised its expert discretion." 11 Id. the to justify its on which the at 48. If the agency had articulated a rescission, Here, "cogent" its decision would have been upheld. Defendants examined the a satisfactory explanation for relevant explanation for Id. relevant data and articulated their action, connection between the the facts premised on a found and the choice made. The Denial Letter thoroughly recounts, analyzes, each of Mr. single-spaced pages. First, the Klock's arguments letter describes Mr. phrase, "The ornamental shown," is the in three the claim. (Admin. letter recounts Mr. provisions of 37 design C.F.R. Klock's arguments that the for a motorcycle windshield as 135, 137.) Klock's arguments that: § and refutes R. 1.154 at are only and design patent application elements In particular, (1) "desirable" the provisions, that appear in a different order still comply with the requirements of 37 C.F.R § 1.153 (Admin. conforms" uses the R. at with the (2) the purported claim requirements of 37 language, (specifying name) 135-36); C.F.R. § "clearly 1.153 because it "the ornamental design for the article as shown" (Admin. R. at 136); (3) 35 U.S.C. § 112 H 2 does not expressly state that an application is not entitled to a filing date if with a claim" or "does not particularly point[] distinctly claim[] his invention" the application "does not conclude the subject matter which applicant regards as (Admin. no other reasonable out and R. at 136); interpretation" 12 (4) the purported claim "has than as a design patent claim (Admin. R. at 136); and (5) other design patent applications processed by the USPTO demonstrate that should recognize (Admin. R. at Second, the purported claim in the the USPTO %937 Application 137). Defendants articulated a satisfactory explanation for their decision to deny the In the Denial Letter, '937 Application a Defendants state that Mr. filing date. Klock's purported claim3 was not interpreted as a claim because: (1) did not of include the specification as appeared as a of the word claim; did not appear at the end 35 U.S.C. (3) R. at 138). satisfactory because Federal Regulations, patent application Further, 112; and it "Brief Description The Court holds the USPTO's based solely on the plain language of Code of § and therefore was considered part of the brief (Admin. explanation is required by it sentence below the heading of the Drawings" description (2) it (Admin. R. that this reasoning was the relevant statutes, and the MPEP when interpreting the at the USPTO did not 134-35, 137-38). "rely on factors which Congress has not intended it to consider, entirely fail[] important aspect of offer[] the problem, to consider an an explanation for its decision that runs counter to the evidence before the agency, [come to a decision that] as or is so implausible that it could not be 3 Klock claims that the phrase, motorcycle windshield, the "The ornamental design for a shown," 13 is the application's claim. ascribed to a difference expertise." contrary, Motor Vehicle Mfrs. Ass'n, 463 the Denial Letter demonstrates articulated a "rational the choices made" Application's 556 U.S. at 43. connection between the facts and regulations ambiguities F.3d at (Admin. R. to resolve at 1). 192. '937 Application should be language in the to state a claim. requires at 5-8; (Pi. PL's the Court to Mot. Summ. Reply at J. 1.) interpret the at Mr. 1; Klock contends However, this arbitrariness. not fails. w[t]he court is its judgment for that of Ohio Valley Envtl. Court must defer to Coal., the agency's Supp. argument '937 Application itself, decision Since interpreted PL's Mem. rather than simply review the USPTO's substitute '937 Ohio Valley Envtl. the J. found and the clear reasoning, Summ. for empowered to the agency," 556 F.3d at this argument 192. decision when the Instead, agency decision that includes a rational connection between the found and the choice made." the decision denying the patent "claim" as its facts Id. Even under a de novo review, assert a the "has examined the relevant data and provided an explanation of USPTO's the that Defendants Despite Defendants' that To because Defendants used the plain meaning of the governing statutes Coal., in view or the product of agency Court that the application for failing to required by 3 5 U.S.C. 14 holds § 112 is warranted. The '937 Application fails to state a claim because comply with four different claim requirements U.S.C. the § 112, 37 C.F.R. '937 Application's or more §§ 1.153-1.154, specification does claims particularly pointing out the subject matter which Mr. required by 35 U.S.C. R. at 1.) Instead, language, "FIGURE 7 (Admin. R. at 1.) § 112 the is and 37 uppercase a left and distinctly claiming § § '937 Application follows the (Admin. a claim R. 1.154(c). (Admin. the headings (Admin. MPEP. MPEP, (Admin. Mr. R. language of the specific format R. Klock's at (Admin. at the at 1.) Second, type," R. at requirement the "in as 1.) While Instead, the for the specification, it does separate heading specification does not C.F.R. § follow 1.153 and the In order to comply with the CFR and application should state, "J claim: The ornamental design for A Flared Windshield for a Motorcycle, shown." the 1.) for a claim under 37 1.) view thereof." section heading include a separate claim section with a the as '937 Application does not preamble and description sections of Third, invention, 1.154(b). letters without underlining or bold "claim." First, conclude with one side elevational not have specified in 37 C.F.R. entitled the MPEP. not to specification concludes with the In fact, '937 Application does C.F.R. fails set out by 35 Klock regards as his include a claim section at all. not and it his purported claim states, 15 as "The ornamental design for a motorcycle windshield, 1.) Finally, claim is the description of not consistent Application's invention is title. in the as shown." (Admin. invention R. at 1.) While *937 the title of "A flared windshield for a motorcycle," purported claim describes windshield." (Admin. Together, these R. the at invention as the the "a motorcycle 1.) failures demonstrate state a claim in the *937 Application. claim section at the end of no words stating "I language set out in the MPEP, claim" at in the purported terminology with the (Admin. R. the or that Mr. There is no specification, "we claim" Klock did not separate no claim heading, or tracking the claim and no words that are consistent in terminology with the title of the invention. (Admin. 1.) decision to Therefore, deny Mr. the Court holds that the USPTO's Klock's patent application because he claim in his R. failed to state a '937 Application was a proper application of existing law. Accordingly, the Court denies Mr. for Summary Judgment and grants Mr. Kappos' Klock's Motion and the USPTO's Motion for Summary Judgment on count I because the USPTO's decision to deny Mr. capricious, not Klock a filing date was not arbitrary, an abuse of discretion or otherwise not accordance with the does at state a law, and because Mr. claim. 16 in Klock's application 2. Count The II (Writ of Mandamus) Court denies Mr. and grants Mr. Kappos' Judgment on count Klock's Motion and the USPTO's II because Klock makes no argument amend the Motion the USPTO's Klock a filing date did not violate Mr. for Summary Judgment V937 Application so that decision to deny Mr. 5 U.S.C. for why he it meets "To obtain mandamus relief, show that: he has relief the sought; (2) specific act act or duty; right and justice 2009 U.S. and (5) in the App. 258 filing right to the a clear duty to do the act requested is an official issuance of circumstances." LEXIS {citing In re Braxton, the to statutory there are no other adequate means relief he desires; 1738, allowed a petitioner must the responding party has (3) 706 and because the a clear and indisputable requested; (4) § should be requirements. (1) for Summary 27023, at F.3d 250, *1 to attain the the writ will effect In re Kelley, (4th Cir. 261 (4th Cir. Dec. No. 11, 092009) 2001)) (internal quotation marks and citation omitted). Mr. Klock asks the requiring Defendants Court to to either: issue (1) application is complete and issue a 2008, that 11.) or (2) allow Mr. it meets However, elements the Mr. a writ find that of mandamus the filing date of Klock to amend the to satisfy four of required for a writ of mandamus. 17 February 20, '937 Application so statutory filing requirements. Klock fails '937 First, (Compl. at the five Mr. Klock does not prove that he has a clear and indisputable right a filing date or to amend the not have a right to a '937 application. filing date because denied his patent application when he of the application's both an specification. "arbitrary and capricious" does not have II.B.I, a right infra.) to amend the Further, Mr. Klock 10, procedures C.F.R. §§ 2008, and Mr. Klock for reviving his 1.37(e), Second, Mr. omitted the 139.) the the and de novo review, '937 Application. lost failed his to application right Klock does not show that R. '937 Application was As incomplete. Third, means the 133). 37 have a the record R. at Klock to amend time period for amendments § and Mr. Klock 1.37(e). 133.) mandamus is inappropriate because other adequate exist to attain relief. Mr. declaratory judgment under 5 U.S.C. means at statutory (Admin. Klock's application was terminated, at Application Defendants did not revive his application under 37 C.F.R. (Admin. Klock (Part follow the R. Mr. to amend the (937 (Admin. under 1.53(e)(3). '93 7 Application because Mr. lawfully claim section Defendants do not have a duty to allow Mr. expired, Klock does As described above, clear duty to do the specific act requested. reflects, Mr. Defendants '937 Application when the USPTO terminated his on June to receive for relief Klock's § 706 and therefore precludes 18 request is for a the appropriate relief through a writ of mandamus. affect Finally, Mr. Klock does right and justice. not if denied a Defs.' is overcome by the already has suit. n.6) a valid patent (Patent No. Consequently, relief and, Mr. Summary Judgment Klock fails the and grants S; Defs.' to prove Mr. III. Court denies fact that Mr. Klock issue Reply Ex. 4.) the elements Kappos's in this for mandamus Klock's Motion for and the USPTO's Motion II. Conclusion Plaintiff Brian R. Summary Judgment and grants Defendants Klock's Motion for David J. USPTO's Motion for Summary Judgment because to deny Mr. (PL's Reply 3; design at Court denies Mr. for Summary Judgment on count The filing date for the exact US D586,275 therefore, a writ would Any argument that he would be "forever prejudiced" Reply 13 show that Kappos's and the the USPTO's decision Klock a filing date was not arbitrary and capricious and because Mr. Klock fails to meet the elements required for a writ of mandamus. The Clerk is directed to Opinion to counsel Entered this of forward a copy of this Memorandum record. AftrBay of July, 2010. Gerald Bruce Lee Alexandria, Virginia United States District Judge 19
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