United States District Court, E.D. Virginia, Alexandria Division
T. S. Ellis, III, United States District Judge
In this 35 U.S.C. § 145 action, plaintiff challenges a United States Patent and Trademark Office ("PTO") decision rejecting the patentability of the inventions claimed in U.S. Patent Application Serial No. 07/773, 161 (the " '161 Application"). At issue on plaintiffs motion for partial summary judgment, filed before the conclusion of discovery, are (i) whether the PTO's defense of lack of standing is barred by the doctrine of collateral estoppel, and (ii) whether the PTO's claim for attorney's fees pursuant to 35 U.S.C. § 145 must be stricken. Because the matter has been fully briefed and argued orally, it is now ripe for disposition.
The undisputed material facts set forth here are derived from the parties' statements of undisputed material facts, which are based almost entirely on the Administrative Record ("AR").
• Plaintiff Realvirt, LLC, is a Delaware Corporation with its office in Massachusetts.
• Defendant Michelle K. Lee is the Under Secretary of Commerce for Intellectual Property and the Director of the PTO.
• Plaintiff is the purported assignee and owner of the '161 Application, which describes inventions related to "innovative computer networking technology." Compl. ¶ 8.
• Anthony Z. Bono and Joachim C.S. Martillo are two of the six declared inventors of the inventions claimed in the '161 Application, which was originally filed on October 8, 1991.
• In 2007, Bono and Martillo, by counsel, filed a petition to revive the '161 Application, along with various attachments that purport to explain why Bono and Martillo had true and full ownership of the
§ 161 Application. See AR, at Al 17-54.
• On February 28, 2013, after undertaking prosecution of the
§ 161 Application with Bono and Martillo, the PTO, through the Office of Patent Legal Administration ("OPLA"), issued an Order to Show Cause challenging Bono's and Martillo's claims to ownership of the '161 Application. See AR, at A886-90.
• Importantly, around this time in February 2013, Bono and Martillo recorded with the PTO assignment documents that purport to transfer Bono's and Martillo's ownership interests in the '161 Application to plaintiff. See PI. Ex. 7, Assignment Documents.
• On June 10, 2013, the OPLA issued a Second Order to Show Cause challenging Bono's and Martillo's ownership interests in the '161 Application. AR, at A990-92.
• On August 9, 2013, Bono and Martillo, by counsel, filed a response to the Second Order to Show Cause in which Bono and Martillo presented various documents purporting to explain that Bono and Martillo were the true and full owners of the '161 Application prior to when Bono and Martillo transferred their ownership interests to plaintiff. See AR, A2266-71.
• Thereafter, on September 30, 2013, the OPLA issued a decision stating that the documents submitted by Bono and Martillo sufficiently demonstrated ownership interests in the '161 Application, which had been transferred to plaintiff, and therefore the PTO ...