United States District Court, E.D. Virginia, Alexandria Division
M. HILTON UNITED STATES DISTRICT JUDGE
MATTER comes before the Court on Plaintiff s Petition for
Review and Reversal of Defendant's decision to exclude
him from practicing before the United States Patent and
Trademark Office ''PTO").
Persuad ("Plaintiff") was admitted to practice law
in California on March 25, 2009. Nearly three years later, on
July 28, 2012, the State Bar of California ("Bar")
suspended Plaintiff from practicing law for three years
because he had unlawfully collected and retained around $300,
000 in unearned fees. The Bar ordered Plaintiff to pay
restitution and engage in rehabilitative training. Later,
Plaintiff misrepresented to the Bar that he had paid
restitution when he actually had not paid restitution to the
clients he had defrauded. As a result, on July 24, 2013, the
Bar disbarred Plaintiff from practicing law. His professional
misconduct is uncontested. Plaintiff stipulated to these
facts and admitted that "disbarment is warranted."
15, 2014, the PTO's Director of the Office of Enrollment
and Discipline (OED) served a complaint on Plaintiff for
reciprocal discipline. Despite Plaintiff's arguments
against reciprocal discipline, the PTO's General Counsel
issued a Final Order on December 1, 2014, excluding Plaintiff
from practicing before the PTO. On December 31, 2014,
Plaintiff filed in this Court his first petition for review
and reversal of the Final Order. Plaintiff and the PTO
submitted an Agreed Order, which remanded the case to the PTO
for further consideration.
March 31, 2016, after allowing further opportunity for
Plaintiff to dispute the PTO's first decision, the PTO
Director issued a second Final Order excluding Plaintiff from
practicing before the patent bar. On May 2, 2016, Plaintiff
filed a second petition in this Court for review and reversal
of the PTO's second Final Order. On July 25, 2016, the
PTO filed a timely response. Pursuant to Local Rule 83.5, the
administrative record may serve as the sole basis for a
court's review in a petition based on 35 U.S.C. §
132. Thus, the matter is ripe for review.
the America Invents Act, the U.S. District Court for the
Eastern District of Virginia has exclusive jurisdiction to
review an order excluding an individual from practicing
before the PTO. The standard of review is very deferential to
the PTO's decision, and the PTO's decision will only
be reversed if it was arbitrary, capricious, an abuse of
discretion, or otherwise not in accordance with the law. See
5 U.S.C. § 706. The scope of review is narrow, and a
court is not to "substitute its judgment for that of the
agency." Motor Vehicle Mfrs. Ass'n of U.S., Inc.
v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43
(1983). To survive judicial review, there must be a rational
basis for the PTO's decision. See Manufactured Hous.
Inst, v. EPA, 467 F.3d 391, 398 (4th Cir. 2006).
has plenary authority to govern the conduct of the members of
its bar. Accordingly, the PTO has enacted its own Rules of
Professional Conduct to govern the conduct of members
practicing before the patent bar. If a member does not comply
with these rules, the PTO can suspend or exclude the member.
See Bender v. Dudas, 490 F.3d 1361, 1365 (Fed. Cir.
2007). Under the reciprocal discipline rules, if a member is
disbarred in another jurisdiction, the PTO may disbar the
member from practice in the patent bar. See 37 C.F.R. §
11.24 (d)(1) (i)-(iv) (2008).
on the reciprocal discipline rule, the PTO Director shall
impose reciprocal discipline unless the practitioner can
prove with clear and convincing evidence that there is a
genuine issue of material fact that:
"(i) The procedure elsewhere was so lacking in notice or
opportunity to be heard as to constitute a deprivation of due
(ii) There was such infirmity of proof establishing the
conduct as to give rise to the clear conviction that the
Office could not, consistently with its duty, accept as final
the conclusion on that subject;
(iii) The imposition of the same public censure, public
reprimand, probation, disbarment, suspension or disciplinary
disqualification by the Office would result in grave
(iv) Any argument that the practitioner was not publicly
censured, publicly reprimanded, placed on probation,
disbarred, suspended or disciplinarily disqualified.
37 C.F.R. § 11.24 (d)(1)(i)-(iv). These factors
originated in Selling v. Radford, 243 U.S. 46
(1917). There is a presumption that reciprocal discipline is
proper when a member is disbarred from another jurisdiction.
Petition, Plaintiff raises two arguments for why reciprocal
discipline is improper based on the Selling factors.
Plaintiff argues that his exclusion from the PTO would result
in grave injustice because of his subsequent rehabilitation
and restitution efforts. He further argues that his exclusion
from the PTO would violate his right to due process. For the
reasons stated below, Plaintiff cannot ...