United States District Court, E.D. Virginia, Alexandria Division
MITCHELL R. SWARTZ, Plaintiff,
JOSEPH MATAL, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Defendant.
M. Brinkema, United States District Judge.
the Court is defendant Joseph Matal's Motion to Dismiss
[Dkt. Nos. 15 and 16], which has been fully briefed. For the
reasons that follow, defendant's motion will be granted.
Mitchell Swartz ("plaintiff or "Swartz"),
proceeding pro se, is a medical doctor, electrical
engineer, and inventor who holds several patents both in the
United States and abroad. Compl. [Dkt. No. 1] ¶¶ 7,
9. At issue in this civil action are six patent
applications-U.S. Patent Serial Nos. 12/932, 058 ("the
'058 application"), 12/589, 258 ("the '258
application"), 13/544, 381 ("the '381
application"), 12/316, 643 ("the '643
application"), 09/748, 691 ("the '691
application"), and 09/750, 765 ("the '765
application")- all of which plaintiff describes as
relating to inventions that allegedly generate heat and
electricity quietly and efficiently. Compl. [Dkt. No. 1 ]
¶¶ 10. 18.
application went through the internal two-stage review
process at the United States Patent and Trademark Office
("USPTO"). At the first stage, each application was
assigned to a patent examiner, who reviewed its claims to
determine patentability. See 35 U.S.C. § 131. For each
application, the examiner determined on both an initial
review and after reconsideration that the claims failed to
meet the legal requirements for patentability. Cf
Id. § 132. After the examiner twice rejected
each application, plaintiff filed appeals with the Patent
Trial and Appeal Board ("PTAB" or
"Board"), an administrative appellate tribunal
inside the USPTO. See id § 134(a). The PTAB
affirmed the rejection of five of his applications; however,
the appeal of the sixth, the '381 application, is still
pending. See Mem. in Supp. of Mot. to Dismiss
("Def. Mem.") [Dkt. No. 18] 6. Dissatisfied with
the decisions of the PTAB, plaintiff has exercised his right
under 35 U.S.C. § 145 to bring the present civil action
against the Director of the USPTO, in which he requests in
Count 1 that the Court find that he is entitled to a patent
on each application. See Compl. [Dkt. No. 1] ¶¶
315-19. Plaintiff also alleges that the USPTO and its
officers have engaged in a variety of misconduct while
evaluating his applications. The Complaint includes thirteen
additional counts based on these allegations: two counts
alleging violations of constitutional rights, one
negligence-based tort count, one access-to-records count,
eight counts alleging violations of various criminal laws,
and one count alleging civil violations of the Racketeer
Influenced and Corrupt Organizations Act ("RICO").
See Id. ¶¶ 320-60.
has moved to dismiss each of the fourteen counts for a
variety of substantive and procedural reasons, see Def. Mem.
[Dkt. No. 18], plaintiff has responded, see Mem. in Opp'n
to Mot. to Dismiss ("Pl. Opp.") [Dkt. No. 25], and
defendant has replied, see Reply in Supp. of Mot. to Dismiss
("Reply") [Dkt. No. 29]. Finding that the briefs
are comprehensive and that oral argument would not aid the
decisional process, the Court will resolve defendant's
motion on the materials submitted.
bases his Motion to Dismiss on Fed.R.Civ.P. 12(b)(1) and
12(b)(6). First, he argues that Count 1 should be dismissed
under Rule 12(b)(6) for failure to state a claim because
plaintiff does not plausibly allege entitlement to a patent
for his various applications, all of which relate to
"cold fusion, " a "hypothetical technology
that has not been shown to be technically
feasible." Def. Mem. [Dkt. No. 18] 1, 14-22. Second,
he argues that under Rule 12(b)(1), the Court lacks subject
matter jurisdiction to consider some of the patent claims and
all of the nonpatent claims for a variety of reasons,
including sovereign immunity, collateral estoppel, failure to
administratively exhaust, and failure to establish a private
right of action. See Id. at 8-13, 22-28.
Standard of Review
Rule 12(b)(1), a civil action must be dismissed whenever the
court lacks subject matter jurisdiction. Although the
plaintiff has the burden of establishing subject matter
jurisdiction, Demetres v. East West Const. Inc., 776
F.3d 271, 272 (4th Cir. 2015), a court should accept "as
true the jurisdictionally significant facts claimed by
the" plaintiff, Motley v. Va. State Bar. 403
F.Supp.2d 468, 471 (E.D. Va. 2005). After accepting those
facts as true, the court must determine "whether those
facts are sufficient as a matter of law to establish subject
matter jurisdiction." Id.
Rule 12(b)(6), a civil action must be dismissed if the
complaint does not "contain sufficient facts to state a
claim that is 'plausible on its face.'" E.I,
du Pont de Nemours & Co. v. Kolon Indus.. Inc.. 637
F.3d 435, 440 (4th Cir. 2011) (quoting Bell Atl. Corp. v.
Twombly. 550 U.S. 544, 570 (2007)). Although the court
must assume for the purposes of deciding the motion that all
"well-pleaded allegations" are true and must
"view the complaint in the light most favorable to the
plaintiff, " Philips v. Pitt Cnty. Mem'l
Hosp., 572 F.3d 176, 180 (4th Cir. 2009), allegations
that are merely conclusory need not be credited, see
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
Count 1 (35 U.S.C. § 145 Claims)
alleges under 35 U.S.C, § 145 that plaintiffs six patent
applications-the '058, '258, '381, '643,
'691, and '765 applications-should be granted.
Defendant argues that three of these applications are
ineligible for this Court's review because the PTAB has
not yet rendered a final decision on the '381 application
and plaintiff is collaterally estopped from arguing for the
patentability of the '058 and '765 applications.
Defendant further contends that plaintiffs allegations as to
the remaining three applications should be rejected because
he has failed to plausibly allege that they involve
uncontested that plaintiffs appeal of the examiner's
denial of the '381 application was still pending at the
PTAB when he filed this action. See Def. Mem. [Dkt. No. 18]
Ex. 13 ("As of [July 17, 2017], the PTAB has not issued
any decision in Appeal No. 2017-006193."). A patent
applicant may only bring a suit under 35 U.S.C. § 145 if
he is "dissatisfied with the decision of the Patent
Trial and Appeal Board in an appeal under" 35 U.S.C.
§ 134(a). Section 145 waives the federal
government's sovereign immunity only when the PTAB has
issued a final decision on the patent application at issue.
See Fleming v. Coward, 534 F.App'x 947, 950
(Fed. Cir. 2013). Therefore, because the PTAB has not issued
a final decision on the '381 patent application,
defendant retains its sovereign immunity and plaintiffs suit
must be dismissed with respect to that application. See
response to this argument, plaintiff does not claim that the
PTAB has issued a final decision on his application; instead,
he appears to claim that the PTAB's "refusal to
admit Evidence and Briefs" into the record during the
appeal "were final decisions." Pl. Opp. [Dkt. No.
25] ¶ 112. To the contrary, these decisions are the
antitheses of final decisions; they are, indeed, only
intermediate decisions preceding a future final decision on
the patentability of ...