United States District Court, E.D. Virginia, Alexandria Division
LOUIS A. PICCONE, Petitioner,
UNITED STATES PATENT AND TRADEMARK OFFICE, et al, Respondents.
M. Brinkema, United States District Judge
A. Piccone ("Piccone"), acting pro se,
filed this Petition to review a decision of the United States
Patent and Trademark Office ("PTO") suspending
Piccone's license to practice before the PTO for a period
of three years. Piccone asks the Court to vacate the
PTO's decision as arbitrary or capricious, an abuse of
discretion, or not in accordance with law. He also seeks
declaratory relief as well as damages against unnamed PTO
employees under Bivens v. Six Unknown Named
Agents of Fed. Bureau of Narcotics, 403 U.S. 388 (1971).
The Petition has been fully briefed and is now ripe for
decision, and the Court finds that oral argument would not
aid the decisional process. For the reasons that follow, the
Petition will be dismissed.
is an attorney who in 1989 was admitted to practice in
Pennsylvania. A4821. As relevant here, on three occasions
Piccone has been administratively suspended from the practice
of law by the Supreme Court of Pennsylvania: from September 1
to October 11, 2011, for failure to comply with continuing
legal education ("CLE") requirements; from October
19 to December 21, 2012, for failure to pay the annual bar
membership fee; and from September 30, 2013 to August 13,
2014, again for noncompliance with CLE requirements.
registered to practice before the PTO in August 1997.
A3171-72. On December 10, 2014, the Director of the PTO's
Office of Enrollment and Discipline ("OED") issued
a disciplinary complaint charging Piccone with nine counts of
professional misconduct.A84-108. Count I involved Piccone's
alleged unauthorized practice of law before the PTO in
connection with a trademark application. A87-89. Counts II
through V alleged that Piccone had engaged in the
unauthorized practice of law in several federal district
courts across the country. A89-96. Finally, Counts VI through
IX alleged that Piccone had engaged in "disreputable or
gross conduct," acted in a fraudulent or dishonest
manner, and had neglected his clients' interests.
A97-108. The OED Director's complaint requested that
Piccone be suspended or excluded from practicing before the
PTO. A85, A108.
Chief Administrative Law Judge of the United States
Environmental Protection Agency (the "ALJ") was
assigned to adjudicate the disciplinary proceeding. A1-2. In
just under nine months, Piccone filed 35 motions,
"including numerous motions to dismiss, motions for
summary judgment, and motions to reconsider." A2. The
ALJ held a two-day hearing in mid-October 2015 and heard live
testimony from Piccone and a PTO staff attorney as well as
deposition testimony from Piccone's business associate,
two of his former clients, and an officer of the
Massachusetts Board of Bar Examiners. See A3. The parties
also submitted post-hearing briefs for the ALJ's
ALJ's 69-page Initial Decision found the following to
have been established by clear and convincing evidence:
First, Piccone engaged in the unauthorized practice of law
before the PTO by acting as attorney of record and drafting a
series of documents on behalf of Lawless America Association
("Lawless"), to be filed by Lawless's
president, while Piccone was suspended from the Pennsylvania
bar. A15-21. Second, in a series of lawsuits filed in federal
district courts in Illinois, Iowa, Massachusetts, and New
Hampshire, Piccone provided legal assistance to parties
without securing authorization to proceed pro hac
vice, and on several occasions while his Pennsylvania
license to practice law was suspended. A21-48, A57-60. Third,
Piccone engaged in gross misconduct and neglected his client
in an action filed in the Southern District of New York.
A48-53. The ALJ rejected several other charges included in
the OED Director's complaint as unsupported by sufficient
evidence. A48, A53, A56-57. Having found that Piccone had
violated several of the PTO's disciplinary rules,
ALJ ordered that Piccone be suspended from practicing before
the PTO for three years. A68 (citation omitted).
appealed that decision to the PTO Director, arguing that the
ALJ had committed 53 errors of fact, procedure, and law.
A5991-6029. The Director affirmed the ALJ's decision in a
34-page Final Order. A6114-6147. Piccone's subsequent
motion for reconsideration, A6150-72, A6198-211, was denied
by the PTO on February 9, 2018. A6213-28. Piccone timely
filed the present Petition to review the PTO Director's
final decision [Dkt. Nos. 1-2].
delegated to the PTO the authority to promulgate rules
"governing] the recognition and conduct of agents,
attorneys, and other persons representing applicants or other
parties before [it]." 35 U.S.C. § 2(b)(2)(D). This
delegation gives the PTO "broad authority" to set
procedural and ethical rules for those who practice before
it, and Congress's grant of gap-filling authority
necessitates that courts defer to the PTO's choices where
reasonable and not contrary to law. Lacavera v.
Dudas. 441 F.3d 1380, 1383 (Fed. Cir. 2006) (citing
Chevron. U.S.A.. Inc. v. Nat. Res. Def. Council.
Inc., 467 U.S. 837, 842-43 (1984)). Congress also
authorized the Director of the PTO, "after notice and
opportunity for a hearing," to "suspend or exclude
... from further practice before the [PTO]... any person,
agent, or attorney shown to be incompetent or disreputable,
or guilty of gross misconduct, or who does not comply with
the regulations established under section 2(b)(2)(D)."
35 U.S.C. § 32.
court has exclusive jurisdiction to review decisions by the
Director to suspend or exclude an attorney from practice
before the PTO. 35 U.S.C. § 32; see Franchi v.
Manbeck, 972 F.2d 1283, 1287-88 (Fed. Cir. 1992). Review
under § 32 is governed by the judicial review provisions
of the Administrative Procedure Act ("APA").
Chaganti v. Lee, 187 F.Supp.3d 682, 690 (E.D. Va.
2016) (citing Bender v. Dudas, 490 F.3d 1361, 1365
(Fed. Cir. 2007)). Accordingly, the court's review is
"highly deferential, with a presumption in favor of
finding the agency action valid." Id. (quoting
Ohio Valley Envtl. Coal, v. Aracoma Coal Co., 556
F.3d 177, 192 (4th Cir. 2009)). The PTO's decision will
be disturbed only if the petitioner demonstrates that
"it is 'arbitrary, capricious, an abuse of
discretion, or otherwise not in accordance with
law.'" Bender. 490 F.3d at 1365-66 (quoting
5 U.S.C. § 706).
The PTO's Findings of Professional
among the Petition's core arguments is that the ALJ and
the PTO Director erred, under the facts and the law, in
concluding that Piccone engaged in professional misconduct.
None of the reasons Piccone provides is persuasive. For
example, Piccone argues that it was improper for the PTO to
find that he had engaged in the unauthorized practice of law
with respect to work he did in support of Lawless's
trademark application in late 2013 to mid-2014, while his bar
license was suspended. See Combined Pet. and Compl.
[Dkt. No. 2] ("Pet.") 3; Id. Ex. C [Dkt.
No. 2-6] 26. In support, Piccone cites a PTO regulation
stating that "[a]ny individual may appear in a trademark
matter for... [a] corporation or association of which he or
she is an officer and which he or she is authorized to
represent." 37 C.F.R. § 11.14(e). Piccone argues
that because he was the sole "director" of Lawless
at the time, see A3278, he was an officer of the corporation
and thus entitled to "appear" on its behalf. Pet.
Ex. C [Dkt. No. 2-6] 26-35. Piccone misconstrues the
regulation. Section 11.14 provides in pertinent part:
(a) Attorneys. Any individual who is an attorney as defined
in § 11.1 may represent others before the Office in