United States District Court, E.D. Virginia, Alexandria Division
M. Brinkema, United States District Judge
civil action brought pursuant to 35 U.S.C. § 145,
plaintiff, pro se, Angadbir Singh Salwan
("Salwan") seeks a judgment that he is entitled to
a patent covering the claims in United States Patent
Application 15/188, 000 ("the '000
Application"), which the United States Patent and
Trademark Office ("USPTO") rejected as
patent-ineligible and obvious under 35 U.S.C. § §
101 and 103. Before the Court are the parties'
cross-motions for summary judgment. Finding that oral
argument would not assist the decisional process, the Court
has resolved these motions on the submitted materials. For
the reasons that follow, defendant's Motion for Summary
Judgment [Dkt. No. 14] will be granted, and plaintiffs Motion
for Summary Judgment [Dkt. No. 12] will be denied.
Salwan is an electronic engineer and inventor.
A385. His claimed invention is called the
"Physician to Patient Network System"
("P2P"). A10, A25. According to the patent
application, P2P "relates, generally, to the field of
applying Information Technology for the benefit of [the]
healthcare ... industry." A12. The P2P system is a
"private [and] secure network system for independently
practicing physicians and patients" and its purported
functions include facilitating "real-time electronic
communication [and] transfer of patient health
for patents follow a multi-stage review process. First, an
application is assigned to a patent examiner, who reviews the
application's claims to determine patentability.
See 35 U.S.C. § 131. If the examiner finds that
the claims are not patentable, the applicant may seek
reconsideration. Cf. id., § 132. If, after
reexamination, the claims are still rejected, the applicant
may file an appeal of that decision with the Patent Trial and
Appeal Board ("PTAB"). See id. §
134(a). While a patent application is pending, applicants
have the option to file a "continuation
application," which enables them to "claim the
benefit of one or more prior-filed" applications. 37
C.F.R. § 1.78. The "disclosure presented in the
continuation must not include any subject matter which would
constitute new matter if submitted as an amendment to the
parent application." Manual of Pat. Examining Proc.
has filed a series of patent applications related to the
'000 Application. The one most relevant to this civil action
was Application 12/587, 101 ("the '101
Application"), filed in 2009 and which relates to
underlying subject matter nearly identical to that in the
'000 Application at issue here. In January 2015, after
the standard two-step internal review process, the patent
examiner rejected the' 101 Application, finding,
inter alia, that the application covered
patent-ineligible subject matter under 35 U.S.C. § 101
and was obvious under 35 U.S.C. § 103(a). In re
Salwan, 681 Fed.Appx. 938, 940 (2017) (“Salwan
I"). The PTAB affirmed that rejection, which Salwan
appealed to the United States Court of Appeals for the
Federal Circuit. After a de novo review, the Federal
Circuit affirmed in a per curiam opinion, holding
that Salwan's claims were "directed to
patent-ineligible subject matter." Id. Because
this determination disposed of Salwan's application, the
Federal Circuit did not reach the merits of the PTAB's
rejections under § § 103 and 112.
21, 2016, after appealing the PTAB's rejection of the
'101 Application to the Federal Circuit, Salwan filed the
'000 Application, which he characterized as a
continuation of the '101 Application. A10-11. The
'000 application states that it "contains subject
matter disclosed in the" '101 Application and that
"[n]o new subject matter has been added in the current
application," Al 1, and Salwan admits that he "did
not make any changes in the specification or the
drawings" since his initial application. A381. The
'000 Application includes 20 claims. A52-59. Claims 1,
10, and 20 are independent, while claims 2 through 9
depend on Claim 1, and Claims 11 through 19 depend on Claim
10. A274-281. Claim 1 of the '101 Application is similar
to Claim 1 of the '000 Application. The parties agree
that Claim 1 in both applications is representative of the
claimed invention. Salwan I at 939 ("The
parties agree that claim 1 is representative"); Pl's
Reply Brief in Supp. of Mot. for Summ. J. and in Opp'n to
Def.'s Mot. for Summ. J. [Dkt. No. 19] (referring to
"my claim 1, the representative claim, ");
Def.'s Brief in Supp. of Mot. for Summ. J. and in
Opp'n to Pl's Mot. for Summ. J. [Dkt. No. 16] ¶
34 ("Claim 1 is representative").
'000 Application went through the standard review process
at the USPTO. On September 7, 2016, the patent examiner
issued an initial decision rejecting Salwan's claims.
A89-118. The examiner rejected Claims 1 through 20 under 35
U.S.C. § § 101 and 103, concluding that they were
directed to non-statutory subject matter and "would have
been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter
pertains." A92, A97-98 (quoting pre-America Invents
Act 35 U.S.C. § 103(a)). Salwan filed a response and
requested reconsideration on December 6, 2016, Al 20-49, but
the examiner's second review reached the same conclusions
as to the application's patent eligibility and
obviousness. A153-83. Salwan appealed to the PTAB on May 17,
2017, A184-85, A206-38, A242-86, and the PTAB issued a
decision on June 11, 2018 upholding the examiner's
rejections as to subject matter and obviousness. A321-337.
Salwan petitioned for rehearing, A338-53, and the PTAB
declined to modify its opinion. A3 54-73.
filed this action on December 14, 2018. The parties filed a
Joint Motion for a Briefing Schedule on April 10, 2019,
agreeing "that this matter may be adjudicated on
cross-motions for summary judgment based on the evidence and
argument in the administrative record, without discovery and
without the need for Defendant to formally answer the
complaint." [Dkt. No. 8]. The parties'
cross-motions for summary judgment are fully
Standard of Review
is entitled to summary judgment if it can show "that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law."
Fed.R.Civ.P. 56(a). A genuine dispute of material fact exists
"if the evidence is such that a reasonable jury could
return a verdict for the nonmoving party." Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). The
Court must view the record in the light most favorable to the
nonmoving party and must draw all inferences in favor of that
party; however, "[t]he mere existence of a scintilla of
evidence in support of the [nonmovant's] position will be
insufficient; there must be evidence on which the jury could
reasonably find for the [nonmovant]." Id. at
252. Accordingly, to survive a motion for summary judgment,
"[t]he disputed facts must be material to an issue
necessary for the proper resolution of the case, and the
quality and quantity of the evidence offered to create a
question of fact must be adequate to support a jury
verdict." Thompson Everett, Inc. v. Nat'l Cable
Advert., L.P., 57 F.3d 1317, 1323 (4th Cir. 1995);
Poole v. Pass, 351 F.Supp.2d 473, 478 (E.D. Va.
Court must also apply the standard of review applicable to
actions brought under 35 U.S.C. § 145. When the PTAB
denies a patent application, the applicant may appeal
directly to the Federal Circuit, 35 U.S.C. § 141, or,
alternatively, may file a civil action under 35 U.S.C. §
145 in this district. Section 145 permits applicants to
introduce evidence that was not presented to the USPTO.
See Kappos v. Hyatt, 566 U.S. 431, 435 (2012). When
the parties elect to do so, the action is treated as a
"hybrid of an appeal and a trial de novo."
Winner Int'l Royalty Corp. v. Wang, 202 F.3d
1340, 1345 (Fed. Cir. 2000). But where, as here, the parties
agree to proceed on the administrative record alone, Joint
Mot. for Briefing Schedule [Dkt. No. 8], the Court reviews
the PTAB's decision under the deferential standard
supplied by the Administrative Procedure Act
("APA"). Johnson v. Rea, No. 1:12-cv-440,
2013 WL 1499052, at *2, 3 (E.D. Va. April 9, 2013). Under
this standard, the Court may only set aside a PTAB decision
that is unsupported by substantial evidence. Id.
(citing 5 U.S.C. § 706(2)(a) and Star Fruits S. N.C.
v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005));
Hyatt v. Kappos, 625 F.3d 1320, 1336 (Fed. Cir.
2010), aff'd and remanded, 566 U.S. 431 (2012).
"if there is substantial evidence to support the
[PTAB's] determination, then Defendant is entitled to
summary judgment." Johnson, 2013 WL 1499052, at
patent application is rejected, the USPTO bears the initial
burden of establishing a prima facie case of unpatentability,
which "need not be a full exposition on every
conceivable deficiency of a claim ... Rather, its purpose is
simply to provide sufficient notice to the applicant to
facilitate his effective submission of information."
Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir.
2007). The burden then shifts to the applicant to produce
evidence or argument to rebut that prima facie case.
Id. Finally, patentability is "determined on
the entirety of the record, by a preponderance of evidence
and weight of argument." In re Glaug, 283 F.3d
1335, 1338 (Fed. Cir. 2002).
Federal Circuit's application of the Alice test
in Salwan I
Federal Circuit has already addressed the core issue in this
case, concluding that the subject matter in the' 101
Application, which is extremely similar to the subject matter
in the '000 Application, was not patentable. Salwan
I at 939-41. To be patentable, a claimed invention ...