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Salwan v. Iancu

United States District Court, E.D. Virginia, Alexandria Division

August 30, 2019

ANDREI IANCU, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Defendant.


          Leonie M. Brinkema, United States District Judge

         In this 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.

         I. BACKGROUND

         Plaintiff Salwan is an electronic engineer and inventor. A385.[1] 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 information."[2] A25.

         Applications 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. § 201.07.

         Salwan has filed a series of patent applications related to the '000 Application.[3] 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.

         On June 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[4] 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.[5] 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").

         The '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."[6] 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.

         Salwan 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[7] for summary judgment are fully briefed.[8]


         A. Standard of Review

         A party 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. 2005).

         The 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.[9] 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 *2.

         When a 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).

         B. Analysis

         i. The Federal Circuit's application of the Alice test in Salwan I

         The 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 ...

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