CHANG v. KAPPOS

Filing 27

MEMORANDUM OPINION. Signed by Judge Amy Berman Jackson on 9/13/12. (lcabj1)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
____________________________________
)
HSUAN-YEH CHANG,
)
)
Plaintiff,
)
)
v.
)
Civil Action No. 11-1129 (ABJ)
)
DAVID J. KAPPOS,
)
Undersecretary of Commerce
)
for Intellectual Property and
)
Director of the U.S. Patent
)
and Trademark
)
Office
)
)
Defendant.
)
____________________________________)
MEMORANDUM OPINION
Plaintiff Hsuan-Yeh Chang, proceeding pro se, brings this action against defendant David
J. Kappos in his official capacity as Undersecretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office (“PTO,” “USPTO”). The complaint
alleges that the PTO acted arbitrarily and capriciously and in excess of its statutory authority, in
violation of the Administrative Procedures Act, 5 U.S.C. §§ 702–706 (“APA”), by denying his
application for full registration as a patent agent under 37 C.F.R. § 11.6(b) on the basis of his
immigration status. Plaintiff seeks judicial review of the agency decision. The parties have
cross-moved for summary judgment. Because the Court finds that the PTO’s decision was not
an abuse of discretion and was within the bounds of its statutory authority, the Court will deny
plaintiff’s motion and grant defendant’s cross-motion.

BACKGROUND
The following facts are undisputed, except where noted.

See Pl.’s Statement of

Uncontested Facts [Dkt. # 13] ¶¶ 1–22; see also Def.’s Statement of Uncontested Facts [Dkt. #
10] ¶¶ 1–22. Plaintiff is a Taiwanese citizen currently residing in Massachusetts. Administrative
Record (“AR”) [Dkt. # 5] at 1. In July 2008, plaintiff worked as a technical specialist at the law
firm of Finnegan, Henderson, Farabow, Garrett & Dunner LLP (“Finnegan”) in its Taipei,
Taiwan office. Id. at 10. In 2008, Finnegan transferred plaintiff to its Cambridge, Massachusetts
office in order to “provide valuable technical expertise and support for [Finnegan’s] patent
application practice.”

Id.

Finnegan petitioned the United States Citizen and Immigration

Services (“CIS”) to grant plaintiff nonimmigrant worker status, see id. at 14–16. On July 22,
2008, CIS approved Finnegan’s petition and granted plaintiff class L-1B nonimmigrant worker
status, id. at 9. CIS’s notice of approval indicated that plaintiff’s visa would be valid for two
years and that he was authorized to work for Finnegan. Id.
On April 2, 2009, plaintiff applied to take the requisite examination for practicing before
the PTO. Id. at 1. Plaintiff’s application was approved on April 20, and the PTO notified him
that upon passing the examination he would not be registered as a patent agent or attorney, but
would receive limited recognition under 37 C.F.R. § 11.9(b) to prosecute patents on behalf of
Finnegan clients. Id. at 97–98. Plaintiff was further notified that he was not “authorized to be
self-employed, even if [plaintiff] t[ook] and pass[ed] the registration examination.” Id. at 97.
Plaintiff completed the examination on July 14, 2009. Id. at 99. Two days later, the
PTO’s Office of Enrollment and Discipline (“OED”) notified him by letter that he had passed the
examination. Id. Plaintiff was again notified that he would not be registered as a patent attorney
or patent agent but would receive “limited recognition . . . to practice before [the PTO] in patent

2

cases.” Id. The PTO granted plaintiff limited recognition on September 10, 2009, to extend until
the expiration of his visa on August 4, 2010. Id. at 100. Plaintiff was informed that his
registration would automatically expire if his employer or visa status changed, or if he left the
United States. Id. at 100–01.

Plaintiff was further informed that he could apply for full

registration if he were to become a permanent resident or citizen of the United States. Id. at 101.
By letter dated April 12, 2010, plaintiff informed OED that he was no longer employed
by Finnegan but had obtained an Employment Authorization Document (“EAD”), which
authorized him to work in the United States. Id. at 103. Plaintiff claimed that his EAD
contained no restrictions on his employment. Id. On that basis, he argued, he should be able to
obtain full registration as a patent agent. Id. Plaintiff enclosed a new application to practice
before the PTO, a copy of his EAD, and a copy of the PTO’s letter of September 10, 2009, that
notified him that he had been granted limited authorization to practice. Id. at 103–12. The copy
of the EAD showed an expiration date of April 6, 2012. Id. at 108.
OED rejected plaintiff’s application for full registration on April 22, 2010. Id. at 114–16.
OED informed plaintiff that “[t]wo-year increments of lawful employment are inconsistent with
registration by the USPTO to practice before the USPTO in patent cases” because “[n]either
USPTO nor clients may rely upon an individual so limited to continue to be available to
represent the client beyond the end of each increment[.]” Id. at 115. OED also informed
plaintiff that his prior limited recognition had automatically terminated due to the termination of
his employment with Finnegan. Id. at 114. Plaintiff was, however, eligible to apply again for
limited recognition if he were to gain employment with a “registered practitioner.” Id.
Plaintiff filed a petition on June 4, 2010 challenging OED’s determination under 37
C.F.R. § 11.6(b). Id. at 117. OED dismissed the petition without prejudice because plaintiff

3

failed to pay the required filing fee. Id. at 124. Plaintiff re-filed his petition with the correct fees
on June 17, 2010. Id. at 126. Plaintiff’s petition also informed OED of his pending application
for permanent residence. Id. at 127. Approximately two months later, he applied for limited
authorization to practice based on new employment that he had obtained. Id. at 134.
OED denied the petition for full registration on the merits on August 31, 2010. Id. at
139–44. OED’s opinion indicated that plaintiff had “failed to demonstrate that his registration
would not be ‘inconsistent with the terms upon which [plaintiff] continues to lawfully reside in
the United States’ as provided under 37 C.F.R. § 11.6(a)(1).” Id. at 139. OED did, however,
grant plaintiff’s request for limited authorization, id. at 139, 145–46, and informed plaintiff that
he could “apply for registration if [his] immigration status changes to United States permanent
residence or citizenship[,]” id. at 146.
Plaintiff filed a petition for review of OED’s decision by the Undersecretary of
Commerce for Intellectual Property and Director of the PTO (“the director”) on September 29,
2010. Id. at 149. The director affirmed OED’s decision on November 3, 2010. Id. at 174.
Plaintiff moved for reconsideration of the director’s decision on December 27, 2010, id. at 175,
and the director affirmed his original decision on May 16, 2011, id. at 184.
On June 15, 2011, plaintiff filed his complaint in this Court seeking judicial review of the
PTO’s decision to deny him a change in status from limited authorization to full registration.
Compl. [Dkt. # 1] at 1. Plaintiff has moved for summary judgment. [Dkt. # 6]. Defendant has
cross-moved for summary judgment. [Dkt. # 10].
On July 13, 2012, plaintiff submitted a status report indicating that his application for
permanent residence had been denied in December 2011 and that he currently resided in the
United States on a non-immigrant H-1B worker visa. Pl.’s Status Report [Dkt. # 19] at 1. His

4

EAD, which had authorized self-employment, expired on April 6, 2012. AR at 108; Pl.’s Status
Report at 1–2. The PTO points out that plaintiff’s H-1B visa “is restricted in both time and the
nature of his work.” Def.’s Status Report [Dkt. # 20] at 1. Under the H-1B visa, plaintiff is
restricted to prosecuting patent applications for his current employer, Nantero, Inc. Id. at 1–2.
The visa expires on September 30, 2013. Id. 1

1
In a July 23, 2012 Minute Order, the Court asked the parties to brief the question whether
this case is not moot since plaintiff no longer holds an EAD. Defendant responded affirmatively,
pointing to plaintiff’s statement in the complaint that “[t]he only issue . . . is whether USPTO can
deny [plaintiff’s] request for full registration as a Patent Agent . . . merely because there is an
expiration date on [his] EAD.” Def.’s Status Report at 2 (emphasis added); Compl. at 4. A case
is moot if “events have so transpired that the decision will neither presently affect the parties’
rights nor have a more-than-speculative chance of affecting them in the future.” Clarke v.
United States, 915 F.2d 699, 701 (D.C. Cir. 1990) (citation omitted). “It has long been settled
that a federal court has no authority to give opinions upon moot questions or abstract
propositions, or to declare principles or rules of law which cannot affect the matter in issue in the
case before it.” Sierra Club v. Jackson, 648 F.3d 848, 852 (D.C. Cir. 2011) (internal quotation
marks omitted), quoting Church of Scientology v. United States, 506 U.S. 9, 12 (1992).
Plaintiff counters that his claim is “capable of repetition yet evading review.” Pl.’s Status
Report at 2. Under some circumstances, a case may not be rendered moot when the alleged
injury has ceased if the injury is “capable of repetition yet evading review.” See City of L.A. v.
Lyons, 461 U.S. 95, 109 (1983). This exception applies only in “exceptional situations,” id., and
only where “(1) the challenged action [is] in its duration too short to be fully litigated prior to
cessation or expiration, and (2) there [is] a reasonable expectation that the same complaining
party [will] be subject to the same action again.” U.S. v. Juvenile Male, 131 S. Ct. 2860, 2865
(2012) (alteration in original) (citations omitted); see also Theodore Roosevelt Conservation
P’ship v. Salazar, 661 F.3d 66, 79 (D.C. Cir. 2011).
Plaintiff meets the first prong of the test since the pendency of application for an EAD or
permanent residence may be shorter than the course of litigation. In this Circuit, a situation
lasting less than two years generally qualifies as evading review. See Fund for Animals, Inc. v.
Hogan, 428 F.3d 1059, 1064 (D.C. Cir. 2005). Plaintiff’s situation in this case has indeed
evaded review, since his EAD expired and his application for permanent residence was denied
during the course of this litigation. See Pl’s Status Report at 1 (explaining that plaintiff’s EAD
had expired, and his green card application had been denied, both since the commencement of
this action). Plaintiff also meets the second prong because there is a reasonable expectation that
he may reapply for permanent residency and may be able to obtain a new EAD as an ancillary
benefit while his new permanent residency application is pending. Def.’s Supplemental Pleading
[Dkt. # 24] at 2. Since plaintiff has shown that his injury is capable of repetition yet evading
review, the Court proceeds to the merits of his claims.
5

STANDARD OF REVIEW
Summary judgment is appropriate “if the movant shows 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). The party seeking summary judgment bears the “initial responsibility of informing the
district court of the basis for its motion, and identifying those portions of the pleadings,
depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any,
which it believes demonstrate the absence of a genuine issue of material fact.” Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986) (internal quotation marks omitted). To defeat summary
judgment, the non-moving party must “designate specific facts showing there is a genuine issue
for trial.” Id. at 324 (internal quotation marks omitted). The existence of a factual dispute is
insufficient to preclude summary judgment. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247–
48 (1986). A dispute is “genuine” only if a reasonable fact-finder could find for the non-moving
party; a fact is only “material” if it is capable of affecting the outcome of the litigation. Id. at
248; Laningham v. U.S. Navy, 813 F.2d 1236, 1241 (D.C. Cir. 1987).
“The rule governing cross-motions for summary judgment . . . is that neither party waives
the right to a full trial on the merits by filing its own motion; each side concedes that no material
facts are at issue only for the purposes of its own motion.” Sherwood v. Washington Post, 871
F.2d 1144, 1148 n.4 (D.C. Cir. 1989), quoting McKenzie v. Sawyer, 684 F.2d 62, 68 n.3 (D.C.
Cir. 1982). In assessing each party’s motion, “[a]ll underlying facts and inferences are analyzed
in the light most favorable to the non-moving party.” N.S. ex rel. Stein v. District of Columbia,
709 F. Supp. 2d 57, 65 (D.D.C. 2010), citing Anderson, 477 U.S. at 247.
Where a plaintiff proceeds pro se, “the Court must take particular care to construe the
plaintiff's filings liberally, for such complaints are held ‘to less stringent standards than formal

6

pleadings drafted by lawyers.’” Cheeks v. Fort Myers Constr. Co., 722 F. Supp. 2d 93, 107
(D.D.C. 2010), quoting Haines v. Kerner, 404 U.S. 519, 520–21 (1972).
ANALYSIS
I.

The PTO did not abuse its discretion in denying full registration to plaintiff.
A person aggrieved by agency action is entitled to judicial review under the APA. See 5

U.S.C. § 702. A trial court must review the decision of the agency under the standards set forth
in the APA. See 5 U.S.C. § 706(2) (“The reviewing court shall . . . hold unlawful and set aside
agency actions, findings, and conclusions found to be arbitrary, capricious, an abuse of discretion,
or otherwise not in accordance with law[.]”); see also Dickenson v. Zurko, 527 U.S. 150, 165
(1999) (“Congress has set forth the appropriate standard [of review] in the APA.”).
The PTO “may establish regulations, not inconsistent with the law, which . . . may govern
the recognition and conduct of agents, attorneys, or other persons representing applicants or
other parties before the Office[.]” 35 U.S.C. § 2(b)(2)(D). The PTO therefore has “broad
authority to govern . . . the recognition and conduct of attorneys” who practice before it.
Lacavera v. Dudas, 441 F.3d 1380, 1383 (Fed. Cir. 2006). 2 Congress has “delegated plenary
authority over PTO practice . . . to the Office.” Stevens v. Tamai, 366 F.3d 1325, 1333 (Fed. Cir.
2004) (internal quotation marks omitted), quoting Gerritsen v. Shirai, 979 F.2d 1524, 1527 n.3
(Fed. Cir. 1992). “Title 35 vests the [PTO], not the courts, with responsibility to protect PTO
proceedings from unqualified practitioners.” Premysler v. Lehman, 71 F.3d 387, 389 (Fed. Cir.

2
In reviewing decisions of the PTO, this Court is bound by decisions of the United States
Court of Appeals for the Federal Circuit. See Wyden v. Comm’r of Patents and Trademarks, 807
F.2d 934, 935–37 (Fed. Cir. 1986) (holding that appeals of district court cases arising under
PTO’s authority to regulate attorneys and agents are subject to the exclusive jurisdiction of
Federal Circuit because they “arise[] under an Act of Congress relating to patents.”); see also
Jaskiewicz v. Mossinghoff, 802 F.2d 532, 535–37 (D.C. Cir. 1986) (transferring appeal to the
Federal Circuit because “The Federal Circuit has also held that its appellate jurisdiction . . .
extends to matters that relate to the practice of patent law before the PTO”).
7

1995), citing Leeds v. Mosbacher, 732 F. Supp. 198, 200 (D.D.C. 1990). The Court may
“disturb the [PTO’s] decisions regarding a potential representative’s qualifications only if it finds
that the [PTO] abused [its] discretion in denying a petitioner’s application.” Maresca v. Comm’r
of Patents and Trademarks, 871 F. Supp. 504, 507 (D.D.C. 1994).
An agency abuses its discretion if its decision is arbitrary and capricious. Id., citing
Gager v. Ladd, 212 F. Supp. 671, 673 (D.D.C. 1963). This occurs if a “decision is based on an
erroneous interpretation of law, on factual findings that are not supported by substantial evidence,
or if [the decision] represents and unreasonable judgment in weighing relevant factors.” Star
Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005), citing Arnold P’ship v.
Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). “This standard of review is highly deferential: ‘If
[the agency] has considered the relevant evidence of record, drawn plausible inferences and
articulated a rational basis for the decision, reversible error will be extremely difficult to
demonstrate.’” Maresca, 871 F. Supp. at 507, quoting Hines ex rel. Sevier v. Sec’y of the Dep’t
of Health and Human Serv.s, 940 F.2d 1518, 1528 (Fed. Cir. 1991). A court must uphold an
agency’s interpretation of its own regulations “unless it is plainly erroneous or inconsistent with
the regulation.” Lacavera, 441 F.3d at 1383, citing Star Fruits, 393 F.3d at 1282.
The PTO has statutory authority to promulgate regulations respecting the recognition of
attorneys and agents practicing before it. See 35 U.S.C. §2(b)(2)(D). The PTO’s regulatory
authority under this statute is “broad.”

Lacavera, 441 F.3d at 1383.

Under the PTO’s

regulations, aliens may practice before the PTO subject to certain conditions:
When appropriate, any alien who is not an attorney, who lawfully resides
in the United States, and who fulfills the requirements of this part may be
registered as a patent agent to practice before the [PTO], provided that
such registration is not inconsistent with the terms upon which the alien
was admitted to, and resides in, the United States[.]

8

37 C.F.R. § 11.6(b).

For those aliens who do not qualify for full recognition, the PTO

regulations provide:
A nonimmigrant alien residing in the United States and fulfilling [the
qualifications for practice before the PTO pursuant to 37 C.F.R. § 11.7(a),
(b)] may be granted limited recognition if the nonimmigrant alien is
authorized by [CIS] to be employed . . . in the United States in the
capacity of representing a patent applicant by presenting or prosecuting a
patent application. Limited recognition shall be granted for a period
consistent with the terms of authorized employment or training.
37 C.F.R. § 11.9(b) (emphasis added).
Plaintiff argues that the PTO misconstrued 37 C.F.R. § 11.6(b) by denying him
recognition because, unlike section 11.9(b), the regulation “does not differentiate among
immigrant and non-immigrant aliens[.]” Compl. at 6 (emphasis in original). According to
plaintiff, section 11.6(b) sets forth the only requirements governing the full registration of aliens
wishing to practice before the PTO, and he meets all of these requirements: he lawfully resides
in the United States; he has the qualifications set out in 37 C.F.R. § 11.7 to practice before the
PTO; and his registration would not be inconsistent with the terms upon which he was admitted
to, and resides in, the United States. Compl. at 6. He asserts that the “USPTO cannot deny full
registration merely because an expiration date is set on the alien practitioner’s employment
authorization.” Compl. at 11.
The PTO rests its decision on its interpretation of the third requirement – whether the
registration would be consistent with the terms of plaintiff’s admission to the United States. It
concludes that the two-year temporal limitation on plaintiff’s EAD, and the uncertainty
surrounding whether he would be authorized to continue to reside and work in the United States

9

after that timeframe expired, was inconsistent with full PTO registration. 3 AR at 115. “Twoyear increments of authorized employment are inconsistent with registration by the USPTO to
practice before the USPTO in patent cases” because “[n]either USPTO nor clients may rely upon
an individual so limited to continue to be available to represent the client beyond the end of each
increment[.]” AR at 115. But, consistent with sections 11.6(b) and 11.9(b), the PTO gave
plaintiff limited recognition during the time that his EAD was valid because plaintiff
demonstrated that he was employed by a registered practitioner in the capacity of preparing and
prosecuting patent applications for others before the PTO. Id. at 143.
The PTO also relies on language from its General Requirements Bulletin for Admission
to the Examination for Registration to Practice in Patent Cases before the United States Patent
and Trademark Office, (Mar. 2012) available at www.uspto.gov/ip/boards/oed/grb.pdf (“GRB”),
as the agency’s longstanding interpretation of section 11.6(b). See AR at 140. The relevant
provision of the GRB states: “A qualifying non-immigrant alien within the scope of 8 CFR
274a.12(b) or (c) is not registered upon passing the examination. Such an applicant will be given

3
In addition, defendant contends that plaintiff’s continued residence in the United States
was dependent upon the approval of his application for adjustment of status. AR 141–42. The
EAD is an ancillary benefit that plaintiff received while his application for permanent residency
was pending. Def.’s Supplemental Pleading [Dkt. # 24] at 2.

10

limited recognition under 37 CFR § 11.9(b) if recognition is consistent with the capacity of
employment or training authorized by the USCIS.” GRB at 8–9. 4
In response to plaintiff’s petition challenging the PTO’s determination, OED further
found:
Granting a nonimmigrant alien full registration would give the
nonimmigrant alien USPTO approval to be employed and practicing
before the USPTO beyond the lawful employment authorized by the
USCIS. For example, the nonimmigrant alien is not authorized to
continue employment beyond the expiration date or upon departing from
the United States.

4
Plaintiff takes issue with the PTO’s reliance on the GRB. However, the Court defers to
agency interpretation of its own rules. Hines ex rel. Sevier, 940 F.2d at 1528. The PTO relies
on the GRB to interpret the ambiguous phrase in section 11.6(b): “registration would not be
inconsistent with the terms upon which the alien was admitted to, and resides in, the United
States[.]” The Court concludes that this is a rational interpretation of that phrase. See Lacavera,
441 F.3d at 1383 (finding that the GRB “reasonably interprets” the previous version of section
11.9); Premysler v. Lehman, 71 F.3d 387, 389–90 (Fed. Cir. 1995) (finding that the PTO could
rely on the GRB as guidance for what kinds of credentials typically demonstrate “technical
competence” under an agency regulation prohibiting the PTO from registering an individual to
practice before it unless he is “possessed of the legal, scientific, and technical qualifications
necessary to enable him or her to render applicants for patents valuable service”).
Plaintiff finds significance in a PTO response to a comment made during the notice and
comment rulemaking for 37 C.F.R. § 11, in which the PTO declined to adopt a definition for
when “registration would not be inconsistent with the terms upon which the alien was admitted
to, and resides in, the United States.” See Compl. at 12–13; Pl.’s Reply [Dkt. # 13] at 13–14. It
described that the admission of aliens to the United States and their ability to be employed
changes based on regulations promulgated by the Immigration and Naturalization Service. 69
Fed. Reg. 35428-01 at 35446. Plaintiff then points to the fact that section 101 of the Immigration
and Nationality Act, 8 U.S.C. § 1101 (“INA”), has always distinguished between immigrant and
non-immigrant aliens. Compl. at 12–13; Pl.’s Reply at 13–14. He concludes that by declining to
adopt the definition set forth in the INA, the PTO demonstrated its intent that full registration
under section 11.6 not be limited to immigrant aliens only. Id.
This is a circuitous argument and the Court is unpersuaded. The PTO was clear that its
decision was based on the temporal limit on plaintiff’s authorization to work in the United States
under his EAD, so the INA distinction between immigrant and nonimmigrant aliens is irrelevant.
Moreover, the interpretation in the GRB is consistent with section 11.9, which sets out a separate
type of recognition available to nonimmigrant aliens, suggesting that section 11.6 was not
intended to cover nonimmigrant aliens.
11

AR at 142. Furthermore, “neither the USPTO nor clients may rely upon an individual so limited
to continue to be available to represent the client beyond the end of each increment for which
employment has been authorized.” Id. at 115.
Finally, on appeal of OED’s determination, the director affirmed. Id. at 174. He found
that as of September 2010, the average pendency of a patent application was measured to be 35.3
months, or just under three years. Id. at 168. Like the OED, the director concluded that since
plaintiff’s EAD was valid for just two years and renewal was uncertain, neither plaintiff’s clients
nor the PTO would be able to rely on him to see patent matters through. Id. The director also
emphasized that the PTO has no mechanism for revoking registration based on the loss of lawful
residency in the United States. Id. at 169–70. Therefore, if the PTO were to grant plaintiff full
registration, it would be authorizing him to work as a patent agent past the time when his
authority to work in the United States expired. Id. This would be inconsistent with the terms of
plaintiff’s residency in the United States. Id. These findings were affirmed in the director’s
order denying plaintiff’s motion for reconsideration. Id. at 196.
The PTO’s interpretation of its own regulations is entitled to substantial deference, as
long as the PTO has conducted an appropriate review of the record and “articulated a rational
basis for the decision.” Hines ex rel. Sevier, 940 F.2d at 1528. Here the agency’s decision was
premised upon the legitimate concern that the prosecution of a patent application could extend
longer than the limited term of plaintiff’s admission to the country. So it was reasonable for the
PTO to find that permitting plaintiff to represent clients for matters that typically take longer
than his work authorization permitted him to perform would be inconsistent with the terms upon
which he resides in the United States, and is thus contrary to the requirement of section 11.6(b).

12

This decision is consistent with precedent from the Federal Circuit. In Lacavera, the
plaintiff worked in the United States under a one-year TN visa, which permitted her to work
solely at the New York office of the White & Case law firm. 441 F.3d at 1382. As here, the
plaintiff applied for full registration, but was denied because of the legal restrictions imposed by
her visa. Id. She challenged the PTO’s decision as an abuse of discretion and as a violation of
its statutory authority. 5 Id. The court rejected both arguments, stating:
Because granting Lacavera full registration would have given her PTO approval
to do work in which she could not lawfully engage, we find no abuse of discretion
in the PTO’s determination that granting her full registration was inconsistent
with the terms of her visa. Moreover, the decision to grant limited recognition
with restrictions consistent with those in her visa correctly applied sections
[11.6(a) and 11.9(b)] and the GRB, and was, therefore, not an abuse of discretion
or arbitrary and capricious.
Id. at 1383.
The same reasoning applies, despite the fact that plaintiff in this case was authorized to
work for any client, whereas the plaintiff in Lacavera was authorized to work only for the clients
of one particular firm. Furthermore, full registration has no set ending date and the PTO has no
mechanism for revoking the registration of patent agents if they stop lawfully residing in the
United States. 6 Mem. in Support of Def.’s Cross-Mot. for Summ. J. (“Def.’s Mem.”) [Dkt. # 10]
at 9; AR 169–70. So, if the PTO had granted plaintiff full registration, that registration would
have authorized him to continue to prosecute patents even if his authorization to work in the
United States were to expire. In other words, the PTO would run the risk of authorizing plaintiff
to engage in work that he could not lawfully perform. See AR 169–70. This is the exact

5
The plaintiff also challenged the decision as a violation of equal protection, an argument
that the court similarly rejected. 441 F.3d at 1383–84.
6
The bases on which the PTO can revoke registration are codified in Title 37 of the Code
of Federal Regulations, Sections 10 and 11. Failure to lawfully reside in the United States,
however, is not one of those bases. See 37 CFR §§ 10–11. Plaintiff does not contend otherwise.
13

rationale by which the Lacavera court decided to deny the plaintiff’s application for full
registration. 7 In accordance with that decision, the Court finds that the PTO’s denial of
plaintiff’s full registration in this case was not an abuse of discretion.
II.

The PTO’s decision did not exceed its statutory authority and should be
afforded deference under Chevron.
Plaintiff next argues that the PTO exceeded its statutory authority in promulgating

regulations that distinguish between immigrant and nonimmigrant aliens. See Compl. at 16. The
Court rejects this argument as well.
Under 35 U.S.C. § 2(b)(2), the PTO has broad authority to govern the recognition and
conduct of attorneys that practice before it.

Lacavera, 441 F.3d at 1383. Since plaintiff

challenges the PTO’s authority under this statute, the Court applies the framework set out in
Chevron, USA, Inc. v. Natural Resources Defense Council, 467 U.S. 837, 842 (1984). See also
Lacavera, 441 F.3d at 1383 (applying Chevron). Under Chevron, the Court must first inquire
“whether Congress has directly spoken to the precise question at issue.” Chevron, 467 U.S. at
842. If that is the case, the Court must “give effect to the unambiguously expressed intent of
Congress.” Id. at 842–43. If, on the other hand, the statute is silent or ambiguous on the precise
question at issue, “the court does not simply impose its own construction on the statute . . . .

7
Plaintiff argues that his status is distinguishable from the status of the plaintiff in
Lacavera because his EAD had no terms and conditions. Pl.’s Reply at 7–8, 13–14. Since his
EAD was condition-free, he argues, the limitation that the PTO placed on his full registration –
no full registration without immigrant resident status – cannot reasonably be construed as an
interpretation of section 11.6. Id. But as the Court described above, the EAD has one important
condition that plaintiff ignores: a temporal limit. Because the PTO’s decision was based on this
term, the Court finds that the PTO’s determination can reasonably be construed as an
interpretation of what is “inconsistent with the terms upon which [plaintiff] was admitted to, and
resides in, the United States” under section 11.6. See supra note 4; see also Chrysler Corp. v.
Brown, 441 U.S. 281, 301–302 (1979) (explaining that the promulgation of substantive rules
requires notice and comment rulemaking).
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Rather, . . . the question for the court is whether the agency’s answer is based on a permissible
construction of the statute.” Id. at 843.
In Lacavera, the Federal Circuit directly confronted this issue and found that the PTO has
the authority under 35 U.S.C. § 2(b)(2)(D) to consider visa restrictions in determining whether to
grant or deny registration. 441 F.3d at 1383. Section 2(b)(2)(D) allows the PTO to “require
[applicants for full recognition] . . . to show that they are . . . possessed of the necessary
qualifications to render to applicants or other persons valuable service, advice, and assistance in
the presentation or prosecution of their applications or other business before the Office[.]” 35
U.S.C. § 2(b)(2)(D) (emphasis added). The court found the term “necessary qualification” to be
ambiguous. Lacavera, 441 F.3d at 1383. In the next step of the Chevron analysis, it found that
“[i]t was reasonable for the PTO to interpret legal authority to render service as being a
necessary qualification [under 35 U.S.C. § 2(b)(2)(D)].” Id.
In accordance with the Federal Circuit’s decision in Lacavera, this Court finds that the
PTO did not exceed its authority by considering the temporary nature of plaintiff’s EAD in its
registration determination.

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CONCLUSION
For the foregoing reasons, the Court concludes that the PTO has not abused its discretion
or exceeded its authority by denying plaintiff full registration as a patent agent. Accordingly, the
Court will deny plaintiff’s motion for summary judgment [Dkt. # 6] and grant defendant’s crossmotion [Dkt. # 10]. A separate order will issue.

AMY BERMAN JACKSON
United States District Judge

DATE: September 13, 2012

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