Association For Molecular Pathology et al v. United States Patent and Trademark Office et al
REPLY MEMORANDUM OF LAW in Support re: 25 MOTION to Dismiss.. Document filed by United States Patent and Trademark Office. (Goldman, Beth)
Association For Molecular Pathology et al v. United States Patent and Trademark Office et al
UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -x ASSOCIATION FOR MOLECULAR PATHOLOGY, et al., : : Plaintiffs, : v. : UNITED STATES PATENT AND TRADEMARK OFFICE, et al., : 09 Civ. 4515 (RWS)
Defendants. : - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -x
DEFENDANT UNITED STATES PATENT AND TRADEMARK OFFICE'S REPLY MEMORANDUM OF LAW IN SUPPORT OF MOTION TO DISMISS
PREET BHARARA United States Attorney for the Southern District of New York Attorney for the Defendant United States Patent and Trademark Office 86 Chambers Street, 3rd Floor New York, New York 10007 Tel: 212-637-2732
BETH E. GOLDMAN Assistant United States Attorney Of Counsel
Preliminary Statement Defendant the United States Patent and Trademark Office (the "USPTO") respectfully submits this reply memorandum of law in further support of its motion to dismiss the complaint pursuant to Rules 12(b)(1) and 12(b)(6) of the Federal Rules of Civil Procedure. Plaintiffs offer absolutely no authority for their claim that they can sue the USPTO to invalidate the patents at issue in this case. The precedent is clear third parties have no standing to sue the USPTO to challenge previously issued patents except as provided by statute. The fact that plaintiffs object to the patents on constitutional grounds does not alter the analysis. In the absence of a single case in which a court has allowed a third party to challenge the USPTO's issuance of a patent, on any ground constitutional or otherwise the claims against the USPTO should be dismissed. ARGUMENT THE COMPLAINT AGAINST THE USPTO SHOULD BE DISMISSED The law as stated by the Federal Circuit could not be more clear: third parties do not have standing to challenge the USPTO's issuance of a patent. Syntex (U.S.A.) Inc. v. U.S. Patent & Trademark Office, 882 F.2d 1570, 1573 (Fed. Cir. 1989); Animal Legal Defense Fund v. Quigg, 932 F.2d 920, 938-39 (Fed. Cir. 1991).1 Plaintiffs insist because they object to the patents on constitutional rather than statutory grounds, they should be able to sue the USPTO to invalidate the patents. But, the fact that plaintiffs allege constitutional claims does not alter the standing analysis. In order to reach The Federal Circuit applied these settled principles again last week in Rozenblat v. Kappos, No. 2009-1278, 2009 WL 2952180, at *1 (Fed. Cir. Sept. 16, 2009) (nonprecedential) (reaffirming that a "challenge to validity cannot be brought in a suit against the Director of the PTO").
the constitutional claims, the court "must first determine whether the plaintiffs have standing to bring this action." Amnesty Int'l USA v. McConnell, 08 Civ. 6259 (JGK), 2009 WL 2569138, at *8 (S.D.N.Y. Aug. 20, 2009) (finding that plaintiffs lack standing to raise First and Fourth Amendment and Art. III constitutional challenges to amendments to Foreign Intelligence Surveillance Act). Constitutional challenges to government action are routinely dismissed where plaintiffs lack standing to sue. See, e.g., Warth v. Seldin, 422 U.S. 490, 498 (1975) (rejecting claims under First, Ninth and Fourteenth Amendments challenging zoning ordinance for lack of standing); Elk Grove Unified School Dist. v. Newdow, 542 U.S. 1, 17-18 (2004) (father lacks prudential standing to challenge constitutionality of school policy requiring teacher-led recitation of Pledge of Allegiance); United Presbyterian Church in the U.S.A. v. Reagan, 738 F.2d 1375, 1378 (D.C. Cir. 1984) (Scalia, J.) (First, Fourth and Fifth Amendment challenges to Executive Order dismissed on standing grounds). Here, the Federal Circuit has repeatedly made clear that there is no standing. Thus, the Court cannot reach the constitutional claims alleged in the complaint. Plaintiffs contend that if the USPTO grants a patent that violates the Constitution, it cannot "avoid accountability." See Pl. Opp. at 2. Contrary to plaintiffs' contention, however, it is not a "bedrock principle of our legal system" that every time "an agency of the government commits an unconstitutional act, private citizens are allowed to seek redress for that violation." Id. Rather, there are numerous examples of constitutional violations that may not be redressed in the courts, including constitutional torts allegedly committed by the federal government or its agencies, see, e.g., FDIC v. Meyer, 510 U.S. 471, 478 (1994), alleged First Amendment violations committed by supervisors against federal employers, see Bush v. Lucas, 462 U.S. 367 2
(1983), and constitutional claims that are not reviewable because they are political questions, see Coleman v. Miller, 307 U.S. 433, 450 (1939).2 Bush v. Lucas is especially instructive here. In that case, a federal employee, subject to Civil Service Commission regulations, brought a First Amendment claim against his supervisors for retaliatory demotion. See 462 U.S. at 367. The Court assumed for purposes of the decision that plaintiff's First Amendment rights had been violated and that "Congress has provided a less than complete remedy for the wrong." Id. at 373. The Court further assumed that Congress has neither expressly authorized the remedy requested nor "expressly precluded the creation of such a remedy by declaring that existing statutes provide the exclusive mode of redress." Id. After reviewing the civil service remedies available, the Court framed the question as follows: The question is not what remedy the court should provide for a wrong that would otherwise go unredressed. It is whether an elaborate remedial system that has been constructed step by step, with careful attention to conflicting policy considerations, should be augmented by the creation of a new judicial remedy for the constitutional violation at issue. Id. at 388. The Court concluded that given the comprehensive statutory scheme, it should be left to Congress, rather than the courts, to decide whether to create "a new species of litigation" to remedy the violation of plaintiffs' constitutional rights. Id. at 389. So too here, given the statutory scheme established by Congress governing the manner in which the validity of patents may be challenged, courts should not create new and unprecedented avenues of attack on existing
Thus, it is clear that plaintiffs' reliance on Marbury v. Madison, 5 U.S. 137 (1803), Pl. Opp. at 2, for the proposition that they must have a remedy for the alleged violation of their constitutional rights, is misplaced. The Supreme Court in Bush v. Lucas emphasized that its previous cases "unequivocally rejected" the "extreme" position represented by Marbury that the judiciary can fashion a remedy for every constitutional wrong. 462 U.S. at 373. 3
patents that Congress did not choose to provide. Webster v. Doe, 486 U.S. 592 (1988), which plaintiffs cite for the proposition that where Congress intends to preclude enforcement of constitutional rights its intent must be clear, is not to the contrary. Pl. Opp. at 3. As set forth more fully in the USPTO opening brief, the intent of Congress here is clear as it established a comprehensive scheme that provides a series of mechanisms for challenging patents. See USPTO Moving Br. at 1-3, 6-7, 9-10. The scheme plainly does not contemplate third-party challenges to the USPTO's issuance of patents 10-12 years after the fact on any grounds, constitutional or otherwise. In any event, the case is inapposite as Webster was an action brought under the Administrative Procedure Act ("APA") to review agency action. The question before the Court was whether the governing statute could be read to preclude constitutional review that was otherwise available under the APA. Id. at 602. Here, plaintiffs did not bring an APA action and thus there is no basis for jurisdiction for claims against the USPTO competing against the comprehensive statutory scheme.3 Plaintiffs cannot make an end run around the statutory scheme which provides the sole mechanisms for challenging patents by purporting to assert a constitutional violation unmoored to any
Nor is an APA action available against the USPTO in a case challenging the validity of a patent. The recent decision in Pregis Corporation v. John J. Doll, et al., Civ. No. 09-467 (GBL) (E.D. Va. August 14, 2009), Hr'g Tr. 55-57 (attached hereto as an appendix), disposes of the question. In that case, the issue before the Court was whether a third party could seek relief under the APA against the USPTO to invalidate a patent. Relying on Syntex, the Court dismissed the case against the USPTO, finding that "the APA does not act as a general waiver of sovereign immunity where the Patent Act and its own scheme clearly expresses Congress' intent to preclude putative third party infringers from seeking judicial review of such actions." Id. at 56; see also Animal Legal Defense Fund, 932 F.2d at 937-38. 4
jurisdictional grant.4 Plaintiffs also inexplicably cite to Tafas v. Doll, 559 F.3d 1345 (Fed. Cir. 2009), vacated, 2009 WL 1916498 (July 6, 2009), claiming that the Federal Circuit permitted suit against the USPTO for violation of constitutional rights. Not only was the case vacated and of no precedential value, see Socop-Gonzalez v. I.N.S., 272 F.3d 1176, 1186 n.8 (9th Cir. 2001), but more importantly, it raised no constitutional claims. Rather, Tafas was brought under the APA to challenge four promulgated rules as exceeding the scope of the USPTO's rulemaking authority under 35 U.S.C. § 2, see 559 F.3d at 1349 an indisputably proper application of the APA. Furthermore, this is not a situation in which there is no remedy for the alleged wrong. While a challenge to the validity of the patents may not properly be brought against the USPTO, validity of patents may be challenged in an action against the patent holder. One can obtain a ruling regarding the validity of the patents without the presence of the USPTO as a party. Indeed, courts most often invalidate patents in actions in which the USPTO is not a party, including in cases cited by plaintiffs in support of their motion for summary judgment. See, e.g., Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948) (holding that mixture of naturally occurring bacteria was not patentable); General Electric Co. v. De Forest Radio Co., 28 F.2d 641 (3d Cir. 1928) (patent for purified naturally-occurring tungsten found invalid in
A similar flaw exists in the other cases cited by plaintiffs on this point: Wright v. City of Roanoke Redevelopment & Housing Auth., 479 U.S. 418 (1987), and Fitzgerald v. Barnstable School Committee, 129 S. Ct. 788 (2009). In both cases, the question was whether the existing right to sue under 42 U.S.C. § 1983 was precluded by an exclusive statutory scheme. Here, plaintiffs have identified no existing grant of jurisdiction or waiver of sovereign immunity that would provide a comparable basis for suit. Moreover, although those cases did not find that the statute in question provided the exclusive means to challenge an agency action, they recognized that § 1983 could not be used to circumvent established procedures where Congress enacted, as it did here, a "carefully tailored scheme." Fitzgerald, 129 S. Ct. at 795-96. 5
infringement action).5 Once a court declares a patent invalid, the presumption is that the patentee is estopped from asserting the validity of that patent. See Blonder-Tongue Laboratories, Inc. v. Univ. Of Illinois Foundation, 402 U.S. 313 (1971). No further action by the USPTO is required to invalidate the patent. Thus, it is not necessary for the USPTO to be a party for plaintiffs to obtain the relief they seek a holding that the patents are invalid.6 Plaintiffs also contend that if the Court found the USPTO policies to be unconstitutional, the Court could "order the USPTO to initiate a reexamination pursuant to 35 U.S.C. § 303, 307." Pl. Opp. at 7. This is flatly wrong, as the USPTO Director's ability to initiate a reexamination of a patent is statutorily limited to situations in which prior art patents and publications raise a substantial question that has not previously been considered by the USPTO as to whether the claimed invention is either novel or non-obvious. More specifically, Section 303 limits the Director's reexamination powers to situations where prior art patents and
Nor do plaintiffs require the USPTO's presence as a party in the case to make their constitutional arguments. In an infringement action between private parties, a party is free to argue that a patent is not valid because it runs afoul of the First Amendment or other constitutional provisions. Cf. Brief of ACLU as Amicus Curiae, In re Bilski, Fed. Cir. No. 20071130, 2008 WL 1842266, at *2-14 (filed April 03, 2008) (arguing, in brief filed in support of USPTO, that claim should be held ineligible for patenting based on the First Amendment, or, in the alternative, that "the Court should apply traditional patent doctrines . . . so as to avoid the difficult application of First Amendment doctrines to this situation"). Plaintiffs confusingly contend that although the complaint does not so state, their request for relief "includes within it a request that the Court declare the [USPTO's] policies and practices [with respect to the types of patents at issue here] unconstitutional and enjoin the USPTO from applying its policies and practices with respect to these or any similar claims." Pl. Opp. at 6 & n.6. Absent a claim under the APA, 5 U.S.C. §§ 702, 706, plaintiffs cannot challenge the USPTO's "formal, written policy" permitting the patenting of human genes (see Pl. Opp. at 1). Thus, they can and do seek nothing more than the invalidation of the patents at issue here. Because, as set forth above, the USPTO is not a proper party to sue to invalidate the patents, plaintiffs fail to meet the redressability prong for constitutional standing and fail to state a claim upon which relief can be granted. See USPTO Moving Br. at 8, 13-14. 6
publications not court orders raise "a substantial new question of patentability." 35 U.S.C. § 303(a); see also In re Swanson, 540 F.3d 1368, 1375 n.4 (Fed. Cir. 2008) ("The PTO may . . . instigate a reexamination proceeding on its own motion if it determines that prior art patents or printed publications raise a substantial new question of patentability."); Manual of Patent Examining Procedure § 2258, at 2200-91 (8th ed., rev. 7, July 2008) ("Rejections will not be based on matters other than patents or printed publications, such as public use or sale, inventorship, 35 U.S.C. 101, conduct issues, etc.") (citing In re Lanham, 1 U.S.P.Q.2d 1877, [1986 Commr. Pat. LEXIS 4] (Comm'r Pat. 1986), and Stewart Systems v. Comm'r of Patents and Trademarks, 1 U.S.P.Q.2d 1879, [1986 U.S. Dist. LEXIS 17716] (E.D. Va. 1986)). The Director has no statutory authority to institute a reexamination to consider whether patent claims are unconstitutional or do not claim patentable subject matter pursuant to 35 U.S.C. § 101. CONCLUSION For the foregoing reasons and for the reasons set forth in the USPTO's opening brief, the USPTO's motion to dismiss should be granted and the complaint against it dismissed. Dated: New York, New York September 23, 2009 PREET BHARARA United States Attorney for the Southern District of New York Attorney for U.S. Patent and Trademark Office
/s/ Beth E. Goldman BETH E. GOLDMAN Assistant United States Attorney 86 Chambers Street -- 3rd Floor New York, New York 10007 Tel. No.: (212) 637-2732 firstname.lastname@example.org 7
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