Swartz v. Lee et al

Filing 31

MEMORANDUM OPINION. Signed by District Judge Leonie M. Brinkema on 8/22/2017. (dest, )(copy mailed to plaintiff by chambers)

IN THE UNITED STATES DISTRICT COURT FOR THE
EASTERN DISTRICT OF VIRGINIA
Alexandria Division

MITCHELL R. SWARTZ,
Plaintiff,

No. l:17-cv-482 (LMB/TCB)

JOSEPH MATAL, Performing the Functions and
Duties of the Under Secretary of Commerce
for Intellectual Property and Director of the
United States Patent and Trademark Office,
Defendant.
MEMORANDUM OPINION

Before the Court is defendant Joseph Matal's Motion to Dismiss [Dkt. Nos. 15 and 16],
which has been fully briefed. For the reasons that follow, defendant's motion will be granted.
I.

BACKGROUND

Plaintiff Mitchell Swartz ("plaintiff or "Swartz"), proceeding pro se. is a medical doctor,
electrical engineer, and inventor who holds several patents both in the United States and abroad.

Compl. [Dkt. No. 1]

7, 9. At issue in this civil action are six patent applications—U.S. Patent

Serial Nos. 12/932,058 ("the '058 application"), 12/589,258 ("the '258 application"), 13/544,381
("the '381 application"), 12/316,643 ("the '643 application"), 09/748,691 ("the '691

application"), and 09/750,765 ("the '765 application")— all of which plaintiff describes as
relating to inventions that allegedly generate heat and electricity quietly and efficiently. Compl.
[Dkt. No. IJTm 10, 18.
Each application went through the internal two-stage review process at the United States

Patent and Trademark Office ("USPTO"). At the first stage, each application was assigned to a
patent examiner, who reviewed its claims to determine patentability. S^ 35 U.S.C. § 131. For

each appUcation, the examiner determined on both an initial review and after reconsideration that
the claims failed to meet the legal requirements for patentability. Cf id. § 132. After the

examiner twice rejected each application, plaintiff filed appeals with the Patent Trial and Appeal
Board ("PTAB" or "Board"), an administrative appellate tribunal inside the USPTO.

id §

134(a). The PTAB affirmed the rejection of five of his applications; however, the appeal of the

sixth, the '381 application, is still pending.' See Mem. in Supp. ofMot. to Dismiss ("Def.
Mem.") [Dkt. No. 18] 6. Dissatisfied with the decisions of the PTAB, plaintiff has exercised his

right under 35 U.S.C. § 145 to bring the present civil action against the Director of the USPTO,
in which he requests in Count 1 that the Court find that he is entitled to a patent on each
application.

Compl. [Dkt. No. 1]

315-19. Plaintiff also alleges that the USPTO and its

officers have engaged in a variety of misconduct while evaluating his applications. The
Complaint includes thirteen additional counts based on these allegations: two counts alleging
violations of constitutional rights, one negligence-based tort count, one access-to-records count,
eight counts alleging violations of various criminal laws, and one count alleging civil violations

of the Racketeer Influenced and Corrupt Organizations Act ("RICO"). S^ id

320-60.

Defendant has moved to dismiss each of the fourteen counts for a variety of substantive
and procedural reasons, ^

Def Mem. [Dkt. No. 18], plaintiff has responded, ^

Opp'n to Mot. to Dismiss ("PI. 0pp.") [Dkt. No. 25], and defendant has replied, ^

Mem. in
Reply in

Supp. of Mot. to Dismiss ("Reply") [Dkt. No. 29]. Finding that the briefs are comprehensive and

' Paragraphs 19 through 277 of plaintiffs 120-page Complaint relate the substance ofeach ofthe
six relevant patent applications as well as plaintiffs interactions with the USPTO with respect to
each application. Because many of the facts alleged are immaterial to the present Motion to
Dismiss, the Court will discuss only the relevant details rather than the entire factual background
as related in the Complaint.
2

that oral argument would not aid the decisional process, the Court will resolve defendant's
motion on the materials submitted.

II.

DISCUSSION

Defendant bases his Motion to Dismiss on Fed. R. Civ. P. 12(b)(1) and 12(b)(6). First, he
argues that Count 1 should be dismissed under Rule 12(b)(6) for failure to state a claim because
plaintiff does not plausibly allege entitlement to a patent for his various applications, all of which

relate to "cold fusion," a "hypothetical technology that has not been shown to be technically

feasible."^ Def. Mem. [Dkt. No. 18] 1, 14-22. Second, he argues that under Rule 12(b)(1), the
Court lacks subject matter jurisdiction to consider some of the patent claims and all of the nonpatent claims for a variety of reasons, including sovereign immunity, collateral estoppel, failure
to administratively exhaust, and failure to establish a private right of action. See id. at 8-13, 22-

A. Standard of Review

Under Rule 12(b)(1), a civil action must be dismissed whenever the court lacks subject
matter jurisdiction. Although the plaintiff has the burden of establishing subject matter

jurisdiction, Demetres v. East West Const, Inc.. 776 F.3d 271, 272 (4th Cir. 2015), a court
should accept "as true the jurisdictionally significant facts claimed by the" plaintiff. Motley v.
Va. State Bar. 403 F. Supp. 2d 468, 471 (E.D. Va. 2005). After accepting those facts as true, the

As defendant explains, "[c]old fusion is generally understood to refer to a nuclear reaction that
occurs at, or near, room temperature and generates excess heat and transmutation products when

hydrogen is introduced to a small piece of nickel or palladium." Def Mem. [Dkt. No. 18] 5
(quoting id Ex. 1 at 9 n.6). Plaintiff argues that his applications relate to devices "which are

different from classic 'cold fusion'" and believes it is "inappropriate" to label his applications as
"cold fusion" devices. PI. Opp. [Dkt. No. 25]
134-36. In deference to plaintiffs belief that
"cold fusion" is a loaded term, the Court will refer to these room temperature nuclear reactions
as "low energy nuclear reactions" or "LENRs." Cf Def. Mem. [Dkt. No. 18] Ex. 6 (using the
term "LENR" to describe these reactions).
3

court must determine "whether those facts are sufficient as a matter of law to establish subject
matter jurisdiction." Id

Under Rule 12(b)(6), a civil action must be dismissed if the complaint does not "contain

sufficient facts to state a claim that is 'plausible on its face.'" E.I, du Font de Nemours & Co. v.
Kolon Indus., Inc., 637 F.3d 435,440 (4th Cir. 2011) (quoting Bell Atl. Corp. v. Twomblv. 550
U.S. 544, 570 (2007)). Although the court must assume for the purposes of deciding the motion

that all "well-pleaded allegations" are true and must "view the complaint in the light most
favorable to the plaintiff," Philips v. Pitt Cnty. Mem'l Host).. 572 F.3d 176, 180 (4th Cir. 2009),
allegations that are merely conclusory need not be credited, s^ Ashcroft v. IqbaL 556 U.S. 662,
678 (2009).
B. Analysis

1.

Count 1 (35 U.S.C. 6 145 Claims^

Count 1 alleges under 35 U.S.C. § 145 that plaintiffs six patent applications—the '058,
'258, '381, '643, '691, and '765 applications—should be granted. Defendant argues that three of
these applications are ineligible for this Court's review because the PTAB has not yet rendered a

fmal decision on the '381 application and plaintiff is collaterally estopped from arguing for the
patentability of the '058 and '765 applications. Defendant further contends that plaintiffs
allegations as to the remaining three applications should be rejected because he has failed to
plausibly allege that they involve patentable claims.
a.

'381 Application

It is uncontested that plaintiffs appeal of the examiner's denial of the '381 application

was still pending at the PTAB when he filed this action. S^ Def. Mem. [Dkt. No. 18] Ex. 13
("As of [July 17, 2017], the PTAB has not issued any decision in Appeal No. 2017-006193."). A

patent applicant may only bring a suit under 35 U.S.C. § 145 if he is "dissatisfied with the

decision of the Patent Trial and Appeal Board in an appeal under" 35 U.S.C. § 134(a). Section
145 waives the federal government's sovereign immunity only when the PTAB has issued a final
decision on the patent application at issue. See Fleming v. Coward. 534 F. App'x 947, 950 (Fed.
Cir. 2013). Therefore, because the PTAB has not issued a final decision on the '381 patent
application, defendant retains its sovereign immunity and plaintiffs suit must be dismissed with
respect to that application. See id.

In response to this argument, plaintiff does not claim that the PTAB has issued a final
decision on his application; instead, he appears to claim that the PTAB's "refusal to admit
Evidence and Briefs" into the record during the appeal "were final decisions." PI. 0pp. [Dkt. No.
25] 1112. To the contrary, these decisions are the antitheses of final decisions; they are, indeed,

only intermediate decisions preceding a future final decision on the patentability of the claims in

the '381 application. As such, Count 1 will bedismissed as to the '381 application.^
b. '058 and '765 Applications
Under the doctrine of collateral estoppel, a party may not relitigate an issue that is
(1) identical to an issue (2) actually litigated in an earlier proceeding if (3) resolution of the issue
was necessary to the judgment in the earlier proceeding and (4) the party had a full and fair
opportunity to litigate the issue in the earlier proceeding. Jet. Inc. v. Sewage Aeration Svs.. 223

F.3d 1360, 1366 (Fed. Cir. 2000). Defendant argues that two of plaintiffs patent applications
(the '058 application and the '765 application) are "substantively identical" to two earlier
applications (Application Nos. 08/406,457 and 07/760,970) that plaintiff submitted to the
A dismissal for failure to exhaust would typically be without prejudice; however, the reasons
the Complaint fails to plausibly allege patentability with respect to plaintiffs '258, '643, and
'691 applications, see infra, apply with equal force to his '381 application. As such, this
dismissal will be with prejudice.
5

USPTO. Def. Mem. [Dkt. No. 18] 9-13. The USPTO rejected both of the earlier applications for
lack of utility under 35 U.S.C. § 101 and for lack of enablement under 35 U.S.C. § 112. See id.

Plaintiff appealed the rejection of both applications to the Federal Circuit and, in both cases, the
Federal Circuit affirmed the Board's determination that the patent applications failed to satisfy

§§ 101 and 112.

id.; In re Swartz. 50 F. App'x 422, 424-25 (2002) (per curiam); In re

Swartz. 232 F.3d 862, 864 (2000) (per curiam).

In response, plaintiff does not contend that the claims at issue in the current applications
are distinct from the claims at issue in the earlier applications; instead, he argues that "collateral

estoppel is not appropriate here because here there are new materials and evidence." PI. 0pp.
[Dkt. No. 25] ^ 58. He also appears to believe that because the earlier cases proceeded under 35

U.S.C. § 141, rather than § 145, collateral estoppel should not apply. See id. Neither of these
arguments is persuasive. The application of collateral estoppel does not depend on whether new
evidence has been uncovered or whether the plaintiff has identified a different cause of action;
instead, collateral estoppel depends on "the identity of the issues that were litigated" in the
earlier suit. Ohio Willow Wood Co. v. Alps S.. LLC. 735 F.3d 1333, 1342 (Fed. Cir. 2013); see
also Black v. Office of Pers. Mgmt, 641 F. App'x 1007, 1009 (Fed. Cir. 2016) ("[Cjollateral
estoppel appl[ies] even if new evidence exists ...."). Here, (1) plaintiff implicitly concedes that
the '058 and '765 applications are substantively identical to earlier applications; (2) the issues

whether those earlier applications were patentable under §§101 and 112 were previously
litigated in the Federal Circuit; (3) the Federal Circuit expressly decided the §§ 101 and 112

issues as the basis for affirming the USPTO's decision; and (4) plaintiff, as a party in the earlier
litigation, had a ftill and fair opportunity to litigate those issues. As such, plaintiff is collaterally

estopped from relitigating the patentability of the '058 and '765 patent applications and Count 1
will be dismissed with respect to those two applications.
c.

'258. '643. and '691 Applications

Under § 145, an applicant who is dissatisfied with the PTAB's decision affirming the
rejection of his patent application may file a civil action against the Director of the USPTO in
district court. Section 145 instructs the court to determine whether the applicant is "entitled to
receive a patent for his invention" and, if the court determines the applicant is so entitled, to

"authorize the Director to issue such patent." See id. Furthermore, the district court's review is
not limited to the record before the PTAB; instead, the applicant may present additional evidence
to the court and, when new evidence is introduced, review is de novo. Kappos v. Hvatt. 132 S.
Ct. 1690, 1693-94(2012).

To establish entitlement to a patent, an applicant must show (among other things) that his
claimed invention is "useful," 35 U.S.C. § 101, and that the specification is "full, clear, concise,

and exact" enough to "enable any person skilled in the art to which it pertains" to "make and
use" it, id § 112(a). In this case, the PTAB rejected all three applications for lack of utility and

lack of enablement. S^ Def. Mem. [Dkt. No. 18] Ex. 1 at 28; Ex. 2 at 27; Ex. 3 at 25-26.'' In all
three appeals, the PTAB resolved both issues on the "single question of operability of the
claimed invention." See, e.g.. id. Ex. 2 at 13. Because the PTAB found that all three inventions

were inoperable, it also found that they were not useful and could not be made and used by

The Court may refer to documents referenced in or integral to the complaint without converting
defendant's motion to dismiss into a motion for summary judgment. See Davis v. George Mason
Univ.. 395 F. Supp. 2d 331, 335 (E.D. Va. 2005), affd. 193 F. App'x 248 (4th Cir. 2006). In this
case, the Complaint explicitly incorporates the full record of each patent application at issue and

refers to a variety of academic literature relating to LENR technology. S^ Compl. [Dkt. No. 1]
18, 61-69. These items have been incorporated by reference and may be properly considered
in evaluating defendant's Motion to Dismiss and plaintiffs objections to that motion.
7

persons skilled in the relevant art. See id. Ex. 1 at 28; Ex. 2 at 27; Ex. 3 at 25-26; see also
Process Control Corp. v. HvdReclaim Corp.. 190 F.3d 1350, 1358 (Fed. Cir. 1999) ("If a patent

claim fails to meet the utility requirement because it is not... operative, then it also fails to meet
the how-to-use aspect of the enablement requirement."). In this litigation, defendant claims that
the § 145 claims should be dismissed on the same basis. See Def. Mem. [Dkt. No. 18] 14
("Specifically, [plaintiff] fails to plausibly allege that his cold fusion inventions are operable.").
In addition, because plaintiff has included evidence on the issue of operability that
allegedly goes beyond the evidence submitted to the PTAB, see, e.g.. PI. 0pp. [Dkt. No. 25] Ex.

24 ("Oscillating Excess Power Gain and Magnetic Domains in NANOR-type CF/LANR
Components"), plaintiff is entitled to de novo review on the issue of operability. As such, to
survive defendant's Motion to Dismiss, plaintiff must allege facts sufficient to make out a
plausible claim that his inventions are operable.
Both the USPTO and the Federal Circuit have long believed that LENR technology is
presently inoperable. See, e.g.. In re Swartz. 232 F.3d at 864 (discussing the "substantial
evidence" that claimed LENR results are "irreproducible" and that "those skilled in the art would

'reasonably doubt' the asserted utility and operability" of LENR technology); see also Eli Lilly
& Co. V. Actavis Elizabeth LLC. 435 F. App'x 917, 924 (Fed. Cir. 2011) (referencing LENR

technology as an example of something "so incredible" as to warrant "special procedures" at the
USPTO); Def. Mem. [Dkt. No. 18] Ex. 1 at 18 ("[V]irtually none of the scientific community
consider[s] the alleged positive results of cold fusion experiments as being confirmed ...."
(internal quotation marks omitted) (second alteration in original)).

In response, plaintiff argues: (1) that his patent applications are not directed to LENR

technology, see, e.g.. Compl. [Dkt No. 1]

24-25, 109-11, 203-04;^ and (2) that he has

submitted evidence showing both that LENR technology is becoming more widely accepted and
also that he has produced positive experimental results, see, e.g.. id.

61-69; PI. 0pp. [Dkt. No.

25] Ex. 24 ("Oscillating Excess Power Gain and Magnetic Domains in NANOR-type CF/LANR
Components").
Setting aside the apparent incompatibility of these two responses, neither is persuasive.

First, as the PTAB decisions in this case explain, all of plaintiffs applications relate to the roomtemperature nuclear reactions that are the hallmark of LENR technology.

Def. Mem. [Dkt.

No. 18] Ex. 1 at 20 C'[T]he claims, including, in particular, representative claim 1, are directed to

a process for controlling the production of a cold fusion product."); Ex. 2 at 11 (establishing "on
the record before us that representative independent claim 12 is drawn to a cold fusion process,

and more particularly a machine for monitoring electrochemically-induced nuclear fusion
reactions in a cold fusion reactor"); Ex. 5 at 15 ("[Plaintiffs] claimed invention is drawn to

methods for controlling a cold fusion reaction or cold fusion product output."). Moreover,
although plaintiff asserts in his Complaint that his technology is not directed to LENR, nowhere
does he substantively respond to the PTAB's characterization of his applications as directed to
these low-energy nuclear processes.
Second, neither the evidence plaintiff submits relating to LENR in general nor his

evidence of experiments and demonstrations he has run establishes the operability of LENR or of

It is not entirely clear from plaintiffs Complaint whether his argument is that his patent
applications are not at all directed to LENR technology or that the patent examiner and the
PTAB inappropriately referred to his LENR technology as "cold fusion." For the purposes of the
present motion, the Court will construe plaintiffs argument as the former, more forceful,
argument.
9

the claims in plaintiffs applications. Plaintiffs general LENR evidence consists of various
government reports discussing LENR technology. Unhelpftilly to plaintiff, these reports make
clear that LENR technology is not currently operable. See, e.g.. id. Ex. 6 at 1, 6 (explaining that
"much skepticism remains" about LENR and describing "real and controllable" LENR

experiments in only hypothetical terms); Ex. 7 at 26 (explaining that LENR experiments "remain
only thinly reproducible" and that "it seems unlikely that deployable/usable devices could be

expected within a five to ten year horizon").^ Although these reports may help plaintiff plausibly
allege the scientific possibility of future LENR technology, they do not help him plausibly allege

the current operabilitv necessary to show patentability. Cf In re Fisher. 421 F.3d 1365, 1371
(Fed. Cir. 2005) ("[A]n application must show that an invention is useful to the public as
disclosed in its current form, not that it may prove useful at some future date after further
research."). Moreover, nowhere does plaintiff explain how his specific patent applications relate
to the processes described in these reports.

In support of his opposition to defendant's Motion to Dismiss, plaintiff has submitted a

variety of academic papers and declarations explaining (allegedly successful) experiments and
demonstrations that he has done. See, e.g.. Smith Decl. [Dkt. No. 3]

3-5; PL 0pp. [Dkt. No.

25] Ex. 24 ("Oscillating Excess Power Gain and Magnetic Domains in NANOR-type CF/LANR
Components"). Again, plaintiff fails to draw any clear connection between his patent

^Plaintiff discusses both ofthese reports—one from the Defense Intelligence Agency ("DIA")
and one from the Defense Threat Reduction Agency ("DTRA")—in his Complaint. S^ Compl.
[Dkt. No. 1] 61-69. Although plaintiff appears to claim that he attached both reports to his
jd^ t 61 ("Exhibit 11 is from the DIA Report. . .."); id ^ 65 ("A closeup of the
Complaint,
DTRA report is shown in Exhibit 12."), neither report was filed with the court. Defendant

included copies of both reports with his Motion to Dismiss. See Def Mem. [Dkt. No. 18] Ex. 6;
Ex. 7. Because both documents were extensively discussed in the Complaint, they have been
incorporated by reference and may be properly considered in evaluating defendant's Motion to
Dismiss and plaintiffs objections to that motion. See Davis. 395 F. Supp. 2d 331.
10

applications and the evidence presented—nowhere, for example, does he explain how an

invention described in any of the relevant patent applications was used in the course of any of the
referenced demonstrations or experiments. Therefore, although plaintiff may plausibly allege
both the theoretic potential of LENR technology and also that he has achieved some positive
experimental results (presumably related to the LENR field), he has not plausibly alleged that the

inventions claimed in his patent applications were involved in those experiments or that those
inventions have any current operability.
Because plaintiff has failed to plausibly allege that his patent applications describe
operable inventions, he has failed to plausibly allege his entitlement to a patent and his § 145
claims must be dismissed with respect to the remaining—'258, '643, and '691—applications.
2.

Counts 2 and 8 (Constitutional Claims

In Counts 2 and 8, the Complaint alleges violations of plaintiffs constitutional due

process and equal protection rights.^ In both counts, plaintiff appears to be requesting damages
rather than injunctive relief,

Compl. [Dkt. No. 1] ^ 322 ("Defendants ... are hereby sued for

monetary damages."); id ^ 341 (citing 42 U.S.C. § 1983 and Bivens v. Six Unknown Named
Agents of Fed. Bureau of Narcotics. 403 U.S. 388 (1971)); however, plaintiff has only sued
Joseph Matal, the acting Director of the USPTO, in his official capacity. Further, neither § 1983

^Inboth Counts, plaintiff appears to rest his constitutional arguments on the Fourteenth
Amendment. S^ Compl. [Dkt. No. 1] ^ 322 ("The Defendants have ignored and rejected
controlling Authorities including the 14th Amendment of the Constitution of the United
States ...."); id ^ 341 ("The Defendants have ignored and reject controlling Authorities
including the 14th Amendment's 'equal protection' clause . . . ."). The Fourteenth Amendment is
not binding on the federal government. S^ U.S. Const, amend. XIV ("[N]or shall any State
deprive any person of life, liberty, or property, without due process of law; nor deny to any
person within its jurisdiction the equal protection of the laws." (emphasis added)). Because the
Court must construe plaintiffs pro se Complaint liberally, see, e.g.. Haines v. Kemer. 404 U.S.
519, 520-21 (1972), both Counts will be considered to assert claims under the Fifth Amendment,

which does apply to the federal government, see U.S. Const, amend. V; Boiling v. Sharpe. 347
U.S. 497 (1954).
11

nor Bivens allows a plaintiff to bring such a suit because § 1983 only applies to state officials,
see 42 U.S.C. § 1983, and Bivens actions may not be brought against federal agencies or officials

in their official capacity, see Doe v. Chao, 306 F.3d 170, 184 (4th Cir. 2002).^ Moreover, in his
brief [Dkt. No. 25], plaintiff does not clarify the relief he is seeking for the constitutional

violations nor does he develop an argument for this Court's jurisdiction. Instead, plaintiff merely
argues that his "Action is Supported by Bivens." Id. | 85. Therefore, the Court lacks jurisdictions
over Counts 2 and 8, which must be dismissed.

Even if plaintiff were suing the defendant in his personal capacity or were requesting
only injunctive relief on his constitutional claims, his Complaint would have to be dismissed for

failing to state a claim upon which relief could be granted. In both Count 2 and Count 8, plaintiff
alleges only vague violations of his constitutional rights. See Compl. [Dkt. No. I] H321
(claiming that the evidence plaintiff submitted to the PTO was "all ignored by Defendants"); id
342-43 (claiming that "[d]efendants' unlawful dual-tiered system, rather than a single uniform

approach, rejecting the reasoning of the Supreme Court's decision in United States v. Nixon
(1974) [sic] that all are 'equal under the law'" and that the "equal protection clause has been
broken by the fact that individual applicants in other states have their evidence docketed,
addressed, and properly delivered to supervising authorities"). Without additional factual

allegations explaining, for example, what plaintiff means by "[d]efendant's unlawful dual-tiered
system"; how plaintiff was treated unequally from others; or what liberty or property interest
plaintiff has been denied, his Complaint does not state a plausible claim for relief. Therefore,
Counts 2 and 8 will be dismissed.

Although defendant only explicitly argues this point with respect to Count 8 (plaintiffs equal
protection claim), see Def. Mem. [Dkt. No. 18] 22-23, it applies equally forcefUlly to Count 2
(plaintiffs due process claim).
12

3.

Count 3 (Neclicence Claim"

In Count 3, plaintiff contends that defendant was "negligent" in "maintain[ing] the
[e]videntiary record." Under the Federal Tort Claims Act ("FTCA"), which operates as a

"limited congressional waiver of sovereign immunity for injury or loss caused by the negligent
or wrongful act of a Government employee acting within the scope of his or her employment,"
Medina v. United States, 259 F.3d 220, 223 (4th Cir. 2001), negligence actions cannot be

brought in federal court "unless the claimant shall have first presented the claim to the
appropriate Federal agency," 28 U.S.C. § 2675(a); see also McNeil v. United States, 508 U.S.
106, 113 (1993) ("The FTCA bars claimants from bringing suit in federal court until they have

exhausted their administrative remedies.").^
Plaintiff does not dispute that he failed to appropriately file an administrative claim with
the USPTO,

Def Mem. [Dkt. No. 18] Ex. 12, instead arguing that (1) he "has submitted

Petitions (pursuant to the Board of Patent Appeals) seventeen times in the last two years"; (2)

"the FTCA is only for federal employees" and does not apply to "independent contractors"; and
(3) "in this case, foreign governments may be involved," PI. 0pp. [Dkt. No. 25]

76-79, 103-

11. None of these responses is compelling. To satisfy the FTCA's administrative exhaustion

requirement, claims against the USPTO must be filed with the USPTO Office of General
Counsel, not merely discussed in a petition submitted to the PTAB. S^ 37 C.F.R. § 104.41.
Moreover, plaintiff's claims about independent contractors and foreign governments are
nonsensical, as he has sued only the Director of the USPTO. Because he failed to exhaust the

^Inhis brief [Dkt. No. 25], plaintiff appears to claim that his third count is"Supported by
Bivens ... which is outside the purview of the Federal Tort Claims Act," id. ^ 85. To the extent
Count 3 is grounded on constitutional rather than tort law, it must be dismissed because, as
explained above, Bivens actions cannot be brought against federal agencies or federal officials in
their official capacity.
13

required administrative procedures. Count 3 will be dismissed without prejudice to plaintiffs
ability to refile this claim if he properly exhausts the administrative requirements.

Henderson

V. United States, 785 F.2d 121, 123 (4th Cir. 1986) ("It is well-settled that the requirement of
filing an administrative claim is jurisdictional....").
4.

Count 4 (Denial of Records Claim)

In Count 4, the Complaint alleges that defendant violated 37 C.F.R. § 41.109, which
provides a right to access certain USPTO records in some proceedings before the PTAB. See 37
C.F.R. § 41.109(a) ("Any request from a party for access to or copies of Office records directly
related to a contested case must be filed with the Board."). On its face, this provision provides no

private right of action and does not grant jurisdiction to this Court to hear an action arising from
violations of the regulation. Moreover, plaintiff provides no analysis in either his Complaint
[Dkt. No. 1] or his brief [Dkt. No. 25] explaining the source of any right to sue under the

regulation. Therefore, Count 4 will be dismissed for lack ofjurisdiction.'"
5.

Counts 5-7. 9-12. and 14 ("Criminal Claims')

Counts 5-7, 9-12, and 14 allege that the defendant has committed a variety of crimes,
including obstruction ofjustice, Compl. [Dkt. No. 1]
18 U.S.C. §§ 1503, 1519); making false statements, id

327-28 (Count 5) (claiming violations of
329-30 (Count 6) (claiming violations

of 18 U.S.C. § 1001); conspiracy to commit an offense against or to defraud the United States,
Even if the Court did have jurisdiction over this Count, plaintiff has failed to plead sufficiently
specific allegations to withstand dismissal under Rule 12(b)(6). He claims only that "[t]he PTO,
and the Board, have ignored specific requests which would have clarified this for the Honorable
court." Compl. [Dkt. No. 1] ^ 326. He does not explain when he filed those requests, which
records he was requesting, how his requests fell under §41.109, or what those requests would
have "clarified." In addition, § 41.109 applies only to a "contested case," 37 C.F.R. § 41.109;
however, appeals like plaintiffs proceed under 35 U.S.C. § 134 and are not "contested cases,"
see 37 C.F.R. § 41.2 ("Contested case means a Board proceeding other than an appeal under 35
U.S.C. 134 or a petition under § 41.3"). Therefore, even on the merits of the claim, plaintiff has
failed to plausibly allege any entitlement to relief.
14

id

331-40 (Count 7) and 359-60 (Count 14) (claiming violations of 18 U.S.C. § 371); mail

fraud, id.

344-46 (Count 9) (claiming violations of 18 U.S.C. § 1341); witness tampering, id.

TITf 347-54 (Counts 10 and 11) (claiming violations of 18 U.S.C. § 1512);'^ and misprision ofa
felony, id.

355-56 (Count 12) (claiming violations of 18 U.S.C. § 4). None of the specified

criminal statutes contains a waiver of sovereign immunity and plaintiff does not claim that the

federal government has in fact waived its immunity with respect to these criminal claims. As
such, because plaintiff has only sued the Director of the USPTO in his official capacity,

sovereign immunity bars plaintiff from bringing these counts,

Fed. Deposit Ins. Co. v.

Mever. 510 U.S. 471, 475 (1994) ("Absent a waiver, sovereign immunity shields the Federal

Government and its agencies from suit.")- For these reasons. Counts 5-7, 9-12, and 14 will be
dismissed.

6.

Count 13 (Civil RICO Claim')

Count 13 alleges that defendant has violated RICO. As with the criminal statutes

identified in plaintiffs other counts, RICO does not contain a waiver of sovereign immunity. See
Bloch V. Exec. Office of the President. 164 F. Supp. 3d 841, 856 (E.D. Va. 2016). In addition,

plaintiff does not allege—in either his Complaint [Dkt. No. 1] or his brief [Dkt. No. 25]—^that
the federal government has waived sovereign immunity with respect to being sued under RICO.
As such, plaintiff cannot bring a RICO claim against the Director of the USPTO in his official
capacity and Count 13 must be dismissed.
In Count 11, plaintiff claims defendant has violated 18 U.S.C. § 1512 (a witness tampering
statute) through violations of the Administrative Procedure Act ("APA"). To the extent plaintiff
is alleging criminal law violations, his claim must be dismissed. To the extent plaintiff is alleging
(non-criminal) violations of the APA, his claim must also be dismissed because the APA only
provides a cause of action to review agency decisions when "there is no other adequate remedy
in a court." 5 U.S.C. § 704. As the present action demonstrates, 35 U.S.C. § 145 provides a cause
of action to review the denial of a patent application; therefore, plaintiff cannot bring suit against
the agency under the APA.
15

III.

CONCLUSION

For the reasons stated above, defendant's Motion to Dismiss [Dkt. Nos. 15 and 16] will

be granted by an appropriate Order to be issued with this Memorandum Opinion.
\jsx

Entered this

day of August, 2017.

Alexandria, Virginia

Leonie M. Brinkema

United States District Judge