Jennings, Douglas M. v. Auto Meter Products ( 2007 )

In the
United States Court of Appeals
For the Seventh Circuit
____________
No. 06-2466
DOUGLAS M. JENNINGS,
Plaintiff-Appellant,
v.
AUTO METER PRODUCTS, INC.,
GAUGE WORKS, LLC, AND GREGORY DAY,
Defendants-Appellees.
____________
Appeal from the United States District Court
for the Southern District of Indiana, Indianapolis Division.
No. 04-CV-1862—William T. Lawrence, Magistrate Judge.
____________
ARGUED NOVEMBER 27, 2006—DECIDED JULY 25, 2007
____________
Before WOOD, EVANS, and WILLIAMS, Circuit Judges.
WOOD, Circuit Judge. Plaintiff Douglas M. Jennings
designed an aftermarket dashboard bezel—that is, a
molded shape that fits over an automobile’s instrument
panel. Hoping to make money from his design through
manufacturing and selling his bezels in the auto parts
aftermarket and to forestall copycats, Jennings applied
to the U.S. Patent and Trademark Office (“PTO”) for a
patent. As part of her review of Jennings’s application, the
patent Examiner contacted defendants Auto Meter Prod-
ucts, Inc. (“Auto Meter”), Gauge Works, LLC (“Gauge
Works”), and Gregory Day to inquire whether the bezel
they were selling was on sale or publicly available be-
2 No. 06-2466
fore Jennings applied for his patent. Jennings believes
that the defendants, in response to the Examiner’s inqui-
ries, fraudulently misled her into believing that Jennings
was not in fact the inventor of the bezel.
In addition to continuing to pursue his patent applica-
tion, Jennings filed this action against the defendants
under the Racketeer Influenced and Corrupt Organiza-
tions Act (“RICO”), 18 U.S.C. §§ 1962(a)-(d), as well as
its Indiana counterpart, Ind. Code §§ 35-45-6-2. RICO fit
the bill, in Jennings’s opinion, because the defendants
were engaged in “the type of unfair competition that one
would expect from a Mafia family or narcotics cartel.” His
complaint alleged that the defendants had commandeered
the PTO through a pattern of racketeering activity by
flooding it (via mail and wire transmissions) with false
information in order to deny Jennings a patent and
thereby “exploit the market for the bezel without compen-
sating Jennings for use of his invention.” In addition to
his federal and state RICO theories, Jennings asserted
various grounds for recovery under Indiana state law, such
as unauthorized control of his property, conversion, and
fraud.
The defendants moved to dismiss on various grounds.
They argued that the RICO counts failed to state a claim
upon which relief could be granted, see FED. R. CIV. P.
12(b)(6), because Jennings had not adequately alleged a
pattern of racketeering activity. They also maintained that
the state-law claims were unripe, because Jennings’s
patent application was still pending before the Board of
Patent Appeals and Interferences (“BPAI”) at the time.
Defendants also moved to disqualify Jennings’s attorney,
claiming that he was a necessary fact witness under
Indiana Rule of Professional Conduct 3.7. A magistrate
judge granted the defendants’ Rule 12(b)(6) motion,
stayed the state-law claims, and granted the motion to
disqualify Jennings’s attorney. After a joint motion by the
parties, the court issued a final judgment dismissing all
No. 06-2466 3
claims. For the following reasons, we affirm the dismissal
of all claims. Because we have resolved Jennings’s ap-
peal this way, we have no need to reach the attorney-
disqualification issue.
I
Briefly, a dashboard bezel is the structure that sur-
rounds the instrument gauges on a car’s dashboard and
holds the gauges in place. Jennings’s bezel replaces a car’s
original dashboard bezel. More than that, it improves the
bezel, because it has room for more automotive gauges
than were included in the original design of the car and it
still allows the driver to see the entire panel of instru-
ments. In early 2000, Jennings advertised and sold his
product on the Internet at www.clubsi.com. He alleges that
sometime in January 2000—about nine months before he
applied for his patent—Day, the president and sole owner
of Gauge Works, noticed the bezel for the first time on
www.clubsi.com and decided to manufacture and sell a
nearly identical one of his own. Day and his company
partnered with Auto Meter, a wholesaler of aftermarket
auto parts, to distribute an aftermarket dashboard bezel
that Jennings claims was simply a replica of his bezel.
Auto Meter, Day and Gauge Works first displayed their
bezel at a trade show known as the SEMA International
Auto Salon, which was held at the end of March 2000 in
Pomona, California. Seven months later, on October 25,
2000, Jennings filed an application for a utility patent on
his bezel.
According to Jennings, the defendants then began
engaging in a series of fraudulent acts aimed at “corrupt-
ing” his patent application and sabotaging his ability to
establish himself as the inventor of his aftermarket
dashboard bezel. In the course of reviewing Jennings’s
patent application, the patent Examiner contacted Auto
Meter requesting evidence that the aftermarket dash-
4 No. 06-2466
board bezel was on sale or publicly available before
October 25, 2000. Auto Meter referred the Examiner to
Day, who told the Examiner on October 21, 2002, that he,
not Jennings, was the inventor of the bezel that was the
subject of Jennings’s patent application. Because Jennings
believes that Day was lying, and the conversation occurred
on the telephone, Jennings asserts that the communica-
tion was an act of wire fraud. Jennings also claims that
Day subsequently contacted Auto Meter, and the two
parties conspired to fabricate a product flyer purportedly
for the 2000 SEMA show, to demonstrate that the bezel
was indeed publicly available before the date on which
Jennings filed his application. (The date of first public use
matters, as inventors have only one year after that date in
which to file a patent application. See 35 U.S.C. § 102(b).)
The allegedly fraudulent flyer identified Auto Meter’s bezel
and displayed a date of October 24, 2000. On October 31,
2002, Auto Meter faxed the contested document to the
Examiner. Jennings asserts that this too was an act of
wire fraud. The Examiner relied on the product flyer in
concluding that the aftermarket dashboard bezel was
“prior art” under 35 U.S.C. § 102(a), and on that ground
she rejected Jennings’s patent claims in an Office Action
issued on November 13, 2002.
In response to the Office Action, Jennings furnished the
Patent Office with evidence that he had invented his bezel
before January 2000. Following up on this information,
the Examiner again contacted Auto Meter seeking addi-
tional evidence that its bezel was publicly available before
June 1999. Auto Meter in turn contacted Day and Gauge
Works and relayed to them its recent conversation with
the Examiner. Jennings claims that the group of defen-
dants then agreed to fabricate a second false product
flyer, which showed that Day’s bezel was in fact available
to the public prior to June 1999, even though they knew
that it was not until at least early 2000 that they first
No. 06-2466 5
began manufacturing the bezel. The second flyer was
mailed to the PTO sometime between April 15, 2003, and
August 13, 2003, another purported act of mail fraud. The
Examiner issued a second non-final Office Action, mailed
on August 13, 2003, once again rejecting Jennings’s patent
claims, this time relying on the later-filed flyer, which
established (fraudulently according to Jennings) that
Day’s bezel was available in June 1999.
On September 11, 2003, Jennings’s attorney, Paul
Maginot, attempted to convince the examiner in an
interview that she had relied on false information in
rejecting Jennings’s claims. The Examiner was not per-
suaded; she issued a final Office Action on February 9,
2004, rejecting Jennings’s application and again referring
to Auto Meter’s second product flyer as her basis for con-
cluding that the product was previously available to the
public. Jennings appealed the ruling to the BPAI. Since
this case was argued, the court has been informed that
the BPAI has reversed the Examiner’s decision, finding
both substantive and procedural problems with the flyer
submitted by Auto Meter. We are not aware, however, of
any further developments in the PTO, and in particular,
the record does not reflect that Jennings’s application has
either been granted or denied. (Nor has Jennings with-
drawn his appeal, even though it appears that the proce-
dures that the PTO furnishes for contesting adverse
decisions may be working perfectly well for him.) Nothing
that has happened renders the present case moot, how-
ever, and so we proceed with our decision.
In an effort, Jennings says, “to address the delay in the
examination and issuance of his patent,” he filed a request
for voluntary publication of his patent application in order
to obtain provisional rights in his application under 35
U.S.C. § 154(d). While the request was ultimately accepted
by the PTO, the wheels did not turn quickly enough to
satisfy Jennings. He claims that a number of companies
6 No. 06-2466
nonetheless “declined the invitation to consider a reason-
able royalty for Jennings’s intellectual property because
the claims of the Bezel Patent Application currently
stand rejected in the PTO.”
After filing his request for voluntary publication,
Jennings, through his lawyer, sent a letter to Gauge Works
expressing his doubts about the product flyer that Gauge
Works had submitted to the Examiner showing that the
bezel was available before June 1999. Gauge Works
responded on September 23, 2004, with its own letter
stating that it believed that the flyer, which stated that
the bezel would be “Available in June” without specifying
the year, was intended to indicate that the bezel would
be available to the public in June 2000, contrary to the
Examiner’s interpretation that the flyer showed the bezel
would become available in June 1999. Additionally, to
bolster its contention that Jennings did not himself invent
the bezel, Gauge Works included with its letter a discus-
sion about and photographs of a bezel manufactured by
Mitsubishi and made available in the spring of 1999, which
Gauge Works claimed constituted prior art to Jennings’s
bezel. Jennings counters that Mitsubishi’s bezel is sub-
stantially different from his bezel, that it therefore does
not constitute prior art, and that by knowingly misrepre-
senting it as such in its mailing, Gauge Works was perpet-
uating its mail-fraud schemes. Indeed, Jennings character-
izes Auto Meter’s letter of October 20, 2004, to him stating
that Auto Meter agreed with Gauge Works’s position as
yet another fraudulent mailing.
While the parties quarreled over the validity of
Jennings’s application, Day filed his own design patent
application regarding the same bezel in the PTO on
November 1, 2002, 11 days after he had spoken with the
Examiner regarding Jennings’s utility patent application.
Jennings alleges that Day and Gauge Works fraudulently
conspired to name Day as the inventor in an effort to
No. 06-2466 7
“cover up the misrepresentations made to the Examiner
during the telephone conversation of October 21, 2002.”
According to Jennings, the fraud continued throughout the
PTO’s evaluation of Day’s design patent. The Examiner
was never given evidence that Day had seen Jennings’s
bezel on the Internet in January 2000 or that the bezel
was displayed at the 2000 SEMA trade show. Allegedly,
the Examiner knew nothing about the product flyer that
Auto Meter submitted during Jennings’s patent applica-
tion process. Jennings asserts that filing the design patent
application without disclosing all of this relevant evidence
constituted another act of mail fraud. On October 7, 2003,
Day was issued a design patent on the bezel; Day’s patent
remains in effect.
II
As we noted at the outset, Jennings decided to bring this
suit under RICO and related theories, believing that he
was one of many victims of a conspiracy by the defendants
to defraud the public by manipulating PTO proceedings.
The district court, however, found that Jennings had
“failed to plead the requisite acts and continued criminal
activity as required by RICO,” and it therefore dismissed
the federal and state RICO claims under FED. R. CIV. P.
12(b)(6). In the closely-related area of antitrust law, the
Supreme Court recently summarized a plaintiff ’s plead-
ing obligations as follows:
While a complaint attacked by a Rule 12(b)(6) motion
to dismiss does not need detailed factual allega-
tions, . . . a plaintiff ’s obligation to provide the
“grounds” of his “entitle[ment] to relief ” requires more
than labels and conclusions, and a formulaic recita-
tion of the elements of a cause of action will not
do . . . . Factual allegations must be enough to raise
a right to relief above the speculative level, . . . on the
assumption that all the allegations in the complaint
are true (even if doubtful in fact) . . . .
8 No. 06-2466
Bell Atlantic Corp. v. Twombly, 127 S.Ct. 1955, 1964-65
(2007). For a plaintiff seeking to pursue a claim asserting
that an antitrust conspiracy existed, the Court requires
“a complaint with enough factual matter (taken as true)
to suggest that an agreement was made.” Id. at 1965.
Congress passed RICO in an effort to combat organized,
long-term criminal activity. Midwest Grinding Co., Inc. v.
Spitz, 976 F.2d 1016, 1019 (7th Cir. 1992). Although
§ 1964(c) provides a private civil action to recover treble
damages for violations of RICO’s substantive provisions,
Sedima, S.P.R.L. v. Imrex Co., Inc., 473 U.S. 479, 481
(1985), the statute was never intended to allow plaintiffs
to turn garden-variety state law fraud claims into fed-
eral RICO actions. Midwest Grinding, 976 F.2d at 1022.
In order to establish a violation of § 1962(c), on which
Jennings relies in part, a plaintiff must show the following
four elements by a preponderance of the evidence:
“(1) conduct (2) of an enterprise (3) through a pattern
(4) of racketeering activity.” Sedima, 473 U.S. at 496. A
pattern of racketeering activity consists, at the very least,
of two predicate acts of racketeering committed within a
ten-year period. 18 U.S.C. § 1961(5); Midwest Grinding,
976 F.2d at 1019. In order to curb “widespread attempts
to turn routine commercial disputes into civil RICO ac-
tions,” id. at 1022, courts carefully scrutinize the pat-
tern requirement to “forestall RICO’s use against iso-
lated or sporadic criminal activity, and to prevent RICO
from becoming a surrogate for garden-variety fraud ac-
tions properly brought under state law.” Id. To fulfill the
pattern requirement, plaintiffs must satisfy “the so-called
‘continuity plus relationship’ test: the predicate acts
must be related to one another (the relationship prong)
and pose a threat of continued criminal activity (the
continuity prong).” Id. (citing H.J., Inc. v. Northwestern
Bell Telephone Co., 492 U.S. 229, 239 (1989)).
No. 06-2466 9
We can assume that the acts here are related; the
question is whether Jennings can show continuity. As the
Supreme Court explained in H.J. Inc., the continuity
requirement exists to give effect to Congress’s clear
intention that RICO target long-term criminal behavior,
492 U.S. at 242, as opposed to more discrete acts of fraud.
Continuity can be “both a closed- and open-ended concept.”
Midwest Grinding, 976 F.2d at 1022 (quoting H.J., Inc.,
492 U.S. at 241). Closed-ended continuity, which is all that
is even arguably present in this case, refers to criminal
behavior that has come to a close but endured for such a
substantial period of time “that the duration and repeti-
tion of the criminal activity carries with it an implicit
threat of continued criminal activity in the future.”
Midwest Grinding, 976 F.2d at 1022-23. (An open-ended
period, in contrast, is “a course of criminal activity which
lacks the duration and repetition to establish continuity.”
Midwest Grinding, 976 F.2d at 1023. A RICO plaintiff may
satisfy the open-ended continuity requirement by showing
past conduct which “by its nature projects into the future
with a threat of repetition.” Id. (quoting H.J. Inc., 492 U.S.
at 242).)
In Morgan v. Bank of Waukegan, 804 F.2d 970, 976 (7th
Cir. 1986), this court held that in determining whether
there is continuity, “[r]elevant factors include the number
and variety of predicate acts and the length of time over
which they were committed, the number of victims, the
presence of separate schemes and the occurrence of
distinct injuries.” Id. at 975. The court cautioned that
“the mere fact that the predicate acts relate to the same
overall scheme or involve the same victim does not mean
that the acts automatically fail to satisfy the pattern
requirement.” Id. at 976. The requirement of a pattern of
racketeering activity is “a standard, not a rule, and thus
its determination depends on the facts and circumstances
of the particular case, with no one factor being necessarily
10 No. 06-2466
determinative.” Id. We evaluate the allegations with the
goal of “achieving a natural and commonsense result,
consistent with Congress’s concern with long-term criminal
conduct.” Roger Whitmore’s Auto. Servs., Inc. v. Lake
County, Illinois, 424 F.3d 659, 673 (7th Cir. 2005).
Evaluating this complaint as Twombly instructs and
paying attention to the way in which the factual allega-
tions correspond to the legal requirements we have
outlined, we have no trouble concluding that Jennings has
not presented a RICO case. Although Jennings alleges a
slew of predicate racketeering acts that he claims were
aimed at corrupting PTO proceedings (in his words, “an
assault on the Patent Office”), at root this is a dispute
over who invented an aftermarket dashboard bezel.
Even if the defendants may have used misleading tactics
in their various efforts to obtain the rights to the product
(a point on which we take no position), the case lacks any
of the hallmarks of a RICO violation. There is no pattern
of fraudulent or racketeering behavior. The state courts
and the PTO itself have ample tools to correct any individ-
ual instances of fraud or other misconduct.
Consideration of the Morgan factors shows why this
is so. The duration of the alleged racketeering activity is
“perhaps the most important element of RICO continuity.”
Roger Whitmore’s, 424 F.3d at 673. Here, the defendants’
conduct spanned an insubstantial amount of time. Their
alleged fraudulent behavior began on October 21, 2002,
when Day first accepted the telephone call from the
Examiner. According to the complaint, the last communica-
tion with the PTO occurred as late as August 13, 2003,
fewer than ten months after the alleged racketeering
activity began.
Implicitly conceding that ten months is potentially too
short, Jennings urges us to take a broader look at the
defendants’ conduct. He argues that the appropriate
No. 06-2466 11
time span is two years, and that we must consider two
particular sets of allegations that he thinks the district
court improperly ignored. First, Jennings argues that we
must account for the allegations associated with Day’s
design patent application, which the district court held
were irrelevant to the analysis. Even if we were inclined to
do so, however, we do not see how it makes a difference.
Day’s design patent application, which Jennings argues
was an act of mail fraud, was filed on November 1, 2002,
11 days after the alleged criminal activity began. While
Jennings strenuously urges that Day should never have
received the patent eleven months later, and he implies
that the fraud was an ongoing act that continued until the
application was granted, there was nothing ongoing about
any fraudulent act. The alleged misrepresentation was
a singular predicate act that occurred right at the begin-
ning of the ten-month window. Second, Jennings argues
that the district court should have considered the Septem-
ber and October 2004 letters from the defendants to
Jennings as further acts of mail fraud that extended the
duration of the scheme. We disagree. These were letters
sent to Jennings, not the PTO, essentially explaining to
him why the defendants believed that his utility patent
application in the PTO should be rejected. If fraudulent
at all, the letters were, in Jennings’s own words, “intended
to cover up the fraudulent scheme being perpetrated at
the [PTO].” But actions, even if themselves illegal, taken
in an effort to cover up a criminal scheme “do nothing to
extend the duration of the underlying . . . scheme.” Mid-
west Grinding, 976 F.2d at 1024; see also Pyramid Sec.
Ltd. v. IB Resolution Inc., 924 F.2d 1114, 1117 (D.C. Cir.
1991) (holding scheme to conceal underlying criminal
activity by giving false deposition testimony does not
extend the length of a closed-ended RICO scheme);
Aldridge v. Lily-Tulip, Inc., 953 F.2d 587, 593-94 (11th Cir.
1992) (noting that acts to conceal underlying wrongdoing
12 No. 06-2466
in a RICO suit do not carry with them the threat of future
harm).
In short, Jennings’s allegations, even construed gener-
ously in his favor, cannot support a time period longer
than ten months. That time period, during which only a
few allegedly fraudulent acts took place, is too short to
show the necessary continuity for a “pattern” of racketeer-
ing. See Midwest Grinding, 976 F.2d at 1024 (finding a
nine-month scheme insubstantial); Olive Can Co. v.
Martin, 906 F.2d 1147, 1151 (finding six months to be a
“short period of time”); Uni*Quality, Inc. v. Infotronx, Inc.,
974 F.2d 918, 922 (7th Cir. 1992) (holding that a scheme
that lasted at most seven to eight months was “precisely
the type of short-term, closed-ended fraud that, subsequent
to H.J., Inc., this circuit consistently has held does
not constitute a pattern.”); see also Hughes v.
Consol-Pennsylvania Coal Co., 945 F.2d 594, 611 (3d Cir.
1991) (“We hold that twelve months is not a substantial
period of time.”); Primary Care Inv. v. PHP Healthcare
Corp., 986 F.2d 1208, 1215 (8th Cir. 1993) (stating that
“the activity lasted between ten and eleven months and . . .
we deem this period insubstantial”).
The short duration alone might be enough to dispose of
this case. See Vicom, Inc. v. Harbridge Merchant Servs.,
Inc., 20 F.3d 771, 782 (7th Cir. 1994). The other factors
identified in Morgan also favor dismissal, however, and
so we address them briefly. Jennings has not alleged a
sufficient number and variety of predicate acts to show a
RICO violation. While the complaint actually alleges very
few criminal acts, Jennings attempts to demonstrate a
wide variety of predicate acts by alleging that individual
acts violate multiple statutes. The act of mailing the
purportedly false product flyer to the PTO, for example,
metamorphoses in his hands into both tampering with
evidence and mail fraud. What emerges from a careful
No. 06-2466 13
reading of his complaint is something akin to what the
court found in Vicom, where we said, “Although Vicom’s
prolixity makes it seem as though Vicom alleges innum-
erable predicate acts to support its causes of action . . .
[w]hen all the verbiage is weeded out, Vicom manages to
allege a very few acts of mail or wire fraud in each count.”
20 F.3d at 781. Jennings’s complaint also lacks the requi-
site variety. Other than the evidence-tampering allega-
tions, which, as we noted above, generally stem from acts
that are also alleged to be mail or wire fraud, all we have
here is a few instances of mail and wire fraud. We have
repeatedly rejected RICO claims that rely so heavily on
mail and wire fraud allegations to establish a pattern. See
Midwest Grinding, 976 F.2d at 1024-25 (“[M]ail and
wire fraud allegations are unique among predicate acts
because the multiplicity of such acts may be no indication
of the requisite continuity of the underlying fraudulent
activity. Consequently, we do not look favorably on many
instances of mail and wire fraud to form a pattern.”
(internal quotations omitted)); Vicom, 20 F.3d at 781(same).
Additionally, notwithstanding Jennings’s efforts to
allege a vast array of victims and injuries, he is the only
identifiable victim. He alleges that “the [PTO], the payers
of users fees, taxpayers, and participants in the relevant
automotive accessory market” are also victims of the
defendants’ alleged crimes, but such unspecific assertions
are inadequate. In SK Hand Tool Corp. v. Dresser Indus.
Inc., 852 F.2d 936, 942 (7th Cir. 1988), for example, the
court considered a RICO claim that the defendant “de-
frauded investors generally.” The court rejected this claim
of “fraud on the public” because the complaint “contains
no well-pleaded facts permitting us to conclude that
some [other] investors may have been hurt by the alleged
fraud.” See also Cross v. Simons, 729 F.Supp 588, 595
(N.D.Ill. 1989) (Williams, J.) (holding that an allegation
14 No. 06-2466
that victims were “U.S. Citizens” was insufficient).
Jennings is the only identifiable individual who has
suffered any potential injury. For similar reasons, we
reject Jennings’s characterization of the number of injuries
suffered. He claims to have “allege[d] a myriad of distinct
injuries. Among the injuries alleged are the loss of honest
governmental services from officials of the [PTO], . . . the
slander of Mr. Jennings’s provisional patent rights and the
hampering of his licensing program, . . . the loss of patent
term and the corresponding loss of license fees arising
from the denial of a patent to Mr. Jennings, . . . and the
loss of the honest services of the defendants to perform
their duty of truthfully responding to quasi-judicial officers
on [sic] the U.S. Government.” Each one of these so-called
injuries, however, even if cognizable (which many are not),
is simply a different way to characterize the damage
Jennings has suffered from his inability (thus far) to get
his utility patent.
Finally, Day’s filing of the design patent application
does not create a separate “scheme” sufficient to save
Jennings’s RICO claims. It is not even clear that Jennings
is entitled to assert any injury from the Day design patent
application, since it is unclear whether, without the
utility patent Jennings is seeking, he has any legal right
in any property in the first place. Regardless, the existence
of a design patent application for the same product does
not change what this case is really about: a dispute over
various patent rights to an aftermarket dashboard bezel.
As we discussed at oral argument, Jennings has a number
of remedies he might pursue in order to rectify the injus-
tice he perceives regarding these patents. But those
remedies do not include a private right of action under
RICO, which was never intended to apply to such brief,
closed-ended, instances of fraud, where there is only one
identifiable victim, and that victim suffered one articulable
injury. The district court was correct to dismiss these
claims.
No. 06-2466 15
For the same reasons, the district court properly dis-
missed Jennings’s state RICO claim. “The Indiana RICO
statute is modeled after federal RICO, and also requires
proof of conduct of an enterprise through a pattern of
racketeering activity. As with federal RICO, a Plaintiff
must satisfy the continuity plus relationship requirement
with respect to the predicate acts alleged.” Directv v.
Edwards, 293 F. Supp. 2d 873, 879 (N.D. Ind. 2003) (citing
Yoder Grain, Inc. v. Antalis, 722 N.E.2d 840 (Ind. Ct. App.
2000)). Thus, Jennings’s state RICO claims fail as well.
III
We turn now to the remaining state law claims. At the
time this case was argued, the Examiner’s decision to
reject Jennings’s patent application was on appeal in the
BPAI. The district court, after dismissing the RICO claims,
dismissed the remaining state law claims pending the
BPAI’s decision, finding that the case was not ripe for
judicial review. Jennings contends he has suffered various
harms under Indiana law whether or not he ever receives
his patent, which makes it unnecessary to wait for the
result of his patent application. We review the district
court’s decision to dismiss the complaint on ripeness
grounds de novo, see Metropolitan Milwaukee Ass’n of
Commerce v. Milwaukee County, 325 F.3d 879, 881 (7th
Cir. 2003), and we affirm that conclusion as well.
Since oral argument, the BPAI has reversed the Exam-
iner’s decision. That does not mean, however, that the
issue of Jennings’s patent application has finally been
resolved. As far as we are aware, the PTO has not yet
conclusively determined whether Jennings will receive a
utility patent on the dashboard bezel. Unless and until
that happens, any damages he has are entirely speculative.
Should Jennings ultimately receive his patent, any poten-
16 No. 06-2466
tial damages he claims to have suffered from the inability
to get a patent disappear. Moreover, it remains
a possibility that his application might be denied on
grounds other than the existence of prior art, such as
obviousness. See KSR Internat’l Co. v. Teleflex, 127 S.Ct.
1727, 1741-42 (2007) (invalidating a patent as obvious and
rejecting, as too lenient, the approach that the Federal
Circuit has been taking to that issue). We recognize that
Jennings believes that he has been damaged in ways that
Indiana law recognizes, whether or not he ultimately
receives his patent. Nonetheless, even those claims will be
affected by the outcome of the patent proceeding. The
ripeness doctrine exists “to prevent the courts, through
avoidance of premature adjudication, from entangling
themselves in abstract disagreements over administra-
tive policies, and also to protect the agencies from judicial
interference until an administrative decision has been
formalized and its effects felt in a concrete way by the
challenging parties.” Sprint Spectrum L.P. v. City of
Carmel, 361 F.3d 998, 1002 (7th Cir. 2004) (quoting
Abbott Labs. v. Gardner, 387 U.S. 136, 148-49 (1967))
(internal quotation marks omitted). Although Jennings is
not asking this court to review the PTO’s actions (undoubt-
edly because he knows that we have no jurisdiction to do
so), the ultimate outcome of the agency proceedings will
shed meaningful light on the nature and degree of harm
Jennings may have suffered. The district court did not
err by concluding it was premature to consider the state
law claims.
IV
Finally, Jennings argues that the district court erred by
disqualifying his attorney from this litigation. Jennings
does not claim that he has been prejudiced thus far in any
way by his attorney’s disqualification, and we do not see
No. 06-2466 17
how he could have been. His only remedy at this point
would be for us to reinstate his attorney for future litiga-
tion in this matter. Since, in the exercise of de novo review,
we have affirmed the dismissal of all claims in this case,
we need not consider whether the attorney disqualifica-
tion was appropriate.
The district court’s decision is AFFIRMED.
A true Copy:
Teste:
________________________________
Clerk of the United States Court of
Appeals for the Seventh Circuit
USCA-02-C-0072—7-25-07