United States Court of Appeals for the Federal Circuit
06-1161
SOL SHEINBEIN,
Plaintiff-Appellant,
v.
Jon W. Dudas, DIRECTOR, U.S. PATENT AND TRADEMARK OFFICE,
Defendant-Appellee.
Sol Sheinbein, of Falls Church, Virginia, pro se.
John M. Whealan, Solicitor, Office of the Solicitor, United States Patent and
Trademark Office, of Arlington, Virginia, for defendant-appellee. With him on the brief
were Thomas L. Stoll, Linda M. Isacson, and Sydney O. Johnson, Jr., Associate
Solicitors.
Appealed from: United States District Court for the District of Columbia
Judge Ellen Segal Huvelle
United States Court of Appeals for the Federal Circuit
06-1161
SOL SHEINBEIN,
Plaintiff-Appellant,
v.
Jon W. Dudas, DIRECTOR, U.S. PATENT & TRADEMARK OFFICE,
Defendant-Appellee.
____________________________
DECIDED: September 25, 2006
____________________________
Before NEWMAN, LOURIE, and RADER, Circuit Judges.
LOURIE, Circuit Judge.
DECISION
Sol Sheinbein appeals from the judgment of the United States District Court for
the District of Columbia sustaining the decision of the United States Patent and
Trademark Office (“USPTO”) excluding Sheinbein from practice before the USPTO.
Sheinbein v. Dudas, Civ. No. 05-1460 (D.D.C. Oct. 25, 2005) (“Decision”). Because the
USPTO has statutory authority to so exclude Sheinbein based on his disbarment in
other jurisdictions, and because the statute of limitations does not preclude Sheinbein’s
exclusion, we affirm.
BACKGROUND
In 1997, Sheinbein, a member of the bars of the District of Columbia and the
State of Maryland and an attorney registered to practice in the USPTO, helped his son
flee to Israel after learning that the son was being investigated in connection with a
murder. Decision, slip op. at 1-2. In 2001, the Maryland Court of Appeals determined
that Sheinbein had committed the criminal act of obstructing or hindering a police officer
and had engaged in conduct prejudicial to the administration of justice. Id., slip op. at 2.
Based on those findings, Sheinbein was barred from practicing law in Maryland on
December 16, 2002. Id. On March 11, 2004, the D.C. Court of Appeals barred
Sheinbein from the practice of law in the District of Columbia as reciprocal discipline for
his misconduct in Maryland. Id.
In March 2004, the Director of the USPTO’s Office of Enrollment and Discipline
filed a complaint instituting a disciplinary proceeding pursuant to
37 C.F.R. § 10.134 that
proposed to exclude Sheinbein from practice in the USPTO based on his disbarment in
the State of the Maryland and the District of Columbia.
Id., slip op. at 2-3. Following
motions for summary judgment by both the USPTO and Sheinbein, an Administrative
Law Judge (“ALJ”) issued an Initial Decision holding that Sheinbein should be excluded
from practice in the USPTO for two reasons: first, reciprocal discipline due to his
disbarment in Maryland and the District of Columbia; and second, applying the five
factors in
37 C.F.R. § 10.154(b), disbarment was the “only appropriate sanction.”
Id.,
slip op. at 3. Sheinbein appealed the ALJ’s Initial Decision to the Director of the
USPTO, who adopted the ALJ’s factual findings and legal conclusions and imposed the
sanction of excluding Sheinbein from practice in the USPTO.
Id.
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Sheinbein appealed the USPTO’s decision to the United States District Court for
the District of Columbia.
Id., slip op. at 4. On October 24, 2005, the district court
granted the USPTO’s motion for summary judgment of affirmance and dismissed the
case.
Id., slip op. at 8. The court held that the clear and unambiguous language of the
applicable USPTO regulations,
37 C.F.R. § 10.23(a), (b), and (c)(5), supported
Sheinbein’s exclusion from practice in the USPTO.
Id. The court also rejected
Sheinbein’s argument that the five-year statute of limitations imposed by
28 U.S.C.
§ 2462 precluded his exclusion from practice.
Id., slip op. at 6. The court reasoned that
the trigger for the statute of limitations was Sheinbein’s actual disbarment by the State
of Maryland and the District of Columbia in 2002 and 2004.
Id. Further, the court
determined that there was no basis for it to limit, as argued by Sheinbein, the “conduct”
referred to in the USPTO regulation to the underlying misconduct that resulted in the
disbarments.
Id., slip op. at 7-8.
Sheinbein timely appealed to this court, and we have jurisdiction pursuant to
28
U.S.C. § 1295(a)(1). See Wyden v. Comm’r of Patents and Trademarks,
807 F.2d 934,
936 (Fed. Cir. 1986) (“An action for review of a decision of the Commissioner of the
Patent and Trademark Office disciplining an attorney pursuant to
35 U.S.C. § 32 arises
under an Act of Congress relating to patents. Therefore, jurisdiction in the District Court
is based at least in part on
28 U.S.C. § 1338, and appellate review of that court’s
decision is granted exclusively to the Federal Circuit by
28 U.S.C. § 1295(a).”).
DISCUSSION
We review a district court’s grant of summary judgment de novo, reapplying the
standard applicable in the district court. Rodime PLC v. Seagate Tech., Inc.,
174 F.3d
06-1161 -3-
1294, 1301 (Fed. Cir. 1999). Summary judgment is appropriate “if the pleadings,
depositions, answers to interrogatories, and admissions on file, together with the
affidavits, if any, show that there is no genuine issue as to any material fact and that the
moving party is entitled to a judgment as a matter of law.” Fed. R. Civ. P. 56(c).
On appeal, Sheinbein argues that the USPTO’s authority to sanction him is
limited to sanctions based directly on his conduct, not on findings of other jurisdictions
regarding his conduct. He also contends that his exclusion is precluded by the five-year
statute of limitations set forth in
28 U.S.C. § 2462, and that the USPTO’s interpretation
of
37 C.F.R. § 10.23(c)(5) is invalid and inconsistent with that statute. According to
Sheinbein, the five-year statute of limitations for reciprocal discipline runs, not from the
date of his disbarment in a sister jurisdiction, but instead from the earlier date of the
underlying actions that are the basis for his disbarment in the sister jurisdiction.
The government responds that the USPTO properly excluded Sheinbein in
accordance with
37 C.F.R. § 10.23(c)(5). According to the government, its
interpretation of § 10.23(c)(5) is consistent with the provision’s plain meaning, and is not
plainly erroneous or inconsistent with the regulation. The government also argues that,
pursuant to
28 U.S.C. § 2462, a claim does not accrue until the factual and legal
prerequisites for filing suit exist, and, in the case of a reciprocal discipline proceeding, a
claim accrues on the date of an attorney’s actual disbarment in another jurisdiction. The
government asserts that the statute of limitations in this case was triggered by
Sheinbein’s disbarments, not his underlying misconduct. Further, the government
points out that, because the USPTO is often not in a position to conduct an efficient
investigation of a practitioner’s conduct and must await the findings of a sister
06-1161 -4-
jurisdiction, adopting Sheinbein’s position would result in the USPTO being precluded
from imposing reciprocal discipline where it would be justified.
We agree with the government that it properly excluded Sheinbein from practice
in the USPTO based on his disbarment in the State of Maryland and the District of
Columbia. As an initial matter, we note that because the parties do not dispute the
facts, the only issues before us are that of statutory and regulatory interpretation.
35
U.S.C. § 32 provides that the USPTO has statutory authority to exclude “from further
practice before the Patent and Trademark Office, any person, agent, or attorney shown
to be incompetent or disreputable, or guilty of gross misconduct, or who does not
comply with the regulations established under section 2(b)(2)(D) of this title.”
35 U.S.C.
§ 2(b)(2)(D) delegates to the USPTO the authority to establish regulations that “govern
the . . . conduct of . . . attorneys” practicing before the Office.
Pursuant to this statutory authority, the USPTO has enacted disciplinary rules.
As stated in
37 C.F.R. § 10.20, “Disciplinary Rules are set out in §§ 10.22-10.24. . . .
Disciplinary Rules are mandatory in character and state the minimum level of conduct
below which no practitioner can fall without being subjected to disciplinary action.”
37
C.F.R. § 10.20(b). One such disciplinary rule is
37 C.F.R. § 10.23.
37 C.F.R.
§ 10.23(a) and (b) provide that:
(a) A practitioner shall not engage in disreputable or gross misconduct.
(b) A practitioner shall not:
(1) Violate a Disciplinary Rule.
(2) Circumvent a Disciplinary Rule through actions of another.
(3) Engage in illegal conduct involving moral turpitude.
(4) Engage in conduct involving dishonesty, fraud, deceit, or
misrepresentation.
(5) Engage in conduct that is prejudicial to the administration of
justice.
(6) Engage in any other conduct that adversely reflects on the
06-1161 -5-
practitioner's fitness to practice before the Office.
37 C.F.R. §§ 10.23(a), (b).
37 C.F.R. § 10.23(c) then lists specific examples of conduct
and findings that are violations of §§ 10.23(a) and (b), including “[s]uspension or
disbarment from practice as an attorney or agent on ethical grounds by any duly
constituted authority of a State or the United States.”
37 C.F.R. § 10.23(c)(5)
(emphases added).
Based on the plain language of
37 C.F.R. § 10.23(c)(5), we agree that a
practitioner may be found unfit to practice based solely on his disbarment in another
jurisdiction. In such cases, the exclusion is based on the finding of the other jurisdiction
regarding the practitioner’s conduct, not based on the conduct that resulted in the
disbarment. Here, Sheinbein was disbarred in the State of Maryland and the District of
Columbia on ethical grounds. Those disbarments fall within the strictures of § 10.23(a)
and (b), and expressly § 10.23(c)(5). Because Sheinbein’s prior disbarments violated
§ 10.23, the USPTO properly excluded Sheinbein from practice.
We reject Sheinbein’s argument that the five-year statute of limitations imposed
by
28 U.S.C. § 2462 precludes his exclusion from practice in the USPTO. Pursuant to
28 U.S.C. § 2462, “an action, suit or proceeding for the enforcement of any civil fine,
penalty, or forfeiture, pecuniary or otherwise, shall not be entertained unless
commenced within five years from the date when the claim first accrued.” “A claim
normally accrues when the factual and legal prerequisites for filing suit are in place.”
3M Co. v. Browner,
17 F.3d 1453, 1460 (D.C. Cir. 1994). Here, the basis for the
USPTO’s reciprocal proceeding was Sheinbein’s violation of § 10.23. Because
Sheinbein could not be charged with violating § 10.23 until his disbarment by the State
06-1161 -6-
of Maryland in 2002 and the District of Columbia in 2004, the legal prerequisites for his
exclusion were not satisfied until those acts occurred. The USPTO’s filing of its
complaint in March 2004 therefore occurred within the limitations period.
We have considered Sheinbein’s remaining arguments and find them to be
unpersuasive. The decision of the district court is therefore
AFFIRMED.
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