Fleming v. Coward ( 2013 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
LLOYD J. FLEMING,
Plaintiff-Appellant,
v.
RICHARD COWARD AND P. HEMPHILL, OFFICER
#2478,
Defendants-Appellees,
AND
WALTER W. TWEEDY, POOL, OFFICER,
ADRIANNE TODMAN, FRANK LANCASTER, AND
LORRY BLUITT BONDS,
Defendants-Appellees,
AND
ARUN C. WILLIAMS AND PATRICK ASSOUAD,
Defendants-Appellees,
AND
GARRETT, MOTENAR ROBERSON, JOSEPH
DUKES, EBENEZER OLOMO, LARRY LOUCUS,
TOM WOODSON, BEEMON FLEMING, JIMMY
MCGIVIE, KESHA TAYLOR, JESSICA, RECITA
EVANS, STEPHEN WHEELE, KAREN BUSH, AND
MEREDITH KOLBRENER,
Defendants.
______________________
2 FLEMING v. COWARD
2013-1091
______________________
Appeal from the United States District Court for the
District of Columbia in No. 12-CV-0330, Judge Richard J.
Leon.
______________________
Decided: August 12, 2013
______________________
LLOYD J. FLEMING, of Washington, DC, pro se.
NATALIE O. LUDAWAY, Leftwich & Ludaway, LLC, of
Washington, DC, for defendants-appellees, Walter W.
Tweedy, et al.
NATHAN K. KELLEY, Solicitor, United States Patent
and Trademark Office, of Alexandria, Virginia, for de-
fendants-appellees, Arun C. Williams, et al. On the brief
were FRANCES LYNCH and JOSEPH PICCOLO, Associate
Solicitors.
______________________
Before RADER, Chief Judge, LOURIE, and PROST, Cir-
cuit Judges.
PER CURIAM.
Lloyd J. Fleming seeks review of a decision of the U.S.
District Court for the District of Columbia dismissing his
complaint under Federal Rule of Civil Procedure 12(b)(1)
for lack of jurisdiction. Because the district court correct-
ly found that Mr. Fleming has failed to exhaust his ad-
ministrative remedies in the U.S. Patent and Trademark
Office prior to filing suit, we affirm.
FLEMING v. COWARD 3
BACKGROUND
On July 25, 2008, Mr. Fleming filed a patent applica-
tion at the U.S. Patent and Trademark Office (“PTO”).
The application bore Serial No. 12/220,804 and was
assigned to patent examiners, Arun C. Williams and
Patrick Assouad. After a final rejection, on November 29,
2011, examiner Williams sent Mr. Fleming a document
entitled “Advisory Action Before the Filing of an Appeal
Brief” (“Advisory Action”). The Advisory Action stated
that Mr. Fleming’s latest filing failed to place his applica-
tion in condition for allowance. It advised that to avoid
abandonment of the application, Mr. Fleming must timely
file one of several required documents within a set
timeframe. It also explained that extensions of time may
be obtained under 37 C.F.R. § 1.136(a). Mr. Fleming did
not file any such document.
Instead, on December 13, 2011, Mr. Fleming amended
a complaint to add Messrs. Williams and Assouad as
defendants (together, the “PTO defendants”) to a case he
had filed two months earlier in the Superior Court of the
District of Columbia. In the original complaint filed on
October 17, 2011 in the Superior Court, Mr. Fleming had
sought $10 million in civil damages against sixteen de-
fendants, including federal and District of Columbia
employees.
On March 1, 2012, the PTO defendants successfully
removed the case to the District Court for the District of
Columbia. Removal was proper because Mr. Fleming
appears to allege in the amended complaint that he was
seeking review of the PTO’s rejection of his patent appli-
cation. Indeed, Mr. Fleming had attached as exhibits to
the amended complaint a signed statement by himself
referencing the patent application he had filed, as well as
the November 29, 2011 Advisory Action that he had
received from the PTO. No explanation accompanied
either exhibit in the amended complaint.
4 FLEMING v. COWARD
On May 9, 2012, the PTO defendants filed with the
district court a motion to dismiss or, in the alternative, for
summary judgment. The PTO defendants argued that
Mr. Fleming’s complaint contained incoherent statements
that failed to allege any specific wrongdoing or miscon-
duct by them, which meant that the action must be con-
strued as being brought against them in their official
capacity as patent examiners. Assuming that Mr. Flem-
ing was seeking to challenge the PTO’s rejection of his
patent application, the PTO defendants argued that the
district court lacked jurisdiction over the case because he
had failed to exhaust his administrative remedies in the
PTO. In particular, Mr. Fleming did not respond to the
November 29, 2011 Advisory Action by filing within the
required time period (1) an amendment, affidavit, or other
evidence, which placed his application in condition for
allowance; (2) a Notice of Appeal to the Board of Patent
Appeals; or (3) a Request for Continued Examination.
Nor did Mr. Fleming petition the Director of the PTO
under 37 C.F.R. § 1.137 to revive his abandoned patent
application. The PTO defendants submitted a supporting
affidavit, which stated that a search of the official records
of the PTO revealed no evidence of Mr. Fleming’s having
ever filed any patent prosecution documents in response
to the Advisory Action. As a result, Mr. Fleming’s
amended complaint was jurisdictionally defective.
On August 2, 2012, the district court granted the
motion to dismiss for lack of jurisdiction because Mr.
Fleming had failed to exhaust his administrative reme-
dies with respect to his patent application. Fleming v.
Coward, No. 12-0330, 2012 U.S. Dist. LEXIS 108607(D.D.C. Aug. 2, 2012) (“District Court Decision”). In the
opinion, the district court held that the “exhaustion of
administrative remedies is a jurisdictional prerequisite to
filing a civil lawsuit arising from the denial of a patent,”
and found that Mr. Fleming had failed to refute the PTO
defendants’ evidence showing that he has failed to meet
the prerequisite. Id. at *2. The district court thereafter
entered an order dismissing the PTO defendants and
FLEMING v. COWARD 5
remanding the case to the Superior Court of the District
of Columbia.
On August 10, 2012, Mr. Fleming appealed the dis-
trict court’s decision to the U.S. Court of Appeals for the
District of Columbia Circuit. On November 30, 2012, the
D.C. Circuit transferred the appeal to this court, which
has exclusive jurisdiction to review district court decisions
over matters involving a claim arising under the Patent
Act. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
Whether a district court has subject matter jurisdic-
tion over an action is a question of law that we review de
novo. DeArchibold v. United States, 499 F.3d 1310, 1313
(Fed. Cir. 2007). When assessing a Rule 12(b)(1) motion,
“a court may consider the complaint and any undisputed
facts in the record.” Marshall v. Honeywell Tech. Solu-
tions, Inc., 675 F. Supp. 2d 22, 24 (D.D.C. 2009) (citation
omitted).
Absent an explicit statutory waiver, the doctrine of
sovereign immunity shields the federal government and
its agencies, including the PTO, from suit. See Boyle v.
United States, 200 F.3d 1369, 1372–73 (Fed. Cir. 2000).
With respect to the PTO, Congress expressly waived
immunity in several statutory provisions. Under
35 U.S.C. § 141, a patent applicant who is dissatisfied
with the final decision in an appeal to the Patent Trial
and Appeal Board (“Board”) under 35 U.S.C. § 134(a) may
appeal the Board’s decision directly to the Federal Circuit.
Alternately, the dissatisfied patent applicant may choose
to “have remedy by civil action against the Director in the
United States District Court for the Eastern District of
Virginia.” 35 U.S.C. § 145. To the extent that these
statutory review provisions are inadequate, an action
against the PTO may be brought under the Administra-
tive Procedure Act if the patent applicant demonstrates
receipt of a “final agency action” under 5 U.S.C. § 704.
6 FLEMING v. COWARD
See Phillips Petroleum Co. v. Brenner, 383 F.2d 514, 517–
18 (D.C. Cir. 1967).
Notably, the prerequisite to requesting judicial review
under all three statutory provisions is the exhaustion of
remedies before the PTO by procuring a “decision from
the Board” or “final agency action.” See Field v. Manbeck,
No. 90-1030, 1990 U.S. Dist. LEXIS 10137, at *3 (D.D.C.
Aug. 2, 1990) (“The plaintiff has not received a decision
from the Board of Patent Appeals and thus this Court
does not have jurisdiction over this action in the absence
of a final agency decision, pursuant to 35 U.S.C. § 145 and
5 U.S.C. § 704.”). Thus, the district court was correct to
cite Leighton v. Coe for its holding that the exhaustion of
administrative remedies is a jurisdictional prerequisite to
filing a civil lawsuit arising from the denial of a patent.
130 F.2d 841, 842 (D.C. Cir. 1942).
The district court also correctly found that Mr. Flem-
ing “has not exhausted his administrative remedies with
regard to his patent application.” District Court Decision,
at *2. Mr. Fleming had neither obtained a “decision from
the Board” nor “final agency action,” because he did not
“appeal from the decision of the primary examiner to
the . . . Board” under 35 U.S.C. § 134(a) upon receipt of
the Advisory Action. The unrefuted affidavit submitted
by the PTO defendants establishes that Mr. Fleming did
not pursue any of the options presented to him in the
Advisory Action: (1) file an amendment, affidavit, or other
evidence, which would place his patent application in
condition for allowance; (2) file a Request for Continued
Examination; or (3) request an extension of time to re-
spond.
The district court was correct to dismiss the complaint
against the PTO defendants because of Mr. Fleming’s lack
of action in the PTO prior to instituting a civil lawsuit
arising from the rejection of his patent application. See
Leighton, 130 F.2d at 842.
AFFIRMED
FLEMING v. COWARD 7
COSTS
Each party shall bear its own costs.