Invention Submission v. Dudas

PUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
INVENTION SUBMISSION CORPORATION, 
a Pennsylvania corporation,
Plaintiff-Appellant,
v.
JONATHAN W. DUDAS, Under
Secretary of Commerce for  No. 04-2295
Intellectual Property and Director,
United States Patent and Trademark
Office, U.S. Department of
Commerce, in his official capacity,
Defendant-Appellee.

Appeal from the United States District Court
for the Eastern District of Virginia, at Alexandria.
Leonie M. Brinkema, District Judge.
(CA-02-1038-1)
Argued: May 24, 2005
Decided: June 24, 2005
Before WILKINS, Chief Judge, and NIEMEYER
and SHEDD, Circuit Judges.
Affirmed by published opinion. Judge Niemeyer wrote the opinion,
in which Chief Judge Wilkins and Judge Shedd joined.
COUNSEL
ARGUED: Edward B. Friedman, Pittsburgh, Pennsylvania, for
Appellant. Rachel Celia Ballow, Assistant United States Attorney,
2 INVENTION SUBMISSION CORP. v. DUDAS
OFFICE OF THE UNITED STATES ATTORNEY, Alexandria, Vir-
ginia, for Appellee. ON BRIEF: J. Stephen Purcupile, FRIEDMAN
& FRIEDMAN, Pittsburgh, Pennsylvania; Richard C. Sullivan,
REED SMITH, L.L.P., Falls Church, Virginia, for Appellant. Paul J.
McNulty, United States Attorney, Alexandria, Virginia, for Appellee.
OPINION
NIEMEYER, Circuit Judge:
In our earlier review of the district court’s final order dismissing
this case under Federal Rule of Civil Procedure 12(b)(6), we held:
Because the conduct of the [Patent and Trademark Office]
that is the subject of this action did not constitute "final
agency action" as used under the [Administrative Procedure
Act], the district court did not have subject matter jurisdic-
tion to evaluate the complaint under Rule 12(b)(6) and
should have dismissed this case under Rule 12(b)(1). We
therefore vacate its order of October 30, 2002, as well as the
supporting opinion, and remand with instructions to dismiss
this case under Federal Rule of Civil Procedure 12(b)(1).
Invention Submission Corp. v. Rogan, 357 F.3d 452, 460 (4th Cir.
2004). By order dated May 5, 2004, the district court did vacate its
earlier dismissal order and dismissed this case under Federal Rule of
Civil Procedure 12(b)(1).
Invention Submission Corporation filed a motion to vacate the dis-
trict court’s May 5, 2004 order and to grant Invention Submission
leave to file an amended complaint for the purpose of avoiding the
jurisdictional issue. The district court denied this motion and reaf-
firmed its earlier dismissal order. Invention Submission now chal-
lenges the district court’s order denying its motion to vacate and for
leave to amend.
Because the district court was bound by the mandate of this court
to dismiss this case for lack of subject matter jurisdiction, we affirm.
INVENTION SUBMISSION CORP. v. DUDAS 3
I
In January 2002, the Patent and Trademark Office ("PTO")
launched a media campaign to counter invention promotion scams.
The print advertisements featured an inventor named Edward Lewis,
along with text that identified him by name and read, "I spent $13,000
and three years ‘spinning my wheels’ with a company that promised
my idea would make lots of money. They were right. It made lots of
money . . . for them. I haven’t seen a penny." The advertisement
ended with a general statement about avoiding "invention promotion
scams" and contact information for the PTO.
A journalist for a cable television network, who saw the PTO’s
advertisements, interviewed Lewis and published a story revealing
that Lewis was referring in the advertisements to his relationship with
Invention Submission, a business engaged in assisting inventors with
obtaining patents. The article revealed that Lewis had filed a com-
plaint with the PTO in August 2001 that was "being processed." The
article also revealed that Invention Submission was one of several
companies investigated by the FTC in the 1990s "for misrepresenta-
tion in patent marketing schemes." The article concluded with Inven-
tion Submission’s response that it did nothing wrong and that its
representations and commercials misled neither Lewis nor anyone
else.
After the article appeared, Invention Submission commenced this
action under the Administrative Procedure Act ("APA"), 5 U.S.C.
§ 704, against the PTO, alleging that the PTO’s advertising campaign
was aimed at Invention Submission to penalize it and ultimately to
put it out of business. Invention Submission claimed that the cam-
paign was an illegal final agency action that was arbitrary and capri-
cious and exceeded any statutory authority conferred on the PTO.
The PTO filed a motion to dismiss Invention Submission’s com-
plaint under Federal Rule of Civil Procedure 12(b)(1), contending that
the PTO advertising campaign was not a "final agency action" and
therefore that the district court lacked subject matter jurisdiction to
review its actions. The district court granted the motion to dismiss but
based its decision on Rule 12(b)(6), finding that "it is clear as a matter
of law that no relief could be granted under any set of facts that could
4 INVENTION SUBMISSION CORP. v. DUDAS
be proved consistent with the allegations." The court observed that
"[t]he PTO’s publications in this case were merely generic advertise-
ments of agency programs not specifically naming the plaintiff. Any
harm to the plaintiff was, at most, indirect." Finally, the court found
that the agency’s conduct was not a "final agency action" and that
Invention Submission had not alleged any specific harm caused by the
PTO’s actions.
On Invention Submission’s first appeal, we agreed with the district
court that the PTO’s alleged conduct did not constitute final agency
action and therefore was not reviewable under the APA. We
observed:
The text of the advertising material can only be construed
to be an effort by the PTO to inform inventors of the perils
and potential scams that they might encounter during the
patent process. Such advertising did not create "legal conse-
quences" for Invention Submission or any other member of
the public cognizable as final agency action, and the cam-
paign itself did not determine any right or obligation of any
party.
Invention Submission, 357 F.3d at 460 (emphasis added). In response
to Invention Submission’s contention that in conducting the advertis-
ing campaign, the PTO harbored an intent to put Invention Submis-
sion out of business and that therefore the advertising campaign was
agency action adversely affecting Invention Submission, we stated:
Such underlying intent of agency officials, however, does
not convert the PTO’s legal advertising material warning
generally of invention promotion scams — the purpose for
which Congress enacted the Inventors’ Rights Act — into
a PTO sanction imposed on Invention Submission that
would be reviewable in court, especially when the material
itself does not reference an intent to penalize any particular
company.
Id. Focusing particularly on the effect of the advertising campaign on
Invention Submission, we observed:
INVENTION SUBMISSION CORP. v. DUDAS 5
If the PTO’s advertising made business more difficult for
Invention Submission by raising the public’s awareness, the
decisions of members of the public are attributable to inde-
pendent responses and choices of third parties and cannot be
imputed to the PTO for purposes of determining whether its
conduct was a final agency action.
Id. (internal quotation marks and citation omitted). We summarized
our holding as follows:
In short, the PTO’s advertising campaign warning the
public about invention promotion scams was consistent with
the PTO’s commission granted by the Inventors’ Rights Act
of 1999, and in the circumstances of this case, the decision
to pursue such a campaign, as well as its content, did not
create a final agency action that is reviewable in court.
Id. (emphasis added). Accordingly, we concluded that the district
court did not have subject matter jurisdiction over the case and
remanded it "with instructions to dismiss this case under Federal Rule
of Civil Procedure 12(b)(1)." Id.During the course of its prior appellate briefing, Invention Submis-
sion argued that the district court’s jurisdiction over its complaint
could have rested on general equity jurisdiction under the holding of
American School of Magnetic Healing v. McAnnulty, 187 U.S. 94(1902), an argument that it raised for the first time on appeal. In
response, we stated, "we do not address whether the ‘McAnnulty Doc-
trine,’ which Invention Submission raises for the first time on appeal,
provides a basis for judicial review of unlawful agency action." Inven-
tion Submission, 357 F.3d at 457 n.*.
After the case was remanded to the district court and the district
court had dismissed the case under Rule 12(b)(1), Invention Submis-
sion filed a motion to vacate the dismissal order and for leave to
amend its complaint to allege jurisdiction under the McAnnulty doc-
trine. The district court, relying on the scope of our mandate on
remand, denied Invention Submission’s motion and reaffirmed its dis-
missal under Rule 12(b)(1). In addition, the court observed that to
6 INVENTION SUBMISSION CORP. v. DUDAS
reopen the case at that point in time "would defeat notions of judicial
economy and finality."
Invention Submission now appeals the district court’s order deny-
ing its motion to vacate and for leave to amend its complaint.
II
In challenging the district court’s reliance on the plain language of
our mandate on remand, Invention Submission contends that on
remand, the district court was "free to pass upon any issue which was
not expressly or impliedly disposed of on appeal so long as consider-
ation of the issue raised on remand is not inconsistent with the appel-
late mandate." Invention Submission argues that it would not have
been inconsistent with our mandate to permit it to amend its com-
plaint to rest jurisdiction on the McAnnulty doctrine. It relies heavily
on our statement made in the opinion on the first appeal that Invention
Submission "relied exclusively on the APA" to establish subject mat-
ter jurisdiction, an issue that we disposed of on that appeal, and our
observation that "we do not address whether the ‘McAnnulty Doc-
trine’ . . . provides a basis for judicial review of unlawful agency
action." Invention Submission, 357 F.3d at 457 n.*.
The force of our prior mandate is governed by well-established
principles. In general, once a case has been decided on appeal and a
mandate issued, the lower court may not deviate from that mandate
but is required to give full effect to its execution. See Stamper v. Bas-
kerville, 724 F.2d 1106, 1107 (4th Cir. 1984). This "mandate rule" is
a more powerful version of the law of the case doctrine and is based
on "the principle that an inferior tribunal is bound to honor the man-
date of a superior court within a single judicial system." 18B Charles
Alan Wright, Arthur B. Miller, & Edward H. Cooper, Federal Prac-
tice and Procedure § 4478.3 (2d. ed. 2002). As we observed in United
States v. Bell, 5 F.3d 64, 66 (4th Cir. 1993) (quoting Sprague v.
Ticonic National Bank, 307 U.S. 161, 168 (1939)), "[f]ew legal pre-
cepts are as firmly established as the doctrine that the mandate of a
higher court is ‘controlling as to matters within its compass.’" Under
the mandate rule, therefore, a lower court generally may not consider
questions that the mandate has laid to rest. Sprague, 307 U.S. at 168.
INVENTION SUBMISSION CORP. v. DUDAS 7
Deviation from the mandate rule is permitted only in a few excep-
tional circumstances, which include (1) when "controlling legal
authority has changed dramatically"; (2) when "significant new evi-
dence, not earlier obtainable in the exercise of due diligence, has
come to light"; and (3) when "a blatant error in the prior decision will,
if uncorrected, result in a serious injustice." United States v. Aramony,
166 F.3d 655, 662 (4th Cir. 1999) (quoting Bell, 5 F.3d at 67) (inter-
nal quotation marks omitted). But it is clear that none of these excep-
tions applies here. Our review, therefore, is limited to consideration
of the scope of our mandate and a determination of whether the dis-
trict court faithfully executed it in dismissing this case without per-
mitting Invention Submission leave to file an amended complaint.
The language of our mandate directed the district court to dismiss
this case for lack of subject matter jurisdiction and, on its face, does
not authorize the district court to open the case for further adjudica-
tion. Because our order stated that the district court lacked jurisdic-
tion, the court was not free to do anything else but to dismiss the case.
As we have explained previously, "[c]ompliance with an order to
relinquish jurisdiction necessarily precludes the lower court from tak-
ing any further action other than dismissal, for to do so would involve
retaining jurisdiction." Baskerville, 724 F.2d at 1108. Thus, to comply
with our mandate, the district court could only dismiss the case.
"[A]ny action by the lower court other than immediate and complete
dismissal [would have been] by definition inconsistent with — and
therefore a violation of — the order [to dismiss]." Id. In short, our
instruction to the district court was clear, direct, and limiting, and we
conclude that the district court followed the mandate as directed.
Thus, in restricting its action to that directed by the mandate, the dis-
trict court did not err.
Invention Submission’s reliance on our previous opinion’s foot-
note, 357 F.3d at 457 n.*, is misplaced. In limiting our discussion to
whether the district court had jurisdiction under the APA, as invoked
by Invention Submission, we simply took note that Invention Submis-
sion had not properly raised the McAnnulty doctrine as a jurisdictional
basis before the district court and therefore had not preserved that
issue for consideration on appeal. While we noted this fact in the foot-
note, we did not instruct the district court to consider that doctrine on
remand. Had the district court done so anyway, it would have had to
8 INVENTION SUBMISSION CORP. v. DUDAS
violate what we did instruct: to dismiss the case for lack of subject
matter jurisdiction.
Because the district court was bound by the mandate of this court
to dismiss this case for lack of subject matter jurisdiction, and the dis-
trict court did dismiss this case, we conclude that there is no basis to
reverse its order.
AFFIRMED