Taylor v. United States Patent & Trademark Office

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
JORGE TAYLOR,
Plaintiff-Appellant,
v.
UNITED STATES PATENT AND TRADEMARK
OFFICE,
Defendant-Appellee.
__________________________
2010-1165
__________________________
Appeal from the United States District Court for the
Southern District of New York in No. 08-CV-8634, Judge
Loretta A. Preska.
___________________________
Decided: July 8, 2010
___________________________
JORGE TAYLOR, of New York, New York, pro se.
RAYMOND T. CHEN, Solicitor, Office of the Solicitor,
United States Patent and Trademark Office, of Arlington,
Virginia, for the Director of the United States Patent and
Trademark Office. With him on the brief were THOMAS
W. KRAUSE and JOSEPH G. PICCOLO, Associate Solicitors.
TAYLOR v. USPTO 2
__________________________
Before RADER, Chief Judge, LOURIE and BRYSON, Circuit
Judges.
PER CURIAM.
DECISION
Appellant Jorge Taylor challenges the December 8,
2009, judgment of the United States District Court for the
Southern District of New York. Pursuant to this court’s
mandate resolving Mr. Taylor’s prior appeal, Taylor v.
U.S. Patent & Trademark Office, 339 Fed. Appx. 995 (Fed.
Cir. 2009), the district court directed the United States
Patent and Trademark Office (“PTO”) to refund Mr.
Taylor’s $1030 patent maintenance fee and, upon receipt
of payment of all outstanding maintenance fees, to rein-
state Mr. Taylor’s patent, U.S. Patent No. 5,178,701. In
this appeal, Mr. Taylor seeks to re-open the proceedings
to adjudicate his original request, in the complaint, to be
awarded $1 billion in damages from the PTO. Because
the district court properly implemented this court’s man-
date, we affirm.
BACKGROUND
On July 8, 2008, Mr. Taylor filed a complaint against
the PTO, alleging that in 2001 the PTO had wrongfully
accepted his fee of $1030 to maintain his patent, but then
allowed his patent to expire without notifying him be-
cause his payment was deficient by $10. Mr. Taylor’s
complaint sought reimbursement of his $1030, with
interest, and additional monetary damages in the amount
of $1 billion, which was his estimate of the value of his
intellectual property.
3 TAYLOR v. USPTO
On October 9, 2008, the district court dismissed the
complaint under Fed. R. Civ. P. 12(b)(6) for failure to
state a claim upon which relief could be granted. The
court found that PTO regulations do not provide a waiver
of petition filing fees for indigent applicants, and that Mr.
Taylor was therefore barred from challenging the expira-
tion of his patent because he failed to pay the required
$200 filing fee. The court further concluded that Mr.
Taylor had not shown that the PTO’s actions were “arbi-
trary and capricious” and thus had failed to show that he
was entitled to relief under the Administrative Procedure
Act.
On appeal from that decision, Mr. Taylor argued that
the PTO violated the due process clause of the Fifth
Amendment to the Constitution by taking “$1030 plus the
patent protection . . . without informing plaintiff.” Mr.
Taylor further asserted that he “only asked for $1030
with interest and redress for [the PTO’s] negligence as to
the expiration of the patent for lack of payment.” In his
reply brief, Mr. Taylor noted that, while the PTO had
returned his $1030, he “will not accept it without the
proper bank interest.” He also contended that “the
USPTO expired the patent unlawfully and held the $1030
for 8 years to cash-in the interest thereof, plus whatever
cash they may have gotten for their purposive-error
(Many [corporations] are selling the invention without
Mr. Taylor’s permission, thanks to the USPTO).” Mr.
Taylor further requested “the relief herein [asked] for and
in the original petition.”
This court reversed the district court’s judgment. We
held that the PTO had acted arbitrarily and capriciously
in accepting Mr. Taylor’s deficient payment, while simul-
taneously allowing his patent to expire without notifying
him pursuant to section 2531 of the Manual of Patent
TAYLOR v. USPTO 4
Examining Procedure that his payment was insufficient.
Taylor, 339 Fed. Appx. at 998. This court noted with
approval that the PTO had unilaterally decided to refund
Mr. Taylor’s $1030 payment. With respect to Mr. Taylor’s
patent, we further held:
[T]he appropriate relief in this case is equita-
ble. . . . In this case, equity would counsel that
the PTO should reinstate Mr. Taylor’s patent
upon receipt of his payment for all outstanding
maintenance fees. This relief will remedy, to
this court’s best estimation, the PTO’s arbitrary
and capricious actions.
Id. at 999. We therefore remanded to the district court
“with instructions to enter judgment in accordance with
this opinion.” Id.
Upon receipt of the mandate, the district court en-
tered an order directing the PTO to refund Mr. Taylor’s
payment of $1030 and to reinstate Mr. Taylor’s patent
upon receipt of payment for all outstanding maintenance
fees. Mr. Taylor now appeals on the ground that the
district court failed on remand to consider the merits of
his claim for $1 billion in monetary relief.
DISCUSSION
The “mandate rule” requires a district court to “follow
an appellate decree as the law of the case.” Cardiac
Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348,
1356 (Fed. Cir. 2009), citing Sibbald v. United States, 37
U.S. 488, 492 (1838). In addition, the rule “forecloses
reconsideration of issues implicitly or explicitly decided on
appeal.” Amando v. Microsoft Corp., 517 F.3d 1353, 1364
(Fed. Cir. 2008). Determining what issues are decided on
5 TAYLOR v. USPTO
appeal requires consideration of the scope of the judgment
appealed from, and “[a]n issue that falls within the scope
of the judgment appealed from but is not raised by the
appellant in its opening brief on appeal is necessarily
waived.” Engel Indus., Inc. v. Lockformer Co., 166 F.3d
1379, 1382-83 (Fed. Cir. 1999).
In this case, the district court’s original judgment
dismissed Mr. Taylor’s claims in their entirety, as the
court held that Mr. Taylor had failed to establish entitle-
ment to any type of relief. Thus, the issue of Mr. Taylor’s
entitlement to $1 billion in monetary relief was plainly
within the scope of the district court’s original judgment
from which he took his prior appeal. Mr. Taylor was
therefore obligated to raise that issue in his opening brief
on appeal if he wished to preserve that issue. However,
his opening brief in that appeal contained no reference to
the claimed $1 billion in damages, nor did it present any
arguments in support of Mr. Taylor’s claim of right to that
remedy. Rather, his opening brief focused exclusively on
recovering the “$1030 plus the patent protection” and
stated that he “only asked for $1030 with interest and
redress for [the PTO’s] negligence as to the expiration of
the patent.” Mr. Taylor’s reply brief in that case noted, in
passing, that many large corporations “are selling the
invention without Mr. Taylor’s permission.” However,
that vague statement did not constitute an argument that
the PTO should be required to pay damages to Mr. Taylor
(let alone $1 billion in damages), nor did it address
whether the district court even possessed the power to
award such relief. The reply brief’s plea for the relief
requested “herein . . . and in the original petition” is
likewise too ambiguous to constitute an argument that
Mr. Taylor should be awarded $1 billion in damages. Mr.
Taylor thus waived his right to argue his damages claim
by failing to raise the issue in his initial appeal.
TAYLOR v. USPTO 6
As in Engel Industries, Mr. Taylor’s decision not to
present arguments in support of his claim for $1 billion in
monetary relief—an issue subsumed within the issue of
his entitlement to relief—does not alter the fact that his
claim was disposed of by the district court’s original
dismissal order and thus by this court’s mandate on
appeal. Although a district court may act on matters left
open by the mandate, it “cannot give relief beyond the
scope of that mandate.” Laitram Corp. v. NEC Corp., 115
F.3d 947, 951 (Fed. Cir. 1997).
In our prior opinion, we noted that Mr. Taylor had
broadly requested any relief deemed appropriate, yet we
explicitly determined that “the appropriate relief in this
case is equitable.” Taylor, 339 Fed. Appx. at 999 (Fed.
Cir. 2009). Specifically, we stated that Mr. Taylor’s
patent should be reinstated upon receipt of his payment
for all outstanding maintenance fees—a remedy that did
not entail any award of damages. Moreover, we held that
“[t]his [equitable] relief will remedy . . . the PTO’s arbi-
trary and capricious actions.” Id. In concluding that the
equitable relief would remedy the PTO’s improper actions,
we implicitly concluded that no additional relief was
necessary or appropriate. See Smith Int’l, Inc. v. Hughes
Tool Co. 759 F.2d 1572, 1577 (Fed. Cir. 1985) (mandate
rule applies to issues “decided by necessary implication as
well as those decided explicitly”). As such, the decision on
Mr. Taylor’s $1 billion damages claim has become final,
and he is not entitled to any further proceedings in pur-
suit of that claim.
Contrary to Mr. Taylor’s argument that “Reverse and
Remand means that the entire complaint is back at the
Trial Court calendar for further proceedings of the com-
plaint,” our mandate was specific and restrictive. We
ordered a remand for the purpose of entering judgment,
7 TAYLOR v. USPTO
not for reconsideration of the complaint or for additional
proceedings on Mr. Taylor’s claims. We left open no
issues for the district court to resolve. Thus, while the
trial court was permitted to enter judgment granting Mr.
Taylor equitable relief (and a refund of his patent main-
tenance fee), as it proceeded to do, it was barred under
the mandate rule from reexamining Mr. Taylor’s claims
on their merits or awarding any relief beyond the limited
scope permitted by the mandate. The district court’s
order of December 8, 2009, was therefore clearly in accor-
dance with our mandate.
If Mr. Taylor was dissatisfied with the relief accorded
by this court’s earlier opinion, he could have petitioned for
rehearing or moved to recall the mandate. See James
Wm. Moore et al., Moore’s Federal Practice ¶ 134.23[3]
(3d ed. 1997). Because he failed to seek any such relief in
this court at the time of the initial appeal, he cannot now
challenge the district court’s compliance with our instruc-
tions on remand. Accordingly, we uphold the district
court’s December 8, 2009, order directing the PTO to
refund Mr. Taylor’s $1030 patent maintenance fee and to
reinstate Mr. Taylor’s patent upon receipt of his payment
of all outstanding maintenance fees, but granting no
further relief.
AFFIRMED