Cornish v. Dudas

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
____________________________
)
CORNELL D.M. JUDGE CORNISH, )
)
Plaintiff, )
)
v. ) Civil Action No. 07-1719 (RWR)
)
JON DUDAS, et al., )
)
Defendants. )
____________________________)
MEMORANDUM OPINION
Pro se plaintiff Cornell D.M. Judge Cornish brings this
action against the U.S. Patent and Trademark Office (“USPTO”) and
its Director and two employees in their official capacities.
Among other things, he alleges a violation of the Rehabilitation
Act, and challenges as arbitrary, capricious and discriminatory
the USPTO’s decision to deny his request for reinstatement to the
patent register without an examination nearly nine years after
his voluntary removal, claiming the decision violated his First
Amendment rights by preventing him from advertising as a
registered patent attorney and violated his due process rights by
not providing notice and a hearing regarding his reinstatement.
The defendants move to dismiss for lack of jurisdiction and for
Cornish’s failure to state a claim or, in the alternative, for
summary judgment, arguing in part that Cornish has failed to
exhaust his administrative remedies on his reinstatement claim,
establish a violation of the Rehabilitation Act, and state a
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claim for which relief can be granted on his other claims.
Because Cornish has failed to show that the decision to deny his
reinstatement request was arbitrary or capricious and failed to
demonstrate that the defendants violated the Rehabilitation Act,
the defendants’ motion for summary judgment on his Rehabilitation
Act and reinstatement claims will be granted. Because Cornish
has failed to state a claim for which relief can be granted on
his other claims, the defendants’ motion to dismiss will be
granted in all other respects. Also, Cornish has moved to amend
his complaint for a second time, but, because he fails to state a
claim for which relief can be granted in his proposed second
amended complaint, his motion to amend his complaint will be
denied on grounds of futility.
BACKGROUND
In 1958, Cornish applied for and passed the patent
examination and became registered to practice law before the
USPTO. (See Defs.’ Mem. of P. & A. in Supp. of Defs.’ Mot. to
Dismiss or, in the Alternative, for Summ. J. (“Defs.’ Mem.”) at
7.) In 1995, one of Cornish’s former clients filed a grievance
against him and, as a result, Cornish was removed from Maryland’s
attorney register.1 (See id. at 7-9.) In 1996, Cornish wrote
1
Both the District of Columbia and New York State Bars
temporarily suspended Cornish from the practice of law based on
the Maryland action. He since has been reinstated to all three
bars. (Id. at 11-12.)
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the USPTO stating that he was “ceasing . . . practice before the
United States Patent and Trademark Office.” (Id. at 9, Ex. 7.)
The director of the USPTO’s Office of Enrollment Discipline
(“OED”) informed Cornish that the USPTO was “treating [Cornish’s
letter] as a request to have [his] name removed from the
register[,]” and that Cornish should inform OED if it was not his
intent to have his name removed. (Id. at 9-10, Ex. 8.) After
giving Cornish over five months to respond, OED removed Cornish’s
name from the patent register. (Id. at 10 n.7.)
On January 25, 2005, Cornish requested reinstatement to the
patent register. (Id. at 12, Ex. 12). That same day, an OED
staff member wrote Cornish explaining that because more than five
years had passed since Cornish had been registered to practice
before the USPTO, Cornish would be required to take the patent
registration examination or submit a showing to the satisfaction
of the OED Director that Cornish continued to possess the legal
qualifications necessary to render valuable services for patent
applicants. (Id. at 12-13, Ex. 13.) The following day, Cornish
submitted a letter purporting to detail his legal qualifications.
(Id. at 13, Ex. 15.) An OED staff attorney reviewed Cornish’s
submission and concluded that Cornish did not present sufficient
objective evidence of his ability to render patent applicants
valuable service. (Id. at 13-14, Ex. 17.) OED informed Cornish
that the decision was without prejudice and invited Cornish to
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submit additional information to support his qualifications.
(Id.) Before submitting additional information, however, Cornish
sat for, and failed, the July 2005 patent examination (id. at 14-
15, Exs. 18, 20, 32, 33), the July 2006 examination (id. at 19),
and the July 2007 examination. (Id. at 23, Exs. 30, 33.) Before
sitting for and taking the July 2006 and 2007 examinations,
Cornish requested various “reasonable accommodations” (see id. at
15, 21, Exs. 22, 29), and by July 2007, OED granted all of his
accommodations requests.2 (Id. at 22.) Cornish brought this
action in September 2007, arguing that under the Administrative
Procedure Act (“APA”), 5 U.S.C. § 706(2)(A), the defendants’
decision to deny his reinstatement request was arbitrary and
capricious, and purporting to raise a number of constitutional
and statutory violations.3 In September 2008, Cornish amended
his complaint, adding Bivens4 claims and challenges to the rules
(“Final Rules”) implemented by the USPTO in August 2007 that
governed patent applicants’ process for protecting inventions.
2
OED granted some, but not all, of Cornish’s accommodations
requests for the July 2006 exam. (Id. at 16.)
3
In passing, Cornish mentions the Freedom of Information
Act (“FOIA”). (See Compl. at 31, 35.) However, he does not
allege that he made any FOIA request of the defendants.
Therefore, any claim he may seek to raise under FOIA fails to
state a cause of action for which relief can be granted, and will
be dismissed.
4
Bivens v. Six Unknown Named Agents of Fed. Bureau of
Narcotics, 403 U.S. 388 (1971).
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(See Amended Compl. for Att. to Approved Mot. for Leave to Amend
Compl. Under Fed. R. Civ. P. 15 (“Amend. Compl.”).) The
defendants have moved to dismiss under Federal Rules of Civil
Procedure 12(b)(1) for lack of subject matter jurisdiction and
12(b)(6) for failure to state a claim for which relief can be
granted or, in the alternative, for summary judgment.5 Cornish
moved yet again to amend his complaint in March 2010, which the
defendants oppose under Rule 8(a) and Local Civil Rule 7(m).
DISCUSSION
“Before a court may address the merits of a complaint, it
must assure that it has jurisdiction to entertain the claims.”
Marshall v. Honeywell Tech. Solutions, Inc., 675 F. Supp. 2d 22,
24 (D.D.C. 2009). Under Rule 12(b)(1), a complaint may be
dismissed for lack of subject matter jurisdiction. See Fed. R.
Civ. P. 12(b)(1). “When assessing a motion to dismiss for lack
of subject matter jurisdiction, a court may consider the
complaint and any undisputed facts in the record.” Marshall, 675
F. Supp. 2d at 24. A plaintiff’s factual allegations are subject
to closer scrutiny when resolving a Rule 12(b)(1) motion than
would be required for a Rule 12(b)(6) motion for failure to state
a claim, and “[p]ro se plaintiffs are not free from the
5
The defendants’ motion incorporates by reference the
arguments made in their motion to dismiss the original complaint
or, in the alternative, for summary judgment. (See Defs.’ Mem.
of P. & A. in Supp. of Defs.’ Renewed Mot. to Dismiss or, in the
Alternative, for Summ. J. at 11 n.5.)
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requirement to plead an adequate jurisdictional basis for their
claims.” Bennett-Bey v. Shulman, Civil Action No. 08-328 (RWR),
2010 WL 320216, at *1 (D.D.C. Jan. 20, 2010).
“In order to survive a motion to dismiss under Rule
12(b)(6), the allegations stated in the . . . plaintiff’s
complaint ‘must be enough to raise a right to relief above the
speculative level[.]’” Demery v. Montgomery County, MD, 602 F.
Supp. 2d 206, 212 (D.D.C. 2009) (quoting Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 555 (2007) (alteration in original)).
While courts “do not assess ‘the truth of what is asserted or
determin[e] whether a plaintiff has any evidence to back up what
is in the complaint[,]’” courts also do not accept “‘inferences
drawn by the plaintiffs if such inferences are unsupported by the
facts set out in the complaint,’ [or] ‘legal conclusions cast in
the form of factual allegations.’” Browning v. Clinton, 292 F.3d
235, 242 (D.C. Cir. 2002) (quoting Kowal v. MCI Communications
Corp., 16 F.3d 1271, 1275 (D.C. Cir. 1994)). If a plaintiff
fails to allege sufficient facts to support his claim and nudge
it across the line from conceivable to plausible, the complaint
will be dismissed. Twombly, 550 U.S. at 556, 570.
“When ‘matters outside the pleadings are presented to and
not excluded by the court’ on a motion to dismiss under Rule
12(b)(6), ‘the motion must be treated as one for summary
judgment[.]’” Highland Renovation Corp. v. Hanover Ins. Group,
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620 F. Supp. 2d 79, 82 (D.D.C. 2009) (quoting Fed. R. Civ. P.
12(d)) (alteration in original). Summary judgment must be
granted when the moving party demonstrates that there is no
genuine issue as to any material fact and that moving party is
entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c).
In deciding a motion for summary judgment, a court must draw all
justifiable inferences in favor of the nonmovant. Cruz-Packer v.
District of Columbia, 539 F. Supp. 2d 181, 189 (D.D.C. 2008).
The threshold question is whether “there are any genuine factual
issues that properly can be resolved only by a finder of fact
because they may reasonably be resolved in favor of either
party.” Single Stick, Inc. v. Johanns, 601 F. Supp. 2d 307, 312
(D.D.C. 2009) (overruled on other grounds).
I. REINSTATEMENT CLAIM
The USPTO is authorized to establish regulations which
may govern the recognition and conduct of agents,
attorneys, or other persons representing applicants or
other parties . . . and may require them, before being
recognized as representatives of applicants or other
persons, to show that they . . . are possessed of the
necessary qualifications to render to applicants or
other persons valuable service, advice, and
assistance[.]
35 U.S.C. § 2(b)(2)(D). Under the applicable regulations, “[a]ny
petition from any action or requirement of the staff of OED
reporting to the OED Director shall be taken to the OED
Director[.]” 37 C.F.R. § 11.2(c). A “petition not filed within
sixty days from the mailing date of the action or notice from
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which relief is requested will be dismissed as untimely.” Id. A
petitioner who is dissatisfied with the OED Director’s final
decision “may seek review of the decision upon petition to the
USPTO Director[.]” 37 C.F.R. § 11.2(d). Any petition to the
USPTO Director may be dismissed as untimely if not filed within
thirty days of the OED Director’s final decision. Id. Finally,
this court “may review the action of the [USPTO] Director upon
the petition of the person so refused recognition[.]” 35 U.S.C.
§ 32.
Generally, for a court to hear “claims seeking judicial
review of an agency action under the APA, it must determine that
the action is final.” Natural Res. Def. Council v. Johnson, 422
F. Supp. 2d 105, 110 (D.D.C. 2006) (overruled on other grounds)
(citing Cobell v. Norton, 240 F.3d 1081, 1095 (D.C. Cir. 2001)).
“A final agency action (1) marks the consummation of the agency’s
decision making process –- it must not be of a merely tentative
or interlocutory nature; and (2) the action must be one by which
rights or obligations have been determined or from which legal
consequences will flow.” Id. (internal quotation marks omitted).
“Whether there has been ‘agency action’ or ‘final agency action’
within the meaning of the APA are threshold questions; if these
requirements are not met, the action is not reviewable.” Fund
for Animals, Inc. v. U.S. Bureau of Land Mgmt., 460 F.3d 13, 18
(D.C. Cir. 2006). Failure to satisfy the APA’s final agency
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action requirement warrants dismissal for failure to state a
claim for which relief can be granted. See id. at 18 n.4; Am.
Forest Res. Council v. Hall, 533 F. Supp. 2d 84, 94 (D.D.C.
2008).
The bulk of Cornish’s grievance lies in the USPTO’s refusal
to reinstate him to the USPTO register. The defendants move to
dismiss Cornish’s reinstatement claim, in part, on the grounds
that Cornish has failed to exhaust his administrative remedies
because he has not secured a final agency decision from the USPTO
Director reviewing OED’s decision to deny his reinstatement
request.6 (See Defs.’ Mem. at 32.)
Cornish has neither pled nor cited to such a final agency
decision. While Cornish may have petitioned the USPTO Director
in July 2006 seeking in part reversal of the OED staff attorney’s
decision from over a year earlier (Defs.’ Mem. at 18, Ex. 27), it
may be no surprise that no final agency decision was forthcoming.
There is no evidence that Cornish took the intermediate step in
compliance with 37 C.F.R. § 11.2 of petitioning and securing a
decision from the OED Director for the USPTO Director to review.
Understandably, Cornish does not contend that the OED staff
attorney’s decision is a final agency decision subject to review,
6
While defendants cast this failure as one depriving the
court of subject matter jurisdiction, a failure to exhaust
administrative remedies is properly analyzed under Rule 12(b)(6)
as a failure to state a claim. Winston v. Clough, Civil Action
No. 07-1411 (RWR), 2010 WL 1875626, at *4 (D.D.C. May 11, 2010);
Hairston v. Tapella, 664 F. Supp. 2d 106, 110 (D.D.C. 2009).
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particularly given that the staff attorney’s letter expressly
stated that it was a denial without prejudice. The Patent and
Trademark Office Manual of Patent Examining Procedure (“MPEP”)7
provides that “[a] dismissal of a petition, a denial of a
petition without prejudice, and other interlocutory orders are
not final agency decisions.” MPEP § 1002.02. Because Cornish
neither pleads nor cites to the determination to deny without
prejudice Cornish’s reinstatement request as a final agency
decision, the defendants’ motion to dismiss the reinstatement
claim for failure to state a claim for which relief can be
granted should prevail.
Even if the actions in this record constituted a final
agency decision, the material facts are not in dispute regarding
the USPTO denying Cornish reinstatement and the defendants are
entitled to judgment as a matter of law on the reinstatement
claim. “Under 35 U.S.C. § 32, the sole basis for the Court’s
review is the record and proceedings before the [USPTO] . . . and
7
MPEP is “commonly relied upon as a guide to patent
attorneys and patent examiners on procedural matters.” Zhengxing
v. U.S. Patent & Trademark Office, 579 F. Supp. 2d 160, 166 n.6
(D.D.C. 2008) (quoting Molins PLC v. Textron, Inc., 48 F.3d 1172,
1180 n.10 (Fed. Cir. 1995) (internal quotation marks omitted)).
“MPEP does not have the force of law, [but] it is entitled to
judicial notice as an official interpretation of statutes or
regulations as long as it is not in conflict therewith.” Id.(internal citations omitted) (alterations in original). “[T]he
PTO operates in accordance with detailed rules and regulations,
including those set out in the [MPEP] which is made available to
the public and which has been held to describe procedures on
which the public can rely.” Id. (internal citations omitted).
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the Court’s limited function is to determine whether the
[USPTO’s] decision was arbitrary and capricious based on the
record created and considered by the [USPTO].” Maresca v.
Commn’r of Patents and Trademarks, 871 F. Supp. 504, 507 (D.D.C.
1994). “The standard of review is highly deferential: ‘If [the
USPTO] has considered the relevant evidence of record, drawn
plausible inferences and articulated a rational basis for the
decision, reversible error will be extremely difficult to
demonstrate.’” Id. (quoting Hines on Behalf of Sevier v. Sec’y
of the Dep’t of Health and Human Servs., 940 F.2d 1518, 1528
(Fed. Cir. 1991)). “[T]his standard does not allow the courts to
undertake their own factfinding, but to review the agency record
to determine whether the agency’s decision was supported by a
rational basis.” Holy Land Found. for Relief & Dev. v. Ashcroft,
333 F.3d 156, 162 (D.C. Cir. 2003) (citing Holy Land Found. for
Relief & Dev. v. Ashcroft, 219 F. Supp. 2d 57, 67 (D.D.C. 2002)).
“Further, where a statute is silent or ambiguous on a particular
issue and an agency is authorized to promulgate regulations to
carry out the statute, a court must defer to the agency’s
reasonable interpretation of the statute.” Atl. Sea Island Group
LLC v. Connaughton, 592 F. Supp. 2d 1, 13 (D.D.C. 2008) (citing
Chevron U.S.A., Inc. v. Natural Res. Def. Council, Inc., 467 U.S.
837, 843 (1984)).
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After OED informed Cornish in January 2005 that he must
either retake the patent exam or submit a satisfactory showing
that he possessed the legal qualifications necessary to render
valuable service to potential clients (Defs.’ Mem. at 13),
Cornish wrote to an OED Enrollment Program Specialist listing his
qualifications. Cornish claimed to have taken continuing legal
education courses, attended regularly annual meetings of and
maintained membership in intellectual property associations,
subscribed to weekly publications regarding significant changes
in patent laws, and worked for a law firm in the District of
Columbia. (Id., Ex. 15 ¶¶ 1-5.) Cornish also claimed to have
filed an amicus brief in the U.S. Supreme Court, provided
valuable service to applicants and litigants in the field of
intellectual property law, and attended important patent law
arguments in the U.S. Court of Appeals for the Federal Circuit.
(Id., Ex. 15 ¶¶ 10-12.) After reviewing Cornish’s letter, OED
Staff Attorney William J. Griffin denied Cornish’s reinstatement
request, because Cornish “did not present sufficient objective
evidence to show that he continued to possess the legal
qualifications necessary to render patent applicants valuable
service.” (Id. at 14 (emphasis added).) Griffin justified this
conclusion on the basis that Cornish’s letter included only
“conclusory statements made without the support of any objective
evidence” that were “entitled to little weight.” (Id., Ex. 17.)
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Citing the USPTO regulations, Griffin stated that appropriate
legal qualifications would include proof of “knowledge and
proficiency in current patent law and Patent and Trademark Office
procedure, an ability to draft acceptable patent claims, and
familiarity with current patent practice as well as patent
statutes and regulations.” (Id., Ex. 17.)
The record reflects that OED fairly considered the relevant
evidence. Cornish has not shown anything arbitrary or irrational
about OED finding as inadequate proof of his qualification his
self-serving and undetailed assertion that he has provided
valuable services to applicants and litigants in the field of
intellectual property and that he has worked for a law firm in
the District of Columbia, particularly given the nearly nine
years that had passed since he was licensed as a patent attorney.
Also, that Cornish has attended meetings and holds subscriptions
to intellectual property law publications does not necessarily
reveal an ability to practice as a patent attorney. Similarly,
it was not unreasonable to consider Cornish’s bare assertion that
he has taken continuing legal education courses –- without
evidence of the nature of the courses, the number of courses
taken, and whether Cornish successfully completed any of the
courses –- as insufficient to show that Cornish has the requisite
knowledge and proficiency to be reinstated as a patent attorney.
Furthermore, Cornish made no showing of his actual ability to
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draft patent claims or familiarity with current patent statutes
and regulations. Given that the standard of review is highly
deferential, and OED has demonstrated that it considered the
relevant evidence, extracted plausible inferences, and
articulated a rational basis for its decision, the defendants’
motion for summary judgment will be granted on the reinstatement
claim.
II. EMPLOYMENT DISCRIMINATION CLAIMS
Intermittently throughout his complaint, Cornish purports to
bring claims of employment discrimination by mentioning, in
passing, Title VII of the Civil Rights Act of 1964, 42 U.S.C.
§ 2000e, the Age Discrimination in Employment Act of 1967
(“ADEA”), the Older Workers Benefit Protection Act, and the
Americans with Disabilities Act (“ADA”). (See Compl. at 21-23.)8
Under Title VII, an employer may not “fail or refuse to hire or
to discharge any individual, or otherwise to discriminate against
any individual with respect to his compensation, terms,
8
Cornish also purports to state a claim for relief under
the Individuals with Disabilities Education Act (“IDEA”). (Id.
at 23.) The “IDEA ‘ensure[s] that all children with disabilities
have available to them a free appropriate public education
[(“FAPE”)] that emphasizes special education and related services
designed to meet their unique needs and prepare them for further
education, employment, and independent living.’” J.N. v.
District of Columbia, 677 F. Supp. 2d 314, 319 (D.D.C. 2010)
(first alteration in original) (quoting 20 U.S.C.
§ 1400(d)(1)(A)). Cornish has failed to state an IDEA claim,
however, because he has not alleged that he was discriminated
against in the public school setting or that he was denied a
FAPE. See 20 U.S.C. §§ 1400-1487 (2000).
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conditions, or privileges of employment, because of [his] race,
color, religion, [or] sex[.]” Williams v. Tapella, 658 F. Supp.
2d 204, 211 (D.D.C. 2009) (alterations in original) (citing 42
U.S.C. § 2000e-2(a)(1)). Similarly, the ADEA prohibits
discrimination based on age in the employment setting, see 29
U.S.C. § 626, and the Older Workers Benefit Protection Act
amended the ADEA largely “to clarify the protections given to
older individuals in regard to employee benefit plans[.]” See
Pub. L. No. 101-433, 104 Stat. 978. Moreover, the ADA, in part,
prohibits employment discrimination against an individual with a
disability who, with or without reasonable accommodation, can
perform the essential functions of the position.9 Dave v.
Lanier, 681 F. Supp. 2d 68, 73 (D.D.C. 2010) (citing Breen v.
Dep’t of Transp., 282 F.3d 839, 841 (D.C. Cir. 2002)). Cornish’s
employment discrimination claims will be dismissed because
Cornish has failed to allege that he ever was employed by or
sought employment with the defendants, or that he suffered any
adverse employment action.
III. REHABILITATION ACT CLAIM
Cornish’s complaint cites the Rehabilitation Act and asserts
that he requested “reasonable accommodations to take, challenge,
9
Other provisions of the ADA prohibiting discrimination on
the basis of disability in transportation services, programs, or
activities of all State and local governments, see 42 U.S.C.
§ 12131 et seq., in public accommodations, see 42 U.S.C.
§§ 12181-12189, and telecommunications for hearing and speech-
impaired individuals, 47 U.S.C. § 225, do not apply here.
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correct, and appeal the marks received on the Patent Office
Exam[,]” that the defendants required him “to pass another
arbitrary, discriminatory test without reasonable
accommodations[,]”10 and that his “age and physical limitations
. . . require reasonable accommodations.” (Compl. at 8, 27, 35.)
The defendants argue that Cornish has failed to allege that he is
an individual with a disability for purposes of the
Rehabilitation Act and that, even if Cornish has made such an
allegation, he cannot establish a prima facie violation of the
Rehabilitation Act. (Defs.’ Mem. at 41-42.)
Section 504 of the Rehabilitation Act prohibits
“discrimination against qualified disabled individuals by
requiring that they receive ‘reasonable accommodations’ that
permit them to have access to and take a meaningful part in
public services and public accommodations.” Powell v. Nat’l Bd.
of Med. Exam’rs, 364 F.3d 79, 85 (2d Cir. 2004); see 29 U.S.C.
§ 794(a). To establish a violation under the Rehabilitation Act,
the defendant must “demonstrate (1) the [he] is a ‘qualified
10
The defendants have demonstrated that this allegation is
faulty. The defendants show –- and Cornish does not refute --
that OED granted all of Cornish’s accommodation requests by the
time he sat for the 2007 patent examination. OED gave Cornish
the examination and answer sheets printed in 14-point font;
magnifiers for reading the Manual of Patent Examining Procedure;
additional lighting; a testing room separate from the main
testing room; additional time to take the examination; and the
opportunity to take the examination over two days instead of one.
(Defs.’ Mem. at 42, Ex. 29.) He still did not pass the patent
examination.
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individual’ with a disability; (2) that the defendants are
subject to . . . the [Act]; and (3) that [he] was ‘denied the
opportunity to participate in or benefit from defendants’
services, programs, or activities, or [was] otherwise
discriminated against by defendants, by reason of [his]
disabilit[y].’” Powell, 364 F.3d at 85 (fourth and sixth
alterations in original).
“A person is disabled under the Rehabilitation Act if he
‘has a physical or mental impairment which substantially limits
one or more of such person’s major life activities; has a record
of such an impairment; or is regarded as having such an
impairment.’” Nurriddin v. Bolden, 674 F. Supp. 2d 64, 82
(D.D.C. 2009) (quoting 29 U.S.C. § 705(20)(B)). However, “[a]s
the Supreme Court has emphasized, ‘merely having an impairment
does not make [an individual] disabled.’” Id. (second alteration
in original) (quoting Toyota Motor Mfg., Ky., Inc. v. Williams,
534 U.S. 184, 195 (2002)). Rather, a plaintiff “must demonstrate
that the impairment ‘substantially limits’ a ‘major life
activity.’” Id. at 83 (quoting Toyota Motor Mfg., Ky., Inc., 534
U.S. at 195)). “[T]he determination of whether an individual has
a disability is not necessarily based on the name or diagnosis of
the impairment the person has, but rather on the effect of that
impairment on the life of the individual.” Desmond v. Mukasey,
530 F.3d 944, 955 (D.C. Cir. 2008) (internal quotation marks
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omitted). “An individualized assessment of the effect of an
impairment is particularly necessary when the impairment is one
whose symptoms vary widely from person to person.” Id. (internal
quotation marks omitted). Cornish’s burden, therefore, is to
demonstrate that he suffers from an impairment that substantially
limits a major life activity. See, e.g., Lytes v. D.C. Water and
Sewer Auth., 572 F.3d 936, 942 (D.C. Cir. 2009) (citing 42 U.S.C.
§ 12102(2)(A) (2000)).
To satisfy his burden, Cornish asserts that he has “specific
visual and other medically documented age-related, life-function
impairments and disabilities[.]” (Pl.’s Mot. to Deny the Defs.’
9/25/08 Renewed Dispositive Mot. to Dismiss or, Alternatively,
for Summ. J. (“Pl.’s Opp’n”) at 10.) Beyond these bare
assertions, however, Cornish makes no showing as to how his
alleged impairment substantially limits any major life
activity.11 For example, Cornish has not shown that he suffers
from permanent and severe blindness in one or both eyes of the
type that would cause him to receive poor work evaluations, cf.
11
Cornish submitted spare documentation to the OED to
support his claim of disability and need for accommodations. For
example, Cornish submitted to the OED a letter from a physician
who had treated him for coronary heart disease, stating merely
that Cornish would like “to be permitted to have additional time
allotted for the completion of the examination in view of his age
and health issues[.]” (Defs.’ Mem., Ex. 28.) Though OED granted
Cornish’s accommodation requests, it found the physician’s letter
unpersuasive because it failed to certify the current severity of
Cornish’s disability and need for the accommodations requested.
(Id.)
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Johnson v. District of Columbia, 572 F. Supp. 2d 94, 106 (D.D.C.
2008) (noting that the plaintiff not only alleged that he was
blind in one eye and had insulin-dependant diabetes, but that the
impairments caused him to work at an extremely slow pace and fall
asleep during work such that he received poor productivity
reviews); rectal pain and fecal urgency that prevent him from
performing his daily tasks, cf. Green v. Am. Univ., 674 F. Supp.
2d 21, 29-31 (D.D.C. 2009) (involving a defendant who lost
voluntary control of his bowels which caused chronic tardiness
and unpredictable urges to use the bathroom between six to eleven
times per day); or such debilitating anxiety that he is
completely unable to communicate. Cf. McAlindin v. County of San
Diego, 192 F.3d 1226, 1235 (9th Cir. 1999) (holding that
defendant’s fear reaction and communicative paralysis raised a
genuine issue of material fact as to his ability to interact with
others). Because Cornish has failed to show that he is a
qualified individual with a disability, the defendants will be
granted summary judgment on the Rehabilitation Act claim.
IV. TAFAS CLAIM
In his amended complaint, Cornish challenges the same USPTO
Final Rules challenged in Tafas v. Dudas, 541 F. Supp. 2d 805(E.D. Va. 2008).12 In Tafas, the plaintiffs challenged the
12
Cornish also challenges the same Final Rules that were
challenged in GlaxoSmithKline v. Doll, 1:07-CV-1008 (E.D. Va.).
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USPTO’s August 2007 Final Rules. In 2008, the district court
upheld the Final Rules, and, on appeal, the Federal Circuit
affirmed in part and vacated in part the district court’s
decision. See Tafas v. Doll, 559 F.3d 1345, 1364 (Fed. Cir.
2009). During the course of the Tafas litigation, however, the
USPTO rescinded the Final Rules and the litigation was dismissed
as moot. See Tafas v. Kappos, 586 F.3d 1369, 1371 (Fed. Cir.
2009).
“‘Federal courts lack jurisdiction to decide moot cases
because their constitutional authority extends only to actual
cases or controversies.’” Matthews v. District of Columbia, 675
F. Supp. 2d 180, 187 (D.D.C. 2009) (quoting Larsen v. U.S. Navy,
525 F.3d 1, 4 (D.C. Cir. 2008) (internal quotation marks
omitted)). Because the USPTO has rescinded the Final Rules that
Cornish seeks to challenge, Cornish’s Tafas claims, therefore,
will be dismissed as moot.
V. CONSTITUTIONAL CLAIMS
Cornish asserts that his inability to practice before the
USPTO abridges his “freedom of speech and press to publish and
advertise his name as an attorney” authorized to practice before
the USPTO, and violates the Fourth and Fourteenth Amendments.13
Because GlaxoSmithKline was consolidated with Tafas, the cases
will be referred to collectively as Tafas.
13
Cornish also invokes Art. I, § 8, cl. 8 and Art. II, § 2,
cl. 2 of the U.S. Constitution. Art. I, § 8, cl. 8 gives to
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(Compl. at 9, 18, 39.) The First Amendment largely “protects an
individual’s right to speak on whatever subject he or she
chooses[.]” Martin v. EPA, 271 F. Supp. 2d 38, 48 (D.D.C. 2002).
Although Cornish alleges that the defendants’ failure to
reinstate him to the patent register violates the First
Amendment, the fact that Cornish is not registered as a patent
attorney does not prohibit him from speaking on any topic of his
choosing. Furthermore, because false, deceptive, or misleading
advertising is subject to restraint, In re R. M. J., 455 U.S.
191, 200 (1982), and Cornish would mislead the public if he were
to hold himself out as a registered patent attorney without being
registered as such, see Bates v. State Bar of Ariz., 433 U.S.
350, 383 (1977) (noting that “because the public lacks
sophistication concerning legal services, misstatements that
might be overlooked or deemed unimportant in other advertising
may be found quite inappropriate in legal advertising”),
Cornish’s First Amendment claim based on his right to advertise
as a patent attorney will be dismissed.
“The Fourth Amendment prohibits law enforcement officials
from engaging in ‘unreasonable searches and seizures’ of an
“Authors and Inventors the exclusive Right to their respective
Writings and Discoveries[.]” Const. Art. I., § 8, cl. 8.
Meanwhile, Art. II, § 2, cl. 2 is the Appointments Clause of the
Constitution. It is unclear, however, how these provisions are
implicated by the facts here, and Cornish fails to state a claim
by merely listing the provisions without making a factual showing
of how they apply.
-22-
individual and his property.” Olaniyi v. District of Columbia,
416 F. Supp. 2d 43, 56 (D.D.C. 2006) (quoting U.S. Const. amend.
IV). “The touchstone of Fourth Amendment analysis is whether a
person has a ‘constitutionally protected reasonable expectation
of privacy.’” M.K. v. Tenet, 99 F. Supp. 2d 12, 32 (D.D.C. 2000)
(quoting California v. Ciraolo, 476 U.S. 207, 211 (1986)). “A
person has such an expectation if two requirements are satisfied:
‘first that a person has exhibited an actual (subjective)
expectation of privacy and, second, that the expectation be one
that society is prepared to recognize as “reasonable.”’” Id.(quoting Katz v. United States, 389 U.S. 347, 361 (1967)).
Cornish has not alleged any facts to suggest that he had a
subjective or reasonable expectation of privacy or that the
defendants have violated any privacy right. Because a complaint
must contain “a short and plain statement of the claim showing
that the pleader is entitled to relief[,]” Fed. R. Civ. P.
8(a)(2); see also Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949
(2009), and Cornish has failed to make this showing, Cornish’s
Fourth Amendment claim will be dismissed.
Cornish also has raised a claim under the Fourteenth
Amendment. However, the Fourteenth Amendment does not apply here
because Cornish is suing federal officials in their official
capacities and “[i]t is the due process clause of the Fifth, not
the Fourteenth, Amendment that applies to actions of the federal
-23-
government.” Peavey, 657 F. Supp. 2d at 186 n.6. Further,
“‘[t]he due process clause requires the government to provide
sufficient notice and a meaningful opportunity to be heard on the
deprivation of a protected liberty or property interest.’”
Id. at 191 (quoting Rason v. Nicholson, 562 F. Supp. 2d 153, 155
(D.D.C. 2008) (citing United States v. E-Gold, Ltd., 521 F.3d
411, 415 (D.C. Cir. 2008))). The USPTO has established
administrative procedures for reviewing challenges to the OED’s
decision regarding an applicant’s reinstatement claim that
include affording aggrieved persons an opportunity to challenge
an OED staff decision to the OED Director, and the OED Director’s
decision to the USPTO Director. To the extent that Cornish is
raising a claim under the due process clause by asserting that
the OED has deprived him of a right to property or liberty by
interfering with his right to practice as a patent attorney,
Cornish has failed to allege facts showing how his opportunity to
be heard through OED’s administrative process was at all
inadequate. Because Cornish has not alleged facts that, if
proven, would demonstrate that he did not have a meaningful
opportunity to be heard, his due process claim will be dismissed
for failure to state a claim.14
14
Cornish’s amended complaint purports to assert several
Bivens claims. (See Amend. Compl. at 4-6, 13.) Under Bivens, a
plaintiff may bring “an action against a federal officer seeking
damages for violations of the plaintiff’s constitutional rights.”
Simpkins v. District of Columbia Gov’t, 108 F.3d 366, 368 (D.C.
Cir. 1997). However, a “Bivens suit must be brought against
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VI. MOTION TO AMEND
Cornish moves to amend his complaint yet again. A
plaintiff may “amend his complaint after an answer has been
filed ‘only by leave of court or by written consent of the
adverse party[.]’” Smith v. Cafe Asia, 598 F. Supp. 2d 45, 47
(D.D.C. 2009) (quoting Fed. R. Civ. P. 15(a)(2)). While leave
to amend should be granted freely, a motion to amend may be
denied as futile on the grounds that the proposed amendments
would not survive a motion to dismiss. Id. at 47-48.
The defendants oppose on the grounds that Cornish has not
provided a short and plain statement of his claim showing that
he is entitled to relief, see Fed. R. Civ. P. 8(a)(2), and that
Cornish has failed to comply with Local Civil Rule 7(m), which
requires a moving party to discuss with opposing counsel an
anticipated nondispositive motion before filing such a motion.
See LCvR 7(m).
Cornish's reply does not dispute his violation of the local
rule which alone is a ground for denying his motion. That
aside, the proposed second amended complaint is 94 pages of text
bearing 21 pages of unnumbered paragraphs plus 73 pages of 181
numbered paragraphs of disparate lengths. Its new and renewed
federal officers in their individual capacity[.]” Peavey, 657 F.
Supp. 2d at 192. Because Cornish has neither sued nor served a
copy of his amended complaint on the defendants in their
individual capacities, Cornish’s Bivens claims against the
defendants will be dismissed.
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content is overly prolix and burdened by meandering hyperbole.
Cornish sprinkles throughout it recitations of text from
numerous statutes. It is unclear whether those passages are
truly intended to assert causes of action under those statutes
as they are accompanied by little to no factual presentation
that would nudge such potential claims for relief across the
line from conceivable to plausible.
A prime example is Cornish’s reference to the Privacy Act.
(See, e.g., Second Am. Compl. ¶¶ 69, 80, 89, 99, 112.) The
Privacy Act forbids federal agencies from disclosing any record
in a system of records to any person or another agency without
the prior written consent of the individual to whom the record
pertains, see 5 U.S.C. § 552a(b), and requires agencies to keep
an accurate accounting of any record disclosure, see
§ 522a(c)(1); maintain personal information about an individual
only if it is relevant and necessary to accomplish a statutory
purpose, see § 522a(e)(1); establish rules of conduct for
persons involved in the maintenance of any records, see
§ 552a(e)(9); and establish safeguards to ensure the
confidentiality of such records. See § 522a(e)(10). Any
claims Cornish intends to raise under the Privacy Act would not
survive a Rule 12(b)(6) motion due to Cornish’s lack of
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sufficient factual presentation on any of these Privacy Act
provisions reflecting his entitlement to any relief.15
Other examples are Cornish’s references to the E-Government
Act of 2002, the Federal Information Security Management Act
(“FISMA”), the Veterans Affairs Claims Confidentiality statute,
and the Trade Secrets Act.16 The E-Government Act of 2002 (see,
e.g., Second Am. Compl. ¶ 128) generally requires federal
agencies to establish “a broad framework of measures that
require using Internet-based information technology to enhance
15
Cornish also makes reference to the Lanham Act and the
provision under the Act that allows courts to award attorneys’
fees to prevailing parties. (See, e.g., Second Am. Compl.
¶¶ 163, 166.) In general, the Lanham Act “prohibits two types of
unfair competition: trademark infringement . . . and false
designation of origin[.]” Oceanic Exploration Co. v.
ConocoPhillips, Inc., Civil Action No. 04-332 (EGS), 2006 WL
2711527, at *19 (D.D.C. Sept. 21, 2006) (internal citations
omitted). Cornish’s proposed second amended complaint does not
present any set of facts that would support a claim under this
Act.
16
Cornish also recites the elements of a tortious
interference with a business relationship claim (see Second Am.
Compl. at 80 ¶ 171), perhaps implying that the defendants’
refusal to reinstate him interferes with his ability to represent
patent applicants before the USPTO. A claim of tortious
interference with a business relationship requires a plaintiff to
“allege: (1) a valid business relationship or expectancy with a
third party; (2) knowledge of the relationship or expectancy on
the part of the defendant; (3) intentional interference by the
defendant, causing a breach or termination of the relationship or
expectancy; and (4) resultant damage.” Williams v. Fed. Nat’l
Mortgage Ass’n, Civil Action No. 05-1483 (JDB), 2006 WL 1774252,
at *8 (D.D.C. June 26, 2006). However, if Cornish is attempting
to morph his claim against the defendants for failure to
reinstate him to the patent register into a common law tort, his
attempt would be futile given that defendants will be granted
summary judgment on his reinstatement claim.
-27-
citizen access to Government information and services,” Pub. L.
No. 107-347, 116 Stat. 2899, and FISMA (see, e.g., Second Am.
Compl. ¶ 154) requires federal agencies to comply with
information “security standards and conduct annual, independent
evaluations of their information security.” Trusted
Integration, Inc. v. United States, 679 F. Supp. 2d 70, 74
(D.D.C. 2010) (citing 44 U.S.C. §§ 3543-3545). It is not clear,
however, that the E-Government Act of 2002 confers a private
cause of action upon a plaintiff, see In re Haefner, 345 B.R.
588, 590 (N.D. Ohio 2006) (questioning whether the E-Government
Act of 2002 creates a private cause of action); see also Montin
v. Gibson, No. 4:09CV3102, 2009 WL 2486441, at *3 (D. Neb.
Aug. 12, 2009), and Cornish has not cited to any authority to
show that either Act creates such a cause of action. Even if
the Acts do confer a private cause of action, Cornish has not
shown that he has standing to raise claims under either one.
Standing “requires (1) injury in fact which is (a) concrete and
particularized and (b) actual or imminent, not conjectural or
hypothetical[,] . . . (2) a causal connection between the injury
and the conduct complained of[,] . . . and (3) a likelihood, as
opposed to merely speculation, ‘that the injury will be
redressed by a favorable decision.’” Nat’l Treasury Employees
Union v. Whipple, 636 F. Supp. 2d 63, 72 (D.D.C. 2009) (quoting
Lujan v. Defenders of Wildlife, 504 U.S. 555, 561 (1992))
-28-
(internal citations omitted) (alterations in original).
Cornish’s proposed second amended complaint alleges the same
primary harm alleged in his original and first amended
complaint, namely that he has been harmed by the USPTO’s failure
to reinstate him to the patent register. Cornish, however, does
not plead sufficient facts to support his claim that the USPTO’s
refusal to reinstate him was caused by the USPTO’s alleged
failure to conduct independent evaluations of its information
security or to use Internet-based information technology to
enhance citizen access to government information. Because
Cornish has not adequately pled causation between the alleged
injury and the defendants’ conduct, he has not shown standing to
raise claims under FISMA and the E-government Act of 2002.
The Veterans Affairs Claims Confidentiality statute (see
Second Am. Compl. ¶ 136) requires the Secretary of Veterans
Affairs to keep confidential veterans’ benefits records. See 38
U.S.C. § 5701. Cornish’s claim under this statute would be
futile because, at bottom, Cornish has not named as a defendant
the Department of Veterans Affairs or its officers. Further,
Cornish’s claim for relief under the Trade Secrets Act (see,
e.g., Second Am. Compl. ¶ 136), would fail because the Trade
Secrets Act criminalizes the disclosure of trade secrets by
federal government employees and does not create a private cause
of action. See 18 U.S.C. § 1905; Chrysler Corp. v. Brown, 441
-29-
U.S. 281, 316-17 (1979) (noting that “there is no indication of
legislative intent to create a private right of action” in
§ 1905).
Cornish has violated LCvR 7(m) and Fed. R. Civ. P. 8(a)(2),
and the claims that Cornish seeks to raise in his proposed
second amended complaint would not withstand a motion to dismiss
brought under Rule 12(b)(6). Thus, his motion to amend his
complaint will be denied.
CONCLUSION
Because Cornish has failed show that the OED’s decision to
deny his reinstatement request was either arbitrary or
irrational and failed to establish a violation of the
Rehabilitation Act, the defendants’ motion for summary judgment
on his reinstatement and Rehabilitation Act claims will be
granted. Because Cornish’s Tafas claims are moot, and Cornish
has failed to state a claim for which relief can be granted on
all of his other claims, the defendants’ motion to dismiss will
be granted in all other respects as well.17 Finally, because
Cornish has violated local and federal rules and his second
amended complaint would not survive a Rule 12(b)(6) motion, his
motion for leave to amend his complaint will be denied. A
separate Order accompanies this Memorandum Opinion.
17
Because of the disposition of these claims, Cornish’s
request for an oral hearing (see Compl. at 5, 20), a temporary
restraining order (see Amend. Compl. at 3), and a preliminary
injunction (see Compl. at 39 ¶ 3) are denied as moot.
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SIGNED this 4th day of June, 2010.
/s/
RICHARD W. ROBERTS
United States District Judge