743 Fed.Appx. 426 (Fed. Cir. 2018), 2018-1122, Swartz v. United States Patent and Trademark Office

Docket Nº:2018-1122
Citation:743 Fed.Appx. 426
Opinion Judge:PER CURIAM.
Party Name:Mitchell R. SWARTZ, Plaintiff-Appellant v. UNITED STATES PATENT AND TRADEMARK OFFICE, Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Defendants-Appellees
Attorney:Mitchell R. Swartz, Weston, MA, pro se. Nathan K. Kelley, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for defendants-appellees. Also represented by Michael S. Forman, Benjamin T. Hickman, Thomas W. Krause; Tracy Doherty-McCormick, Kimere Jane Kimball, Offic...
Judge Panel:Before Prost, Chief Judge, Newman and Linn, Circuit Judges.
Case Date:July 17, 2018
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 426

743 Fed.Appx. 426 (Fed. Cir. 2018)

Mitchell R. SWARTZ, Plaintiff-Appellant

v.

UNITED STATES PATENT AND TRADEMARK OFFICE, Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Defendants-Appellees

No. 2018-1122

United States Court of Appeals, Federal Circuit

July 17, 2018

Editorial Note:

This Disposition is Nonprecedential. (See Federal Rule of Appellate Procedure Rule 32.1. See also U.S.Ct. of App. Fed. Cir. Rule 32.1.)

Page 427

Appeal from the United States District Court for the Eastern District of Virginia in No. 1:17-cv-00482-LMB-TCB, Judge Leonie M. Brinkema.

Mitchell R. Swartz, Weston, MA, pro se.

Nathan K. Kelley, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for defendants-appellees. Also represented by Michael S. Forman, Benjamin T. Hickman, Thomas W. Krause; Tracy Doherty-McCormick, Kimere Jane Kimball, Office of the United States Attorney for the Eastern District of Virginia, Alexandria, VA.

Before Prost, Chief Judge, Newman and Linn, Circuit Judges.

OPINION

PER CURIAM.

Mitchell R. Swartz brought a complaint in the Eastern District of Virginia pursuant to 35 U.S.C. § 145, in which he challenged the decision of the U.S. Patent Trademark Office rejecting six of Swartz’s patent applications— U.S. Patent Application No. 12/932,058; No. 12/589,258; No. 13/544,381; No. 12/316,643; No. 09/748,691; and No. 09/750,765— as unpatentable under 35 U.S.C. § § 101 and 112. Swartz also alleged various forms of misconduct by the patent office. The district court dismissed his complaint under Fed.R.Civ.P. 12(b)(1) and 12(b)(6) and Swartz now appeals. Swartz v. Matal, No. 1:17-cv-482, 2017 WL 3611715 (E.D.Va. Aug. 22, 2017) (Brinkema, J.) ("District Court Op

. "). Because the District Court did not err, we affirm.

We begin with the ‘381 application. Section 145 creates a cause of action to challenge a "decision of the Patent Trial and Appeal Board." At the time Swartz filed his complaint in district court, and throughout the pendency of this action before the district court’s decision, the Board had not yet issued its decision with respect to the ’381 application. Because there was no "decision" of the Board to challenge with respect to that application, the district court properly dismissed that portion of Swartz’s claim.

The district court also properly dismissed Swartzs claims with respect to the058 and765 applications on the bases of collateral estoppel. In In re Swartz, 50 Fed.Appx. 422, 424-25 (Fed. Cir. 2002) ("Swartz II ") (per curiam), this court affirmed the rejection of Swartzs U.S. Patent Application No. 08/406,457 for failure of utility and enablement. The at-issue058 application is a continuation of the457 application, and the representative claims in the two...

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