Catalina Mktg. Corp. v. Kappos, 1:11cv659 (JCC/TRJ)
| Decision Date | 19 October 2011 |
| Docket Number | 1:11cv659 (JCC/TRJ) |
| Court | U.S. District Court — Eastern District of Virginia |
| Parties | CATALINA MARKETING CORPORATION, Plaintiff, v. DAVID KAPPOS, Defendant. |
This matter is before the Court on Defendant David Kappos's Motion to Dismiss or, in the Alternative, Motion for Summary Judgment [Dkts. 6, 7] and Plaintiff Catalina Marketing Corporation's1 cross Motion for Summary Judgment [Dkt. 13]. For the following reasons, the Court will grant Defendant's Motion to Dismiss and deny Defendant's Motion for Summary Judgment and Plaintiff's Motion for Summary Judgment.
On July 16, 2005, Roy Simrell submitted a patent application (the Application) for an "AMBER alert system and method for locating missing children." (Administrative Record [Dkt. 9-1] at A001-044.) The Application contained 33 claims.(A026-031.) And all claims that were labeled had the identifier "Original." (A027-031.) Catalina Marketing Corporation claims to be the assignee of all rights in the patent. [See Dkt. 5.]
On April 18, 2008, a United States Patent and Trademark Office (USPTO) examiner issued a non-final rejection of all of the claims in the application. (A058-076.) In response to the rejection, Plaintiff submitted an amendment (the Amendment) to its patent claims on July 17, 2008. (A077-091.) In the Amendment, each of the claims was labeled with one of the following status identifiers: "Currently Amended," "Previously Presented," or "Canceled." (A081-A086.)
On November 3, 2008, the USPTO examiner issued a Notice of Non-Compliant Amendment, in which it found that the Amendment did not conform with 37 C.F.R. § 1.121. (A092-095.) The notice of non-compliance stated, "[e]ach claim has not been provided with the proper status identifier, and as such, the individual status of each claim cannot be identified." (A094.) The examiner explained that "[c]laims which have not been amended and are part of the original set of claims should be indicated as being "Original" and that "[t]he identifier 'Previously Presented' is used for [claims] which have been previously amended or were not part of the original set of claims filed with the application." (A095.)
On November 25, 2008, Plaintiff filed a supplemental amendment (the Supplemental Amendment) in which all but one of the claims labeled as "Previously Presented" in the Amendment were re-labeled as "Original." (A096-A109.) About four months elapsed, therefore, between the time Plaintiff filed the Amendment and the Supplemental Amendment. Under 37 C.F.R. § 1.704(c)(7) that four month delay is credited as Catalina's failure to engage in reasonable efforts to conclude prosecution. As a result, the length of any potential patent term would be reduced by the length of such a delay. See 37 C.F.R. § 1.704(c)(7).
In its Supplemental Amendment, Plaintiff objected to the examiners interpretation of 37 C.F.R. § 1.121, arguing that the requirement that the claims be re-designated as "Original" was baseless. (A104.) And on December 19, 2008, Plaintiff filed a "Petition to Withdraw the Notification of Non-Compliant [Amendment]." (A113-A118.) Catalina requested the Director to reinstate the original Amendment and "specify in the decision that the application will not lose patent term based upon 37 C.F.R. 1.704(c)(7). . . ." (A114.) The USPTO denied Catalina's petition on April 29, 2009, again citing 37 C.F.R. § 1.121. (A133-134.)
On June 4, 2009, Catalina petitioned the Office of the Commissioner to review that denial (the Petition). (A135-144.)On April 7, 2010, the USPTO dismissed that Petition as moot on the grounds that Catalina had "presented a complying amendment of the claims in response to the Notice of Noncompliant Amendment," instead of requesting that the requirement be held in abeyance. (A218-219.) Catalina then requested reconsideration on April 16, 2010, again arguing that the "Previously Presented" label is consistent with 37 C.F.R. § 1.121. (A220-241.) After reviewing the request for reconsideration, on April 20 the USPTO vacated its April 7 finding that the Petition was moot. (A242-246.) But the USPTO did so in a "Corrected Decision on Petition," whereby it reaffirmed its denial of the Petition. (A242-246.) In this corrected decision the Petition was denied because the USPTO found that Catalina had not complied with 37 C.F.R. § 1.121 when it labeled claims as "Previously Presented" instead of "Original." Id.
On April 22, 2010, Catalina filed a second request for reconsideration, persisting in the argument that its labeling of the claims was consistent with 37 C.F.R. § 1.121. (A247-A255.) On May 31, 2011, the USPTO Commissioner issued a final decision (the Petition Decision). (A266-A271.) In the Petition Decision, the USPTO denied the second request for reconsideration finding that the Amendment incorrectlyidentified claims that should have been labeled as "Original" as "Previously Presented." (A269.)
While the argument about appropriate labels was being had, Catalina was also in the process of challenging the rejection of the patent application. On March 9, 2009, the USPTO issued a non-final office action again rejecting the patent (A120-A132), which it confirmed on October 2, 2009 (A198-A203). Catalina appealed these rejections to the Board of Patent Appeals and Interferences. (See A205-214, A247-AA255, A258-A260.) Those appeals are pending. [See Dkt. 16-1.]
On June 17, 2011, Plaintiff filed its Complaint pursuant to 5 U.S.C. §§701-706 and Section 10(a) of the Administrative Procedure Act, 5 U.S.C. § 554 et. seq. (Compl. [Dkt. 1] ¶ 1.) Plaintiff requests this Court to order the Director of the USPTO to find Catalina's July 2008 Amendment compliant with 37 C.F.R. § 1.121 and specify that Catalina will not lose any of the patent term as a result of 27 C.F.R. § 1.704(c)(7). (Compl. ¶ 31.) On August 16, 2011, Defendant filed a Motion to Dismiss or, in the Alternative, Motion for Summary Judgment. [Dkts. 6, 7.] Plaintiff filed a reply on September 22, 2011, along with a cross Motion for Summary Judgment. [Dkt. 13.] Defendants filed an opposition toPlaintiff's cross motion and a reply on October 4, 2011. [Dkt. 16.]
These motions are now before the Court.
Pursuant to Rule 12(b)(1), a claim may be dismissed for lack of subject matter jurisdiction. Fed. R. Civ. P. 12(b)(1). Defendants may attack subject matter jurisdiction in one of two ways. First, defendants may contend that the complaint fails to allege facts upon which subject matter jurisdiction may be based. See Adams v. Bain, 697 F.2d 1213, 1219 (4th Cir. 1982); King v. Riverside Reg'l Med. Ctr., 211 F. Supp. 2d 779, 780 (E.D. Va. 2002). In such instances, all facts alleged in the complaint are presumed to be true. Adams, 697 F.2d at 1219; Virginia v. United States, 926 F. Supp. 537, 540 (E.D. Va. 1995).
Alternatively, defendants may argue that the jurisdictional facts alleged in the complaint are untrue. Adams, 697 F.2d at 1219; King, 211 F. Supp. 2d at 780. In that situation, "the Court may 'look beyond the jurisdictional allegations of the complaint and view whatever evidence has been submitted on the issue to determine whether in fact subject matter jurisdiction exists.'" Virginia v. United States, 926 F. Supp. at 540 (citing Capitol Leasing Co. v. FDIC, 999 F.2d 188, 191 (7th Cir. 1993)); see also Adams, 697 F.2d at 1219; OceanBreeze Festival Park, Inc. v. Reich, 853 F. Supp. 906, 911 (E.D. Va. 1994); Velasco v. Gov't of Indonesia, 370 F.3d 393, 398 (4th Cir. 2004) (). In either circumstance, the burden of proving subject matter jurisdiction falls on the plaintiff. McNutt v. General Motors Acceptance Corp., 298 U.S. 178, 189 (1936); Adams, 697 F.2d at 1219; Johnson v. Portfolio Recovery Assocs., 682 F. Supp. 2d 560, 566 (E.D. Va. 2009) ().
At the threshold, Defendant asserts that Plaintiff's claim must be dismissed under the ripeness and standing doctrines. (Defendant's Memorandum (D. Mem.) [Dkt. 8] at 13-14.) More specifically, Defendant argues that Catalina's injury is speculative because, although Catalina could suffer a shorter patent term as a result of the USPTO's Petition Decision, Catalina does not yet have the patent. (D. Mem. at 12.)
"[I]t is well-settled that federal courts may only adjudicate cases or controversies under Article III of theConstitution." Mohammed v. Holder, 695 F. Supp. 2d 284, 289 (E.D. Va. 2010) (citing Marshall v. Meadows, 105 F.3d 904, 906 (4th Cir. 1997)). "To that end, '[t]he Supreme Court has developed a number of constitutional justiciability doctrines . . . including . . . the doctrines of standing, ripeness, and mootness.'" Id. (quoting United States v. McClure, 241 F. App'x 105, 107 (4th Cir. 2007)).
The ripeness doctrine exists "to prevent the courts, through avoidance of premature adjudication, from entangling themselves in abstract disagreements . . . ." Ostergren v. Cuccinelli, 615 F.3d 263, 288 (4th Cir. 2010) (quoting Abbott Labs. v. Gardner, 387 U.S. 136, 148 (1967)). Courts assess ripeness by "balanc[ing] the fitness of the issues for judicial decision with the hardship to the parties of withholding court consideration." Id. (quoting Miller v. Brown, 462 F.3d 312, 319 (4th Cir. 2006) (internal quotations omitted)).
The "irreducible constitutional minimum of standing requires (1) an injury in fact--a harm suffered by the plaintiff that is concrete and actual or imminent, not conjectural or hypothetical; (2) causation--a fairly traceable connection...
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