Franchi v. Manbeck, 92-1085

• Citation: 972 F.2d 1283
• Decision Date: 12 August 1992
• Docket Number: No. 92-1085,92-1085
• Parties: Richard M. FRANCHI, Plaintiff-Appellant, v. Harry F. MANBECK, Jr., Assistant Secretary of Commerce & Commissioner of Patents & Trademarks, Defendant-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1283

972 F.2d 1283

23 U.S.P.Q.2d 1847

Richard M. FRANCHI, Plaintiff-Appellant, v. Harry F. MANBECK, Jr., Assistant Secretary of Commerce &amp Commissioner of Patents & Trademarks, Defendant-Appellee.

No. 92-1085.

United States Court of Appeals, Federal Circuit.

Aug. 12, 1992.

Richard M. Franchi, pro se.

Fred E. McKelvey, Sol., Richard E. Schafer, Associate Sol. and James T. Carmichael, Asst. Sol., Office of the Sol., Arlington, Va., for defendant-appellee.

Before RICH, MAYER and MICHEL, Circuit Judges.

RICH, Circuit Judge.

Richard M. Franchi appeals pro se from the April 8, 1991 judgment of the United States District Court for the District of Connecticut, Civil No. N-90-517, granting the motion of the Commissioner of Patents & Trademarks (Commissioner) to dismiss Franchi's complaint for lack of subject matter jurisdiction. Franchi v. Manbeck, 19 USPQ2d 1316, 1991 WL 137276 (D.Conn.1991) (Franchi I ). We affirm.

BACKGROUND

Having failed to achieve a passing grade on the afternoon portion of the October 1989 examination for registration to practice before the United States Patent and Trademark Office (PTO), Franchi sought administrative review in the PTO. In brief, Franchi took the position that his answer to a particular question was correct, and that the PTO's model answer for that question, against which Franchi's answer was graded, was faulty for failing to account correctly for the controlling patent statutes, rules, regulations and procedures. Following denial of a petition to the Commissioner pursuant to 37 C.F.R. 10.2(c) for review of the decision of the Director of Enrollment and Discipline refusing to register him to practice before the PTO, Franchi sued the Commissioner in the United States District Court for the District of Connecticut (Connecticut court).

The relief sought in Franchi's "Second Amended Complaint" (which version is involved here) was framed in the nature of mandamus, "to compel an Officer or Employee of the United States or any agency thereof to perform a duty owed to the plaintiff." ¹ Franchi contended that in grading his examination answer, the Commissioner failed to perform a duty owed to persons taking the examination, i.e., "to analyze the examination questions according to United States Laws and Federal Regulations relating to Patent Laws and to apply the Laws of the United States and Federal Regulations relating to Patent Law to the examination answers." Franchi sought to have the Connecticut court order the Commissioner of Patents and Trademarks to strike, in whole or in part, its answer and analysis to the said examination question and to grade the plaintiff's said examination answer ab initio in accordance with the Court's findings and the Laws of the United States and The Federal Regulations

....

Franchi additionally sought to have the court "order the Commissioner of Patents and Trademarks to allow the Plaintiff to show he is qualified to render services, and assistance to applicants before the USPTO" in accordance with 35 U.S.C. § 31. ² Lastly, Franchi sought money damages in connection with the Commissioner's "ommision [sic] to act in his official capacity." Franchi alleged that because of the Commissioner's "incorrect grading of the examination answer," he (Franchi) "had not been able to solicit work concerning practice before the USPTO which has caused a loss of income to the plaintiff."

Upon motion of the Commissioner to dismiss for lack of subject matter jurisdiction, Fed.R.Civ.P. 12(b)(1), and for failure to state a claim upon which relief can be granted, Fed.R.Civ.P. 12(b)(6), the Connecticut court held that it lacked subject matter jurisdiction over Franchi's claims and accordingly dismissed the complaint. Franchi I, 19 USPQ2d at 1318. Though the suit was styled primarily as an action for mandamus, the district court found "that what plaintiff seeks from this court is a review of the decision made by the USPTO, based on a standard adopted for that purpose, not to admit him to practice." Id. The court concluded that

[a]s 35 U.S.C. § 32 ³ provides that the United States District Court for the District of Columbia alone has jurisdiction to undertake such review, this court necessarily lacks jurisdiction to do so. Further, because judicial review is available, albeit in another court, this court lacks jurisdiction to provide plaintiff with the relief he seeks, although in the form of mandamus.

Id. (emphasis added).

With respect to the damages claim, the district court found that Franchi appeared to rely for jurisdiction on the Federal Tort Claims Act (FTCA), 28 U.S.C. §§ 1346(b), 2671 et seq. The district court held that despite its vague reference to a "duty owed" to Franchi, the complaint failed to state a cause of action sounding in tort over which the court would have FTCA jurisdiction. Id. In addition, Franchi never submitted to the PTO an administrative claim for a sum certain, which claim is a jurisdictional prerequisite under the FTCA, ⁴ the district court noted. Id.

Franchi appealed the Connecticut court's dismissal of his complaint to the United States Court of Appeals for the Second Circuit. Concluding that it lacked appellate jurisdiction over a claim of the type asserted by Franchi, the Second Circuit transferred the appeal to this court pursuant to 28 U.S.C. § 1631 (transfer to cure want of jurisdiction, if in the interest of justice). Franchi v. Manbeck, 947 F.2d 631, 20 USPQ2d 1635 (2d Cir.1991) (Franchi II ). The Second Circuit agreed with the Connecticut court that "regardless of how it is formally characterized, Franchi's claim for review of the Commissioner's refusal to admit Franchi to practice before the USPTO constitutes a request for judicial review under 35 U.S.C. § 32." Id. at 633, 20 USPQ2d at 1637. With respect to its own jurisdiction, the Second Circuit held that Franchi's action implicates the "arising under" jurisdiction of 28 U.S.C. § 1338 ("[t]he district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents ..."), which in turn triggers Federal Circuit appellate jurisdiction under 28 U.S.C. § 1295(a)(1). Id. at 633-34, 20 USPQ2d at 1637-38. The Second Circuit elaborated:

An action is said to arise under the federal patent laws where the complaint includes allegations either that federal patent law creates the cause of action or that federal patent law is a necessary element of the claim or that some right or interest will be defeated or sustained by a particular construction of federal patent law. See Christianson v. Colt Indus. Operating Corp., 486 U.S. 800, 800-09, 108 S.Ct. 2166, 2166-2174, 100 L.Ed.2d 811 (1988); Animal Legal Defense Fund v. Quigg, 932 F.2d 920 (Fed.Cir.1991). We are satisfied that resolution of Franchi's substantive claim here implicates the patent laws within the meaning of these holdings. It is obvious that the correctness of Franchi's answer to the exam question in dispute here depends upon an interpretation of federal patent law. In addition, by its very nature the claim calls into question the Commissioner's actions pursuant to 35 U.S.C. §§ 31 & 32, and thus expresses a sufficient interest in, or has as a necessary element, the federal patent laws.... It is also pivotal that Franchi's asserted jurisdictional right to seek review in the Connecticut District Court (as opposed to the D.C. District Court) depends on interpreting the jurisdictional provision of 35 U.S.C. § 32 (jurisdiction to review Commissioner's decisions conferred on D.C. District Court) in light of 28 U.S.C. § 1338 (jurisdiction in patent matters conferred on all district courts). We are therefore leaving for determination by the Federal Circuit a question different from that dealt with in Smith v. Orr, 855 F.2d 1544 (Fed.Cir.1988), which was whether regional circuit courts have concurrent appellate jurisdiction with the Federal Circuit to determine whether a district court's jurisdiction was based on subject matter falling under 28 U.S.C. § 1295.

In sum, it appears to us that both the substantive and jurisdictional questions raised by Franchi's claim and appeal arise under the federal patent laws. We note in this connection that we are not deciding whether Franchi's claim should have been brought originally in the D.C. District Court, or whether the Connecticut District Court properly could have transferred Franchi's claim to the D.C. District Court under 28 U.S.C. § 1631. Rather, we decide only that no matter how the various issues here or permutations thereof are formulated, they all arise under the patent laws and thus fall under 28 U.S.C. § 1338. Accordingly, they are properly resolved only by the Federal Circuit pursuant to 28 U.S.C. § 1295....

Id. at 633-34, 20 USPQ2d at 1637-38 (citations omitted).

ANALYSIS

A. Our Jurisdiction

As the transferee of Franchi's appeal, we agree with the Second Circuit's determination that appellate jurisdiction properly lies here. See Christianson, 486 U.S. at 819, 108 S.Ct. at 2179, 7 USPQ2d at 1117 ("[u]nder law-of-the-case principles, if the transferee court can find the transfer decision plausible, its jurisdictional inquiry is at an end.") See also Wyden v. Commissioner of Patents and Trademarks, 807 F.2d 934, 935-37, 231 USPQ 918, 919-20 (Fed.Cir.1986) (in banc) (Federal Circuit had jurisdiction over appeal from decision of United States District Court for the District of Columbia affirming PTO's refusal of registration to practice due to appellant's failure of patent agents' examination, because " § 32 is an Act of Congress which relates to patents within the meaning of § 1338(a) and [ ] Wyden's action is a civil action arising under § 32....") In so holding, the Wyden court noted its "full agreement," id. at 937, 231 USPQ at 920, with the following statement of the D.C. Circuit in Jaskiewicz v. Mossinghoff, 802 F.2d 532, 536-37, 231 USPQ 477, 481 (D.C.Cir.1986):

An action for review of a decision of the...