Goldstein v. Moatz

• Decision Date: 20 April 2006
• Docket Number: No. 05-1399.,No. 05-1144.,05-1144.,05-1399.
• Parties: Richard W. GOLDSTEIN, Plaintiff-Appellant, v. Harry I. MOATZ, Director, Office of Enrollment and Discipline; Nicholas Godici, Defendants-Appellees, and Lawrence Anderson; James E. Rogan, Under Secretary of Commerce for Intellectual Property and Director of USPTO; James A. Toupin; David M. Purol, USPTO, Patent Examiner; United States of America; John Does, 1-5, Defendants. Richard W. Goldstein, Plaintiff-Appellant, v. Harry I. Moatz, Director, Office of Enrollment and Discipline; Nicholas Godici, Defendants-Appellees, and Lawrence Anderson; James E. Rogan, Under Secretary of Commerce for Intellectual Property and Director of USPTO; James A. Toupin; David M. Purol, USPTO, Patent Examiner; United States of America; John Does, 1-5, Defendants. American Civil Liberties Union of Virginia, Incorporated, Amicus Supporting Appellant.
• Court: U.S. Court of Appeals — Fourth Circuit

445 F.3d 747

Richard W. GOLDSTEIN, Plaintiff-Appellant, v. Harry I. MOATZ, Director, Office of Enrollment and Discipline; Nicholas Godici, Defendants-Appellees, and Lawrence Anderson; James E. Rogan, Under Secretary of Commerce for Intellectual Property and Director of USPTO; James A. Toupin; David M. Purol, USPTO, Patent Examiner; United States of America; John Does, 1-5, Defendants.

Richard W. Goldstein, Plaintiff-Appellant, v. Harry I. Moatz, Director, Office of Enrollment and Discipline; Nicholas Godici, Defendants-Appellees, and Lawrence Anderson; James E. Rogan, Under Secretary of Commerce for Intellectual Property and Director of USPTO; James A. Toupin; David M. Purol, USPTO, Patent Examiner; United States of America; John Does, 1-5, Defendants.

American Civil Liberties Union of Virginia, Incorporated, Amicus Supporting Appellant.

No. 05-1144.

No. 05-1399.

United States Court of Appeals, Fourth Circuit.

Argued February 1, 2006.

Decided April 20, 2006.

ARGUED:

Victor Michael Glasberg, Alexandria, Virginia, for Appellant. Steven E. Gordon, Assistant United States Attorney, Office of the United States Attorney, Alexandria, Virginia, for Appellees.

ON BRIEF:

Paul Gowder, Victor M. Glasberg & Associates, Alexandria, Virginia, for Appellant. Paul J. McNulty, United States Attorney, Alexandria, Virginia, for Appellees. Rebecca K. Glenberg, American Civil Liberties Union of Virginia Foundation, Inc., Richmond, Virginia, for Amicus Supporting Appellant.

Before WILLIAMS, MOTZ, and KING, Circuit Judges.

Affirmed in part and dismissed in part by published opinion. Judge KING wrote the opinion, in which Judge WILLIAMS and Judge MOTZ joined.

KING, Circuit Judge.

Appellant Richard W. Goldstein, a patent lawyer, appeals the district court's dismissal, on mootness grounds, of his civil action against certain officials in the Patent and Trademark Office (the "PTO"), and the PTO's Office of Enrollment and Discipline (the "OED"). He also appeals the court's denial of his application, under the Equal Access to Justice Act (the "EAJA"), for an award of attorneys' fees and costs. As explained below, we dismiss Goldstein's appeal of the mootness order as moot and affirm the district court's denial of his attorneys' fees and costs application.

I.

A.

The relevant factual background of this dispute is more fully detailed in our earlier decision in this matter. See Goldstein v Moatz, 364 F.3d 205, 207-10 (4th Cir.2004). This proceeding involves the OED's investigation of Goldstein, which was apparently undertaken after complaints were received from some of his clients. Pursuant to the PTO's regulations, its OED Director is responsible for investigating allegations of misconduct by practitioners in the patent bar. See 37 C.F.R. § 10.131(a). When the Director conducts a disciplinary investigation, a practitioner is required to report and reveal to the Director any unprivileged knowledge of disciplinary rule violations. Id. §§ 10.24(a), 10.131(b). If, after investigation, the Director believes that a disciplinary violation has occurred, he is obliged to convene the PTO's Committee on Discipline (the "Committee"). Id. § 10.132(a). The Committee is composed of at least three PTO staff attorneys appointed by the Commissioner for Patents, id. § 10.4(a), and it is vested with the power and authority to decide the issue of probable cause on whether a disciplinary rule has been violated, id. § 10.4(b). If the Committee makes a probable cause finding, the Director initiates a formal disciplinary proceeding by the filing of a complaint against the practitioner and by referring the matter to an administrative law judge. Id. § 10.132(b), (c). Such a disciplinary proceeding may result in the issuance of a reprimand, or the suspension or expulsion of the practitioner from the patent bar (or, presumably, the complaint's dismissal). See id. § 10.132(b).

Between December 5, 2000, and November 20, 2001, the OED served Goldstein with a total of six Requirements for Information ("RFIs"), concerning four of his clients.¹ The OED advised Goldstein in each instance that his failure to comply with the RFIs would constitute a violation of the PTO's disciplinary rules requiring compliance with OED investigations. In all, the six RFIs required Goldstein to respond to more than 300 inquiries.

On December 20, 2001 — a year after the first RFI was propounded on Goldstein and a month after being served with the last RFI — Goldstein petitioned the PTO for relief, seeking to have the Commissioner supervise the OED with respect to the RFIs. His petition was denied by the PTO's General Counsel on April 12, 2002. The General Counsel's letter to Goldstein asserted that the OED's use of RFIs was neither excessive nor an abuse of discretion, and it notified Goldstein that the decision embodied in the letter was not a final agency action from which he could seek review. The General Counsel also instructed Goldstein to respond to the outstanding RFIs within thirty days, a directive with which Goldstein complied.

On November 26, 2002, Goldstein instituted this lawsuit in the Eastern District of Virginia. By his complaint, he alleged claims of constitutional violations and state torts, and sought money damages and a judgment declaring that the PTO and the OED had violated his due process rights in propounding the RFIs. On February 21, 2003, the district court dismissed his complaint, as relevant here, on grounds of absolute immunity. Without reaching the merits of Goldstein's constitutional claims, we vacated in part and remanded for further proceedings, concluding, as relevant here, that the OED officers who had been sued were not entitled to absolute immunity. See Goldstein, 364 F.3d at 211-19. At the time of the appeal, the OED had neither initiated disciplinary proceedings against Goldstein nor informed him of whether its investigation was concluded.

B.

On July 2, 2004, after remand, Goldstein filed an Amended Complaint, abandoning his claims for damages and requesting, for the first time, injunctive relief. He also asserted a claim for $1000 in statutory damages under the Privacy Act. See 5 U.S.C. § 552a.² In December 2004, after conducting discovery proceedings, the parties unsuccessfully attempted to settle their dispute. The PTO then sought dismissal of the Amended Complaint by the district court on multiple grounds, including mootness, and, in support, filed several declarations by its employees. By its supporting memorandum, the PTO contended that, in light of the declarations it submitted to the court, the entire dispute was moot. Goldstein countered with his own motion for summary judgment.

On January 7, 2005, following a hearing at which oral argument was presented, the district court entered an order denying Goldstein's motion for summary judgment and dismissing Goldstein's complaint as moot (the "Mootness Order"). In so ruling, the court observed that its decision was "[b]ased on the parties' representations." Mootness Order at 1. Goldstein then appealed the Mootness Order to this Court (Appeal No. 05-1144).

On February 14, 2005, Goldstein applied in the district court for an award of his attorneys' fees and costs under the EAJA, 28 U.S.C. § 2412. His application for such an award was denied by the court's order of March 24, 2005 (the "Fee Order"). In the Fee Order, the court concluded that Goldstein did not qualify for an award of attorneys' fees and costs under the EAJA because he was not a "prevailing party." Fee Order at 2-5. Alternatively, the court concluded that Goldstein was not entitled to such an award because the PTO's position on the RFIs was substantially justified and, in any event, his application for an attorneys' fees and costs award was "entirely unreasonable." Id. at 5-6. Goldstein has appealed the Fee Order (Appeal No. 05-1399). The two appeals were consolidated for handling in this Court, and we possess jurisdiction pursuant to 28 U.S.C. § 1291.

II.

A.

Oral argument was conducted in the two consolidated appeals before this Court on February 1, 2006. Thereafter, on March 2, 2006, the PTO filed a motion to dismiss Appeal No. 05-1144 (the Mootness Order appeal), asserting that, by its letter to Goldstein's counsel of February 27, 2006, the PTO had notified Goldstein of its decision not to "pursue formal disciplinary action against Mr. Goldstein." In response to the PTO's motion, Goldstein has now conceded that, in view of the PTO's letter of February 27, 2006, his claims for declaratory and injunctive relief are moot and that his appeal of the Mootness Order should be dismissed. Accordingly, we grant the PTO's March 2, 2006 motion and dismiss Appeal No. 05-1144 as moot.

B.

In his remaining appeal (No. 05-1399), Goldstein contends that the district court erred in entering the Fee Order, thereby denying his application under the EAJA for an award of attorneys' fees and costs. He maintains that the court should have recognized the existence of a "tactical mooting" exception to the general rule that a party applying for fees and costs must have first secured some court-ordered relief. As explained below, we reject Goldstein's contention and affirm the Fee Order.

We review de novo a district court's determination that an applicant for an award of fees and costs under the EAJA is not a prevailing party. See Smyth ex rel. Smyth v. Rivero, 282 F.3d 268, 274 (4th Cir.2002). Under the traditional "American Rule," the parties to litigation normally bear their own respective costs, unless an applicable statute expressly provides otherwise. See Buckhannon Board & Care Home v. W.V. Dep't of Health and Human Res., 532 U.S. 598, 602, 121 S.Ct. 1835, 149 L.Ed.2d 855 (2001); Smyth, 282 F.3d at 274. The EAJA creates such a statutory exception to the American Rule, authorizing an award of attorneys' fees and costs to "the prevailing party" in a civil action against the United States, or against its agencies or officials. See 28 U.S.C. §...