Goldstein v. Moatz

Decision Date14 April 2004
Docket NumberNo. 03-1257.,03-1257.
Citation364 F.3d 205
PartiesRichard W. GOLDSTEIN, Plaintiff-Appellant, v. Harry I. MOATZ, Director, Office of Enrollment and Discipline; Lawrence Anderson; James E. Rogan, Under Secretary of Commerce for Intellectual Property and Director of the USPTO; James A. Toupin; David M. Purol, USPTO, Patent Examiner; John Does 1-5; United States of America, Defendants-Appellees.
CourtU.S. Court of Appeals — Fourth Circuit

Adam Augustine Carter, Washington, D.C., for Appellant. Richard Parker, Assistant United States Attorney, Alexandria, Virginia, for Appellees.


Paul J. McNulty, United States Attorney, Alexandria, Virginia, for Appellees.

Before WILLIAMS, MOTZ, and KING, Circuit Judges.

Affirmed in part, vacated in part, and remanded by published opinion. Judge KING wrote the opinion, in which Judge WILLIAMS joined. Judge DIANA GRIBBON MOTZ wrote a dissenting opinion.


KING, Circuit Judge:

Richard W. Goldstein, a patent lawyer, appeals an award of absolute immunity accorded certain officials of the Patent and Trademark Office for their conduct in an attorney disciplinary investigation. Goldstein also appeals the denial of his challenge to a certification on the scope of defendant David Purol's employment and the denial of discovery on the certification. Because defendants Harry Moatz, Lawrence Anderson, and James Toupin are not absolutely immune from Goldstein's Bivens claim for damages,1 and because the district court did not separately consider whether the defendants are immune from suit for declaratory relief, we vacate and remand on those aspects of this appeal. We affirm the court's dismissal of defendant James Rogan and its ruling on the scope of employment certification.


Plaintiff Richard W. Goldstein is an attorney admitted to practice before the United States Patent and Trademark Office (the "PTO"). He alleges that certain PTO officials — specifically James E. Rogan, the Under Secretary of Commerce for Intellectual Property and Director of the PTO; Harry Moatz, the Director of the PTO's Office of Enrollment and Discipline ("OED"); OED staff attorney Lawrence Anderson, and PTO General Counsel James Toupin — contravened his constitutional rights in the course of a disciplinary investigation conducted by the OED.2

Pursuant to PTO regulations, the OED Director is responsible for investigating allegations of misconduct by members of the patent bar. 37 C.F.R. §§ 10.2(b)(2), 10.131(a). When the Director conducts a disciplinary investigation, practitioners are required to report and reveal to him any unprivileged knowledge they possess of PTO disciplinary rule violations. Id. §§ 10.24(a), 10.131(b). If, after investigation, the Director believes that a practitioner has violated a disciplinary rule, he is obliged to convene the PTO's Committee on Discipline (the "Committee"). Id. § 10.132(a). The Committee is a body of at least three PTO staff attorneys appointed by the Commissioner for Patents. Id. § 10.4(a). The Committee decides whether there is probable cause to believe that a disciplinary rule has been violated. Id. § 10.4(b). If the Committee makes a finding of probable cause, the Director initiates formal disciplinary proceedings by filing a complaint against the attorney and referring the matter to an administrative law judge (an "ALJ"). Id. § 10.132(b), (c). Such disciplinary proceedings may result in the issuance of a reprimand, or they can lead to the suspension or expulsion of a lawyer from the patent bar. Id. § 10.132(b).

Between December 6, 2000, and June 28, 2002, the OED received complaints regarding Goldstein from at least four of his clients. The complaints, apparently forwarded to the PTO by South Carolina's Department of Consumer Affairs, pertained to Goldstein's representation of patent-seekers in his work with an invention promotion company. OED Director Moatz assigned staff attorney Anderson to investigate the complaints against Goldstein.

In the course of his investigation, Anderson sought information from Goldstein through the use of the PTO's Requirements for Information ("RFIs"). The first RFI served on Goldstein, dated December 5, 2000, required information pertaining to Goldstein's representation of "client C00-95" and contained sixty-four discovery requests, including multiple subparts. The RFI required Goldstein to submit written responses to the OED, together with supporting documentation, within thirty days. Anderson's RFI transmittal letter recited Goldstein's duty to report and reveal knowledge or evidence pursuant to 37 C.F.R. § 10.131(b), and it warned Goldstein that "[f]ailure to respond and answer the questions can be construed as failure to cooperate, and can be submitted to the Committee on Discipline for appropriate action." Anderson also referred Goldstein to 37 C.F.R. § 10.23(c)(16), which provides that willfully refusing to reveal or report knowledge of a disciplinary rule violation itself constitutes a disciplinary rule violation. Goldstein submitted his responses to the first RFI on December 19, 2000.

On March 15, 2001, Anderson served Goldstein with a second RFI, this time seeking information concerning Goldstein's representation of "client C00-117." This RFI contained approximately forty-eight inquiries, to which responses and supporting materials were due within thirty days.

On March 28, 2001, Anderson forwarded Goldstein another RFI concerning "client C00-95," containing forty-three requests with similar requirements. Anderson's transmittal letter indicated that the questions were based on Goldstein's previous responses of December 19, 2000, and also on newly discovered information. When Goldstein requested that Anderson identify the newly discovered information, however, Anderson indicated that he only meant Goldstein's answers to the first RFI. Out of concern for his client's confidences, Goldstein also sought from Anderson the identity of the person who had complained to the South Carolina authorities. Anderson replied that Goldstein was not then permitted to engage in discovery. Goldstein responded to this RFI on May 15, 2001.

On June 5, 2001, Goldstein wrote to Anderson, advising him that, as there was no indication that "client C00-117" intended to waive the attorney-client privilege, he could not ethically provide responses to Anderson's inquiries pertaining to that client. Anderson responded by reiterating the requests for information made in the second RFI, to which Goldstein reasserted the attorney-client privilege. On July 11, 2001, Goldstein responded to the requests to the extent that he could do so without violating the privilege. The PTO subsequently obtained a waiver of attorney-client privilege from "client C00-117" and instructed Goldstein to respond to the second RFI's remaining requests. Goldstein did so on August 16, 2001.

On November 20, 2001, Anderson served Goldstein yet another RFI concerning "client C00-95." The next day, Anderson mailed Goldstein an RFI regarding a third client, "client C2002-12." Five days later, Anderson forwarded Goldstein an RFI regarding a fourth client, "client C2002-13." Together, these final three RFIs required responses to approximately 152 requests, to be submitted to the OED, along with supporting documentation, within thirty-six days.

On December 20, 2001, Goldstein filed with the PTO a "Petition to Invoke the Supervisory Authority of the Commissioner," challenging the PTO's use of RFIs in its attorney disciplinary investigations and requesting that "the Commissioner" (presumably the Commissioner for Patents) supervise the OED Director with respect to their issuance. On April 12, 2002, PTO General Counsel Toupin responded to Goldstein's Petition, denying relief and asserting that the RFIs were neither excessive nor an abuse of discretion. Toupin's letter also advised Goldstein that the April 12, 2002, letter was not a final decision from which Goldstein could appeal or otherwise seek review, and it instructed Goldstein to respond to the outstanding requests within thirty days. On June 28, 2002, Goldstein filed his responses to the three outstanding RFIs, making general objections to the RFI investigative process and asserting other objections to specific questions. At the time this appeal was filed, the OED had not initiated any disciplinary charges against Goldstein, nor had it informed him that its investigation had been closed.

In the midst of this process, in August 2001, "client C2002-13" contacted patent examiner Purol, inquiring why Purol had rejected his patent application.3 Purol informed the client that he would reject the client's application no matter how many times it was filed, apparently because similar products had already been patented. Purol then advised the client that "something didn't sound right" with the company that had retained Goldstein to file the client's patent application, in that six prior patents should have been discovered in a patent search.


On November 26, 2002, Goldstein filed his Complaint in this matter, initiating suit against Rogan, Moatz, Anderson, Toupin and Purol in their individual capacities. In Counts I and II, Goldstein brought Bivens actions for damages and declaratory relief, respectively, for the violation of his constitutional rights to free speech and due process through issuance of the RFIs.4 In Count III, Goldstein sought damages under state tort law for Purol's alleged interference with his business relationship with "client C2002-13."5

On January 31, 2003, the defendants filed a motion, pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, seeking to dismiss the Complaint for failure to state a claim upon which relief can be granted. They contended that (1) Rogan was not personally involved in any violation of Goldstein's constitutional rights; (2) Moatz, Toupin, and Anderson are absolutely immune from...

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