Hsuan-Yeh Chang v. Kappos, Civil Action No. 11-1129 (ABJ)

CourtUnited States District Courts. United States District Court (Columbia)
PartiesHSUAN-YEH CHANG, Plaintiff, v. DAVID J. KAPPOS, Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office Defendant.
Docket NumberCivil Action No. 11-1129 (ABJ)
Decision Date13 September 2012

DAVID J. KAPPOS, Undersecretary of Commerce for Intellectual Property
and Director of the U.S. Patent and Trademark Office Defendant.

Civil Action No. 11-1129 (ABJ)


Dated: September 13, 2012


Plaintiff Hsuan-Yeh Chang, proceeding pro se, brings this action against defendant David J. Kappos in his official capacity as Undersecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office ("PTO," "USPTO"). The complaint alleges that the PTO acted arbitrarily and capriciously and in excess of its statutory authority, in violation of the Administrative Procedures Act, 5 U.S.C. §§ 702-706 ("APA"), by denying his application for full registration as a patent agent under 37 C.F.R. § 11.6(b) on the basis of his immigration status. Plaintiff seeks judicial review of the agency decision. The parties have cross-moved for summary judgment. Because the Court finds that the PTO's decision was not an abuse of discretion and was within the bounds of its statutory authority, the Court will deny plaintiff's motion and grant defendant's cross-motion.

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The following facts are undisputed, except where noted. See Pl.'s Statement of Uncontested Facts [Dkt. # 13] ¶¶ 1-22; see also Def.'s Statement of Uncontested Facts [Dkt. # 10] ¶¶ 1-22. Plaintiff is a Taiwanese citizen currently residing in Massachusetts. Administrative Record ("AR") [Dkt. # 5] at 1. In July 2008, plaintiff worked as a technical specialist at the law firm of Finnegan, Henderson, Farabow, Garrett & Dunner LLP ("Finnegan") in its Taipei, Taiwan office. Id. at 10. In 2008, Finnegan transferred plaintiff to its Cambridge, Massachusetts office in order to "provide valuable technical expertise and support for [Finnegan's] patent application practice." Id. Finnegan petitioned the United States Citizen and Immigration Services ("CIS") to grant plaintiff nonimmigrant worker status, see id. at 14-16. On July 22, 2008, CIS approved Finnegan's petition and granted plaintiff class L-1B nonimmigrant worker status, id. at 9. CIS's notice of approval indicated that plaintiff's visa would be valid for two years and that he was authorized to work for Finnegan. Id.

On April 2, 2009, plaintiff applied to take the requisite examination for practicing before the PTO. Id. at 1. Plaintiff's application was approved on April 20, and the PTO notified him that upon passing the examination he would not be registered as a patent agent or attorney, but would receive limited recognition under 37 C.F.R. § 11.9(b) to prosecute patents on behalf of Finnegan clients. Id. at 97-98. Plaintiff was further notified that he was not "authorized to be self-employed, even if [plaintiff] t[ook] and pass[ed] the registration examination." Id. at 97.

Plaintiff completed the examination on July 14, 2009. Id. at 99. Two days later, the PTO's Office of Enrollment and Discipline ("OED") notified him by letter that he had passed the examination. Id. Plaintiff was again notified that he would not be registered as a patent attorney or patent agent but would receive "limited recognition . . . to practice before [the PTO] in patent

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cases." Id. The PTO granted plaintiff limited recognition on September 10, 2009, to extend until the expiration of his visa on August 4, 2010. Id. at 100. Plaintiff was informed that his registration would automatically expire if his employer or visa status changed, or if he left the United States. Id. at 100-01. Plaintiff was further informed that he could apply for full registration if he were to become a permanent resident or citizen of the United States. Id. at 101.

By letter dated April 12, 2010, plaintiff informed OED that he was no longer employed by Finnegan but had obtained an Employment Authorization Document ("EAD"), which authorized him to work in the United States. Id. at 103. Plaintiff claimed that his EAD contained no restrictions on his employment. Id. On that basis, he argued, he should be able to obtain full registration as a patent agent. Id. Plaintiff enclosed a new application to practice before the PTO, a copy of his EAD, and a copy of the PTO's letter of September 10, 2009, that notified him that he had been granted limited authorization to practice. Id. at 103-12. The copy of the EAD showed an expiration date of April 6, 2012. Id. at 108.

OED rejected plaintiff's application for full registration on April 22, 2010. Id. at 114-16. OED informed plaintiff that "[t]wo-year increments of lawful employment are inconsistent with registration by the USPTO to practice before the USPTO in patent cases" because "[n]either USPTO nor clients may rely upon an individual so limited to continue to be available to represent the client beyond the end of each increment[.]" Id. at 115. OED also informed plaintiff that his prior limited recognition had automatically terminated due to the termination of his employment with Finnegan. Id. at 114. Plaintiff was, however, eligible to apply again for limited recognition if he were to gain employment with a "registered practitioner." Id.

Plaintiff filed a petition on June 4, 2010 challenging OED's determination under 37 C.F.R. § 11.6(b). Id. at 117. OED dismissed the petition without prejudice because plaintiff

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failed to pay the required filing fee. Id. at 124. Plaintiff re-filed his petition with the correct fees on June 17, 2010. Id. at 126. Plaintiff's petition also informed OED of his pending application for permanent residence. Id. at 127. Approximately two months later, he applied for limited authorization to practice based on new employment that he had obtained. Id. at 134.

OED denied the petition for full registration on the merits on August 31, 2010. Id. at 139-44. OED's opinion indicated that plaintiff had "failed to demonstrate that his registration would not be 'inconsistent with the terms upon which [plaintiff] continues to lawfully reside in the United States' as provided under 37 C.F.R. § 11.6(a)(1)." Id. at 139. OED did, however, grant plaintiff's request for limited authorization, id. at 139, 145-46, and informed plaintiff that he could "apply for registration if [his] immigration status changes to United States permanent residence or citizenship[,]" id. at 146.

Plaintiff filed a petition for review of OED's decision by the Undersecretary of Commerce for Intellectual Property and Director of the PTO ("the director") on September 29, 2010. Id. at 149. The director affirmed OED's decision on November 3, 2010. Id. at 174. Plaintiff moved for reconsideration of the director's decision on December 27, 2010, id. at 175, and the director affirmed his original decision on May 16, 2011, id. at 184.

On June 15, 2011, plaintiff filed his complaint in this Court seeking judicial review of the PTO's decision to deny him a change in status from limited authorization to full registration. Compl. [Dkt. # 1] at 1. Plaintiff has moved for summary judgment. [Dkt. # 6]. Defendant has cross-moved for summary judgment. [Dkt. # 10].

On July 13, 2012, plaintiff submitted a status report indicating that his application for permanent residence had been denied in December 2011 and that he currently resided in the United States on a non-immigrant H-1B worker visa. Pl.'s Status Report [Dkt. # 19] at 1. His

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EAD, which had authorized self-employment, expired on April 6, 2012. AR at 108; Pl.'s Status Report at 1-2. The PTO points out that plaintiff's H-1B visa "is restricted in both time and the nature of his work." Def.'s Status Report [Dkt. # 20] at 1. Under the H-1B visa, plaintiff is restricted to prosecuting patent applications for his current employer, Nantero, Inc. Id. at 1-2. The visa expires on September 30, 2013. Id.1

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Summary judgment is appropriate "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The party seeking summary judgment bears the "initial responsibility of informing the district court of the basis for its motion, and identifying those portions of the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, which it believes demonstrate the absence of a genuine issue of material fact." Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986) (internal quotation marks omitted). To defeat summary judgment, the non-moving party must "designate specific facts showing there is a genuine issue for trial." Id. at 324 (internal quotation marks omitted). The existence of a factual dispute is insufficient to preclude summary judgment. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986). A dispute is "genuine" only if a reasonable fact-finder could find for the non-moving party; a fact is only "material" if it is capable of affecting the outcome of the litigation. Id. at 248; Laningham v. U.S. Navy, 813 F.2d 1236, 1241 (D.C. Cir. 1987).

"The rule governing cross-motions for summary judgment . . . is that neither party waives the right to a full trial on the merits by filing its own motion; each side concedes that no material facts are at issue only for the purposes of its own motion." Sherwood v. Washington Post, 871 F.2d 1144, 1148 n.4 (D.C. Cir. 1989), quoting ...

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