Jaskiewicz v. Mossinghoff, 86-5073

• Decision Date: 07 October 1986
• Docket Number: No. 86-5073,86-5073
• Citation: 802 F.2d 532,231 USPQ 477,256 U.S.App.D.C. 1
• Parties: , 231 U.S.P.Q. 477 Edmund M. JASKIEWICZ, Appellant, v. Gerald J. MOSSINGHOFF, Commissioner, Patents & Trademarks.
• Court: U.S. Court of Appeals — District of Columbia Circuit

Page 532

802 F.2d 532

256 U.S.App.D.C. 1, 231 U.S.P.Q. 477

Edmund M. JASKIEWICZ, Appellant, v. Gerald J. MOSSINGHOFF, Commissioner, Patents & Trademarks.

No. 86-5073.

United States Court of Appeals, District of Columbia Circuit.

Oct. 7, 1986.

Appeal from the United States District Court for the District of Columbia (Civil Action No. 84-03292).

Joseph E. diGenova, U.S. Atty., Royce C. Lamberth, R. Craig Lawrence, Robert E.L. Eaton, Jr., Asst. U.S. Attys. and Harris A. Pitlick, Assoc. Sol., Commission of Patents and Trademarks, Washington, D.C., were on appellee's motion to transfer.

Joseph G. Dail, Jr., McLean, Va., was on appellant's opposition to the motion.

Before MIKVA, EDWARDS and WILLIAMS, Circuit Judges.

Opinion for the Court filed by Circuit Judge EDWARDS.

HARRY T. EDWARDS, Circuit Judge:

The appellant, Edmund M. Jaskiewicz, seeks to raise an appeal from a judgment of the District Court denying his petition for review of an order suspending him from practice before the Patent and Trademark Office (PTO). By Decision and Order dated October 1, 1984, Jaskiewicz was suspended, pursuant to 35 U.S.C. Sec. 32 (1982), ¹ for misconduct in the representation of parties before the PTO. Jaskiewicz then initiated a law suit in District Court to overturn the disciplinary action taken against him by the PTO.

The District Court rejected Jaskiewicz's claims by summary judgment entered on December 5, 1985, and Jaskiewicz noted an appeal to this court on January 30, 1986. In response, the appellee, Gerald J. Mossinghoff, the Commissioner of the PTO, filed a motion with this court claiming that proper jurisdiction for this appeal lies with the United States Court of Appeals for the Federal Circuit and praying that the appeal be transferred to that court pursuant to 28 U.S.C. Sec. 1631 (1982). For the reasons stated below, we grant the motion.

I. BACKGROUND

Jaskiewicz was admitted to practice before the PTO (formerly the "Patent Office") in 1955. By notice dated May 19, 1983, the Solicitor of the PTO instituted disciplinary proceedings under 35 U.S.C. Sec. 32 for suspension or disbarment of Jaskiewicz, charging him with three counts of misconduct in the representation of parties before the PTO. The notice alleged violations of 35 U.S.C. Sec. 111 (1982), 37 C.F.R. Sec. 1.56 (1985), 37 C.F.R. Sec. 1.57 (1982), 37 C.F.R. Sec. 1.344 (1983), and Canon 1 and DR 1-102(A)(4) of the Code of Professional Responsibility (37 C.F.R. Secs. 10.21 & 10.23(b)(4) (1985)).

In his answer to the PTO, Jaskiewicz admitted some of the factual allegations and denied others. He also asserted that the Commissioner had exceeded his statutory authority and violated the procedures required by law. However, Jaskiewicz's principal defense was that the cited regulations were vague and subject to different interpretations and, therefore, it was arbitrary and capricious for the PTO to discipline him when he acted in a manner consistent with what he reasonably believed were permissible interpretations of the agency's regulations.

After a hearing, an Administrative Law Judge ("ALJ") issued a decision recommending that Jaskiewicz be disbarred. Subsequently, on October 1, 1984, following consideration of Jaskiewicz's exceptions to the ALJ's recommended decision, the Deputy Commissioner of the PTO issued a Decision and Order suspending Jaskiewicz from practice before the PTO for seven years. Jaskiewicz was actually to be barred from practice for the first two years of the suspension, with the last five years to be served on probation.

Jaskiewicz commenced this action in the District Court by filing a Petition for Review pursuant to 35 U.S.C. Sec. 32. In an Order filed December 5, 1985, the District Court entered summary judgment for the Commissioner. Jaskiewicz noted his appeal to this court on January 30, 1986. On June 27, 1986, the Commissioner filed the pending Motion to Transfer.

II. ANALYSIS

"It is well settled that ... jurisdiction of a Circuit Court of the United States is limited in the sense that it has no other jurisdiction than that conferred by the Constitution and the laws of the United States." Hanford v. Davies, 163 U.S. 273, 279, 16 S.Ct. 1051, 1053, 41 L.Ed. 157 (1896). In the instant case, the Commissioner asserts that the appellant's suit is a "civil action arising under [an] Act of Congress relating to patents" pursuant to 28 U.S.C. Sec. 1338(a) (1982). Because, under 28 U.S.C. Sec. 1295(a)(1) (1982 & Supp. III 1985), the United States Court of Appeals for the Federal Circuit is granted exclusive jurisdiction over "an appeal from a final decision of a district court ... if the jurisdiction of that court was based, in whole or in part, on section 1338 [of title 28,]" the Commissioner contends that this court lacks jurisdiction to entertain this appeal. The question of proper appellate jurisdiction of an action challenging a suspension or disbarment from practice before the PTO under 35 U.S.C. Sec. 32, and whether such an action is one "arising under [an] Act of Congress relating to patents" under 28 U.S.C. Sec. 1338(a), is one of first impression. It is to this question that we now turn.

A.

The district courts have original jurisdiction over "any civil action arising under any Act of Congress relating to patents...." 28 U.S.C. Sec. 1338(a) (1982). Prior to October 1, 1982, jurisdiction over appeals relating to patents would lie in the court of appeals in the circuit in which the suit was initiated. However, the Federal Courts Improvement Act of 1982, Pub.L. No. 97-164, 96 Stat. 25, granted exclusive jurisdiction over appeals in cases arising in whole or in part under federal laws relating to patents to the newly created United States Court of Appeals for the Federal Circuit. 28 U.S.C. Sec. 1295(a)(1) (1982 & Supp. III 1985).

The appellant asserts, and the Commissioner concedes, that Jaskiewicz's principal cause of action rests on 35 U.S.C. Sec. 32, under the portion of the federal patent law covering the Patent and Trademark Office. Section 32 specifically authorizes the Commissioner to suspend or exclude attorneys from further practice before the PTO; the section also states that anyone so disciplined may seek judicial review in the United States District Court for the District of Columbia. However, the obvious applicability of section 32 in no way resolves the question whether appellant's suit arises "under any Act of Congress relating to patents." 28 U.S.C. Sec. 1338(a) (1982). The critical question here is whether the federal legislation establishing the PTO, and setting forth its authority to discipline those who practice before the agency, is an "Act of Congress relating to patents."

B.

In order to invoke jurisdiction under 28 U.S.C. Sec. 1338, the Federal Circuit has held that a "plaintiff must have asserted some right or interest under the patent laws, or at least some right or privilege that would be defeated by one or sustained by an opposite construction of those laws." Beghin-Say Int'l, Inc. v. Rasmussen, 733 F.2d 1568, 1570 (Fed.Cir.1984); see also Dubost v. United States Patent & Trademark Office, 777 F.2d 1561, 1564 (Fed.Cir.1985). It appears that the Federal Circuit has given a broad construction to the "relating to patents" language in section 1338, at least in part because "one of the primary objectives of [the Circuit's] enabling legislation is to bring about uniformity in the area of patent law.... [The Federal Circuit], thus, has a mandate to achieve uniformity in patent matters." Panduit Corp. v. All States Plastic Mfg. Co., 744 F.2d 1564, 1574 (Fed.Cir.1984). We wholeheartedly agree with our sister circuit's assessment of congressional intention regarding the applicability of section 1338.

On the facts of this case, and in light of the precedent from the Federal Circuit construing section 1338, we conclude that it cannot be doubted that Jaskiewicz's action is one "arising under [an] Act of Congress relating to patents." We can hardly imagine the Federal Circuit seeking "to achieve uniformity in patent matters" without exclusive jurisdiction over appeals relating to who may practice before the Patent and Trademark Office.

C.

In his petition for review to the District Court, Jaskiewicz asserted a "right or interest under the patent laws" in retaining his license as a practicing attorney before the PTO. "The privilege of practicing law 'is not "a matter of grace and favor" '; on the contrary, as quite recently recorded, 'we have always viewed an attorney's license to practice as a "right" which cannot lightly or capriciously be taken from him.' " Charlton v. FTC, 543 F.2d 903, 906 (D.C.Cir.1976) (quoting Willner v. Committee on Character & Fitness, 373 U.S. 96, 102, 83 S.Ct. 1175, 1179, 10 L.Ed.2d 224 (1963) and Kivitz v. SEC, 475 F.2d 956, 962 (D.C.Cir.1973)). It is likewise clear that the right and interest asserted by Jaskiewicz rest on an interpretation of the applicable laws and regulations governing practice before the PTO. We believe that these laws and regulations are paradigmatic examples of laws "relating to patents."

Because of the highly specialized nature of patent law, otherwise licensed attorneys are not automatically or routinely licensed to practice before the PTO. The Commissioner of the PTO is empowered to prescribe regulations governing the recognition and conduct of persons practicing patent law. 35 U.S.C. Sec. 31 (1982). Persons who seek to become practitioners must "show that they are of good moral character and reputation and are possessed of the necessary [legal, scientific, and technical] qualifications to render to applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office." 35 U.S.C. Sec. 31 (1982); 37 C.F.R. Sec. 10.7(a) (1985). With the exception of persons who have actively served for at least four years in the patent examining corps of the PTO, "each applicant for...