Klock v. Kappos

• Decision Date: 21 July 2010
• Docket Number: Case No. 1:09-CV-1003 (GBL)
• Citation: 731 F.Supp.2d 461
• Court: U.S. District Court — Eastern District of Virginia
• Parties: Brian R. KLOCK, Plaintiff, v. David J. KAPPOS, et al., Defendants.

731 F.Supp.2d 461

Brian R. KLOCK, Plaintiff,

v.David J. KAPPOS, et al., Defendants.

Case No. 1:09-CV-1003 (GBL).

United States District Court,

E.D. Virginia.

July 21, 2010.

Craig Crandall Reilly, Law Office of Craig C. Reilly, Alexandria, VA, for Plaintiff.

Bernard G. Kim, U.S. Attorney's Office, Alexandria, VA, for Defendants.

MEMORANDUM OPINION

GERALD BRUCE LEE, District Judge.

THIS MATTER is before the Court on the Plaintiff's and Defendants' Cross-Motions for Summary Judgment (Dkt. Nos. 14 & 17). This case concerns the United States Patent and Trademark Office's (USPTO) interpretation of Plaintiff Brian R. Klock's design patent application as failing to state a claim. The issue before the Court is whether the USPTO's decision that Mr. Klock's patent application for "The ornamental design for a motorcycle windshield as shown" was properly denied where the application failed to assert a "claim" as required by 35 U.S.C. § 112, and was arbitrary and capricious under the Administrative Procedures Act ("APA"). The Court holds that the USPTO's decision to disallow the patent application was not arbitrary and capricious because the patent application failed to assert a "claim" and the USPTO examined the relevant data and articulated a satisfactory explanation for its decision. The Court accordingly denies Plaintiff Brian R. Klock's Motion for Summary Judgment and grants Defendants David J. Kappos's and the USPTO's Motion for Summary Judgment.

I. Background

A. The Patent Application Process

When an inventor seeks to patent his invention, he or she must submit a written application to the USPTO. 35 U.S.C. § 111(a)(1) (2006). The application must include a specification, drawings, and an oath. Id. at § 111(a)(2). The specification describes the invention in writing and must "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." Jd. at § 112. The inventor must draft each claim in a very technical manner because the claim "set[s] the legal boundaries for the patent owner's exclusive rights." Hyatt v. Dudas, 393 F.Supp.2d 1, 4 (D.D.C.2005); rev'd on other grounds, 492 F.3d 1365, 1370 (Fed.Cir.2007).

When an inventor files an application for a design patent, the application must include:

(1) Design application transmittal form.

(2) Fee transmittal form.

(3) Application data sheet.

(4) Specification.

(5) Drawings or photographs.

(6) Executed oath or declaration.

37 C.F.R. § 1.154(a) (2006). The fourth element, the specification, must include six sub-sections, if applicable, in the following order:

(1) Preamble, stating the name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied.

(2) Cross-reference to related applications (unless included in the application data sheet).

(3) Statement regarding federally sponsored research or development.

(4) Description of the figure or figures of the drawing.

(5) Feature description.

(6) A single claim.

Id. at § 1.154(b). Each of these subsections "should be preceded by a section heading in uppercase letters without underlining or bold type." Id. at § 1.154(c).

When an inventor drafts the language of the design patent claim, it must be "in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described." 37 C.F.R. § 1.153. The Manual of Patent Examining Procedure ("MPEP") states that the proper form of a claim is: "I claim: The ornamental design for [invention] as shown."U.S. Patent & Trademark Office, Manual of Patent Examination Procedure, § 1503.02(III) ¶ 15.62 (5th ed. rev. 2006).¹ Finally, the MPEP also states that "[t]he description of the article in the claim should be consistent in terminology with the title of the invention." Id.

Once the inventor submits his application, the USPTO reviews it for completeness and, if complete, accords the application a filing date. 37 C.F.R. § 1.53(b). A design patent application is complete if it includes a description of the invention, a claim, and any required drawings. Id. If the application is incomplete, the USPTO notifies the applicant and gives the applicant an opportunity to correct the errors. Id. at § 1.53(e)(1).

If the applicant fails to correct the errors within the allotted time period, the USPTO terminates the proceedings. 37 C.F.R. § 1.53(e)(3). However, the applicant may revive a terminated design patent application by filing a "petition to revive" under section 1.137, a "terminal disclaimer," and a fee as set forth in section 1.321. Id. at § 1.137(e).

If the applicant corrects the errors within the allotted time period, the USPTO then examines the application. 37 C.F.R. § 1.104. If the design "is not considered patentable, or not considered patentable as claimed, the claims, or those considered unpatentable will be rejected." Id. The USPTO then issues an "Office action detailing the rejection and addressing the substantive matters which affect patentability." United States Patent and Trademark Office, a Guide to Filing a Design Patent Application 10, http:// www. uspto. gov/ web/ offices/ com/ iip/ pdf/ brochure_ 05. pdf. If the applicant "persists in his or her application for a patent or reexamination proceeding," he or she "must reply and request reconsideration or further examination, with or without amendment." 37 C.F.R. § 1.111. Upon reply, the USPTO reconsiders and re-examines the application. Id. at § 1.112 (2006). If the USPTO rejects the application a second time, the rejection may be considered a final action. Id. at § 1.113(a).

B. Plaintiff's Design Patent Application

Mr. Klock, an inventor from Mitchell, South Dakota, deposited U.S. Design Patent Application Serial No. 29/303,937 ("'937 Application") with the USPTO on February 20, 2008, for "A Flared Windshield for a Motorcycle." (Admin. R. at 1.) After reviewing his submission, the USPTO denied Mr. Klock's '937 Application a filing date because it did not include a claim, filing fees, and the inventor's oath. (Admin. R. at 9.) The USPTO sent Mr. Klock a "Notice of Incomplete Nonprovisional Application" on March 7, 2008, informing him about the '937 Application's deficiencies. (Admin. R. at 9-10.) When Mr. Klock failed to timely correct the alleged deficiencies, the USPTO terminated the proceedings on June 10, 2008. (Admin. R. at 14.)

Instead of filing a petition to revive the '937 Application under 37 C.F.R. § 1.137, Mr. Klock submitted a "Petition for Grant of Filing Date Under 37 C.F.R. 1.53(e)" on July 2, 2008, requesting that the USPTO accord his '937 Application the original February 20, 2008, filing date. (Admin. R.at 15.) The USPTO reviewed the '937 Application again and dismissed the Petition because the '937 Application remained incomplete. (Admin. R. at 61-64.) Nine months later, Mr. Klock filed a "Request for Reconsideration of Denial of Petition for Grant of Filing Date Under 37 C.F.R. 1.53(e)," requesting that the USPTO reconsider its dismissal. (Admin. R. at 66.) The USPTO denied the request in a July 6, 2009, letter titled ("Decision Denying Petition"). (Denial Letter, Admin. R. at 133-39.)

The Denial Letter is divided into four sections: (1) "Background;" (2) "Statute and Regulation;" (3) "Discussion;" and (4) "Decision." The Background section provides the procedural history of Mr. Klock's '937 Application. (Admin. R. at 133-34.) The Statute and Regulation section describes the applicable law that governs a design patent application. This section sets forth the requirements for filing a design patent application under 35 U.S.C. §§ 111, 112 and 37 C.F.R. § 1.153. (Admin. R. at 134-35.) The Discussion section states that the USPTO denied Mr. Klock's '937 Application because it failed to state a claim. The USPTO describes Mr. Klock's arguments and systematically analyzes why each argument is unpersuasive under the facts and law. (Admin. R. at 135-38.) Finally, the Decision section reiterates the USPTO's main reason for denying the Petition, and states that the decision is a final agency action for purposes of seeking judicial review. (Admin. R. at 139.)

After receiving the Denial Letter, Mr. Klock filed this action against the USPTO and David J. Kappos, its Director. Mr. Klock seeks (1) judicial review of the USPTO's decision under the Administrative Procedure Act and (2) a writ of mandamus requiring Defendants to either find that the '937 Application is complete and issue a filing date of February 20, 2008, or to allow Mr. Klock to amend the '937 Application so that it meets the statutory filing requirements. (Compl. at 12; Pl.'s Mot. Summ. J. at 9.) The case is now before the Court on Mr. Klock's and the Defendants' Cross-Motions for Summary Judgment on all counts of the Complaint. (Pl.'s Mot. Summ. J.; Defs.' Mot. Summ. J.)

II. Discussion

A. Standard of Review

Under Federal Rule of Civil Procedure 56, the Court must grant summary judgment if the moving party demonstrates that there is no genuine issue of material fact and that the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). However, in an action brought under the APA, there is no material fact at issue but only a question of law:

[W]hen a party seeks review of agency action under the APA before a district court, the district judge sits as an appellate tribunal. The entire case on review is a question of law, and the complaint, properly read, actually presents no factual allegations, but rather only arguments about the legal conclusion to be drawn about the agency action.

Rempfer v. Sharfstein, 583 F.3d 860, 865 (D.C.Cir.2009) (quotations omitted); see Marshall County Health Care Auth. v. Shalala, 988 F.2d 1221, 1226 (D.C.Cir.1993) ("[W]hen an agency action is challenged ... the entire case on review is a question of law.").

Under the APA, the district court may review agency decisions. Rempfer, 583 F.3d at 865. Agency decisions are reviewed according to the...