Leeds v. Mosbacher

• Decision Date: 13 February 1990
• Docket Number: Civ. A. No. 89-1857.
• Citation: 732 F. Supp. 198,14 USPQ 2d 1455
• Parties: Jackson LEEDS, Plaintiff, v. Hon. Robert A. MOSBACHER, et al., Defendants.
• Court: U.S. District Court — District of Columbia

732 F. Supp. 198

14 USPQ 2d 1455

Jackson LEEDS, Plaintiff, v. Hon. Robert A. MOSBACHER, et al., Defendants.

Civ. A. No. 89-1857.

United States District Court, District of Columbia.

February 13, 1990.

Nathan Dodell, Asst. U.S. Atty., Washington, D.C., and Fred E. McKelvey, Solicitor, Arlington, Va., for defendants.

Glenn H. Carlson, Carlson, Cafferty & Ferris, P.C., Washington, D.C., for plaintiff Jackson Leeds.

MEMORANDUM OF OPINION AND ORDER

REVERCOMB, District Judge.

Plaintiff Jackson Leeds here challenges the Patent and Trademark Office's ("PTO") decision requiring plaintiff to take and pass an examination as a condition to being registered to practice before the PTO in patent cases. At bar are Defendants Honorable Robert A. Mosbacher, Honorable Donald Quigg, Cameron Weiffenbach, and the United States's motion to affirm the Patent Commissioner's decision and plaintiff's motion to quash the Commissioner's decision. Also pending is plaintiff's motion for reconsideration of the Court's protective order of August 14, 1989.

I. Regulatory Framework.

The primary responsibility for protection of the public from unqualified practitioners before the Patent Office rests in the Commissioner of Patents, and not in the courts. Kingsland v. Dorsey, 338 U.S. 318, 320-321, 70 S.Ct. 123, 124-125, 94 L.Ed. 123 (1949); Cupples v. Marzall, 101 F.Supp. 579, 583 (D.D.C.1952), affirmed, 204 F.2d 58 (D.C.Cir.1953). In carrying out this responsibility, the Patent Commissioner has established regulations governing the recognition of agents and attorneys entitled to practice before the PTO. 35 U.S.C. § 31. Included in the regulations is a requirement that applicants establish that they are competent to assist patent applicants in the presentation and prosecution of their patent application. 37 C.F.R. § 10.7(a)(2)(iii).¹ As part of the competency requirement, the Director of Enrollment and Discipline administers an examination designed to test the applicant's knowledge of patent law and PTO procedure. Because patent examiners tend to become familiar with applicable patent law and PTO procedures in their day-to-day work, the "taking of an examination may be waived in the case of any individual who has actively served for at least four years in the patent examining corps of the Office." 37 C.F.R. § 10.7(b). It is this examination and the Patent Commissioner's refusal to waive it for Mr. Leeds that is the subject of this lawsuit.

II. The Record.

In 1988 plaintiff Jackson Leeds was employed as a Patent Examiner, Chemical Engineering, GS-1224-12, in Group 110, Art Unit 113. On June 22, 1988, the Director of Group 110 proposed plaintiff's removal for five instances of misconduct (failure to perform work as assigned), and unacceptable performance in three critical elements of his position. The Group Director also considered plaintiff's prior record of a two-day suspension on August 19, 1987 for destroying another employee's work product, and a 14-day suspension on March 30, 1988 for failure to follow orders.² On July 20, 1988, the Assistant Commissioner for Patents found that the evidence supported the Group Director's charges and mandated plaintiff's removal from Federal service. Adm.Rec. 0008-0009.

Two days later, on July 22, 1988, Mr. Leeds filed an application seeking to become registered as a patent agent entitled to practice before the PTO. Adm.Rec. 0054-0056. In his application, plaintiff requested that the competency examination be waived since he had worked as a Patent Examiner for six years. Adm.Rec. 0054.

On September 14, 1988, the Office of Enrollment and Discipline ("OED") acknowledged receipt of plaintiff's application and promised that plaintiff's application would "be taken up in due course" after the consideration of another pending application. Adm.Rec. 0058. Four months later, on January 19, 1989, OED requested Mr. Leeds to supplement his application. Adm.Rec. 0059-0061. After receiving an extension of time to respond to OED's request, Mr. Leeds, with the aid of his attorney, provided almost two hundred pages of supplemental material on March 17, 1989. Adm.Rec. 0062-0236.

Meanwhile, the Merit System Protection Board (MSPB) affirmed the decision to terminate Mr. Leeds by an initial decision on November 29, 1988, and by a final decision on April 25, 1989. Adm.Rec. 0008-0041. The United States Court of Appeals for the District of Columbia later affirmed the termination decision without opinion. Leeds v. Department of Commerce, 887 F.2d 1095 (Fed.Cir.1989).

On May 24, 1989, two months after plaintiff had supplemented his application, plaintiff's attorney requested OED to "immediately" render a decision on Mr. Leeds' application. Adm.Rec. 0238. Six days later, the OED Director formally refused to waive the examination requirement in light of plaintiff's removal for unsatisfactory performance as a Patent Examiner. This decision was "final" but could be appealed by petition to the Commissioner of Patents. Adm.Rec. 0239; see also 37 C.F.R. § 10.2.

On June 29, 1989, plaintiff, through his counsel, appealed by petition letter to the Commissioner of Patents. Plaintiff requested the Commissioner to waive the examination requirement and to fully recognize him as an agent authorized to practice before the Patent and Trademark Office. Plaintiff also purportedly offered the petition "to protect the record," as he had simultaneously filed this action in federal court. Adm.Rec. 0246. The Commissioner issued his decision six days later on July 5, 1989. The Commissioner agreed with the Director and required plaintiff to take the examination. However, the Commissioner noted that the Director had taken "too long" to notify plaintiff that he would be required to take the examination. Hence, the Commissioner directed OED (at plaintiff's option) to prepare and administer an examination within one month. Any investigation of Mr. Leed's "character" was to be completed within two weeks of the date that plaintiff was notified of a passing grade. The Commissioner further ordered that if plaintiff passed the exam and there were no evidence of bad character, plaintiff's name was to be published for public comment as is standard PTO practice. Assuming no adverse comments were received, registration was to take place "forthwith." Adm.Rec. 0007.

III. Whether the Commissioner had Jurisdiction to Order Plaintiff to take and Pass the Examination.

Plaintiff asks this Court to completely ignore the Patent Commissioner's decision, claiming that the Commissioner lacked jurisdiction because the plaintiff had already filed this action in federal court. Plaintiff's claim lacks merit.³ It was this Court, and not the Patent Commissioner, that lacked the authority to act on June 29, 1989 since, at that time, plaintiff had not exhausted his administrative remedies.⁴ See Myers v. Bethlehem Shipbuilding Corp., 303 U.S. 41, 50-51, 58 S.Ct. 459, 463-64, 82 L.Ed. 638 (1938) (no one is entitled to judicial relief for a supposed or threatened injury until the prescribed administrative remedy has been exhausted); Peter Kiewit Sons' Co. v. Army Corps. of Engineers, 714 F.2d 163, 167-168 (D.C.Cir. 1983).

Plaintiff's reliance on California v. Federal Power Commission, 369 U.S. 482, 82 S.Ct. 901, 8 L.Ed.2d 54 (1962), is misplaced. That action involved the Federal Power Commission's improper evaluation of alleged antitrust violations in a particular transaction that had also been challenged in federal court. Unlike here, the administrative agency in California v. Federal Power Commission had no priority of jurisdiction or first right of administrative review.

IV. Whether the Commissioner's Decision was Arbitrary and Capricious.

This Court may not disturb the Patent Commissioner's decision of July 5, 1989 unless it finds that the Commissioner abused his discretion in refusing to waive the examination requirement. Slater v. Quigg, 647 F.Supp. 8, 9 (D.D.C.1986). An abuse of discretion may be found if (1) the decision below is unreasonable, arbitrary, or fanciful, (2) the decision below is based on an erroneous conclusion of law, (3) findings made below are clearly erroneous, or (4) the record contains no evidence upon which the tribunal below rationally could have based its decision. Western Electric Co. Inc. v. Piezo Technology, Inc., 860 F.2d 428, 430-431 (Fed.Cir.1988).

In deciding whether to waive the examination requirement for Mr. Leeds, the Patent Commissioner relied on the Merit Systems Protection Board (MSPB) decisions terminating plaintiff for his unsatisfactory performance as a Patent Examiner.⁵ Adm. Rec. 0001-0007. Among other things, the MSPB found that the substantial unrebutted evidence demonstrated that Mr. Leeds' performance in Critical Element No. I, Performance of Patent Examining Functions, was unsatisfactory. Adm.Rec. 0016. Plaintiff had received an unsatisfactory performance rating for fiscal year 1987 and an oral warning of unsatisfactory performance in "Performance of Patent Examining Functions." Plaintiff was given a four month opportunity to improve his performance. After plaintiff failed to improve, he was issued a written warning of unsuccessful performance in "Patent Examining Functions," and was given a 90-day period to improve. Adm.Rec. 0014-0015. During this opportunity period, plaintiff's error rate in "Patent Examining Functions" was 25 percent—well over the seven percent error rate allowed to meet the "minimally satisfactory" level. In addition to making significant errors, Mr. Leeds also made other minor errors such as using garbled sentences, incorrect patent numbers or application numbers, erroneous dates, and making numerous typographical errors. Adm.Rec. 0016.

As a result, the Patent Commissioner found that

in view of the evidence before the MSPB and its decision affirming petitioner's removal from Federal service based on unsatisfactory performance in the critical performance element "Performance of Patent Examining

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