Morganroth v. Quigg

• Decision Date: 08 September 1989
• Docket Number: No. 89-1124,89-1124
• Citation: 885 F.2d 843,12 USPQ2d 1125
• Parties: , 12 U.S.P.Q.2d 1125 Shila MORGANROTH, Plaintiff-Appellant, v. Donald J. QUIGG, Honorable, Commissioner of Patents and Trademarks, Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 843

885 F.2d 843

58 USLW 2176, 12 U.S.P.Q.2d 1125

Shila MORGANROTH, Plaintiff-Appellant, v. Donald J. QUIGG, Honorable, Commissioner of Patents and Trademarks, Defendant-Appellee.

No. 89-1124.

United States Court of Appeals Federal Circuit.

Sept. 8, 1989.

George H. Mortimer, Provo, Utah, argued for plaintiff-appellant. With him on the brief was John P. Moran, Staas & Halsey, Washington, D.C.

Fred E. McKelvey, Sol. and Albin Drost, Associate Sol. of the Office of the Sol., Arlington, Va., argued for defendant-appellee.

Before FRIEDMAN, ARCHER and MICHEL, Circuit Judges.

FRIEDMAN, Circuit Judge.

The question in this case, here on appeal from the United States District Court for the District of Columbia, is whether the Commissioner of Patents and Trademarks correctly held that he had no jurisdiction under 35 U.S.C. Sec. 41(a)(7) (1982) to revive as unintentionally abandoned a patent application. The alleged unintentional abandonment was the applicant's failure to appeal the district court's earlier decision affirming a prior decision of the Patent and Trademark Office that refused to issue a patent because the claimed subject matter would have been obvious under 35 U.S.C. Sec. 103. The district court sustained the Commissioner's refusal to revive the application. We affirm.

I

The Board of Patent Appeals and Interferences affirmed the examiner's rejection of the 37 claims in the appellant's patent application as obvious under 35 U.S.C. Sec. 103. On appeal under 35 U.S.C. Sec. 145, the district court held that the claims "are not patentable under 35 U.S.C. Sec. 103 and were rejected properly by the Patent and Trademark Office." Morganroth v. Quigg, No. 85-3125, Order (D.D.C. April 30, 1986).

The appellant did not file an appeal from the district court's judgment. She explains this inaction on the ground that "the court's adverse decision was mailed by the clerk of the court to ... the local associate, who put it in his file and did absolutely nothing about it." She further stated that after her lead counsel had received a copy of the district court's decision, and upon "careful review of the application in the Eight months after the entry of the district court's judgment, the appellant filed with the Commissioner a petition to "revive this unintentionally abandoned application," pursuant to 37 C.F.R. Sec. 1.137(b), which states, in pertinent part:

light of Judge Green's adverse decision, it was decided to accept the Court's decision that the claims then in the application were unpatentable and to file a continuation application with new, patentable claims."

An application unintentionally abandoned for failure to prosecute ... may be revived as a pending application if the delay was unintentional.

Together with the petition, Morganroth submitted the documents the regulation required: a statement that the application was unintentionally abandoned, "a continuation application" with significantly amended claims that was her proposed response to the examiner's final rejection, and the requisite filing fees.

The Deputy Assistant Commissioner dismissed the petition to revive the application. He held that the application had been "terminated" rather than "abandoned," and stated that "it is manifestly inappropriate for the PTO to consider the present petition to revive under 35 U.S.C. Sec. 41(a)7." In re Shila Morganroth, 6 USPQ2d 1802, 1804 (1987). The Deputy Assistant Commissioner ruled that "the PTO lacks authority to consider Morganroth's petition to revive" her patent application because the application had not been "abandoned." Id.

On motion for reconsideration, the Deputy Assistant Commissioner reiterated that neither the applicable regulations nor the governing statute (discussed below) gave the PTO "jurisdiction to revive," since "relief from the effect of the court's final judgment, if any is to be had, must be sought in the court, not in the PTO." In re Shila Morganroth, 6 USPQ2d at 1804 (1988).

The appellant then filed in the district court a "Complaint for Review of Agency Action." On cross-motions for summary judgment, the court granted that of the government and dismissed the complaint. The court found that "proceedings in Plaintiff's patent application terminated when Plaintiff failed to file a notice of appeal from this Court's previous decision," and held that "[t]he Commissioner did not act contrary to the law in concluding that he had no authority under 35 U.S.C. Sec. 41(a)(7) to revive the Plaintiff's patent application after the proceedings terminated in this manner." Morganroth v. Quigg, 8 USPQ 2d 1791, 1988 WL 104962 (D.D.C.1988).

II

Although neither side addressed any jurisdictional questions in their briefs, the court itself raised two jurisdictional issues and requested the parties to discuss them at oral argument. These questions are: (A) whether the order of the Deputy Assistant Commissioner denying the petition to revive the application is judicially reviewable, and (B) if it is reviewable, whether this court or the Court of Appeals for the District of Columbia Circuit has jurisdiction over the appeal from the district court's judgment. The Commissioner submitted a lengthy letter discussing these issues, which concluded that the Deputy Assistant Commissioner's order is reviewable and that this court has jurisdiction over the appeal. We agree.

A. Prior to the creation of this court in 1982, appeals from district court decisions reviewing actions of the Commissioner lay only to the Court of Appeals for the District of Columbia Circuit. At one time, that court held that the Commissioner's refusal to revive a patent application "is not subject to judicial review." Chessin v. Robertson, 63 F.2d 267 (D.C.Cir.1933). The theory apparently was that since 35 U.S.C. Sec. 133 provided that patent applications that were deemed abandoned could be revived only if shown "to the satisfaction of the Commissioner" that a delay in response was unavoidable, the Commissioner's decision whether to revive must be wholly discretionary and therefore not reviewable.

In Commissariat A L'Energie Atomique v. Watson, 274 F.2d 594, 596, 124 USPQ 126, 128 (D.C.Cir.1960), the court We agree with those decisions that the Commissioner's denial of a petition to revive a patent application is subject to review in the district court. Whatever may be the scope of the Commissioner's discretion to deny a petition to revive a patent application--a question on which we express no view--the existence of that discretion does not bar judicial review of the Commissioner's decision.

                stated that although "[t]he Commissioner doubtless possesses a large measure of discretion," "the Commissioner's discretion cannot remain wholly uncontrolled, if ... the Commissioner's adverse determination lacked any basis in reason or common sense."    Thus, judicial review was available to determine whether the Commissioner's action "was arbitrary, capricious, or an abuse of discretion."    Smith v. Mossinghoff, 671 F.2d 533, 538, 213 USPQ 977, 982 (D.C.Cir.1982) (Judge Jack Miller of the CCPA sitting by designation, citing 5 U.S.C. Sec. 706(2)(A) and Commissariat ).    Recently, in Vincent v. Mossinghoff, 230 USPQ 621 (D.D.C.1985), the court noted that review of the Commissioner's decision on a petition to revive "is proper under 28 U.S.C. Sec. 1338(a) and 5 U.S.C. Secs. 701 et seq. and also under 28 U.S.C. Sec. 1361 (the general mandamus provision)."
                

B. Under 28 U.S.C. Sec. 1295(a)(1), this court has exclusive jurisdiction over an appeal from the final decision of a district court "if the jurisdiction of that court was based, in whole or in part, on [28 U.S.C.] Sec. 1338." Section 1338(a), in turn, gives the district courts jurisdiction "of any civil action arising under any Act of Congress relating to patents." Thus, whether we have jurisdiction over this appeal depends upon whether the appellant's action in the district court was one "arising under" the patent laws.

In Christianson v. Colt Indus. Operating Corp., 486 U.S. 800, 108 S.Ct. 2166, 2173, 100 L.Ed.2d 811 (1988), the Supreme Court held that a district court has jurisdiction under section 1338 only over "those cases in which a well-pleaded complaint establishes either that federal patent law creates the cause of action or that the plaintiff's right to relief necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims." Under this standard, the jurisdiction of the district court was based, at least in part, on section 1338. Although the appellant's complaint did not refer to section 1338, that fact is not dispositive in determining the basis of the district court's jurisdiction. The critical inquiry is whether in fact the complaint asserted a claim arising under the patent laws. Christianson, supra.

The appellant's complaint asserted such a claim. The appellant alleged that under sections 41(a)(7) and 133, she had a right to revival of her allegedly unintentionally abandoned patent application, and that the Commissioner misinterpreted those sections as precluding revival where the alleged abandonment was the failure to appeal an adverse district court judgment. The complaint also stated that if the patent application were revived, the appellant had "the legal right under Section 120 of Title 35 of the United States Code to file a continuation application and to claim the benefit of the filing date of U.S. Application Serial No. 842,108." Morganroth v. Quigg, No. 89-0724-JLG, Complaint at 5. Thus, the appellant's right to relief ...