Piccone v. U.S. Patent & Trademark Office, 1:15cv536 (JCC/TCB)

CourtUnited States District Courts. 4th Circuit. United States District Court (Eastern District of Virginia)
Writing for the CourtJames C. Cacheris UNITED STATES DISTRICT COURT JUDGE
Docket Number1:15cv536 (JCC/TCB)
Decision Date27 October 2015

LOUIS A. PICCONE, Plaintiff,

1:15cv536 (JCC/TCB)


October 27, 2015


Four motions are now before the Court in this matter: a motion to dismiss filed by Defendants Lee, Covey, Griffin, and George [Dkt. 18]; and motions to dismiss and for summary judgment filed by Defendant United States Patent and Trademark Office (USPTO). [Dkt. 22][Dkt. 23][Dkt. 24] For the following reasons, the Court grants Defendants' motions to dismiss and motion for summary judgement.

I. Background

At the motion to dismiss stage, the Court must read the complaint as a whole, construe the complaint in a light most favorable to the plaintiff, and accept the facts alleged in the complaint as true. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).

The following facts, taken from the complaint, parties' briefs and the administrative record are undisputed

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unless otherwise indicated. Plaintiff Louis A. Piccone ("Plaintiff" or "Piccone"), is an attorney licensed to practice law in Pennsylvania who is also a registered practitioner before the USPTO. (Compl. [Dkt. 1] ¶ 4.) Plaintiff has been a registered patent attorney before the USPTO since 1997. (Id. at ¶ 6.) In the years since 2008, Plaintiff has taken on a series of Pro Bono child custody cases. (Id. at ¶¶ 7-8.) On December 10, 2014, the USPTO filed a complaint and notice of disciplinary proceedings against Plaintiff, alleging that Plaintiff had engaged in the unauthorized practice of law. (Id. at ¶ 10.) Specifically, the USPTO's disciplinary complaint alleged that Plaintiff had been suspended form the Pennsylvania Bar on September 20, 2013, through August 13, 2014, but Plaintiff prosecuted a trademark application on behalf of William Windsor during this time period. (Id. at ¶¶ 58-59; Individual Defendants' Memorandum [Dkt. 19] at 5.) The disciplinary complaint also alleged that Plaintiff had engaged in the unauthorized practice of law by representing individuals in matters in jurisdictions in which he was neither licensed nor admitted pro hac vice. (Compl. at ¶ 7.)

The USPTO disciplinary complaint resulted from an Office of Enrollment and Discipline ("OED") investigation into Mr. Piccone and subsequent determination that probable cause existed. (Indiv. Def.'s Mem. at 5.)

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The USPTO maintains a register of attorneys and agents authorized to represent others in proceedings before the agency according to a scheme set down at 37 C.F.R. §11 pursuant to authority granted by 35 U.S.C. §2(b)(2)(D). The OED investigates allegations of misconduct on the part of practitioners who are registered to represent others before the agency. 37 C.F.R. § 11.19. Such an investigation may begin after the OED director receives a written submission that presents possible grounds for discipline of a specified practitioner. 37 C.F.R. § 11.1. Upon conclusion of an investigation, the OED Director may close the investigation with no action; issue a warning, enter into an agreement with the practitioner to settle the matter, or institute formal charges upon the approval of the Committee on Discipline. 37 C.F.R. §11.22(i). The Committee on Discipline decides if probable cause exists to bring disciplinary charges against the practitioner. 37 C.F.R. §11.32. Upon a determination of probable cause by the Committee, the OED Director has discretion to file a disciplinary complaint like the one filed against Plaintiff, but is not required to file such a complaint. Id. Disciplinary proceedings are then heard by an administrative law judge ("ALJ") sitting as a "hearing officer" who is not under the supervision of the USPTO Director or the OED Director. 37 C.F.R. §11.39. Once disciplinary proceedings have been

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instituted, the ALJ may authorize discovery, conducts a hearing at which both parties may present documentary evidence and witness testimony, and ultimately delivers a decision on the complaint. 37 C.F.R. §§11.50-52. Once the ALJ has issued a decision, either party may appeal the decision to the director of the USPTO. 37 C.F.R. § 11.55. Once the USPTO Director has entered a final decision, the practitioner may then file a petition for review of the USPTO's decision before the United States District Court for the Eastern District of Virginia. See 35 U.S.C. § 32; 37 C.F.R. § 11.57.

On September 15, 2014, Plaintiff filed a Freedom of Information Act ("FOIA") Request to obtain documents concerning the USPTO investigation of Plaintiff's conduct. (Compl. At ¶ 12). William Griffin, the FOIA coordinator for the OED, identified the OED staff attorneys responsible for the investigation of Plaintiff, Dahlia George and Leonardo Villarreal Alejandro, as well as OED paralegal Hannah Robinson, as the individuals most likely to have responsive documents nd asked them to respond to the request. (USPTO's Mem. [Dkt. 26] at 6.) After a search of their files, Ms. George and Mr. Villarreal found only information protected from disclosure because it related to the ongoing law enforcement investigation against Plaintiff, and disclosure at this stage would have impeded the investigation. (Id.) Ms. Robinson collected all

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official correspondence regarding Mr. Piccone from OED's proprietary database and provided them to the USPTO FOIA Office for release. (Id. at 6-7.) The USPTO then responded to Plaintiff's FOIA request on October 20, 2014, noting that it had construed Plaintiff's request as solely for records relating to any OED investigation and that he would need to submit a more specific request if he had intended the USPTO to search for any other files, and producing to Plaintiff 410 pages of documents. (Id.; Compl. at ¶ 12). On November 10, 2014, Plaintiff appealed the initial FOIA response. (Compl. at ¶ 17.) On December 2, 2014, in response to this appeal, Ms. Robinson, Ms. George, and Mr. Villareal conducted a second search of their emails, including variations of Mr. Piccone's name and investigatory file number. (USPTO's Mem. at 7.) Ms. Robinson also conducted a second search of OED's record system, and also checked a central computer drive and a SharePoint site used in investigations for records regarding Mr. Piccone. (Id.) All of the documents identified in this second search were protected because, inter alia, they related to the ongoing law enforcement investigation against Plaintiff, and disclosure at this stage would have impeded the investigation. (Id. at 8.) On December 10, 2015, the USPTO denied Plaintiff's FOIA appeal of November 10, 2014, explaining that the USPTO had correctly applied the FOIA exemptions identified in its October 20, 2014 response.

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(Id.; Compl. at ¶ 18.) On April 23, 2015, Mr. Piccone filed the complaint in the instant action seeking recovery for alleged constitutional violations by individual-capacity defendants, declaratory relief from the disciplinary policies and proceedings of the USPTO, and alleging that the USPTO had violated the Privacy Act and seeking review of Plaintiff's September 18, 2014 FOIA request. (Compl. at ¶¶ 40-93.) On August 3, 2015, the USPTO issued a supplemental release to Plaintiff of 1538 pages of documents from his investigatory file as responsive to his September FOIA request upon determination by the USPTO that release of the documents would no longer impede the law enforcement investigation against Plaintiff. (USPTO's Mem. at 9.) Mr. Piccone's disciplinary proceedings are still pending; his hearing is set for some time this month, October, 2015. (Id. at 6.)

II. Legal Standard

Defendants move to dismiss Plaintiff's claims pursuant to Federal Rule of Civil Procedure 12(b)(6) and Federal Rule of Civil Procedure 12(b)(1), and move for summary judgement pursuant to Federal Rule of Civil Procedure 56. "While the court must accept well-pleaded allegations as true when ruling on a Rule 12(b)(6) motion, the court need not accept as true legal conclusions disguised as factual allegations. Ashcroft v. Iqbal, 556 U.S. 662, 679-81 (2009). Therefore, a pleading that

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offers only a "formulaic recitation of the elements of a cause of action will not do." Iqbal, 556 U.S. at 678; Bell Atl. Corp. v. Twombly, 550 U.S. 544, 557 (2007). Nor will a complaint that tenders mere "naked assertion[s]" devoid of "further factual enhancement." Iqbal, 556 U.S. at 678; Twombly, 550 U.S. at 557. "The purpose of a Rule 12(b)(6) motion is to test the sufficiency of a complaint; importantly, [a Rule 12(b)(6) motion] does not resolve contests surrounding the facts, the merits of a claim, or the applicability of defenses." Edwards v. City of Goldsboro, 178 F.3d 231, 243-44 (4th Cir. 1999) (citation omitted) (internal quotation marks omitted).

"[I]n passing on a motion to dismiss, whether on the ground of lack of jurisdiction over the subject matter or for failure to state a cause of action, the allegations of the complaint should be construed favorably to the pleader." Scheuer v. Rhodes, 416 U.S. 232, 236 (1974), abrogated on other grounds by Harlow v. Fitzgerald, 457 U.S. 800 (1982). A motion pursuant to Rule 12(b)(1) of the Federal Rules of Civil Procedure challenges the Court's subject matter jurisdiction over the pending action. "Federal courts are courts of limited jurisdiction, and we presume that a cause lies outside this limited jurisdiction. The burden of establishing the contrary rests upon the party asserting jurisdiction." Wheeling Hosp.,

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Inc. v. Health Plan of the Upper Ohio Valley, Inc., 683 F.3d 577, 583-84 (4th Cir. 2012) (citation omitted).

Summary judgment is appropriate when the pleadings and the record demonstrate that "there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). In reviewing the record on summary judgment, the Court "must draw any inferences in the light most favorable to the non-movant" and...

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