Wyden v. Commissioner of Patents and Trademarks

• Citation: 807 F.2d 934,231 USPQ 918
• Decision Date: 25 November 1986
• Docket Number: No. 86-554,86-554
• Parties: , 231 U.S.P.Q. 918 Stephen WYDEN, Appellant, v. COMMISSIONER OF PATENTS AND TRADEMARKS, et al., Appellees. Appeal
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 934

807 F.2d 934

55 USLW 2321, 231 U.S.P.Q. 918

Stephen WYDEN, Appellant, v. COMMISSIONER OF PATENTS AND TRADEMARKS, et al., Appellees.

Appeal No. 86-554.

United States Court of Appeals Federal Circuit.

Nov. 25, 1986.

Stephen Wyden, pro se.

Joseph F. Nakamura, Sol., Fred E. McKelvey, Deputy Sol., and John W. Dewhirst, Associate Sol., Office of the Sol., Arlington, Va., submitted for appellees.

Before MARKEY, Chief Judge, FRIEDMAN, RICH, DAVIS, BALDWIN, ^* SMITH, NIES, NEWMAN, BISSELL, and ARCHER, Circuit Judges.

RICH, Circuit Judge.

This appeal is from the decision of the United States District Court for the District of Columbia granting the motion for summary judgment of the Commissioner of Patents and Trademarks (Commissioner) and denying the petition of Stephen Wyden (Wyden) to overturn the action of the Patent and Trademark Office (PTO) Director of the Office of Enrollment and Discipline in failing to award Wyden a passing grade on the examination for registration to practice before the PTO as a patent agent. Wyden had been registered to practice but was suspended in 1978 for two years for reasons we need not review, subject to reinstatement only upon satisfying the Commissioner's requirements, including passing an examination. Wyden took the examination, after numerous litigated attempts in the District Court for the District of Columbia to become restored to the register without taking it, but failed by a large margin to obtain a passing grade. This is the fourth in a series of suits Wyden has prosecuted, pro se, in the District of Columbia courts. Wyden is not a lawyer. By Order filed July 16, 1985, the District Court found Wyden's present claims barred either as untimely under Local Rule 1-26 or because of res judicata predicated on decisions on the same claims in one or more of Wyden's prior suits. We affirm.

OPINION

Jurisdiction

The brief filed by the Office of the Solicitor, PTO, raises a question as to this court's jurisdiction to entertain this appeal, its argument section being devoted mostly to that question. Our jurisdiction is, of course, a threshold question to be cleared in every case, whether or not challenged by a party. Dubost v. U.S. Patent and Trademark Office, 777 F.2d 1561, 227 USPQ 977 (Fed.Cir.1985). The court in banc now decides this jurisdictional question as it arises in this case.

As recently stated in Dubost, our jurisdiction to review district court decisions in cases arising under the patent laws comes from 28 U.S.C. Sec. 1295(a)(1) which states that we have exclusive jurisdiction "of 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 this title," copyright and trademark cases, which are named in Sec. 1338(a), being excepted by Sec. 1295(a)(1) unless combined with a patent claim. As we also said in Dubost, "nor does it make any difference that the district court failed to articulate Sec. 1338(a) as a basis for its jurisdiction." Chapter 85 of Title 28 of the United States Code is entitled "District Courts; Jurisdiction," and contains Sec. 1338(a) which reads as follows:

(a) The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights, and trade-marks. Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases.

As the PTO clearly seems to appreciate, at least one of Wyden's major claims arises under section 32 of Title 35 of the United States Code (USC) which is the Patent Act of 1952, as amended, the heading of that entire title being "PATENTS." Section 32 and its companion section, 31, are the statutory provisions in the organic patent law which pertain to the registration in the PTO of agents and attorneys, which is a prerequisite to their practicing in the PTO in patent matters, their discipline, and removal from the register. Those sections are also the authorization for the Commissioner's promulgation of regulations, which are found in 37 CFR, pertaining to "the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Patent and Trademark Office," which, if not inconsistent with law, or not suspended by the Commissioner under 37 CFR 1.183, have the force and effect of law. See 35 U.S.C. Sec. 6(a).

Sections 31 and 32 of Title 35, which are best understood when read together, are as follows:

Sec. 31. Regulations for agents and attorneys

The Commissioner, subject to the approval of the Secretary of Commerce, may prescribe regulations governing the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Patent and Trademark Office, and may require them, before being recognized as representatives of applicants or other persons, to show that they are of good moral character and reputation and are possessed of the necessary 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.

Sec. 32. Suspension or exclusion from practice

The Commissioner may, after notice and opportunity for a hearing, suspend or exclude, either generally or in any particular case, from further practice before the Patent and Trademark Office, any person, agent, or attorney shown to be incompetent or disreputable, or guilty of gross misconduct, or who does not comply with the regulations established under section 31 of this title, or who shall, by word, circular, letter, or advertising, with intent to defraud in any manner, deceive, mislead, or threaten any applicant or prospective applicant, or other person having immediate or prospective business before the Office. The reasons for any such suspension or exclusion shall be duly recorded. The United States District Court for the District of Columbia, under such conditions and upon such proceedings as it by its rules determines, may review the action of the Commissioner upon the petition of the person so refused recognition or so suspended or excluded.

The review of Wyden's suspension under Sec. 32, by the District Court for the District of Columbia, took place pursuant to the last sentence of that section. Wyden brought his appeal to this court believing it to be the proper forum to review the decision against him.

During the pendency of Wyden's appeal here, one Edmund M. Jaskiewicz who, like Wyden, had been suspended from practice before the PTO and had petitioned the District Court for the District of Columbia to review his case, had taken an appeal from an adverse decision to the U.S. Court of Appeals for the District of Columbia Circuit. Notwithstanding the PTO's questioning of our jurisdiction in this Wyden appeal, the PTO, represented by the United States Attorney, inconsistently moved the Court of Appeals for the District of Columbia Circuit on June 27, 1986, to transfer the Jaskiewicz appeal to this court, supporting its motion with lengthy arguments and discussion of authorities. October 7, 1986, the Court of Appeals, with a fully reasoned opinion 802 F.2d 532, granted the motion. The opinion concludes at p. 536, as follows:

III. CONCLUSION

An action for review of a decision of the Commissioner of the Patent and Trademark Office disciplining an attorney pursuant to 35 U.S.C. Sec. 32 arises under an Act of Congress relating to patents. Therefore, jurisdiction in the District Court is based at least in part on 28 U.S.C. Sec. 1338, and appellate review of that court's decision is granted exclusively to the Federal Circuit by 28 U.S.C. Sec. 1295(a). Accordingly, pursuant to 28 U.S.C. Sec. 1631, this case shall be transferred to [the] United States Court of Appeals for the Federal Circuit.

Jaskiewicz v. Mossinghoff, Commissioner. ^**

Since we are in full agreement with the statements of the law in that conclusion, which apply equally to the Wyden appeal, particularly in view of the fact that our sister court believes that it does not have jurisdiction, we hold that we have jurisdiction over Wyden's appeal, noting that the PTO now seems to be of that view also.

In deciding that Sec. 32 is an Act of Congress which relates to patents within the meaning of Sec. 1338(a) and that Wyden's action is a civil action arising under Sec. 32, we express no opinion as to other statutes not before us.

The Merits

After filing its order of July 16, 1985, the District Court considered a Wyden motion for a "new trial" dated July 26, 1985, and issued a second order, filed August 5, 1985, denying it. Of course, there having been a summary judgment, there has been no trial. Appellant's Notice of Appeal states that the appeal is "from the order denying a new trial entered in this action on the 5th day of August, 1985." While the PTO has noted this fact, neither party has taken this notice literally or so much as mentioned denial of a new trial as being an issue before us. The briefs argue the merits of the original order granting the summary judgment and we therefore treat it as raising the questions really before us, considering the fact that Wyden is not a lawyer.

Having carefully considered the presentations of both parties, we are unable to find any merit in appellant's contentions. The decision below granting summary judgment in favor of the Commissioner of Patents and Trademarks is therefore affirmed.

AFFIRMED.

MARKEY, Chief Judge, dissenting.

Convinced that this court lacks jurisdiction, I cannot join the court in deciding the merits of this appeal. Nor (absent congressional revision of 28 U.S.C. Sec. 1295 or Supreme Court reversal in this case) can I escape what I see as the effect of the present exercise of jurisdiction on future appeals in which our jurisdiction is said to be present simply because an involved statute "relates to...