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Diaz v. Matal

United States District Court, D. Massachusetts

August 1, 2017

KEVIN DIAZ, Plaintiff, [1]
v.
JOSEPH MATAL, [2] Interim Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, and ROBERT DELL, [3] in his official capacity as Editor of United States Naval Post Graduate School, Defendants.

          MEMORANDUM AND ORDER ON DEFENDANT LEE'S MOTION TO DISMISS (#13), PLAINTIFF'S MOTION FOR JUDGMENT ON THE MERITS (#15) AND MOTION FOR SUMMARY JUDGMENT (#20).

          M. Page Kelley United States Magistrate Judge

         I. Introduction.

         The petition for appeal review in this patent case was originally filed in the United States Court of Appeals for the Federal Circuit in early August 2016. The parties were ordered to file briefs on the question whether the court had jurisdiction over the appeal. On October 24, 2016, the Federal Circuit concluded that it was, in fact, without jurisdiction[4] and ordered that this case, with all pending motions, be transferred to the United States District Court for the District of Massachusetts pursuant to 28 U.S.C. § 1631.[5] The Transfer Order, together with the case file from the Federal Circuit, were received on October 25, 2016.

         Diaz's petition concerns his attempts to correct a patent title and abstract. Defendant Joseph Matal, the interim Director of the United States Patent and Trademark Office (USPTO), has moved to dismiss pursuant to Rule 12(b)(1), Fed. R. Civ. P., arguing that plaintiff has failed to exhaust his administrative remedies and failed to identify a clearly-defined, nondiscretionary duty owed to him by the USPTO.

         II. The Law - Rule 12(b)(1).

         A defendant may move to dismiss an action based on lack of federal subject matter jurisdiction under Rule 12(b)(1), Fed.R.Civ.P. Because federal courts are considered courts of limited jurisdiction, “[t]he existence of subject-matter jurisdiction ‘is never presumed.'” Fafel v. Dipaola, 399 F.3d 403, 410 (1st Cir. 2005) (quoting Viquiera v. First Bank, 140 F.3d 12, 16 (1st Cir. 1998)). Rather, “‘the party invoking the jurisdiction of a federal court carries the burden of proving its existence.'” Murphy v. United States, 45 F.3d 520, 522 (1st Cir.), cert. denied, 515 U.S. 1144 (1995) (quoting Taber Partners, I v. Merit Builders, Inc., 987 F.2d 57, 60 (1st Cir.), cert. denied, 510 U.S. 823 (1993)); Johansen v. U.S., 506 F.3d 65, 68 (1st Cir. 2007). Once a defendant challenges the jurisdictional basis for a claim under Rule 12(b)(1), the plaintiff bears the burden of proving jurisdiction. Thomson v. Gaskill, 315 U.S. 442, 446 (1942); Johansen, 506 F.3d at 68.

         In ruling on a motion to dismiss for lack of jurisdiction, it is incumbent upon the court to “‘credit the plaintiff's well-pled factual allegations and draw all reasonable inferences in the plaintiff's favor.'” Sanchez ex rel. D.R.-S. v. U.S., 671 F.3d 86, 92 (1st Cir. 2012) (quoting Merlonghi v. United States, 620 F.3d 50, 54 (1st Cir. 2010)). Further, the “court may also ‘consider whatever evidence has been submitted, such as the depositions and exhibits submitted.'” Merlonghi v. United States, 620 F.3d 50, 54 (1st Cir. 2010) (quoting Aversa v. United States, 99 F.3d 1200, 1210 (1st Cir. 1996)); Carroll v. U.S., 661 F.3d 87, 94 (1st Cir. 2011) (“In evaluating a motion to dismiss under Rule 12(b)(1) for lack of subject matter jurisdiction, we construe plaintiffs' complaint liberally and ordinarily may consider whatever evidence has been submitted, such as . . . depositions and exhibits.” (internal citation and quotation marks omitted)). That being said, a plaintiff cannot assert a proper jurisdictional basis “merely on ‘unsupported conclusions or interpretations of law.'” Murphy, 45 F.3d at 422 (quoting Washington Legal Foundation v. Massachusetts Bar Foundation, 993 F.2d 962, 971 (1st Cir. 1993); Johansen, 506 F.3d at 68.

         III. The Facts.

         A. U.S. Patent No. 9, 234, 725.

         The following facts are taken from plaintiff's petition (#2 at 3-110), the declaration of Robert A. Clarke[6] (#2 at 159-63) filed in support of the USPTO Director's response to the Federal Circuit's August 31, 2016 Order, and Plaintiff's Complaint[7] and Motion for Summary Judgment[8] (#5).[9]

         Diaz filed U.S. Patent Application No. 13/754, 317 on January 30, 2013. (#2 at 160 ¶ 6.) A Notice of Allowance was issued by the USPTO on September 28, 2015. Id. ¶ 7. Plaintiff sought to amend the title and abstract of the allowed patent application on November 11, 2015, by submitting an amendment after allowance under 37 C.F.R. § 1.312[10] titled “Continuation-in-Part Application.” Id. ¶ 8. In accordance with the applicable regulation, the amendment was entered by the primary examiner on December 1, 2015. (#2 at 161 ¶ 9.)

         Once Diaz paid the issue fee, U.S. Patent No. 9, 234, 725 (the ‘725 patent) issued on January 12, 2016 with the originally-filed title and abstract. Id. ¶ 10. Pertinent regulations provide that:

A brief abstract of the technical disclosure in the specification must commence on a separate sheet, preferably following the claims, under the heading ‘Abstract' or ‘Abstract of the Disclosure.' The sheet or sheets presenting the abstract may not include other parts of the application or other material. The abstract must be as concise as the disclosure permits, preferably not exceeding 150 words in length. The purpose of the abstract is to enable the Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.

37 C.F.R. § 1.72(b); see also 37 C.F.R. § 1.121(h) (“Each section of an amendment document (e.g., amendment to the claims, amendment to the specification, replacement drawings, and remarks) must begin on a separate sheet.”). Plaintiff did not include amendments to the specification on a separate sheet when he requested amendment to his title and abstract. (#2 at 161 ¶ 11.) Due to Diaz's failure to comply with 37 C.F.R. § 1.121(h) at the time he submitted his requested amendment, “[w]hen the Office of Patent Publication published the ‘725 patent, it was published with the originally filed title and abstract because there was no proper separate entry for the amended abstract and title for the ‘725 patent.” Id. ¶ 12. Further, plaintiff failed to sign his request to amend the title and abstract as required by regulation. Id. ¶ 13; 37 C.F.R. § 1.4.

         Eleven days after the ‘725 patent issued, “[t]he Supervisory Patent Examiner entered a request for a Certificate of Correction to change the title and abstract in accordance with the 1.312 amendment.” (#2 at 161 ¶ 14.) On March 11, 2016, Diaz requested a Certificate of Correction. Id. ¶¶ 9, 15. A Certificate of Correction for the ‘725 patent with the requested updated title and abstract was issued by the USPTO on June 7, 2016. (#2 at 162 ¶ 16.)

         On July 4, 2016, pursuant to 35 U.S.C. § 251, plaintiff filed a document entitled “Reissue Application” requesting that the USPTO again examine and reissue the ‘725 patent. Id. ¶ 17. The regulations provide that “[a]n application for reissue must contain the same parts required for an application for an original patent, complying with all the rules relating thereto except as otherwise provided, and in addition, must comply with the ...


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