United States District Court, D. Massachusetts
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).
Page Kelley United States Magistrate Judge
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 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. The Transfer Order, together with the case
file from the Federal Circuit, were received on October 25,
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
Law - Rule 12(b)(1).
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.
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.
Patent No. 9, 234, 725.
following facts are taken from plaintiff's petition (#2
at 3-110), the declaration of Robert A. Clarke (#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 and Motion for Summary
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 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.)
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
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.
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.)
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