Case Information
IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS SHERMAN DIVISION
WAYMON BURTON REED, §
§
Petitioner, §
§
v. § Civil Action No. 4:23-cv-110-ALM-KPJ § NATIONAL AERONAUTICS AND §
SPACE ADMINISTRATION, §
§
Respondent. §
REPORT AND RECOMMENDATION OF UNITED STATES MAGISTRATE JUDGE
Pending before the Court is Defendant National Aeronautics and Space Administration’s (“NASA”) Motion to Dismiss (the “Motion to Dismiss”) (Dkt. 6), to which Plaintiff Waymon Burton Reed (“Reed”) filed a response (the “Response”) (Dkt. 12), and NASA filed a reply (the “Reply”) (Dkt. 13). For the reasons that follow, the Court recommends that the Motion to Dismiss (Dkt. 6) be GRANTED .
I. BACKGROUND
A. Factual Background
On August 5, 2015, Reed initiated an administrative claim for patent infringement with NASA by sending a letter to Charles Frank Bolden, Jr., thе Administrator of NASA. Dkts. 1-1 at 2; 1-2 at 1. In the letter, Reed notified NASA that “[Reed is] the Inventor of Reed’s High-Rise Emergency Rescue Egress System that is registered with the United States Patent Office under Patent Number US 7,597,175 B2.” Dkt. 1-2 at 1. Reed further stated that “[t]he system that was built and used for rescuing the thirty-three miners in Chile in the Fall of 2010 appears to have been designed according to the specifications in [his] Patent.”
On August 18, 2015, the Office of General Counsel of NASA responded to Reed by (1) acknowledging receipt of his letter; (2) directing Reed to NASA’s process for adjudicating claims for patent infringement, as contained in 14 C.F.R. Part 1245, subpart 2; and (3) advising Reed that for NASA to consider his claim, Reed needed to provide the information required in 14 C.F.R. 1245.202, “Contents of communication initiating claim.” Dkt. 1-3 at 1.
In response to NASA’s letter, Reed submitted his Claim of Infringement on October 7, 2016. Dkt. 1-4 at 1. Shortly thereafter, on November 7, 2016, Reed submitted his Amended Claim of Infringement (the “Claim”). Dkt. 1-5 at 1. Reed outlines his allegation of patent infringement in the Claim in seven paragraphs as follows:
Dkt. 1-5 at 1–2. On February 23, 2017, Reed sent a follow-up letter inquiring as to the status of his Claim. Dkt. 1-6. On May 26, 2017, Reed sent another follow-up letter stating: “To this date, [Reed has] not been contacted by NASA concerning [the Claim], nor [has he] received an answer to [his] letter of February 23, 2017.” Dkt. 1-7 at 1.
On July 18, 2017, NASA sеnt a letter detailing its final determination (the “Denial Letter”), wherein NASA denied Reed’s administrative claim of patent infringement with respect to the ‘175 patent. Dkt. 1-8 at 1. In the Denial Letter, NASA identified the letter as its “FINAL agency action” and provided three bases for its denial of the Claim: (1) no patent infringement within the United States; (2) no exportation of components; and (3) no claim was infringed. Id. at 1–3. Regarding the first basis, NASA explаined that the Chilean rescue mission did not constitute a “making” or “use” within the United States as required by 35 U.S.C. § 271(a). Id. at 1–2. Regarding the second basis, NASA explained that the intangible suggestions provided by NASA to assist in the Chilean rescue mission did not constitute the provision of a component under 35 U.S.C. § 271(f)(1). Id. at 2. Regarding the third basis, NASA explained that, even if the actions had occurred within the United States, Reed’s patent included claim limitations that wеre not present in NASA’s suggested requirements for the rescue system used in the Chilean rescue mission and thus, “[a]pplying the rule that for there to be infringement, each and every limitation of a claim must be met by an accused device shows that claim 1, the sole claim of the ‘175 patent has not been infringed.” Id. at 2–3. NASA further notified Reed that the statute of limitations was no longer tolled upon issuance of the Denial Lettеr, pursuant to 35 U.S.C. § 286, and that the Denial Letter could be appealed by filing a claim for patent infringement in the United States Court of Federal Claims, pursuant to 28 U.S.C. § 1498(a). at 4.
On January 5, 2018, Reed submitted a Request for Reconsideration of NASA Response Dated July 18, 2017 (“Request for Reconsideration”) (Dkt. 1-9) to NASA. In the Request for Reconsideration, Reed asserted that NASA’s Denial Letter “failed or refused to address the basis of [his] Claim.” Dkt. 1-9 at 1. On January 5, 2018, Reed also submitted, in a separate letter, an update on the case to NASA and “encourage[d] NASA to address [his] Request for Reconsideration in all seriousness, and to settle with [him] without having to resort to [a] judicial remedy.” Dkt. 1-15 at 1. On June 27, 2018, Reed sent a letter to NASA requesting that NASA address his Request for Reconsideration. See Dkt. 1-16. On March 19, 2019, Reed submitted a Second Request for Reconsideration of NASA Response Datеd July 18, 2017, to Reed’s Claim of Infringement (“Second Request for Reconsideration”) (Dkt. 1-17), wherein Reed “reurge[d] NASA to answer [the] Request for Reconsideration.” Dkt. 1-17 at 1. On April 5, 2019, Reed amended his Second Request for Reconsideration, wherein he “request[ed] that NASA provide [him] with an Answer to [his] Request for Reconsideration within thirty [30] days of [NASA’s] receipt of this letter.” Dkt. 1-18 at 1–2. On May 9, 2019, NASA responded by letter to the amended Second Request for Reсonsideration and stated that, “[b]ecause our letter of July 17, 2017[,] was a FINAL Agency Action expressing NASA’s denial of the [Claim], no further consideration will be given to the claim.” Dkt. 1-19.
B. Procedural Background
Reed filed the Petition for an Administrative Writ of Mandamus Directed to NASA on Behalf of Petitioner Waymon Burton Reed with Memorandum and Declaration in Support (the “Petition”) (Dkt. 1) on February 10, 2023. In the Petition (Dkt. 1), Reed alleges that “NASA has failed or refused to make responsive answers to allegations as set forth in numbers 1 through 7 of his Claim” in violation of the Due Process Clause of the Fifth Amendment and Rule 8(b)(2) of the Federal Rules of Civil Procedure. Dkt. 1 at 5. Reed further argues that, because NASA failed to specifically respond to paragraphs 1 through 7 of the Claim, the Denial Letter is not a “final action” and constitutes a failure to act under 5 U.S.C.§ 551(13). Id. at 5–6. Thus, Reed argues that “the court has jurisdiction to hear his petition for [an] administrative writ of mandamus[,] and [he] is entitled to the relief requested herein, including issuance of the writ that will void and set aside NASA’s ‘response letter’ dated July 18, 2017 . . . , as well as to declare that such letter does not toll the statute per 35 U.S.C. § 286.” at 19 (italics omitted).
In the Motion to Dismiss (Dkt. 6), NASA argues: (1) the Petition (Dkt. 1) should be dismissed because the Federal Rules of Civil Procedure do not apply to NASA’s administrative actions; (2) Reed is not entitled to a mandamus for failure to act, unreasonable delay, or unlawful actions because there was a final agency action; and (3) any appeal of a patent infringement claim would occur in the United States Court of Federal Claims and, because the alleged infringement took place in 2010, the claim is time-barred. Dkt. 6 at 1–2.
In the Response (Dkt. 12), Reed arguеs that his right to due process was infringed because NASA “did not employ any decision-making process other than issuing a ‘response letter,’ dated July 18, 2017, and merely stated that it was a ‘FINAL agency action.’” Dkt. 12 at 3. Reed further argues that this Court has jurisdiction over the Petition (Dkt. 1) under 5 U.S.C. §§ 702, 706. Id. at 9–10. Finally, Reed argues that the Claim was timely submitted because Reed filed the Claim with NASA on October 7, 2016, within the six-year statute for submitting his Claim. Id. at 10.
In the Reply (Dkt. 13), NASA argues that the Denial Letter followed NASA’s regulations for making determinations regarding claims of patent infringement as set forth in 14 C.F.R. § 1245.205. Dkt. 13 at 1. NASA further argues that Reed has not exhausted all other avenues for relief, as required for a mandamus, because Reed did not file a claim in the United States Court of Federal Claims before the statute of limitations expired. Id. at 2.
II. LEGAL STANDARD
Rule 12(b)(6) of the Federal Rules of Civil Procedure allows a defendant to move for
dismissal of an action if the plaintiff fails to state a claim upon which relief can be granted.
See
F ED . R. C IV . P. 12(b)(6). “In evaluating motions to dismiss filed under Rule 12(b)(6), the court
‘must accept all well-pleaded facts as true, and . . . view them in the light most favorable to the
plaintiff.’”
Inclusive Cmtys. Project, Inc. v. Lincoln Prop. Co.
,
“The well-pleaded facts must permit the court ‘to infer more than the mere possibility of
misconduct.’”
Hale v. King
,
At the motion to dismiss stage, “[t]he court’s review is limited to the complaint, any
documents attached to the complaint, and any documents attached to the motion to dismiss that
are central to the claim and referenced by the complaint.”
Allen v. Vertafore, Inc.
,
III. ANALYSIS
A. Applicability of the Federal Rules of Civil Procedure
In the Petition (Dkt. 1), Reed asserts that “NASA was required to make answers thаt are responsive to allegations set forth in Reed’s Claim” in accordance with Rule 8 of the Federal Rules of Civil Procedure. Dkt. 1 at 12. NASA contends that it was not required to follow the Federal Rules of Civil Procedure in rendering its decision on an administrative settlement. See Dkt. 6 at 4. The Federal Rules of Civil Procedure “govern the procedure in all civil actions and proceedings in the United States district courts.” F ED . R. C IV . P. 1. Reеd’s Claim initiated an administrative proceeding; specifically, a claim for administrative settlement of patent infringement with NASA. See Dkt. 1-3. The Administrative Procedures Act (“APA”) and the rules outlined therein govern the procedure of Reed’s administrative proceeding with NASA—not the Federal Rules of Civil Procedure. See 5 U.S.C. § 552 (a)(1)(C) (“Each agency shall separately state and currently publish . . . rules of procedure . . . as to the scope and contents of all papers, reports, or examinations.”). Thus, to the extent that the Petition (Dkt. 1) relies on the Federal Rules of Civil Procedure to state a claim, the Court recommends that the Motion to Dismiss (Dkt. 6) be granted.
B. Mandamus under the Administrative Procedures Act
NASA brings its Motion to Dismiss (Dkt. 6) pursuant to Rule 12(b)(6) for failure to state a claim upon which relief may be granted. Specifically, NASA argues that it issued a “Final Agency Action” and thus, Reed is not entitled to mandamus under the APA. Dkt. 6 at 1. In reviewing the Petition (Dkt. 1) and attached documents, the Court agrees that there are no plausible facts that Plaintiff could allege that would entitle him to a mandamus under the APA.
Pursuant to 28 U.S.C. § 1651(a) “[t]he Supreme Court and all courts established by Act of
Congress may issue all writs necessary or appropriate in aid of their respective jurisdictions and
agreeable to the usages and principles оf law.” Further, under the Mandamus Act, “district courts
shall have original jurisdiction of any action in the nature of mandamus to compel an officer or
employee of the United States or any agency thereof to perform a duty owed to the plaintiff.”
28 U.S.C. § 1361. “Mandamus ‘is an extraordinary remedy for extraordinary causes.’”
In re United
States ex rel. Drummond
,
The APA states that “final agency action for which there is no other adequate remedy in a
court [is] subject to judicial review.” 5 U.S.C. § 704. “The Supreme Court has long taken a
pragmatic approach to finality.”
Texas v. Equal Emp. Opportunity Comm’n
,
NASA, pursuant to its power to make rules in the administration of its functions, has set
forth policies and procedures for the purpose of settling claims of patent infringement asserted
against NASA prior to the filing of such case in the United States Court of Federal Claims.
14 C.F.R. § 1245.200–01; 51 U.S.C § 20113;
see also
22 U.S.C. §§ 1498, 2356; Claims for Patent
and Copyright Infringement, 77 Fed. Reg. 14686 (Mar. 13, 2012),
Case 4:23-cv-00110-ALM-KPJ Document 14 Filed 01/09/24 Page 10 of 14 PageID #:
This process was followed here. Reed filed his Claim with NASA by submitting in writing the information specified in 14 C.F.R. § 1245.202. See Dkt. 1-5. NASA then investigated Reed’s Claim and issued the Denial Letter, detailing NASA’s reasons for denying the claim pursuant to 14 C.F.R. § 1245.205. See Dkt. 1-8. In the Denial Letter, NASA states: “We have completed our investigation . . . . This is a FINAL agency action and constitutes a DENIAL of the subject administrative claim for patent infringement.” Because the Denial Letter marks the consummation of NASA’s investigation into Reed’s claim and establishes that NASA would not pursue settlement, the Denial Letter is a final agency action.
The Court may only issue a writ to NASA regarding the Denial Letter if Reed has exhausted
all other avenuеs of relief.
See Heckler
,
Case 4:23-cv-00110-ALM-KPJ Document 14 Filed 01/09/24 Page 11 of 14 PageID #:
C. Subject Matter Jurisdiction
1. Patent Infringement Claim
Finally, NASA asserts that “[e]ven if the Court construes the Complaint as an [sic] alleging patent infringement, it must be dismissed as time-barred and jurisdiction for patent infringement is in the Federal Court of Claims.” Dkt. 6 at 6. The Court does not construe the Petition (Dkt. 1) as alleging a claim of patent infringement. Reed states that hе is “mov[ing] the Court for an Administrative Writ of Mandamus” and the relief requested by Reed is consistent with mandamus relief—a court order directing NASA to complete certain actions related to Reed’s administrative claim. See Dkt. 1 at 1, 20–21. Nevertheless, to be clear, the Court does not have jurisdiction over patent cases where the United States government uses, makes, or sells a patented invention without the permissiоn of the patent holder. 28 U.S.C. § 1498. Jurisdiction for such cases lies exclusively with the United States Court of Federal Claims. See id . Thus, the Court lacks subject matter jurisdiction for any claim of patent infringement that Reed has attempted to assert outside of his requests for a writ of mandamus or judicial review under the APA. [1]
2. Due Process Claim
In the Petition (Dkt. 1), Reed asserts that he has suffered a “due process injury” because NASA’s Denial Letter “is not a responsive рleading and, therefore, does NOT constitute an answer as mandated per FRCP Rule 8(b).” Dkt. 1 at 5 (italics omitted). As discussed above, the Federal Rules of Civil Procedure do not govern administrative proceedings. See supra Section III.A. In the *12 Case 4:23-cv-00110-ALM-KPJ Document 14 Filed 01/09/24 Page 12 of 14 PageID #:
Response (Dkt. 12), Reed asserts that NASA “did not employ any decision-making process” and thus, NASA violated his due process of law because “Reed’s allegations in his Claim are not addressed with discrete answers either in any administrative proceedings or in said [Denial Letter].” Dkt. 12 at 1–3. NASA did not address Reed’s due process claim in the Motion to Dismiss (Dkt. 6) or the Reply (Dkt. 13). To the extent that Reed is asserting a distinct cause of action for due process, the Court should dismiss it for lack of subject matter jurisdiction.
Because Reed asserts that his right to due process guaranteed by the Fifth Amendment was
violated by NASA, Plaintiff must establish that there has been a waiver of NASA’s sovereign
immunity.
See Villarreal v. Horn
, 203 F. Supp. 3d 765, 774 (S.D. Tex. 2016) (“As a general
jurisdictional statute, 28 U.S.C. § 1331 ‘does not provide a general waiver of sovereign
immunity.’”
Belle Co. v. U.S. Army Corps of Eng’rs
,
As discussed above, NASA, following the decision-making process set forth in its regulations, issued the Denial Letter, a final agency action. See supra Section III.B. A final agency action is only reviewable if “there is no other adequate remedy in a court.” 5 U.S.C. § 704. Reed *13 Case 4:23-cv-00110-ALM-KPJ Document 14 Filed 01/09/24 Page 13 of 14 PageID #:
had an adequate remedy for his claim of patent infringement, which was to file a claim of patent
infringement in the United States Court of Federal Claims. 28 U.S.C. § 1498. Reed has not argued
that suit in the Court of Federal Claims is inadequate to provide relief for his claim of patent
infringement.
See Villarreal v. Horn
, 203 F. Supp. 3d 765, 774 (S.D. Tex. 2016) (finding that
Plaintiffs did not meet their burden to show that the remedy available was inadequate such that
relief under the APA was justified). Further, although the statute of limitations may have now
lapsed, Reed’s failure to pursue the adequatе remedy available to him does not vitiate its existence.
See Cambranis v. Pompeo
, No. 19-cv-238,
IV. RECOMMENDATION
For the foregoing reasons, the Court recommends the Motion to Dismiss (Dkt. 6) be GRANTED . The Court further recommends that Reed’s claim for mandamus against NASA be DISMISSED WITH PREJUDICE and that any other purported claim asserted by Reed against NASA be DISMISSED WITHOUT PREJUDICE .
Within fourteen (14) days after service of the magistrate judge’s report, any party may serve and file written objections to the findings and recommendations of the magistrate judge. 28 U.S.C. § 636(b)(1)(C).
Case 4:23-cv-00110-ALM-KPJ Document 14 Filed 01/09/24 Page 14 of 14 PageID #:
A party is entitled to de novo review by the district court of the findings and conclusions contained in this report only if specific objections are made, and failure to timely file written objections to any proposed findings, conclusions, and recommendations contained in this report shall bar an aggrieved party from appellate review of those factual findings and legal conclusions accepted by the district court, except on grounds of plain error, provided that the party has been served with notice that such consequences will result from a failure to object. ; Thomas v. Arn , 474 U.S. 140, 148 (1985); see also Douglass v. United Servs. Auto Ass’n , 79 F.3d 1415, 1417 (5th Cir. 1996) (en banc), superseded by statute on other grounds , 28 U.S.C. § 636(b)(1) (extending the time to file objections from ten to fourteen days).
Notes
[1] Further, any patent infringement claim asserted by Reed would be time-barred. 35 U.S.C. § 286 (“[N]o recovery shall be had for any infringement committed more than six years prior to the filing of the complaint.”). The alleged patent infringement occurred in the Fall of 2010. Reed initiated a patent infringement claim with NASA on August 5, 2015, tolling the statute of limitations. See 35 U.S.C. § 286 (“In the case of claims against the United States Government for use of a patented invention, the period before bringing suit, up to six years, between the date of receipt of a written claim for compensation by the department or agency of the Government having authority to settle such claim, and the date of mailing by the Government of a notice to the claimant that his claim has been denied shall not be counted as part of the period referred to in the preceding paragraph.”). NASA issued its Denial Letter on July 28, 2017, ending the toll. Reed filed the Petition on February 10, 2023.