Thomas P. Athridge, Jr. v. Donald J. Quigg, Commissioner of Patents & Trademarks
852 F.2d 621
D.C. Cir.
1988
Check Treatment

*2 United States District the Dis D.H. Before ROBINSON and challenging trict of Columbia section 10.- GINSBURG, Judges, Circuit 6(d) grounds on seeking constitutional MacKINNON, Judge. Circuit Senior an order that he be and a declaratory judgment regu Opinion for the Court filed PER lation is invalid. jur cited as his CURIAM. isdictional (granting bases 35 U.S.C. 32§ by Dissenting opinion power filed Circuit to the United States District Court Judge ROBINSON. for the to District of Columbia review a employees. Any period any employment by 1. "Government officer or em- United ployee disqualified the United States who employee or States. An officer (18 205) practicing statute from require prepara- official duties States whose attorney agent proceedings as an or or other prosecution applications patent tion departments matters before Government or requirements and who fulfills the of this agencies, may registered practice not be to be- registered be to before the Office any registered attorney fore the Office. If or necessary carry to the extent out his or her agent employee an officer or becomes describing official duties. A written statement disqualified United States who is statute employee the official duties of the officer or practicing agent pro- from as an or signed agency employing on behalf of the ceedings and other matters before Government employee may required by officer or departments agencies, or his or her name shall 10.6(d) (1987). Director." 37 C.F.R. § register .during be endorsed as inactive on the suspending granted that court’s decision the Commissioner exclusive- decision of person practice before excluding a from ly or the Federal Circuit 28 U.S.C. Office)2 and 28 and Trademark the Patent 1295(a). 2202. The dis- U.S.C. §§ Jaskiewicz, 802 F.2d at 536-37. “We can *3 partial by relief order- granted court trict hardly imagine seeking the Federal Circuit Athridge be on ing that uniformity patent ‘to in achieve matters’ endorsement, and Ath- an “inactive” with jurisdiction appeals without exclusive over appeal an to this court.3 ridge noted may relating practice to who before Pursuant to 28 U.S.C. § Patent and Trademark Office.” Id. at 534. to filed a motion the Commissioner has The Federal Circuit reached a similar con appeal United States transfer this in Wyden clusion v. Commissioner Pat of Circuit, Appeals for the Federal of Court (Fed. ents and 807 F.2d 934 Wyden Pat relying Commissioner of Cir.1986). (Fed. Trademarks, 807 F.2d 934 ents and by Athridge The distinctions be- cited Cir.1986), Mossinghoff, and Jaskiewicz his case and and tween those of Jaskiewicz (D.C.Cir.1986). opposi In his Wyden require do not a different result. in his tion, Athridge argues the issues that Circuit, hold that the We Federal not this distinguishable from the issues are case court, jurisdiction appeal, has over this as it Jaskiewicz; there Wyden in and raised appeals relating over all controlling does to fore, are and those eases not challenges to the Patent and Trademark Office. of his constitutional before review in this court. regulation properly justice lies it is in We find that the interest of appeal transfer this to to the court with Act of Improvement The Federal Courts jurisdiction to it. 28 U.S.C. entertain grants No. Pub.L. 96 Stat. Accordingly, we order as directed § Appeals States to the United Court appeal below that this be transferred jurisdiction Circuit the Federal exclusive Appeals States Court of jurisdic- appeals where district court over part in or in under federal Federal Circuit. tion arises whole patents. relating to 28 U.S.C. laws ordered. It is so 1295(a)(1)(1982). Jaskiewicz, we held ORDER a decision of the an action review of and Trade- Commissioner the Patent appellees’ motion Upon consideration of disciplining attorney pur- mark Office opposition appellant’s to transfer to 35 U.S.C. under an suant 32 arises thereto, it is Congress relating patents. to Act of appellees’ ORDERED Therefore, jurisdiction in the District granted transfer be for the rea- motion to is based at in on 28 Court least above, further appellate review of stated and it is sons may, op- upon proceedings its rules notice and and determines, such as it 2. "The Commissioner after exclude, portunity hearing, suspend for a or of the Com- review the action case, generally any particular from either or upon petition person re- so mission practice before Patent and Trade- further recognition suspended excluded.” or so or fused Office, any person, agent, or mark 32§ 35 U.S.C. incompetent disreputable, to be or shown or misconduct, gross guilty of who does not or opinion appeal In our is not moot. regulations comply under word, with the established contrary conclusion because dissent reaches title, shall, 31 of this or who section circular, recently placed Athridge’s name on letter, advertising, intent to or endorsement without "inactive” deceive, mislead, manner, any or defraud rulemaking proceedings to abol and instituted any applicant applicant, prospective threaten or section, however, 10.6(d). section That ish person having prospec- other immediate or or regulations proposed effect as the still in before the reasons for tive business Office. The promulgated. v. Ho Kerr-McGee not been del, duly Cf. suspension such or exclusion shall be (D.C.Cir.1988). F.2d The United District Court for recorded. States Columbia, conditions the District under such qualified employees otherwise cal. Federal ORDERED, this case be transferred Appeals registered, whether or their would the United States preparation and extend to Circuit. official duties the Federal patent applications, des- prosecution a certified to send is directed Clerk dis- inactive status would be ignations of file original copy this order continued.5 Appeals for the States Court the United mail, Circuit, return by certified Federal has ob It seems clear receipt requested. he is entitled to de tained all the relief mand, accordingly that his case is now III, ROBINSON, W. SPOTTSWOOD years ago, in v. Harr moot. four Doe Just dissenting: Judge, Circuit *4 is,6 principles applicable: we delineated the District subsequent Events First, as- the court must conclude “with me to conclude that lead decision1 Court’s ex- that ‘there is no surance reasonable basis, resolution On that this is moot. case alleged violation pectation’ ... to review that jurisdiction of the issue non-class actions will ... recur.”7 [I]n I inappropriate. is the merits decision on the chance of recurrence must be ... judgment Court’s vacate the District would expecta- reference to the evaluated with that court for dis- the case to and remand party complaining “the same tion that Athridge’s action. missal of subjected to the same action be [will] appeal transfer this the motion to While 8 Second, for- again.” under Davis pending, the was to the Federal Circuit mulation, plain it must that “interim he had di- informed us that Commissioner completely and irre- relief or events have Athridge’s name on placement of rected vocably the effects of the al- eradicated endorsement as “inac- without 9 leged violation.” 2 announced also tive.” The Commissioner think, requirements, I has Each of these from Section 10.- intention to eliminate his been met. practice before the 6(d) rules of Athridge to list his asked require- Trademark Office the Patent name on with an “inactive” attorney who is a registered ment a that however, When, designation.10 came he designated as “inac- employee be federal Court, sought he into the more—in- District period of service during his or her tive” 10.6(d).11 of Section Additionally, validation a no- with the Government.3 Athridge’s that name should be rulemaking held com- proposed tice of abolish designation of register, but with a 10.6(d) published,4 on the has been pletely Section Althridge object- then “inactive” status.12 changes anticipated would be radi- and the Id., (D.D.C. County (quoting 9. F.Supp. F.2d at 111 Los Athridge Quigg, 696 v. 655 779 1. 7, 631, Davis, 1987). Angeles supra note 440 U.S. at v. 1384, (citations L.Ed.2d at 649 99 S.Ct. 59 at Mootness, Athridge Quigg, 2. Suggestion No. omitted)). 27, 1987) (filed (D.C.Cir.) at 2-3. Oct. 87-5164 1, F.Supp. Quigg, supra note 10. 655 3. Id. 3. at at 780. 20,871 (1988). Fed.Reg. 4. 53 done, Athridge 11. Id. Were this would 5. Id. registered "inac- without notation of an been 27, U.S.App.D.C. 696 6. 225 tive" status. County (quoting F.2d at 111 Id. 696 at 12. Id. at 780-782. The court concluded 625, 631, Davis, Angeles U.S. 99 S.Ct. 440 Los invalid, 10.6(d) arbitrary and thus was 1379, 1384, in turn L.Ed.2d 649 59 registration of an that it barred otherwise Co., extent quoting United States v. W.T. Grant solely attorney employment 894, 897, qualified 629, 633, in federal S.Ct. 97 L.Ed. 1309 73 employment, but further of that (1953)). on the basis registered could be ruled that the Id., (quoting at Weinstein v. Brad- 696 F.2d 111 designated "inactive.” Id. as 347, 348, ford, S.Ct. 46 (1975)). L.Ed.2d endorsement, taken the Commissioner. To the extent the Commis- ed to Indeed, appear his claims to survive in the it. Commis- sioner removed requests injunctive total abolition form of relief on moving toward is sioner Athridge, rule, attorneys, Athridge of all federal questioned behalf attorneys. federally employed his barred because he did not institute suit for all but any claim that foundation for There is no as a class action or seek class certifica- this deviate from Similarly, Athridge’s request will the Commissioner tion.16 Athridge’s attempt to alter declaratory or will lack course relief must fail for I con- am registration as it now continuing governmental practice threaten- stands.13 aspect of the to “believe properly strained he ing injury interest present, as a live it character considered, case has ‘lost All I circumstances litigate.17 exist if kind that must controversy of the forego juris- would a determination of the [the abstract propositions is] to avoid of law.’ advisory opinions on ” peal dictional grounds of question, mootness.18 dispose of this ap- of mootness second condition met; decision the Commissioner’s equally irrevocably eradicated “completely and

has *5 Athridge’s the violation.”15

the effects of on his own behalf injunctive relief

bid for of the Dis- by the action

plainly foreclosed with that later in combination

trict Court Davis, supra in which the court has af Angeles uncritical manner County Los v. See 13. 1384, 632-633, "patent" label to this case. I have 7, fixed the 59 99 S.Ct. at note 440 U.S. at a claim that 650; serious reservations as whether Odegaard, see also DeFunis L.Ed.2d at 203, 1704, 1706, interpretation U.S.C. 312, 316-317, §§ turns on an of 18 40 S.Ct. 94 provi which are conflict-of-interests 164, (1979) 205 (accepting representa- 169 L.Ed.2d sions, part upon whole or in 28 is based in they would not officials that tion of law school 1338, jurisdic concerns federal which registration abrogate final seek to student’s patent cases. See Christianson v. Colt tion over litigation). year, the outcome whatever -, Corp., Operating - U.S. 108 S.Ct. Indus. 2166, (1988). the situa 811 Unlike Davis, 7, 100 L.Ed.2d Angeles supra County note Los Mossinghoff, presented in 256 tions 633, 1384, Jaskiewicz L.Ed.2d at U.S. at 99 S.Ct. at 59 440 1, (1986), Wyden U.S.App.D.C. F.2d 802 532 45, 48, Beals, (quoting U.S. 90 Hall v. 396 650 Patents & 807 v. Commissioner 201-202, 214, (1969)). 200, 218 24 L.Ed.2d S.Ct. (Fed.Cir.1986), clearly depended which patent pro upon reading of substantive supra at note 9. 15. See text visions, right us in the case before asserted readily capable appear to be so States, 1247, does not 1251- v. United 631 F.2d 16. Sannon construction, being or sus one “defeated (5th Cir.1980). pat opposite of [the construction tained Operat McCorkle, Indus. Christianson v. Colt laws.” Eng'g ent] Super Co. v. 17. See Tire — at -, S.Ct. at 121-122, ing Corp., supra, U.S. 115, 40 L.Ed. 94 S.Ct. Delineation of 100 L.Ed.2d at 824. (1974); Depart- Better Gov't Ass’n v. 2d 17-18 the corre precise 1338 and State, boundaries U.S.App.D.C. ment of 1295(a)(1) sponding of 28 U.S.C. boundaries F.2d 91-92 circuit), complex (jurisdiction is a of the federal that is ill-served curso jurisdictional delicate endeavor Though and ry I would not reach the my about the treatment. question, I must voice uneasiness