DC is Improper Venue for Appeal of PTO Petition by Foreign Patentee

PatentLawPic011Michilin Prosperity v. Dudas (D.D.C 2007)

Michilin’s patented shredder is designed for handling both paper and CDs. Michilin’s claim 1 requires a “paper touch switch” and a “disc touch switch.” Claim 4, which depends upon claim 1, indicates a “single touch switch.”  Seeing a technical error, Michilin filed for a certificate of correction to transform claim 4 into an independent claim.  The PTO denied that request — indicating that a reissue may be the proper recourse. Michilin, a Taiwanese company, appealed the PTO’s denial to district court in the District of Columbia.

On appeal, the PTO quickly requested dismissal based on venue — arguing that the case must be brought in Virginia.

Venue Statutes:

  • 28 U.S.C. § 1391(e): Actions against a US Gov’t officer acting in his official capacity must be filed in a jurisdiction where (1) the defendant resides; (2) a substantial part of the claim arises; (3) the property is located; or (4) where the plaintiff resides if no real property is at issue.
  • 35 U.S.C. § 1(b): The residence of an official defendant is the “official residence” of the officer or agency.

The PTO’s Virginia headquarters is both Mr. Dudas’s official residence and the site of the denial of Michilin’s request. That, according to the court makes Virginia the only proper venue for an appeal of this case. Case transferred to E.D.Va.

Two failed arguments:

  1. Dudas is also an officer in the Department of Commerce, which is located in DC. This fails because Dudas is being sued in his capacity as Director of the USPTO.
  2. The patent is “located” in DC because Michilin had filed parallel patent infringement litigation in DC. This argument may have some weight, but failed here because that case had already been dismissed.

Cite: Michilin Prosperity Co. v. Dudas, 2007 U.S. Dist. LEXIS 55216 (D.D.C. July 31, 2007).

17 thoughts on “DC is Improper Venue for Appeal of PTO Petition by Foreign Patentee

  1. 17

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  3. 15

    Ha, I wonder who he thinks should pay the UPS shipping costs for delivering 63 billion dollars in gold and silver? What would UPS charge to even insure for that amount?

  4. 14

    I invite a contact from anyone that wants to sue the PTO in D.C. There is a long line of D.C. Circuit cases holding that D.C. venue is proper for at least certain classes of cases beyond §§ 145, 146. At least one of these cases went up to the Federal Circuit – FedCir held that D.C. Circuit law applied, and that D.C. venue was proper. I will share this insight (among others) with a plaintiff that has a reasonable case seeking procedural regularity in PTO proceedings and would like to make it better. PatentProcedure@gmail.com

  5. 13

    Sheeeeeit man I got that beat. Check this out.
    link to ananova.com
    It is why I am against letting people not born in the United States run for President. We have enough home-grown cooks and thieves that run for President. Don’t need increase the pool of contestants.

  6. 11

    You forgot one key aspect of creativity – only PERSUASIVE creativity is the hallmark of a great attorney.

  7. 10

    No need for the snark. For every sound “creative” constitutional argument, there are a thousand idiots out there who think that whatever they don’t like must be unconstitutional.

    I look forward to seeing your argument on this issue. It sounds at least facially plausible.

  8. 9

    Great you can read. Now why don’t you try demonstrating some creativity. It is the hallmark of a great attorney:)

  9. 8

    If your argument is that the patent venue statute is unconstitutional as violative of the constitutional right to travel, then I look forward to seeing the explanation.

    And the Slaughter-House Cases are 134 years old, not 80. 🙂

  10. 7

    Are you familiar with Saenz v. Roe, 119 S.Ct. 1518 (1999). I think it a bit more relevant that some 80 year old cases.

  11. 5

    KCB, I wish you luck in your use of the P&I argument, which I agree with. I just don’t see a minor obstacle such as the Constitution as standing in the way of judicial and administrative expedience.

  12. 4

    Sorry. I can’t give that one away. I have been workin on the theory for a couple of years and it looks like I will have an opportunity to use it soon.

  13. 3

    Also, even if venue were proper under 1391(e)(3), the DC court could (and likely would have) simply transfer the case to Virginia based on forum non conveniens.

  14. 1

    28 U.S.C. § 1391(e) violates the privileges and immunities clause. But hey since when did the Constitution ever stop the government. Oh yeah, continuation practice. Time to bring the old P&I clause back.

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