Athridge v. Quigg 271 U.S. App. D.C. 323, 852 F.2d 621

Opinion for the Court filed PER CURIAM.

Dissenting opinion filed by Circuit Judge ROBINSON.

ON MOTION TO TRANSFER

PER CURIAM:

Pursuant to authority granted by Congress, 35 U.S.C. § 31 (1982), the Commissioner of Patents and Trademarks has promulgated regulations governing practice before the Patent and Trademark Office. In order to become registered as a patent practitioner, an applicant must fulfill the requirements of 37 C.F.R. § 10.7 (1987), including filing the application and establishing that he or she is of good moral character and repute, and possessed of the necessary legal, scientific, and technical skills.

Appellant Athridge successfully navigated the requirements of section 10.7 only to founder on a disqualification set forth in 37 C.F.R. § 10.6 barring admission to most attorneys employed by the United States government.1 Athridge has been employed as an attorney by the Federal Trade Commission for more than twenty years in a position in which his official duties do not “require the preparation and prosecution of applications for patent.” Therefore, the Commissioner refused to place his name on the register as a patent practitioner.

Athridge unsuccessfully contested this disqualification before the Patent and Trademark Office, then filed suit in the United States District Court for the District of Columbia challenging section 10.-6(d) on constitutional grounds and seeking an order that he be placed on the register and a declaratory judgment that the regulation is invalid. Athridge cited as his jurisdictional bases 35 U.S.C. § 32 (granting power to the United States District Court for the District of Columbia to review a *325decision of the Commissioner suspending or excluding a person from practice before the Patent and Trademark Office)2 and 28 U.S.C. §§ 1331, 2201, and 2202. The district court granted partial relief by ordering that Athridge be placed on the register with an “inactive” endorsement, and Athridge noted an appeal to this court.3

Pursuant to 28 U.S.C. § 1631 (1982), the Commissioner has filed a motion to transfer this appeal to the United States Court of Appeals for the Federal Circuit, relying on Wyden v. Commissioner of Patents and Trademarks, 807 F.2d 934 (Fed. Cir.1986), and Jaskiewicz v. Mossinghoff, 802 F.2d 532 (D.C.Cir.1986). In his opposition, Athridge argues that the issues in his case are distinguishable from the issues raised in Wyden and Jaskiewicz; therefore, those cases are not controlling and review of his constitutional challenges to the regulation properly lies in this court.

The Federal Courts Improvement Act of 1982, Pub.L. No. 97-164, 96 Stat. 25, grants to the United States Court of Appeals for the Federal Circuit exclusive jurisdiction over appeals where district court jurisdiction arises in whole or in part under federal laws relating to patents. 28 U.S.C. § 1295(a)(1) (1982). In Jaskiewicz, we held that

an action for review of a decision of the Commissioner of the Patent and Trademark Office disciplining an attorney pursuant to 35 U.S.C. § 32 arises under an Act of Congress relating to patents. Therefore, jurisdiction in the District Court is based at least in part on 28 U.S.C. § 1338, and appellate review of that court’s decision is granted exclusively to the Federal Circuit by 28 U.S.C. § 1295(a).

Jaskiewicz, 802 F.2d at 536-37. “We can hardly imagine the Federal Circuit seeking ‘to achieve uniformity in patent matters’ without exclusive jurisdiction over appeals relating to who may practice before the Patent and Trademark Office.” Id. at 534. The Federal Circuit reached a similar conclusion in Wyden v. Commissioner of Patents and Trademarks, 807 F.2d 934 (Fed. Cir.1986).

The distinctions cited by Athridge between his case and those of Jaskiewicz and Wyden do not require a different result. We hold that the Federal Circuit, not this court, has jurisdiction over this appeal, as it does over all appeals relating to practice before the Patent and Trademark Office. We find that it is in the interest of justice to transfer this appeal to the court with jurisdiction to entertain it. 28 U.S.C. § 1631. Accordingly, we order as directed below that this appeal be transferred to the United States Court of Appeals for the Federal Circuit.

It is so ordered.

ORDER

Upon consideration of appellees’ motion to transfer and appellant’s opposition thereto, it is

ORDERED by the court that appellees’ motion to transfer be granted for the reasons stated above, and it is further

*326ORDERED, that this case be transferred to the United States Court of Appeals for the Federal Circuit.

The Clerk is directed to send a certified copy of this order and the original file to the United States Court of Appeals for the Federal Circuit, by certified mail, return receipt requested.

SPOTTSWOOD W. ROBINSON, III, Circuit Judge,

dissenting:

Events subsequent to the District Court's decision1 lead me to conclude that this case is moot. On that basis, resolution of the issue of jurisdiction to review that decision on the merits is inappropriate. I would vacate the District Court’s judgment and remand the case to that court for dismissal of Athridge’s action.

While the motion to transfer this appeal to the Federal Circuit was pending, the Commissioner informed us that he had directed placement of Athridge’s name on the register-without endorsement as “inactive.” 2 The Commissioner also announced his intention to eliminate from Section 10.-6(d) of the rules of practice before the Patent and Trademark Office the requirement that a registered attorney who is a federal employee be designated as “inactive” during his or her period of service with the Government.3 Additionally, a notice of proposed rulemaking to abolish completely Section 10.6(d) has been published,4 and the changes anticipated would be radical. Federal employees otherwise qualified would be registered, whether or not their official duties extend to preparation and prosecution of patent applications, and designations of inactive status would be discontinued.5

It seems clear that Athridge has obtained all the relief he is entitled to demand, and accordingly that his case is now moot. Just four years ago, in Doe v. Harris,,6 we delineated the principles applicable:

First, the court must conclude “with assurance that ‘there is no reasonable expectation’ ... that the alleged violation will recur.”7 ... [I]n non-class actions ... the chance of recurrence must be evaluated with reference to the expectation that “the same complaining party [will] be subjected to the same action again.”8 Second, under the Davis formulation, it must be plain that “interim relief or events have completely and irrevocably eradicated the effects of the alleged violation.”9

Each of these requirements, I think, has been met.

Athridge asked the agency to list his name on the register with an “inactive” designation.10 When, however, he came into the District Court, he sought more — invalidation of Section 10.6(d).11 The court held that Athridge’s name should be placed on the register, but with a designation of “inactive” status.12 Althridge then object*327ed to that endorsement, and the Commissioner removed it. Indeed, the Commissioner is moving toward total abolition of the questioned rule, not only for Athridge, but for all federally employed attorneys. There is no foundation for any claim that the Commissioner will deviate. from this course or will attempt to alter Athridge’s registration as it now stands.13 I am constrained to “believe that this aspect of the case has ‘lost it character as a present, live controversy of the kind that must exist if [the Court is] to avoid advisory opinions on abstract propositions of law.’ ”14

The second condition of mootness is equally met; the Commissioner’s decision has “completely and irrevocably eradicated the effects of the violation.” 15 Athridge’s bid for injunctive relief on his own behalf is plainly foreclosed by the action of the District Court in combination with that later taken by the Commissioner. To the extent that his claims appear to survive in the form of requests for injunctive relief on behalf of all federal attorneys, Athridge is barred because he did not institute his suit as a class action or seek class certification.16 Similarly, Athridge’s request for declaratory relief must fail for lack of a continuing governmental practice threatening injury to any interest he properly may litigate.17 All circumstances considered, I would forego a determination of the jurisdictional question, and dispose of this appeal on grounds of mootness.18