United States Court of Appeals for the Federal Circuit
05-1204
CATHERINE LACAVERA,
Plaintiff-Appellant,
v.
JON W. DUDAS, Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office,
Defendant-Appellee.
Catherine C. Lacavera, of San Francisco, California, pro se.
John M. Whealan, Solicitor, Office of the Solicitor, United States Patent and
Trademark Office, of Arlington, Virginia, argued for defendant-appellee. With him on the
brief were Sydney O. Johnson, Jr. and James R. Hughes, Associate Solicitors.
Appealed from: United States District Court for the District of Columbia
Judge John D. Bates
United States Court of Appeals for the Federal Circuit
05-1204
CATHERINE LACAVERA,
Plaintiff-Appellant,
v.
JON W. DUDAS, Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office,
Defendant-Appellee.
__________________________
DECIDED: February 6, 2006
__________________________
Before NEWMAN, MAYER, and GAJARSA, Circuit Judges.
MAYER, Circuit Judge.
Catherine Lacavera appeals the judgment of the United States District Court for
the District of Columbia denying her motion for summary judgment and granting
summary judgment in favor of the United States Patent and Trademark Office (“PTO”).
Lacavera v. Toupin, Civ. Action No. 03-1469 (D.D.C. Nov. 30, 2004).∗ Because the
PTO’s decision to grant Lacavera limited recognition was consistent with its regulations
and supported by the record, its regulations do not exceed the statutory authority, and it
did not deny Lacavera equal protection, we affirm.
∗
During the pendency of this appeal, at the PTO’s request and with
Lacavera’s consent, Jon W. Dudas, Director of the PTO, was substituted for James
Toupin, PTO General Counsel, as the defendant-appellee.
Background
The PTO has statutory authority to regulate attorney practice before it pursuant
to 35 U.S.C. § 2(b)(2)(D) (2000), which provides:
the [PTO] may establish regulations, not inconsistent with law, which . . .
may govern the recognition and conduct of . . . attorneys . . . representing
applicants or other parties before the Office, and may require them . . . to
show that they are of good moral character and reputation and are
possessed of the necessary qualifications to render to applicants or other
persons valuable service, advice, and assistance in the presentation or
prosecution of their applications or other business before the Office . . . .
From this authority, the PTO has issued regulations to govern the recognition of
attorneys. Under 37 C.F.R. § 10.7(a)(2) (2003),∗∗ in order to be registered, an individual
must establish that she is “[o]f good moral character and repute; . . . [p]ossessed of the
legal, scientific, and technical qualifications . . . and . . . otherwise competent to advise
and assist applicants for patents.” An alien “may be registered . . . provided . . .
[r]egistration is not inconsistent with the terms upon which the alien was admitted to,
and resides in, the United States.” 37 C.F.R. § 10.6(a). Aliens for whom registration
would be inconsistent with legal restrictions imposed on them may, nevertheless, be
granted “limited recognition,” see id. § 10.9(b), a status which allows them to practice
before the PTO, but confines their activities to those authorized by the Immigration and
Naturalization Service (“INS”), now the United States Bureau of Citizenship and
Immigration Services. With respect to nonimmigrant aliens, the PTO has interpreted
∗∗
Effective July 26, 2004, the PTO changed its regulations pertaining to the
representation of others. See 69 Fed. Reg. 35428 (June 24, 2004). As a result of these
changes, sections 10.6, 10.7, and 10.9 were removed and reserved, and the applicable
regulations governing the representation of others are now found at sections 11.6, 11.7,
and 11.9. See 37 C.F.R. § 11 (2005). Sections 10.6, 10.7, and 10.9 were, however,
the governing regulations for Lacavera’s administrative action and her request for
judicial review before the trial court. Hence, in reviewing the trial court’s decision, we
use sections 10.6, 10.7, and 10.9.
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section 10.9(b) to dictate that they are not registered upon passing the patent
examination, but rather are “given limited recognition under 37 CFR § 10.9(b) if
recognition is consistent with the capacity of employment authorized by the INS.” See
PTO, General Requirements Bulletin (Nov. 3, 1999) (“GRB”).
Lacavera, a Canadian citizen and nonimmigrant alien, began working in the
United States as an attorney in September 2001 pursuant to a one year TN visa, which
permitted her only to prepare and prosecute patent applications at the New York office
of the White & Case law firm. In January 2002, Lacavera began the application process
for recognition before the PTO, and she successfully passed the April 17, 2002, patent
examination. Because of legal restrictions imposed by her visa, she was granted limited
recognition. Although Lacavera’s visa had a one year duration, she received timely
extensions from the INS, and the PTO extended her limited recognition period
accordingly. At the time this appeal was filed, Lacavera held an H-1B visa and, with the
appropriate INS authorization, had changed employers. Her present visa has a three
year duration and lists preparation and prosecution of patent applications for Google,
Inc. as her sole employable activity. Her current limited recognition status is consistent
with her work and time restrictions.
After Lacavera was initially granted limited recognition on July 8, 2002, she
challenged the PTO’s decision to deny her full registration. The PTO General Counsel
denied her challenge, and Lacavera filed suit in the United States District Court for the
District of Columbia under the Administrative Procedure Act, 5 U.S.C. §§ 702-706
(2000), claiming that (1) the PTO’s decision was inconsistent with its regulations, (2) the
regulations exceeded the authority of their enabling statute, and (3) the PTO’s decision
denied her equal protection. The trial court denied Lacavera’s motion for summary
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judgment and granted summary judgment in favor of the PTO. Lacavera appeals, and
we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
Discussion
We review the trial court’s grant of summary judgment without deference,
reapplying the same standard as the trial court. See Star Fruits S.N.C. v. United States,
393 F.3d 1277, 1281 (Fed. Cir. 2005). Summary judgment is appropriate “if the
pleadings, depositions, answers to interrogatories, and admissions on file, together with
the affidavits, if any, show that there is no genuine issue as to any material fact and that
the moving party is entitled to a judgment as a matter of law.” Fed. R. Civ. P. 56(c).
Applying this standard, we reject each of Lacavera’s arguments.
Lacavera contends that the PTO’s decision was an abuse of discretion because
it improperly found full registration inconsistent with the legal restrictions imposed by her
visa. “An abuse of discretion occurs where the decision is based on an erroneous
interpretation of the law, on factual findings that are not supported by substantial
evidence, or represents an unreasonable judgment in weighing relevant factors.” Star
Fruits, 393 F.3d at 1281. The “scope of review under [this] standard is narrow and a
court is not to substitute its judgment for that of the agency.” Motor Vehicle Mfrs. Ass’n
of U.S., Inc. v. State Farm Mut. Ins. Co., 463 U.S. 29, 43 (1983). Moreover, “[a]n
agency’s interpretation of its own regulations is entitled to substantial deference and will
be accepted unless it is plainly erroneous or inconsistent with the regulation.” Star
Fruits, 393 F.3d at 1282.
The PTO based its decision to grant limited recognition on the interpretation of
section 10.9(b) found in the GRB, an interpretation that we believe reasonably interprets
that regulation, and on its conclusion that Lacavera’s visa restrictions were inconsistent
05-1204 4
with full recognition. Because granting Lacavera full registration would have given her
PTO approval to do work in which she could not lawfully engage, we find no abuse of
discretion in the PTO’s determination that granting her full registration was inconsistent
with the terms of her visa. Moreover, the decision to grant limited recognition with
restrictions consistent with those in her visa correctly applied sections 10.6(a) and
10.9(b) and the GRB, and was, therefore, not an abuse of discretion or arbitrary and
capricious.
Lacavera next argues that the PTO exceeded the authority granted to it by
35 U.S.C. § 2(b)(2) in promulgating regulations that take into account visa restrictions
when determining whether or not to grant full recognition. Under 35 U.S.C. § 2(b)(2),
the PTO has broad authority to govern the conduct of proceedings before it and to
govern the recognition and conduct of attorneys. See Stevens v. Tamai, 366 F.3d
1325, 1333 (Fed. Cir. 2004). Because the PTO is specifically charged with
administering this statute, we analyze a challenge to the statutory authority of its
regulations under the Chevron framework. See United States v. Mead Corp., 533 U.S.
218 (2001); Chevron U.S.A. Inc. v. Natural Res. Def. Council, 467 U.S. 837 (1984).
First, we determine whether the statute speaks to the issue of the challenge, and if it is
silent or ambiguous, we defer to the agency’s reasonable interpretation. See Chevron,
467 U.S. at 842-43.
In this case, the statute is silent as to whether the PTO may consider visa
restrictions in determining whether or not to grant recognition. However, the statute
states that the PTO “may require [applicants] . . . to show that they are . . . possessed of
the necessary qualifications to render to applicants . . . valuable service.” 35 U.S.C.
§ 2(b)(2)(D) (emphasis added). It was reasonable for the PTO to interpret legal
05-1204 5
authority to render service as being a necessary qualification. Accordingly, it was
reasonable for the PTO to enact regulations that limit an alien’s ability to practice before
it to those activities in which the alien may lawfully engage. Therefore, the PTO did not
exceed its statutory authority in promulgating the regulations in question.
Finally, Lacavera contends that she was denied equal protection. We review her
claim under the rational review standard. See Mathews v. Diaz, 426 U.S. 67, 78 (1976).
Lacavera offered no evidence that she was treated unequally as compared to other
aliens with visa restrictions, and therefore she suffered no individual equal protection
violation. See City of Cleburne v. Cleburne Living, Inc., 473 U.S. 432, 439 (1985).
Moreover, because the regulations in question are rationally related to a legitimate
government interest, e.g., minimizing the unauthorized practice of law before the PTO
and its attendant public harm, they do not violate the equal protection clause and are,
therefore, valid. Id. at 440.
Conclusion
Accordingly, the judgment of the United States District Court for the District of
Columbia is affirmed.
COSTS
No costs.
AFFIRMED
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