UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA

____________________________ ) CORNELL D.M. JUDGE CORNISH, ) ) Plaintiff, ) ) v. ) Civil Action No. 07-1719 (RWR) ) JON DUDAS, et al., ) ) Defendants. ) ____________________________)

MEMORANDUM OPINION

Pro se plaintiff Cornell D.M. Judge Cornish brings this

action against the U.S. Patent and Trademark Office (“USPTO”) and

its Director and two employees in their official capacities.

Among other things, he alleges a violation of the Rehabilitation

Act, and challenges as arbitrary, capricious and discriminatory

the USPTO’s decision to deny his request for reinstatement to the

patent register without an examination nearly nine years after

his voluntary removal, claiming the decision violated his First

Amendment rights by preventing him from advertising as a

registered patent attorney and violated his due process rights by

not providing notice and a hearing regarding his reinstatement.

The defendants move to dismiss for lack of jurisdiction and for

Cornish’s failure to state a claim or, in the alternative, for

summary judgment, arguing in part that Cornish has failed to

exhaust his administrative remedies on his reinstatement claim,

establish a violation of the Rehabilitation Act, and state a -2-

claim for which relief can be granted on his other claims.

Because Cornish has failed to show that the decision to deny his

reinstatement request was arbitrary or capricious and failed to

demonstrate that the defendants violated the Rehabilitation Act,

the defendants’ motion for summary judgment on his Rehabilitation

Act and reinstatement claims will be granted. Because Cornish

has failed to state a claim for which relief can be granted on

his other claims, the defendants’ motion to dismiss will be

granted in all other respects. Also, Cornish has moved to amend

his complaint for a second time, but, because he fails to state a

claim for which relief can be granted in his proposed second

amended complaint, his motion to amend his complaint will be

denied on grounds of futility.

BACKGROUND

In 1958, Cornish applied for and passed the patent

examination and became registered to practice law before the

USPTO. (See Defs.’ Mem. of P. & A. in Supp. of Defs.’ Mot. to

Dismiss or, in the Alternative, for Summ. J. (“Defs.’ Mem.”) at

7.) In 1995, one of Cornish’s former clients filed a grievance

against him and, as a result, Cornish was removed from Maryland’s

attorney register.1 (See id. at 7-9.) In 1996, Cornish wrote

1 Both the District of Columbia and New York State Bars temporarily suspended Cornish from the practice of law based on the Maryland action. He since has been reinstated to all three bars. (Id. at 11-12.) -3-

the USPTO stating that he was “ceasing . . . practice before the

United States Patent and Trademark Office.” (Id. at 9, Ex. 7.)

The director of the USPTO’s Office of Enrollment Discipline

(“OED”) informed Cornish that the USPTO was “treating [Cornish’s

letter] as a request to have [his] name removed from the

register[,]” and that Cornish should inform OED if it was not his

intent to have his name removed. (Id. at 9-10, Ex. 8.) After

giving Cornish over five months to respond, OED removed Cornish’s

name from the patent register. (Id. at 10 n.7.)

On January 25, 2005, Cornish requested reinstatement to the

patent register. (Id. at 12, Ex. 12). That same day, an OED

staff member wrote Cornish explaining that because more than five

years had passed since Cornish had been registered to practice

before the USPTO, Cornish would be required to take the patent

registration examination or submit a showing to the satisfaction

of the OED Director that Cornish continued to possess the legal

qualifications necessary to render valuable services for patent

applicants. (Id. at 12-13, Ex. 13.) The following day, Cornish

submitted a letter purporting to detail his legal qualifications.

(Id. at 13, Ex. 15.) An OED staff attorney reviewed Cornish’s

submission and concluded that Cornish did not present sufficient

objective evidence of his ability to render patent applicants

valuable service. (Id. at 13-14, Ex. 17.) OED informed Cornish

that the decision was without prejudice and invited Cornish to -4-

submit additional information to support his qualifications.

(Id.) Before submitting additional information, however, Cornish

sat for, and failed, the July 2005 patent examination (id. at 14-

15, Exs. 18, 20, 32, 33), the July 2006 examination (id. at 19),

and the July 2007 examination. (Id. at 23, Exs. 30, 33.) Before

sitting for and taking the July 2006 and 2007 examinations,

Cornish requested various “reasonable accommodations” (see id. at

15, 21, Exs. 22, 29), and by July 2007, OED granted all of his

accommodations requests.2 (Id. at 22.) Cornish brought this

action in September 2007, arguing that under the Administrative

Procedure Act (“APA”),

(2)(A), the defendants’

decision to deny his reinstatement request was arbitrary and

capricious, and purporting to raise a number of constitutional

and statutory violations.3 In September 2008, Cornish amended

his complaint, adding Bivens4 claims and challenges to the rules

(“Final Rules”) implemented by the USPTO in August 2007 that

governed patent applicants’ process for protecting inventions.

2 OED granted some, but not all, of Cornish’s accommodations requests for the July 2006 exam. (Id. at 16.) 3 In passing, Cornish mentions the Freedom of Information Act (“FOIA”). (See Compl. at 31, 35.) However, he does not allege that he made any FOIA request of the defendants. Therefore, any claim he may seek to raise under FOIA fails to state a cause of action for which relief can be granted, and will be dismissed. 4 Bivens v. Six Unknown Named Agents of Fed. Bureau of Narcotics,

(1971). -5-

(See Amended Compl. for Att. to Approved Mot. for Leave to Amend

Compl. Under Fed. R. Civ. P. 15 (“Amend. Compl.”).) The

defendants have moved to dismiss under Federal Rules of Civil

Procedure 12(b)(1) for lack of subject matter jurisdiction and

12(b)(6) for failure to state a claim for which relief can be

granted or, in the alternative, for summary judgment.5 Cornish

moved yet again to amend his complaint in March 2010, which the

defendants oppose under Rule 8(a) and Local Civil Rule 7(m).

DISCUSSION

“Before a court may address the merits of a complaint, it

must assure that it has jurisdiction to entertain the claims.”

Marshall v. Honeywell Tech. Solutions, Inc.,

(D.D.C. 2009). Under Rule 12(b)(1), a complaint may be

dismissed for lack of subject matter jurisdiction. See Fed. R.

Civ. P. 12(b)(1). “When assessing a motion to dismiss for lack

of subject matter jurisdiction, a court may consider the

complaint and any undisputed facts in the record.” Marshall,

. A plaintiff’s factual allegations are subject

to closer scrutiny when resolving a Rule 12(b)(1) motion than

would be required for a Rule 12(b)(6) motion for failure to state

a claim, and “[p]ro se plaintiffs are not free from the

5 The defendants’ motion incorporates by reference the arguments made in their motion to dismiss the original complaint or, in the alternative, for summary judgment. (See Defs.’ Mem. of P. & A. in Supp. of Defs.’ Renewed Mot. to Dismiss or, in the Alternative, for Summ. J. at 11 n.5.) -6-

requirement to plead an adequate jurisdictional basis for their

claims.” Bennett-Bey v. Shulman, Civil Action No. 08-328 (RWR),

, at *1 (D.D.C. Jan. 20, 2010).

“In order to survive a motion to dismiss under Rule

12(b)(6), the allegations stated in the . . . plaintiff’s

complaint ‘must be enough to raise a right to relief above the

speculative level[.]’” Demery v. Montgomery County, MD,

(D.D.C. 2009) (quoting Bell Atl. Corp. v.

Twombly,

(2007) (alteration in original)).

While courts “do not assess ‘the truth of what is asserted or

determin[e] whether a plaintiff has any evidence to back up what

is in the complaint[,]’” courts also do not accept “‘inferences

drawn by the plaintiffs if such inferences are unsupported by the

facts set out in the complaint,’ [or] ‘legal conclusions cast in

the form of factual allegations.’” Browning v. Clinton,

(D.C. Cir. 2002) (quoting Kowal v. MCI Communications

Corp.,

(D.C. Cir. 1994)). If a plaintiff

fails to allege sufficient facts to support his claim and nudge

it across the line from conceivable to plausible, the complaint

will be dismissed. Twombly,

.

“When ‘matters outside the pleadings are presented to and

not excluded by the court’ on a motion to dismiss under Rule

12(b)(6), ‘the motion must be treated as one for summary

judgment[.]’” Highland Renovation Corp. v. Hanover Ins. Group, -7-

(D.D.C. 2009) (quoting Fed. R. Civ. P.

12(d)) (alteration in original). Summary judgment must be

granted when the moving party demonstrates that there is no

genuine issue as to any material fact and that moving party is

entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c).

In deciding a motion for summary judgment, a court must draw all

justifiable inferences in favor of the nonmovant. Cruz-Packer v.

District of Columbia,

(D.D.C. 2008).

The threshold question is whether “there are any genuine factual

issues that properly can be resolved only by a finder of fact

because they may reasonably be resolved in favor of either

party.” Single Stick, Inc. v. Johanns,

(D.D.C. 2009) (overruled on other grounds).

I. REINSTATEMENT CLAIM

The USPTO is authorized to establish regulations which

may govern the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties . . . and may require them, before being recognized as representatives of applicants or other persons, to show that they . . . are possessed of the necessary qualifications to render to applicants or other persons valuable service, advice, and assistance[.]

(b)(2)(D). Under the applicable regulations, “[a]ny

petition from any action or requirement of the staff of OED

reporting to the OED Director shall be taken to the OED

Director[.]”

(c). A “petition not filed within

sixty days from the mailing date of the action or notice from -8-

which relief is requested will be dismissed as untimely.”

A

petitioner who is dissatisfied with the OED Director’s final

decision “may seek review of the decision upon petition to the

USPTO Director[.]”

(d). Any petition to the

USPTO Director may be dismissed as untimely if not filed within

thirty days of the OED Director’s final decision.

Finally,

this court “may review the action of the [USPTO] Director upon

the petition of the person so refused recognition[.]”

.

Generally, for a court to hear “claims seeking judicial

review of an agency action under the APA, it must determine that

the action is final.” Natural Res. Def. Council v. Johnson,

(D.D.C. 2006) (overruled on other grounds)

(citing Cobell v. Norton,

(D.C. Cir. 2001)).

“A final agency action (1) marks the consummation of the agency’s

decision making process –- it must not be of a merely tentative

or interlocutory nature; and (2) the action must be one by which

rights or obligations have been determined or from which legal

consequences will flow.”

(internal quotation marks omitted).

“Whether there has been ‘agency action’ or ‘final agency action’

within the meaning of the APA are threshold questions; if these

requirements are not met, the action is not reviewable.” Fund

for Animals, Inc. v. U.S. Bureau of Land Mgmt.,

(D.C. Cir. 2006). Failure to satisfy the APA’s final agency -9-

action requirement warrants dismissal for failure to state a

claim for which relief can be granted. See

at 18 n.4; Am.

Forest Res. Council v. Hall,

(D.D.C.

2008).

The bulk of Cornish’s grievance lies in the USPTO’s refusal

to reinstate him to the USPTO register. The defendants move to

dismiss Cornish’s reinstatement claim, in part, on the grounds

that Cornish has failed to exhaust his administrative remedies

because he has not secured a final agency decision from the USPTO

Director reviewing OED’s decision to deny his reinstatement

request.6 (See Defs.’ Mem. at 32.)

Cornish has neither pled nor cited to such a final agency

decision. While Cornish may have petitioned the USPTO Director

in July 2006 seeking in part reversal of the OED staff attorney’s

decision from over a year earlier (Defs.’ Mem. at 18, Ex. 27), it

may be no surprise that no final agency decision was forthcoming.

There is no evidence that Cornish took the intermediate step in

compliance with

of petitioning and securing a

decision from the OED Director for the USPTO Director to review.

Understandably, Cornish does not contend that the OED staff

attorney’s decision is a final agency decision subject to review,

6 While defendants cast this failure as one depriving the court of subject matter jurisdiction, a failure to exhaust administrative remedies is properly analyzed under Rule 12(b)(6) as a failure to state a claim. Winston v. Clough, Civil Action No. 07-1411 (RWR),

(D.D.C. May 11, 2010); Hairston v. Tapella,

(D.D.C. 2009). -10-

particularly given that the staff attorney’s letter expressly

stated that it was a denial without prejudice. The Patent and

Trademark Office Manual of Patent Examining Procedure (“MPEP”)7

provides that “[a] dismissal of a petition, a denial of a

petition without prejudice, and other interlocutory orders are

not final agency decisions.” MPEP § 1002.02. Because Cornish

neither pleads nor cites to the determination to deny without

prejudice Cornish’s reinstatement request as a final agency

decision, the defendants’ motion to dismiss the reinstatement

claim for failure to state a claim for which relief can be

granted should prevail.

Even if the actions in this record constituted a final

agency decision, the material facts are not in dispute regarding

the USPTO denying Cornish reinstatement and the defendants are

entitled to judgment as a matter of law on the reinstatement

claim. “Under

, the sole basis for the Court’s

review is the record and proceedings before the [USPTO] . . . and

7 MPEP is “commonly relied upon as a guide to patent attorneys and patent examiners on procedural matters.” Zhengxing v. U.S. Patent & Trademark Office,

, 166 n.6 (D.D.C. 2008) (quoting Molins PLC v. Textron, Inc.,

, 1180 n.10 (Fed. Cir. 1995) (internal quotation marks omitted)). “MPEP does not have the force of law, [but] it is entitled to judicial notice as an official interpretation of statutes or regulations as long as it is not in conflict therewith.”

(internal citations omitted) (alterations in original). “[T]he PTO operates in accordance with detailed rules and regulations, including those set out in the [MPEP] which is made available to the public and which has been held to describe procedures on which the public can rely.”

(internal citations omitted). -11-

the Court’s limited function is to determine whether the

[USPTO’s] decision was arbitrary and capricious based on the

record created and considered by the [USPTO].” Maresca v.

Commn’r of Patents and Trademarks,

(D.D.C.

1994). “The standard of review is highly deferential: ‘If [the

USPTO] has considered the relevant evidence of record, drawn

plausible inferences and articulated a rational basis for the

decision, reversible error will be extremely difficult to

demonstrate.’”

(quoting Hines on Behalf of Sevier v. Sec’y

of the Dep’t of Health and Human Servs.,

(Fed. Cir. 1991)). “[T]his standard does not allow the courts to

undertake their own factfinding, but to review the agency record

to determine whether the agency’s decision was supported by a

rational basis.” Holy Land Found. for Relief & Dev. v. Ashcroft,

(D.C. Cir. 2003) (citing Holy Land Found. for

Relief & Dev. v. Ashcroft,

(D.D.C. 2002)).

“Further, where a statute is silent or ambiguous on a particular

issue and an agency is authorized to promulgate regulations to

carry out the statute, a court must defer to the agency’s

reasonable interpretation of the statute.” Atl. Sea Island Group

LLC v. Connaughton,

(D.D.C. 2008) (citing

Chevron U.S.A., Inc. v. Natural Res. Def. Council, Inc.,

(1984)). -12-

After OED informed Cornish in January 2005 that he must

either retake the patent exam or submit a satisfactory showing

that he possessed the legal qualifications necessary to render

valuable service to potential clients (Defs.’ Mem. at 13),

Cornish wrote to an OED Enrollment Program Specialist listing his

qualifications. Cornish claimed to have taken continuing legal

education courses, attended regularly annual meetings of and

maintained membership in intellectual property associations,

subscribed to weekly publications regarding significant changes

in patent laws, and worked for a law firm in the District of

Columbia. (Id., Ex. 15 ¶¶ 1-5.) Cornish also claimed to have

filed an amicus brief in the U.S. Supreme Court, provided

valuable service to applicants and litigants in the field of

intellectual property law, and attended important patent law

arguments in the U.S. Court of Appeals for the Federal Circuit.

(Id., Ex. 15 ¶¶ 10-12.) After reviewing Cornish’s letter, OED

Staff Attorney William J. Griffin denied Cornish’s reinstatement

request, because Cornish “did not present sufficient objective

evidence to show that he continued to possess the legal

qualifications necessary to render patent applicants valuable

service.” (Id. at 14 (emphasis added).) Griffin justified this

conclusion on the basis that Cornish’s letter included only

“conclusory statements made without the support of any objective

evidence” that were “entitled to little weight.” (Id., Ex. 17.) -13-

Citing the USPTO regulations, Griffin stated that appropriate

legal qualifications would include proof of “knowledge and

proficiency in current patent law and Patent and Trademark Office

procedure, an ability to draft acceptable patent claims, and

familiarity with current patent practice as well as patent

statutes and regulations.” (Id., Ex. 17.)

The record reflects that OED fairly considered the relevant

evidence. Cornish has not shown anything arbitrary or irrational

about OED finding as inadequate proof of his qualification his

self-serving and undetailed assertion that he has provided

valuable services to applicants and litigants in the field of

intellectual property and that he has worked for a law firm in

the District of Columbia, particularly given the nearly nine

years that had passed since he was licensed as a patent attorney.

Also, that Cornish has attended meetings and holds subscriptions

to intellectual property law publications does not necessarily

reveal an ability to practice as a patent attorney. Similarly,

it was not unreasonable to consider Cornish’s bare assertion that

he has taken continuing legal education courses –- without

evidence of the nature of the courses, the number of courses

taken, and whether Cornish successfully completed any of the

courses –- as insufficient to show that Cornish has the requisite

knowledge and proficiency to be reinstated as a patent attorney.

Furthermore, Cornish made no showing of his actual ability to -14-

draft patent claims or familiarity with current patent statutes

and regulations. Given that the standard of review is highly

deferential, and OED has demonstrated that it considered the

relevant evidence, extracted plausible inferences, and

articulated a rational basis for its decision, the defendants’

motion for summary judgment will be granted on the reinstatement

claim.

II. EMPLOYMENT DISCRIMINATION CLAIMS

Intermittently throughout his complaint, Cornish purports to

bring claims of employment discrimination by mentioning, in

passing, Title VII of the Civil Rights Act of 1964, 42 U.S.C.

§ 2000e, the Age Discrimination in Employment Act of 1967

(“ADEA”), the Older Workers Benefit Protection Act, and the

Americans with Disabilities Act (“ADA”). (See Compl. at 21-23.)8

Under Title VII, an employer may not “fail or refuse to hire or

to discharge any individual, or otherwise to discriminate against

any individual with respect to his compensation, terms,

8 Cornish also purports to state a claim for relief under the Individuals with Disabilities Education Act (“IDEA”). (Id. at 23.) The “IDEA ‘ensure[s] that all children with disabilities have available to them a free appropriate public education [(“FAPE”)] that emphasizes special education and related services designed to meet their unique needs and prepare them for further education, employment, and independent living.’” J.N. v. District of Columbia,

(D.D.C. 2010) (first alteration in original) (quoting

(d)(1)(A)). Cornish has failed to state an IDEA claim, however, because he has not alleged that he was discriminated against in the public school setting or that he was denied a FAPE. See

(2000). -15-

conditions, or privileges of employment, because of [his] race,

color, religion, [or] sex[.]” Williams v. Tapella,

(D.D.C. 2009) (alterations in original) (citing 42

U.S.C. § 2000e-2(a)(1)). Similarly, the ADEA prohibits

discrimination based on age in the employment setting, see

, and the Older Workers Benefit Protection Act

amended the ADEA largely “to clarify the protections given to

older individuals in regard to employee benefit plans[.]” See

Stat. 978. Moreover, the ADA, in part,

prohibits employment discrimination against an individual with a

disability who, with or without reasonable accommodation, can

perform the essential functions of the position.9 Dave v.

Lanier,

(D.D.C. 2010) (citing Breen v.

Dep’t of Transp.,

(D.C. Cir. 2002)). Cornish’s

employment discrimination claims will be dismissed because

Cornish has failed to allege that he ever was employed by or

sought employment with the defendants, or that he suffered any

adverse employment action.

III. REHABILITATION ACT CLAIM

Cornish’s complaint cites the Rehabilitation Act and asserts

that he requested “reasonable accommodations to take, challenge,

9 Other provisions of the ADA prohibiting discrimination on the basis of disability in transportation services, programs, or activities of all State and local governments, see

et seq., in public accommodations, see

, and telecommunications for hearing and speech- impaired individuals,

, do not apply here. -16-

correct, and appeal the marks received on the Patent Office

Exam[,]” that the defendants required him “to pass another

arbitrary, discriminatory test without reasonable

accommodations[,]”10 and that his “age and physical limitations

. . . require reasonable accommodations.” (Compl. at 8, 27, 35.)

The defendants argue that Cornish has failed to allege that he is

an individual with a disability for purposes of the

Rehabilitation Act and that, even if Cornish has made such an

allegation, he cannot establish a prima facie violation of the

Rehabilitation Act. (Defs.’ Mem. at 41-42.)

Section 504 of the Rehabilitation Act prohibits

“discrimination against qualified disabled individuals by

requiring that they receive ‘reasonable accommodations’ that

permit them to have access to and take a meaningful part in

public services and public accommodations.” Powell v. Nat’l Bd.

of Med. Exam’rs,

(2d Cir. 2004); see

(a). To establish a violation under the Rehabilitation Act,

the defendant must “demonstrate (1) the [he] is a ‘qualified

10 The defendants have demonstrated that this allegation is faulty. The defendants show –- and Cornish does not refute -- that OED granted all of Cornish’s accommodation requests by the time he sat for the 2007 patent examination. OED gave Cornish the examination and answer sheets printed in 14-point font; magnifiers for reading the Manual of Patent Examining Procedure; additional lighting; a testing room separate from the main testing room; additional time to take the examination; and the opportunity to take the examination over two days instead of one. (Defs.’ Mem. at 42, Ex. 29.) He still did not pass the patent examination. -17-

individual’ with a disability; (2) that the defendants are

subject to . . . the [Act]; and (3) that [he] was ‘denied the

opportunity to participate in or benefit from defendants’

services, programs, or activities, or [was] otherwise

discriminated against by defendants, by reason of [his]

disabilit[y].’” Powell,

(fourth and sixth

alterations in original).

“A person is disabled under the Rehabilitation Act if he

‘has a physical or mental impairment which substantially limits

one or more of such person’s major life activities; has a record

of such an impairment; or is regarded as having such an

impairment.’” Nurriddin v. Bolden,

(D.D.C. 2009) (quoting

(20)(B)). However, “[a]s

the Supreme Court has emphasized, ‘merely having an impairment

does not make [an individual] disabled.’”

(second alteration

in original) (quoting Toyota Motor Mfg., Ky., Inc. v. Williams,

(2002)). Rather, a plaintiff “must demonstrate

that the impairment ‘substantially limits’ a ‘major life

activity.’”

at 83 (quoting Toyota Motor Mfg., Ky., Inc.,

)). “[T]he determination of whether an individual has

a disability is not necessarily based on the name or diagnosis of

the impairment the person has, but rather on the effect of that

impairment on the life of the individual.” Desmond v. Mukasey,

(D.C. Cir. 2008) (internal quotation marks -18-

omitted). “An individualized assessment of the effect of an

impairment is particularly necessary when the impairment is one

whose symptoms vary widely from person to person.”

(internal

quotation marks omitted). Cornish’s burden, therefore, is to

demonstrate that he suffers from an impairment that substantially

limits a major life activity. See, e.g., Lytes v. D.C. Water and

Sewer Auth.,

(D.C. Cir. 2009) (citing

(2)(A) (2000)).

To satisfy his burden, Cornish asserts that he has “specific

visual and other medically documented age-related, life-function

impairments and disabilities[.]” (Pl.’s Mot. to Deny the Defs.’

9/25/08 Renewed Dispositive Mot. to Dismiss or, Alternatively,

for Summ. J. (“Pl.’s Opp’n”) at 10.) Beyond these bare

assertions, however, Cornish makes no showing as to how his

alleged impairment substantially limits any major life

activity.11 For example, Cornish has not shown that he suffers

from permanent and severe blindness in one or both eyes of the

type that would cause him to receive poor work evaluations, cf.

11 Cornish submitted spare documentation to the OED to support his claim of disability and need for accommodations. For example, Cornish submitted to the OED a letter from a physician who had treated him for coronary heart disease, stating merely that Cornish would like “to be permitted to have additional time allotted for the completion of the examination in view of his age and health issues[.]” (Defs.’ Mem., Ex. 28.) Though OED granted Cornish’s accommodation requests, it found the physician’s letter unpersuasive because it failed to certify the current severity of Cornish’s disability and need for the accommodations requested. (Id.) -19-

Johnson v. District of Columbia,

(D.D.C.

2008) (noting that the plaintiff not only alleged that he was

blind in one eye and had insulin-dependant diabetes, but that the

impairments caused him to work at an extremely slow pace and fall

asleep during work such that he received poor productivity

reviews); rectal pain and fecal urgency that prevent him from

performing his daily tasks, cf. Green v. Am. Univ.,

(D.D.C. 2009) (involving a defendant who lost

voluntary control of his bowels which caused chronic tardiness

and unpredictable urges to use the bathroom between six to eleven

times per day); or such debilitating anxiety that he is

completely unable to communicate. Cf. McAlindin v. County of San

Diego,

(9th Cir. 1999) (holding that

defendant’s fear reaction and communicative paralysis raised a

genuine issue of material fact as to his ability to interact with

others). Because Cornish has failed to show that he is a

qualified individual with a disability, the defendants will be

granted summary judgment on the Rehabilitation Act claim.

IV. TAFAS CLAIM

In his amended complaint, Cornish challenges the same USPTO

Final Rules challenged in Tafas v. Dudas,

(E.D. Va. 2008).12 In Tafas, the plaintiffs challenged the

12 Cornish also challenges the same Final Rules that were challenged in GlaxoSmithKline v. Doll, 1:07-CV-1008 (E.D. Va.). -20-

USPTO’s August 2007 Final Rules. In 2008, the district court

upheld the Final Rules, and, on appeal, the Federal Circuit

affirmed in part and vacated in part the district court’s

decision. See Tafas v. Doll,

(Fed. Cir.

2009). During the course of the Tafas litigation, however, the

USPTO rescinded the Final Rules and the litigation was dismissed

as moot. See Tafas v. Kappos,

(Fed. Cir.

2009).

“‘Federal courts lack jurisdiction to decide moot cases

because their constitutional authority extends only to actual

cases or controversies.’” Matthews v. District of Columbia,

(D.D.C. 2009) (quoting Larsen v. U.S. Navy,

(D.C. Cir. 2008) (internal quotation marks

omitted)). Because the USPTO has rescinded the Final Rules that

Cornish seeks to challenge, Cornish’s Tafas claims, therefore,

will be dismissed as moot.

V. CONSTITUTIONAL CLAIMS

Cornish asserts that his inability to practice before the

USPTO abridges his “freedom of speech and press to publish and

advertise his name as an attorney” authorized to practice before

the USPTO, and violates the Fourth and Fourteenth Amendments.13

Because GlaxoSmithKline was consolidated with Tafas, the cases will be referred to collectively as Tafas. 13 Cornish also invokes Art. I, § 8, cl. 8 and Art. II, § 2, cl. 2 of the U.S. Constitution. Art. I, § 8, cl. 8 gives to -21-

(Compl. at 9, 18, 39.) The First Amendment largely “protects an

individual’s right to speak on whatever subject he or she

chooses[.]” Martin v. EPA,

(D.D.C. 2002).

Although Cornish alleges that the defendants’ failure to

reinstate him to the patent register violates the First

Amendment, the fact that Cornish is not registered as a patent

attorney does not prohibit him from speaking on any topic of his

choosing. Furthermore, because false, deceptive, or misleading

advertising is subject to restraint, In re R. M. J.,

(1982), and Cornish would mislead the public if he were

to hold himself out as a registered patent attorney without being

registered as such, see Bates v. State Bar of Ariz.,

, 383 (1977) (noting that “because the public lacks

sophistication concerning legal services, misstatements that

might be overlooked or deemed unimportant in other advertising

may be found quite inappropriate in legal advertising”),

Cornish’s First Amendment claim based on his right to advertise

as a patent attorney will be dismissed.

“The Fourth Amendment prohibits law enforcement officials

from engaging in ‘unreasonable searches and seizures’ of an

“Authors and Inventors the exclusive Right to their respective Writings and Discoveries[.]” Const. Art. I., § 8, cl. 8. Meanwhile, Art. II, § 2, cl. 2 is the Appointments Clause of the Constitution. It is unclear, however, how these provisions are implicated by the facts here, and Cornish fails to state a claim by merely listing the provisions without making a factual showing of how they apply. -22-

individual and his property.” Olaniyi v. District of Columbia,

(D.D.C. 2006) (quoting U.S. Const. amend.

IV). “The touchstone of Fourth Amendment analysis is whether a

person has a ‘constitutionally protected reasonable expectation

of privacy.’” M.K. v. Tenet,

(D.D.C. 2000)

(quoting California v. Ciraolo,

(1986)). “A

person has such an expectation if two requirements are satisfied:

‘first that a person has exhibited an actual (subjective)

expectation of privacy and, second, that the expectation be one

that society is prepared to recognize as “reasonable.”’”

(quoting Katz v. United States,

(1967)).

Cornish has not alleged any facts to suggest that he had a

subjective or reasonable expectation of privacy or that the

defendants have violated any privacy right. Because a complaint

must contain “a short and plain statement of the claim showing

that the pleader is entitled to relief[,]” Fed. R. Civ. P.

8(a)(2); see also Ashcroft v. Iqbal,

(2009), and Cornish has failed to make this showing, Cornish’s

Fourth Amendment claim will be dismissed.

Cornish also has raised a claim under the Fourteenth

Amendment. However, the Fourteenth Amendment does not apply here

because Cornish is suing federal officials in their official

capacities and “[i]t is the due process clause of the Fifth, not

the Fourteenth, Amendment that applies to actions of the federal -23-

government.” Peavey, 657 F. Supp. 2d at 186 n.6. Further,

“‘[t]he due process clause requires the government to provide

sufficient notice and a meaningful opportunity to be heard on the

deprivation of a protected liberty or property interest.’”

Id. at 191 (quoting Rason v. Nicholson,

(D.D.C. 2008) (citing United States v. E-Gold, Ltd.,

(D.C. Cir. 2008))). The USPTO has established

administrative procedures for reviewing challenges to the OED’s

decision regarding an applicant’s reinstatement claim that

include affording aggrieved persons an opportunity to challenge

an OED staff decision to the OED Director, and the OED Director’s

decision to the USPTO Director. To the extent that Cornish is

raising a claim under the due process clause by asserting that

the OED has deprived him of a right to property or liberty by

interfering with his right to practice as a patent attorney,

Cornish has failed to allege facts showing how his opportunity to

be heard through OED’s administrative process was at all

inadequate. Because Cornish has not alleged facts that, if

proven, would demonstrate that he did not have a meaningful

opportunity to be heard, his due process claim will be dismissed

for failure to state a claim.14

14 Cornish’s amended complaint purports to assert several Bivens claims. (See Amend. Compl. at 4-6, 13.) Under Bivens, a plaintiff may bring “an action against a federal officer seeking damages for violations of the plaintiff’s constitutional rights.” Simpkins v. District of Columbia Gov’t,

(D.C. Cir. 1997). However, a “Bivens suit must be brought against -24-

VI. MOTION TO AMEND

Cornish moves to amend his complaint yet again. A

plaintiff may “amend his complaint after an answer has been

filed ‘only by leave of court or by written consent of the

adverse party[.]’” Smith v. Cafe Asia,

(D.D.C. 2009) (quoting Fed. R. Civ. P. 15(a)(2)). While leave

to amend should be granted freely, a motion to amend may be

denied as futile on the grounds that the proposed amendments

would not survive a motion to dismiss.

.

The defendants oppose on the grounds that Cornish has not

provided a short and plain statement of his claim showing that

he is entitled to relief, see Fed. R. Civ. P. 8(a)(2), and that

Cornish has failed to comply with Local Civil Rule 7(m), which

requires a moving party to discuss with opposing counsel an

anticipated nondispositive motion before filing such a motion.

See LCvR 7(m).

Cornish's reply does not dispute his violation of the local

rule which alone is a ground for denying his motion. That

aside, the proposed second amended complaint is 94 pages of text

bearing 21 pages of unnumbered paragraphs plus 73 pages of 181

numbered paragraphs of disparate lengths. Its new and renewed

federal officers in their individual capacity[.]” Peavey, 657 F. Supp. 2d at 192. Because Cornish has neither sued nor served a copy of his amended complaint on the defendants in their individual capacities, Cornish’s Bivens claims against the defendants will be dismissed. -25-

content is overly prolix and burdened by meandering hyperbole.

Cornish sprinkles throughout it recitations of text from

numerous statutes. It is unclear whether those passages are

truly intended to assert causes of action under those statutes

as they are accompanied by little to no factual presentation

that would nudge such potential claims for relief across the

line from conceivable to plausible.

A prime example is Cornish’s reference to the Privacy Act.

(See, e.g., Second Am. Compl. ¶¶ 69, 80, 89, 99, 112.) The

Privacy Act forbids federal agencies from disclosing any record

in a system of records to any person or another agency without

the prior written consent of the individual to whom the record

pertains, see 5 U.S.C. § 552a(b), and requires agencies to keep

an accurate accounting of any record disclosure, see

§ 522a(c)(1); maintain personal information about an individual

only if it is relevant and necessary to accomplish a statutory

purpose, see § 522a(e)(1); establish rules of conduct for

persons involved in the maintenance of any records, see

§ 552a(e)(9); and establish safeguards to ensure the

confidentiality of such records. See § 522a(e)(10). Any

claims Cornish intends to raise under the Privacy Act would not

survive a Rule 12(b)(6) motion due to Cornish’s lack of -26-

sufficient factual presentation on any of these Privacy Act

provisions reflecting his entitlement to any relief.15

Other examples are Cornish’s references to the E-Government

Act of 2002, the Federal Information Security Management Act

(“FISMA”), the Veterans Affairs Claims Confidentiality statute,

and the Trade Secrets Act.16 The E-Government Act of 2002 (see,

e.g., Second Am. Compl. ¶ 128) generally requires federal

agencies to establish “a broad framework of measures that

require using Internet-based information technology to enhance

15 Cornish also makes reference to the Lanham Act and the provision under the Act that allows courts to award attorneys’ fees to prevailing parties. (See, e.g., Second Am. Compl. ¶¶ 163, 166.) In general, the Lanham Act “prohibits two types of unfair competition: trademark infringement . . . and false designation of origin[.]” Oceanic Exploration Co. v. ConocoPhillips, Inc., Civil Action No. 04-332 (EGS),

, at *19 (D.D.C. Sept. 21, 2006) (internal citations omitted). Cornish’s proposed second amended complaint does not present any set of facts that would support a claim under this Act. 16 Cornish also recites the elements of a tortious interference with a business relationship claim (see Second Am. Compl. at 80 ¶ 171), perhaps implying that the defendants’ refusal to reinstate him interferes with his ability to represent patent applicants before the USPTO. A claim of tortious interference with a business relationship requires a plaintiff to “allege: (1) a valid business relationship or expectancy with a third party; (2) knowledge of the relationship or expectancy on the part of the defendant; (3) intentional interference by the defendant, causing a breach or termination of the relationship or expectancy; and (4) resultant damage.” Williams v. Fed. Nat’l Mortgage Ass’n, Civil Action No. 05-1483 (JDB),

, at *8 (D.D.C. June 26, 2006). However, if Cornish is attempting to morph his claim against the defendants for failure to reinstate him to the patent register into a common law tort, his attempt would be futile given that defendants will be granted summary judgment on his reinstatement claim. -27-

citizen access to Government information and services,”

Stat. 2899, and FISMA (see, e.g., Second Am.

Compl. ¶ 154) requires federal agencies to comply with

information “security standards and conduct annual, independent

evaluations of their information security.” Trusted

Integration, Inc. v. United States,

(D.D.C. 2010) (citing

). It is not clear,

however, that the E-Government Act of 2002 confers a private

cause of action upon a plaintiff, see In re Haefner,

(N.D. Ohio 2006) (questioning whether the E-Government

Act of 2002 creates a private cause of action); see also Montin

v. Gibson, No. 4:09CV3102,

, at *3 (D. Neb.

Aug. 12, 2009), and Cornish has not cited to any authority to

show that either Act creates such a cause of action. Even if

the Acts do confer a private cause of action, Cornish has not

shown that he has standing to raise claims under either one.

Standing “requires (1) injury in fact which is (a) concrete and

particularized and (b) actual or imminent, not conjectural or

hypothetical[,] . . . (2) a causal connection between the injury

and the conduct complained of[,] . . . and (3) a likelihood, as

opposed to merely speculation, ‘that the injury will be

redressed by a favorable decision.’” Nat’l Treasury Employees

Union v. Whipple,

(D.D.C. 2009) (quoting

Lujan v. Defenders of Wildlife,

(1992)) -28-

(internal citations omitted) (alterations in original).

Cornish’s proposed second amended complaint alleges the same

primary harm alleged in his original and first amended

complaint, namely that he has been harmed by the USPTO’s failure

to reinstate him to the patent register. Cornish, however, does

not plead sufficient facts to support his claim that the USPTO’s

refusal to reinstate him was caused by the USPTO’s alleged

failure to conduct independent evaluations of its information

security or to use Internet-based information technology to

enhance citizen access to government information. Because

Cornish has not adequately pled causation between the alleged

injury and the defendants’ conduct, he has not shown standing to

raise claims under FISMA and the E-government Act of 2002.

The Veterans Affairs Claims Confidentiality statute (see

Second Am. Compl. ¶ 136) requires the Secretary of Veterans

Affairs to keep confidential veterans’ benefits records. See

. Cornish’s claim under this statute would be

futile because, at bottom, Cornish has not named as a defendant

the Department of Veterans Affairs or its officers. Further,

Cornish’s claim for relief under the Trade Secrets Act (see,

e.g., Second Am. Compl. ¶ 136), would fail because the Trade

Secrets Act criminalizes the disclosure of trade secrets by

federal government employees and does not create a private cause

of action. See

; Chrysler Corp. v. Brown, 441 -29-

U.S. 281, 316-17 (1979) (noting that “there is no indication of

legislative intent to create a private right of action” in

§ 1905).

Cornish has violated LCvR 7(m) and Fed. R. Civ. P. 8(a)(2),

and the claims that Cornish seeks to raise in his proposed

second amended complaint would not withstand a motion to dismiss

brought under Rule 12(b)(6). Thus, his motion to amend his

complaint will be denied.

CONCLUSION

Because Cornish has failed show that the OED’s decision to

deny his reinstatement request was either arbitrary or

irrational and failed to establish a violation of the

Rehabilitation Act, the defendants’ motion for summary judgment

on his reinstatement and Rehabilitation Act claims will be

granted. Because Cornish’s Tafas claims are moot, and Cornish

has failed to state a claim for which relief can be granted on

all of his other claims, the defendants’ motion to dismiss will

be granted in all other respects as well.17 Finally, because

Cornish has violated local and federal rules and his second

amended complaint would not survive a Rule 12(b)(6) motion, his

motion for leave to amend his complaint will be denied. A

separate Order accompanies this Memorandum Opinion.

17 Because of the disposition of these claims, Cornish’s request for an oral hearing (see Compl. at 5, 20), a temporary restraining order (see Amend. Compl. at 3), and a preliminary injunction (see Compl. at 39 ¶ 3) are denied as moot. -30-

SIGNED this 4th day of June, 2010.

/s/ RICHARD W. ROBERTS United States District Judge