# Petition for Writ of Certiorari — Invention Submission Corp. v. Dudas > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386016_0244%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 2006 - **Citation:** 546 U.S. 1090 ## Text 4 On October 30, 2002, without affording ISC any opportunity to develop the agency record relating to the PTO’s implementation of its scheme to misuse agency resources and influence, the district court dismissed ISC’s Complaint. Rather than addressing the issue of sovereign immunity under Rule Ib I), the district court evaluated ISC’s allegations under Fed. R. Civ. F 12(bX6). ISC ap- pealed the district court's order because it dismissed ISC’s complaint under Rule 12(b\6) and also because he court failed to apply the standard set forth in Industrial Safety. On appeal, ISC focused in greater detail on the un- derpinnings for the Industrial Safety standard of review by tracing the “presumption” in favor of judicial review to its origin in the McAnnulty Doctrine. The “McAnnulty Doctrine” refers to this Court’s decision in American School of Magnetic Healing u. McAnnulty, 187 U.S. 94, 23 S. Ct. 33, 47 L. Ed. 90 (1902). See Chamber of Commerce of the United States v. Reich, 74 F.3d 1322, 1327 (D.C. Cir. 1996). The McAnnulty Doctrine broadly protects against arbitrary action by agency officials by affording judicial review whenever an agency official's conduct is unauthor- ized by law or violates the rights of the aggrieved plaintiff. ISC argued that as part of the restructuring of federal question jurisdiction in 1976, Congress provided for McAnnulty-type review in the context of federal question jurisdiction and the APA. ISC asserted that post 1976, federal question jurisdiction and the APA's waiver of sovereign immunity provide jurisdiction for the court to review agency action in the nature of a sanction, such as the PTO’s misuse of agency resources to cause ISC irrepa- rable harm. The Fourth Circuit held that the PTO’s conduct was not final agency action reviewable under the APA and 5 therefore the district court lacked s bject matter jurisdic- tion. The Court held as follows: Because the conduct of the [Patent and Trade- mark Office] ... did not constitute “final agency action” as used under the [Administrative Proce- dure Act}, the district court did not have subject matter jurisdiction to evaluate the complaint un- der Rule 12(b)\(6) and s' ould have dismissed this case under Rule Ib I). We therefore vacate its order of October 30, 2002, as well as the support- ing opinion, and remand with instructions to dismiss this case under Federal Rule of Civil Procedure 12(b\1). Invention Submission Corp. v. Dudas, 413 F.3d 411, 412 (2005); App. p. 2. In reaching this decision, the Fourth Circuit interpreted the scope of review of agency action under the APA to apply only to the text of statements having “regulatory effect.” Invention Submission Corp. v. Rogan, 357 F.3d. 452, 460; App. p. 35. Under this stan- dard, the PTO’s media campaign, which involved the use of false or unauthorized adverse publicity intended to put ISC out of business, was not subject to judicial review because the “text” itself did not have a regulatory effect. Id. at 459-60; App. pp. 32-34. The Court observed that the Pro's advertising did not create legal consequences’ for Invention Submission or any other member of the public cognizable as final agency action” and that under the regulatory effects standard the harm to ISC’s lawful business activities is “ ... attributable to ir ſependent responses and choices of third parties and cannot be imputed to the PTO for purposes of determining whether its conduct was a final agency action.” Jd. at 460; App. pp. 34-35. 6 The Fourth Circuit also concluded that subject matter jurisdiction under McAnnulty has not been incorporated into federal question jurisdiction and the APA as argued by ISC. Id. at 457; App. p. 29. In its decision, the Fourth Circuit stated that general equity jurisdiction under the McAnnulty Doctrine is separate and apart from the APA, rather than incorporated into the APA. Jd. The Fourth Circuit indicated that although subject matter jurisdiction may rest outside the APA under the McAnnulty Doctrine, it did not need to address this issue because ISC had relied on Industrial Safety “which was construing the APA itself,” and ISC had not raised the issue of subject matter jurisdiction under McAnnulty in the district court. Id. The Fourth Circuit stated in its opinion that “[flor these reasons, we do not address whether the ‘McAnnulty Doctrine’ which Invention Submission raises for the first time on appeal, provides a basis for judicial review of unlawful agency action.” Id. On April 22, 2004, after the Fourth Circuit’s mandate was returned, the district court ordered the parties to advise the court within ten days of any reason why the court should not dismiss this civil action under Fed. R. Civ. P. 12(b)(1). Order dated April 22, 2004; App. pp. 18-19. On May 5, 2004, prior to the expiration of the response period, the district court entered an order vacating its October 30, 2002 Order and Memorandum Opinion and dismissing the civil action under Rule 12(b)(1). Order dated May 5, 2004; App. pp. 16-17. On the same day, May 5, 2004, ISC moved under Fed. R. Civ. P. 60 to vacate the entry of the district court’s order of May 5, 2004, and moved under Fed. R. Civ. P. 15 and 28 U.S.C. § 1653 for leave to amend its complaint to plead subject matter jurisdiction under the court’s general equity jurisdiction known as the 7 McAnnulty Doctrine. Plaintiff’s Response To Court’s Order Dated April 22, 2004, Motion To Vacate Order Of May 5, 2004, and Motion For Leave To File Amended Complaint; App. pp. 51-84. Except for the jurisdictional basis for its claim, ISC’s Amended Complaint did not raise new or additional matters. Based on the same underlying facts, paragraph 1 of ISC’s Complaint was revised to plead subject matter jurisdiction as follows: This court has federal question jurisdiction over the instant case under 28 U.S.C. 61331 as ISC seeks judicial review under the. APA and nonstatutory judicial review under the court's general equity jurisdiction and the McAnnulty Doctrine of the. PTOJ’s] conduct in acting and/or failing to act in an official capacity or un- der color of legal authority... . Motion Exhibit A, Amended Complaint 7 1; App. pp. 59-60. By order dated August 13, 2004, the district court denied ISC leave to amend and reaffirmed its prior order of May 5, 2004 dismissing plaintiff's complaint pursuant to Rule 12(b\(1). Order dated August 13, 2004; App. pp. 11-15. Thereafter, ISC appealed the district court's order denying It is undisputed that the district court's order of May 5, 2004 was entered prior to the expiration of the response period. Under Rule 6(a) of the Federal Rules of Civil Procedure, the computation of any period of time prescribed or allowed by any order of court which is less than 11 days does not include intermediate Saturdays and Sundays. Thus the district court's Order of April 22, 2004, required response on or before May 6, 2004. The PTO did not object to ISC’s Motion to Vacate and filed Defendant's response to the Court's April 22, 2004 Order on May 5, 2004. See Motion To Vacate J 10; App. p. 54. In its Order dated August 13, 2004 the district court stated that “May 5, 2004 was the deadline for filing any objection to dismissal.” See App. p. 12. 8 ISC’s request for leave to amend its complaint in accor- dance with Fed. R. Civ. P. 15 and 28 U.S.C. § 1653. The issue before the Fourth Circuit Court of Appeals in this appeal was the “scope of ... [its] mandate and a determination of whether the district court faithfully executed ... [its mandate) in dismissing this case without permitting Invention Submission leave to file an amended complaint.” ISC v. Dudas, at 415; App. pp. 8-9. The Fourth Circuit concluded that ISC had waived subject matter jurisdiction under McAnnulty by not raising it in the district court prior to the first appeal. The Court explained “that Invention Submission had not properly raised the McAnnulty doctrine as a jurisdictional basis before the district court and therefore had not preserved that issue for consideration on appeal.” Id.; App. p. 9. The Fourth Circuit held that its mandate directing the district court to dismiss this case for lack of subject matter jurisdiction precluded the district court from taking any further action other than dismissing the case, and therefore there was no basis to reverse the district court’s order of dismissal denying ISC leave to amend its complaint to remedy inadequate jurisdictional allegations. Id. V. REASONS FOR GRANTING THE WRIT The Writ Should Be Granted to Resolve the Conflict Between the Fourth Circuit’s Prohibition Against Pleading an Alternate Ground for Subject Matter Jurisdiction on Remand and Decisions of this Court and Other Circuits Which Permit Such Amendment The mandate in the instant case consisted of the Fourth Circuit's instruction to dismiss under Rule 12(b)(1), 9 and the Court’s statement of the reasons on which the decision or judgment rested, that is: Because the conduct of the [Patent and Trade- mark Office] that is the subject of this action did not constitute “final agency action” as used under the [Administrative Procedure Act], the district court did not have subject matter jurisdiction to evaluate the complaint under Rule 12(b)(6) and should have dismissed this case under Rule 12(b\(1). ISC v. Dudas, at 412; App. p. 2. The Fourth Circuit inter- preted its mandate as foreclosing consideration of subject matter jurisdiction under the McAnnulty Doctrine because it had not “properly” been raised in the district court and therefore had not been “preserved” for consideration on appeal. Id. at 415; App. p. 9. The Fourth Circuit denied ISC the right to remedy inadequate jurisdictional allega- tions under 28 U.S.C. § 1653 by adopting a rigid applica- tion of Stamper v. Baskerville, 724 F.2d 1106 (4th Cir. 1984). Id. The Fourth Circuit held, in effect, that in all cases where the Court orders dismissal under Fed. R. Civ. P 12(b)(1), the lower court is precluded from taking any further action even though an alternative basis for juris- diction may exist on the facts plead. Id. (See Section 2 below for discussion of McAnnulty as a basis for jurisdic- tion). The application of Stamper to the instant case is not warranted and serves only to improperly foreclose ISC’s rights under § 1653. The mandate rule is a specific application of the law of the case doctrine which provides that when a court decides a rule of law, the mandate of the higher court is controlling as to matters within its compass. Sprague u. Ticonic Nat'l Bank, 307 U.S. 161, 59 S. Ct. 777, 83 L. Ed. 1184 (1939), 10 Gertz v. Robert Welch, Inc., 680 F.2d 527 (7th Cir. 1982); S. Atl. Ltd. Pship of Tenn, L.P. v. Riese, 356 F.3d 576 (4th Cir. 2004); See also Quern v. Jordan, 440 U.S. 332, 347 n.18, 99 S. Ct. 1139, 1148 n.18, 59 L. Ed. 2d 358 (1979). The doc- trine of law of the case is implicated only with respect to issues previously determined. Quern v. Jordan, supra. (citing In re Sanford Fork & Tool Co., 160 U.S. 247, 16 S. Ct. 291, 40 L. Ed. 414 (1895)). A lower court has author- ity to address any issue which was not expressly or impli- edly disposed of on appeal. Id.; Sprague v. Ticonic Natl Bank, supra; Wells Fargo and Company v. Taylor, 254 U.S. 175, 41 S. Ct. 93, 65 L. Ed. 205 (1920). In the instant case, there is no law of the case ad- dressing subject matter jurisdiction under the McAnnulty Doctrine. ISC pled subject matter jurisdiction under federal question jurisdiction and the APA based on the Industrial Safety standard, that the malicious targeting of ISC by PTO officials constituted final agency action in the nature of a sanction. The Fourth Circuit expressly stated, both in the prior appeal and in this appeal, that the Court was not addressing the issue of subject matter jurisdiction under the McAnnulty Doctrine, which it characterized as “a doctrine of equity jurisdiction apart from the APA....” ISC v. Dudas, at 415; App. p. 9; JSC v. Rogan, at 457; App. p. 29. The Fourth Circuit’s reliance on Stamper to limit the court’s authority to remedy inadequate jurisdictional allega- tions represents a direct conflict with: 1) section 1653 of the Judicial Code and the decisions of this Court and other Circuit Courts establishing the appellate court’s responsibil- ity under § 1653 to broadly consider alternative grounds for subject matter jurisdiction at any stage of the proceeding; and, 2) the decisions of this Court limiting the scope of appellate mandates to issues actually addressed on 11 appeal. Consistent with the mandate rule set forth in the Quern-Sprague-Wells Fargo line of cases (see above), the Fourth Circuit’s statement that it was not addressing the court’s equity jurisdiction under McAnnulty conclusively establishes that the law of the case does not discharge the district court from its duties and responsibilities under § 1653 of the Judicial Code to allow amendments to plead alternative grounds for jurisdiction. 1. The Fourth Circuit’s Failure to Permit Amendment Is in Direct Conflict with Section 1653 of the Judicial Code Requiring Both Ap- pellate Courts and the District Courts to Con- sider Alternative Grounds for Jurisdiction at Any Stage of the Proceeding The Fourth Circuit concluded in the instant case that the effect of ISC’s failure to raise McAnnulty prior to the first appeal resulted in waiver of McAnnulty as a grounds for the court to exercise subject matter jurisdiction. Thus, had the district court considered the McAnnulty Doctrine as an alternative ground for jurisdiction, which it did not do, the Fourth Circuit stated that the district court “would have had to violate what we did instruct: to dismiss the case for lack of subject matter jurisdiction.” JSC v. Dudas, at 415; App. pp. 9-10. The Fourth Circuit's use of waiver as a vehicle to foreclose ISC’s rights under 28 U.S.C. § 1653 is clearly in conflict with the decisions of this Court and other Circuit Courts and should not serve as legal basis for affirming the district court’s abuse of discretion in denying ISC leave to amend. Under Federal Rule of Civil Procedure 8(aX1) an affirmative pleading of the precise statutory basis for federal subject matter jurisdiction is not required as long 12 as a complaint alleges sufficient facts to establish jurisdic- tion. LeBlanc v. Salem (In re Mailman Steam Carpet Cleaning Corp.), 196 F.3d 1, 5 (Ist Cir. 1999); Rohler v. TRW Inc., 576 F.2d 1260, 1264 (7th Cir. 1978). If the stated grounds do not provide jurisdiction, the district court has the “duty” under Rule 8(a) to read a complaint liberally and to determine whether the facts set forth justify the court exercising jurisdiction on grounds other than those pleaded. Rohler v. TRW Inc., supra. Consistent with this liberal pleading standard, § 1653 authorizes federal district and appellate courts to remedy inadequate juris- dictional allegations at any stage of the proceeding. Newman-Green, Inc. v. Alfonzo-Larrain, 490 U.S. 826, 109 S. Ct. 2218, 104 L. Ed. 2d 893 (1989). Apart from the instant case, all courts which have addressed this issue have held that a plaintiff may rely on § 1653 at any stage of the proceeding, including on appeal, to assert a new theory of subject matter jurisdiction that is apparent from the face of the complaint. Advani Enter- prises, Inc. v. Underwriters at Lloyds, 140 F.3d 157, 161 (2d Cir. 1998) (pursuant to § 1653 an appellate court can allow amendment to assert a new theory f subject-matter jurisdiction after finding that the original theory was insufficient); Kiser v. General Electric Corp., 831 F.2d 423 (3rd Cir. 1987) (pursuant to § 1653 a federal court not only has the power but also the duty to consider on the merits a proposed amendment remedying defective allegation of subject matter jurisdiction); Whitmire v. Victus Limited t/a Master Design Furniture, supra (§ 1653 allows amendment to state an alternative jurisdictional basis for recovery upon the facts previously alleged either in the district court or the appellate court); Seagraves v. Harris, 629 F.2d 385 (5th Cir. 1980) (§ 1653 in conjunction with Fed. R. Civ. 13 P. 15 allow plaintiff to amend after appellate argument to plead a new theory of subject matter jurisdiction); Miller v. Davis, 507 F.2d. 308 (6th Cir. 1974) (§ 1653 allows the appellate court to direct plaintiff to assert a new basis for subject matter jurisdiction); See also LeBlanc v. Salem (In re Mailman Steam Carpet Cleaning Corp.), 196 F.3d 1, 5 (1st Cir. 1999) (plaintiff’s misplaced reliance on statute as basis for subject matter jurisdiction does not foreclose the appellate court from considering any other jurisdictional source because “federal subject matt jurisdiction may be established by reading a complaint holistically, ‘even though the jurisdiction expressly asserted was im- proper). In Vukonick v. Civil Service Comm’n, 589 F.2d 494 (10th Cir. 1978), for example, plaintiff pled subject matter jurisdiction under the APA in an attempt to obtain judicial review of the civil service commission’s refusal to proceed with an appointment due to a dispute with the EPA. While the case was pending, the United States Supreme Court held that the APA did not afford independ- ent subject matter jurisdiction for judicial review and that subject matter jurisdiction rests solely on federal question jurisdiction, 28 U.S.C. § 1331. The Tenth Circuit concluded that the failure to allege this alternate basis for jurisdic- tion was not fatal because “the complaint revealed a basis for § 1331 jurisdiction.” Jd. at 496. The Fourth Circuit’s failure to consider alternative jurisdictional grounds and its use of waiver to deny ISC’s rights to amend in conformity with § 1653 of the Judicial Code presents an irreconcilable conflict in the law which is likely to have significant impact beyond this case. By enacting § 1653, it was the intention of Congress to permit amendment broadly to avoid the dismissal of suits on technical grounds. Moore v. Coats Co., 270 F.2d 410 (3rd 14 Cir. 1959); Whitmire v. Victus Limited T/A Master Design Furniture, 212 F.3d 885 (5th Cir. 2000), Miller v. Davis, 507 F.2d 308 (6th Cir. 1974); Commercial Union Insurance Co. v. U.S., 999 F.2d 581 (D.C. Cir. 1993). Accordingly, federal practice dictates that “Section 1653 should be construed ‘liberally to permit the action to be maintained if it is at all possible to determine from the record that jurisdiction does in fact exist Advani Enterprises, Inc., supra. The Fourth Circuit’s decision in the instant case stands in stark contrast to these legal precepts. Here the Fourth Circuit adopted a pleading standard which ele- vates form over substance: all jurisdictional grounds not precisely pled by plaintiff are waived. Under this standard Fourth Circuit practice permits the court to arbitrarily deny plaintiff rights protected in the Judicial Code and by the decisions of this Court and all other Circuit Courts. 2. The Fourth Circuit’s Reliance on the Mandate Rule to Deny ISC Leave to Amend under Sec- tion 1653 Is in Direct Conflict with this Court’s Decisions Limiting the Scope of an Appellate Mandate to Issues Actually Addressed on Ap- peal Nothing contained in the Fourth Circuit’s mandate should have precluded the district court from discharging its responsibilities under § 1653 to broadly consider alternative grounds for subject matter jurisdiction which were apparent on the face of the complaint. The district court in the instant case had authority under the mandate rule to address any issue which was not expressly or impliedly disposed of on appeal. The Fourth Circuit expressly stated that it did not address the issue of subject matter jurisdiction under the McAnnulty Doctrine, nor did 15 it address the merits of jurisdiction under McAnnulty by implication. The jurisdictional issue decided by the Fourth Circuit was whether the PTO’s advertising campaign, directed at ISC for the purpose of causing ISC irreparable harm, constituted final agency action under the APA so as to be reviewable in court. [SC v. Rogan, 357 F.3d at 458; App. p. 31. The Fourth Circuit stated that in order to constitute final agency action the agency’s conduct must have regula- tory impact, that is, it must be both the “‘consummation of the agency's decision making process land] must be [an action] by which rights or obligations have been deter- mined, or from which legal consequences will flow.” Id. at 559; App. p. 32. The Fourth Circuit concluded that this inquiry into regulatory impact is limited to the “text” of the publication and whether the text constitutes the “consummation” of a decision making process which results in a formal determination of rights or obligations or legal consequences. The Fourth Circuit explained that the PTO advertisements did not have the requisite regula- tory impact to be reviewable as “final agency action” under the APA because the PTO advertisements did not ex- pressly name ISC. The court further stated that unless the “intent to penalize” is “referenced” in the text, any scheme to penalize ISC, including the PTO’s attempts to link ISC to the advertisements, was incapable of “taint{ing]” the text. In other words, jurisdiction under the APA is to be determined from the text of the agency publication with- out consideration of the intent to penalize, the libel actu- ally committed, or the federal rights violated. This is quite different from the court’s jurisdiction under the McAnnulty Doctrine, which broadly protects against arbitrary and unlawful action by agency officials. 16 Nothing addressed by the court in the context of final agency action forecloses jurisdiction under the McAnnulty Doctrine. Under the McAnnulty Doctrine, judicial review is afforded whenever an agency official’s conduct is unau- thorized by law or violates the rights of the aggrieved plaintiff. See Chamber of Commerce of the U.S. v. Reich, 74 F.2d 1322 (D.C. Cir. 1996); See also RI. Dep't of Enutl. Mgmt. v. U.S., 304 F.3d 31 (ist Cir. 2002); Aid Assen for Lutherans v. U.S. Postal Serv., 321 F.3d 1166 (D.C. Cir. 2003). Under the McAnnulty Doctrine, regulatory impact is not a pre-condition for the district court’s subject matter jurisdiction. See Joint Anti-Fascist Refugee Comm. v. McGrath, 341 U.S. 123, 71 S. Ct. 624, 95 L. Ed. 817 (1951) (plurality opinion); B.C. Morton Int'l Corp. u. FDIC, 305 F.2d 692 (Ist Cir. 1962). Therefore, the Fourth Circuit's statement that the non-regulatory harm to ISC’s reputa- tion “cannot be imputed to the PTO for purposes of deter- mining whether its conduct was a final agency action” does not preclude review jurisdiction under the McAnnulty Doctrine. See ISC v. Rogan, 357 F.3d at 460; App. pp. 34- 35. In fact, there are many circumstance, such as the instant case, where the risk of harm to reputation caused by the conduct of agency officials does not have direct regulatory effect yet nonetheless constitutes a sufficiently “cognizable injury” to support equity jurisdiction in federal court. Meese v. Keene, 481 U.S. 465, 107 S. Ct. 1862, 95 L. Ed. 2d 415 (1987); Joint Anti-Fascist, supra; B.C. Morton, supra. See also Foretich v. U.S., 351 F.3d 1198 (D.C. Cir. 2003); S. Mut. Help Ass’n, Inc. v. Califano, 574 F.2d 518 (D.C. Cir. 1977). Furthermore, while the fact that the text of the media campaign did not name ISC may defeat jurisdiction based 17 on final agency action under the APA, this does not fore- close judicial review under the McAnnulty Doctrine when the underlying intent of the PTO officials was to target ISC through the improper use of agency resources and agency influence. In the context of the court’s equity jurisdiction, allegations of the underlying intent of agency officials to specially target an individual or company are not limited to the four corners of the text of the agency publication as they are under the regulatory effects standard applied by the Fourth Circuit. See B.C. Morton, supra.” Similarly, the Fourth Circuit’s statement that the text of the advertisements was not a regulatory effect but a “warning [to] the public about invention promotion scams [that is] consistent with the PTO’s commission granted by the Inventors’ Rights Act of 1999” does not foreclose judicial review under McAnnulty. Sve ISC v. Rogan, 357 F.3d at 460; App. p. 35." In B.C. Morton, the First Circuit was presented with virtually the same type of agency abuse, resulting harm to reputation and lawful business activities as presented in the instant case. Plaintiff alleged that the FDIC has issued a lawful press release that contained deliber- ate misrepresentations regarding the sale of certain types of certifi- cates. Plaintiff alleged that, although not specifically identified in the press release, its business was the target of agency officials who intended to use the press release to destroy lawful business activities. The First Circuit found that it had McAnnulty-type subject matter jurisdiction where agency officials target a specific company with the intent to interfere with lawful business activities. The Court held that the district court may grant relief based on the threatened injury to reputation resulting from arbitrary action of agency officials regardless of whether the use of adverse publicity has regulatory impact. In B.C. Morton, as in the instant case, it was the improper use of agency resources and agency influence to interfere with lawful business activities that supported the district court exercising equity jurisdiction under McAnnulty. Subject matter jurisdiction is not defeated, as it is under the regulatory impact standard, where the agency uses “artful (Continued on following page) 18 In summary, the Fourth Circuit's prohibition of amendment under § 1653 is in direct conflict with long standing law. The Quern-Sprague-Wells Fargo line of cases (discussed above) limit the doctrine of law of the case to issues actually decided by the appellate court. The district court on remand has the authority to address any issue which was not expressly or impliedly decided. As discussed in Section 1 above, where the issue left open concerns an alternative ground for the court to exercise jurisdiction, § 1653 permits amendment in conformity with the liberal policy of amendment contained in the Federal Rules. In the instant case, the Fourth Circuit did not decide, directly or indirectly on the merits, whether equity jurisdiction exists in the district court under the McAnnulty Doctrine. Thus, Stamper, on which the Fourth Circuit relies, does not apply because the district court has jurisdiction on grounds other than those addressed by the appellate court. generality” in its written communication, whether in a press release, as was used in B.C. Morton, or in advertisements, as were used in this case. In this regard the First Circuit stated as follows: The Joint Anti- Fuscist Committee case shows that in determining the right of a plaintiff to relief against arbitrary governmental ac- tion, “the true test is the substantiality of the present or immi- nent harm which the administrative action inflicts on the plaintiff.” ... There is no merit in the contention that a private business has no protection against attack by a government agency as long as the agency uses artful generality ... we are unable to see any sound reason why, upon the facts alleged in the amended complaint, a federal court should refuse to exercise jurisdiction. B.C. Morton, 305 F.2d at 698-99 (citations omitted). 19 3. The Fourth Circuit’s Affirmance of the District Court’s Order Denying ISC Leave to Amend Is in Conflict with this Court’s Decisions and the Decisions of the Other Circuit Courts Address- ing the Right to Amend Federal Rules of Civil Procedure 15(a) provides that a] party may amend the partys pleading .. . by leave of court ... and leave shall be freely given when justice so requires.” Fed. R. Civ. P. 15(a). The liberal approach to amendment embodied in Rule 15 allows a district court, in conjunction with §1653, to grant leave to amend after dismissal in order to assert a new basis for subject matter jurisdiction, provided that the amendment is not unduly delayed, advanced in bad faith, or prejudicial to the opposing party. Berkshire Fashions, Inc. u. The M.V. Hakusan II, supra; United Steelworkers of America, AFL- CIO v. Mesker Bros. Industries, Inc., 457 F.2d 91 (8th Cir. 1972); Whitmire u. Victus Limited t/a Master Design Furniture, supra; Miller v. Davis, supra. Inherent in the authority to address issues not dis- posed of on appeal is the district court’s authority, on remand, to allow amendments of the pleadings. Jn re Sanford Fork & Tool Co., supra; Wells Fargo and Company v. Taylor, supra. It is well settled that unless an appellate mandate constitutes a final decision on the merits, a district court is to exercise its sound discretion on remand to allow the plaintiff to amend pleadings in order to cure defects in the sufficiency of a complaint. Rogers v. Hill, 289 U.S. 582, 53 S. Ct. 731, 77 L. Ed. 1385 (1933). This author- ity includes jurisdictional amendments as there is no general prohibition against asserting another basis for jurisdiction in an amendment to a pleading, provided that such jurisdiction would have existed at the time the 20 complaint was originally filed (Berkshire Fashions, Inc. v. The M.V. Hakusan II, 954 F.2d 874 (3rd Cir. 1992)) and dismissal for lack of subject matter jurisdiction does not constitute a final decision on the merits (Fed. R. Civ. P. 41(b); See also Costello v. U.S., 365 U.S. 265, 81 S.Ct. 534, 5 L. Ed. 2d 551 (1961)). ISC’s original complaint set forth all of the requisite facts for the court to exercise subject matter jurisdiction under the McAnnulty Doctrine even though this theory was not specifically pled, including: ¢ The overarching goal of the PTO officials was to use false and unauthorized adverse publicity to put ISC out of business and oth- erwise prevent ISC from engaging in its law- ful business activities although Congress placed specific restrictions on the PTO by denying it authority, directly or indirectly, to interfere with the lawful business activities of invention promoters and by placing spe- cific restrictions on the PTO with respect to the manner and context in which the PTO was authorized to make customer com- plaints publicly available in a neutral public forum. Amended Complaint JA 4-7, 11-14, 16, 28-39; App. pp. 60-62, 64-65, 69-75. * Petitioner refers to Paragraphs 4 through 45 of the Amended Complaint reprinted in the Appendix hereto at pp. 59 through 84. These paragraphs are identical to Paragraphs 4 through 45 of the original Complaint. The facts supporting the court’s general equity jurisdiction under the McAnnulty Doctrine are set forth in Paragraphs 46 through 54, which incorporate and summarize the facts pled in Paragraphs 4 through 45. In its Amended Complaint ISC pled the same facts in support of both general equity jurisdiction under the McAnnulty Doctrine and federal question jurisdiction under the APA to preserve (Continued on following page) 21 ¢ The PTO officials implemented their scheme to target ISC through the improper use of agency resources and agency influence, in- cluding featuring an ISC customer in its media campaign because PTO officials har- bor a specific animus toward ISC. Amended Complaint 1 15-16, 18-19, 22, 32-38; App. pp. 65-67, 71-74. „ As part of its improper efforts to publicly identify ISC as running a scam and to cause harm to ISC: i) the PTO publicized the alle- gation contained in the Lewis complaint outside the neutral public forum provided for in the IRA and linked ISC through the PTO’s contacts with the media; ii) the PTO officially embraced the false allegations made by Lewis and falsely represented to the public that Lewis was the victim of a patent scam; and, iii) the PTO disparaged ISC’s services to various individuals and groups, expressly or impliedly, including that it was featuring an ISC customer in its media campaign to counter patent scams like ISC. Amended Complaint 11 20-21, 23- 27; App. pp. 66-69. ¢ The PTO officials’ conduct is ultra vires be- cause it is arbitrary and capricious, is in ex- cess of the PTO jurisdiction, is contrary to ISC’s federal and constitutional rights and has proximately caused and continues to cause harm to ISC. Amended Complaint 14 40-45; App. pp. 75-79. both jurisdictional bases while ISC petitioned this Court for a writ of + — Fourth Circuit in connection with its decision in JSC u upra. Rogan, supra.) 22 The Fourth Circuit’s affirmance of the district court’s order denying ISC leave to amend to plead an alternative basis for jurisdiction disregards completely § 1653 of the Federal Judicial Code and Rule 15(a) of the Federal Rules of Civil Procedure. The exercise of the lower court’s discretion in granting leave to amend after remand must be in accordance with the liberal policy of amendment as set forth in Fed. R. Civ. P. 15(a). Nguyen v. U.S., 792 F.2d 1500 (9th Cir. 1986); See also Harkless v. Sweeny Indep. Sch. Dist., 554 F.2d 1353 (5th Cir. 1977). The seminal case addressing the liberal amendment standard is Foman v. Davis, 371 U.S. 178, 83 S. Ct. 227, 9 L. Ed. 2d 222 (1962). In Foman, this Court described the liberal amendment standard under Rule 15 as follows: Rule 15(a) declares that leave to amend “shall be freely given when justice so requires”; this man- date is to be heeded. . . If the underlying facts or circumstances relied upon by a plaintiff may be a proper subject of relief, he ought to be afforded an opportunity to test his claim on the merits. In the absence of any apparent or declared reason such as undue delay, bad faith or dilatory motive on the part of the movant, repeated failure to cure deficiencies by amendments previously al- lowed, undue prejudice to the opposing party by virtue of allowance of the amendment, futility of amendment, etc. — the leave sought should, as the rules require, be “freely given.” Of course, the grant or denial of an opportunity to amend is within the discretion of the District Court, but outright refusal to grant the leave without any justifying reason appearing for the denial is not an exercise of discretion; it is merely abuse of 23 that discretion and inconsistent with the spirit of the Federal Rules. 371 U.S. at 182 (citations omitted). As discussed in Section 1 above, the district court is duty bound to broadly consider alternative grounds for subject matter jurisdiction supported by the factual allegations of the complaint at any stage of the proceeding. Accordingly, in considering ISC’s request for leave to amend its complaint to plead equity jurisdiction under McAnnulty, the Fourth Circuit should have focused solely on whether the district court had abused its discretion in concluding that dismissal under 12(b)(1) constitutes a final decision on the merits and in failing to apply the Foman standard. The record in the instant case establishes that ISC’s right to amend under Foman is clear. The district court abused its discretion by disregarding the liberal amendment policies embodied in Rule 15 and § 1653 and, contrary to established law, concluding that the Fourth Circuit's dismissal under 12(b)(1) constituted a decision on the merits. In this regard, the district court stated as follows: [Tlo allow the plaintiff to amend its Complaint by adding a com- pletely new legal theory at this stage would defeat notions of judi- cial economy and finality. “Although amendment of pleadings following remand may be permitted.... The genera! rule that leave to amend under rule 15 should be freely granted will not be extended without limit when a rule 15 motion is brought after a claim has been fully litigated on the merits through appeal. At some point, there must be finality. Permitting amendment in this case would not enhance finality, but instead would encourage se- riatim judgments in the same basic dispute, as a plaintiff contin- ues to put forth new theories of recovery. For these reasons, plaintiff's Motion to Vacate Order of May 5, 2004 and Motion for Leave to File an Amended Complaint are DENIED. Order dated August 13, 2004; App. pp. 11-15. Of course, the instant case was never “fully litigated on the merits through appeal.” 24 ISC did not act in bad faith in moving for leave to amend to assert subject matter jurisdiction under the McAnnulty Doctrine. The forty day period between the filing of the PTO’s 12(b)\(1) motion and the time the district court entered its dismissal order under 12(b)(6) does not provide a basis under Foman to deny leave to amend. This is not a case where plaintiff has attempted piecemeal litigation, one theory at a time, and any impli- cation to the contrary is incorrect and not based on the record. At the time ISC filed its complaint there was a bona fide conflict in the law regarding the source of the Court’s authority to review ultra vires agency conduct. This Court has repeatedly instructed courts, both prior to and after the enactment of the APA, to apply a presump- tion in favor of judicial review where plaintiff seeks injunctive or declaratory relief from ultra vires adminis- trative agency action. Bowen v. Mich. Academy of Family Physicians, 476 U.S. 667, 106 S. Ct. 2133, 90 L. Ed. 2d 623 (1986); Barlow v. Collins, 397 U.S. 159, 90 S. Ct. 832, 25 L. Ed. 2d 192 (1970); Abbott Labs v. Gardner, 387 U.S. 136, 87 S. Ct. 1507, 18 L. Ed. 2d 681 (1967); Joint Anti- Fascist, supra; Leedom v. Kyne, 358 U.S. 184, 79 S. Ct. 180, 3 L. Ed. 2d 210 (1958); Stark v. Wickard, 321 US. 288, 64 S. Ct. 559, 88 L. Ed. 773 (1944). These decisions, however, leave unclear the specific basis for the Court’s subject matter jurisdiction as certain cases arise under the APA and others do not specify whether or not relief is sought under the ApA. At the time ISC filed its complaint The law in this area showed that in 1976, in order to provide “a safety-valve to ensure greater fairness and accountability in the administrative machinery of the Government” (H. Rep. No. 1656, 94th Cong., 2d Sess. 9 (1976), reprinted in 1976 U.S.C.C.A.N. at 6129-30), Congress decided to combine equity with federal question jurisdiction, (Continued on following page) 25 there were no Fourth Circuit opinions reconciling the relationship between the court’s equity jurisdiction under McAnnulty and the APA. In fact, it was not until the Fourth Circuit’s decision in this case that any Circuit Court had held that equity jurisdiction to review agency action remains separate from federal question jurisdiction and the APA, a decision that necessitated the need for ISC to seek leave to amend to plead subject matter jurisdiction under the McAnnulty Doctrine. As discussed above, the limitations which the Fourth Circuit placed on final agency action do not defeat jurisdiction under the McAn- nulty Doctrine and therefore amendment of the complaint would not be futile. The PTO is not prejudiced by the Court allowing ISC leave to amend the allegations of subject matter jurisdic- tion contained in its Complaint. This case is in the initial pleading stage and no discovery has been taken. The stating: ‘the time ſhas] now come to eliminate the sovereign immunity defense in all equitable actions for specific relief against a Federal agency or officer acting in an official capacity.” Presbyterian Church (U.S.A, v. U.S., 870 F.2d 518, 525 (9th Cir. 1989) (emphasis in opinion) (citing H. Rep. No. 1656, 94th Cong., 2d Sess. 9 (1976), reprinted in 1976 U.S.C.C.A.N. at 6129). Specifically, Congress amended 28 U.S.C § 1331 to eliminate the monetary requirement in order to provide federal question jurisdiction in all cases challenging an agency action, including equity cases. See Califano v. Sanders, 430 U.S. 99, 106, 97 S. Ct. 980, 51 L. Ed. 2d 192 (1977) (in “restructur[ing] afresh the scope of federal-question jurisdiction,” the “obvious effect” was to confer broad jurisdiction on federal courts to review agency action). At the same time, additional language was added to § 702 of the APA in order to provide broad waiver of sovereign immunity. It was entirely consistent with the case law to argue that the combination of the amendment to § 1331, which removed the monetary requirement, together with the addition to § 702 of the APA, in effect codified the right to judicial review exsting in equity as the McAnnulty Doctrine. See Chamber of Commerce, supra; R.] Dep't, supra; Presbyterian Church, supra. 26 requested amendment does not cause any unfair surprise to the PTO as the underlying facts and circumstances have been known to the PTO since ISC filed its complaint. In contrast, ISC is greatly prejudiced by the failure of the Fourth Circuit to allow ISC to amend its complaint. The prohibition against amendment adopted by the Fourth Circuit has unfairly left ISC without a judicial remedy against conduct that offends every notion and sense of fairness and justice. Here PTO officials have publicly stated their intention to wield agency resources and influence to stigmatize ISC and prevent ISC from engaging in lawful business activities because of the animus PTO officials personally harbor against ISC. In response to the PTO’s attempt to shield its agency abuse from judicial review, the Fourth Circuit was called upon, as a case of first impression in the Fourth Circuit, to resolve the relationship between federal question jurisdic- tion under the APA and equity jurisdiction under the McAnnulty Doctrine. Contrary to the decisions in other Circuits, the Fourth Circuit concluded that equity jurisdic- tion under the McAnnulty Doctrine is separate and apart from federal question jurisdiction. The Fourth Circuit then further shielded the PTO’s agency abuses from judicial review by adopting a prohibition against amendment in direct conflict with § 1653 of the Judicial Code which is the subject of this petition for writ of certiorari. * 27 CONCLUSION For the foregoing reasons Petitioner respectfully requests that this Court grant its petition for writ of certiorari to review the decision of the United States Court of Appeals for the Fourth Circuit. Respectfully submitted, EDWARD B. FRIEDMAN RICHARD C. SULLIVAN, JR. Counsel of Record REEDSMITH, LLP J. STEPHEN PURCUPILE Suite 1400 FRIEDMAN AND 3110 Fairview Park Drive FRIEDMAN Falls Church, VA 22042-3844 900 Fifth Avenue Tel. (703) 641-4200 Pittsburgh, PA 15219 Fax (703) 641-4340 Tel. (412) 261-5834 Fax (412) 261-0350 Attorneys for Petitioner Invention Submission Corporation App. 1 PUBLISHED UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT INVENTION SUBMISSION CORPORATION, a Pennsylvania corporation, Plaintiff-Appellant, V. JONATHAN W. DuDAS, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office, U.S. Department of Commerce, in his official capacity, Defendant-Appellee. No. 04-2295 Appeal from the United States District Court for the Eastern District of Virginia, at Alexandria. Leonie M. Brinkema, District Judge. (CA-02-1038-1) Argued: May 24, 2005 Decided: June 24, 2005 Before WILKINS, Chief Judge, and NIEMEYER and SHEDD, Circuit Judges. Affirmed by published opinion. Judge Niemeyer wrote the opinion, in which Chief Judge Wilkins and Judge Shedd joined. App. 2 COUNSEL ARGUED: Edward B. Friedman, Pittsburgh, Pennsyl- vania, for Appellant. Rachel Celia Ballow, Assistant United States Attorney, Office of the United States Attorney, Alexandria, Virginia, for Appellee. ON BRIEF: J. Stephen Purcupile, Friedman & Friedman, Pittsburgh, Pennsylvania; Richard C. Sullivan, Reed Smith, L.L.P., Falls Church, Virginia, for Appellant. Paul J. McNulty, United States Attorney, Alexandria, Virginia, for Appellee. OPINION NIEMEYER, Circuit Judge: In our earlier review of the district court’s final order dismissing this case under Federal Rule of Civil Procedure 12(bX6), we held: Because the conduct of the [Patent and Trademark Office] that is the subject of this ac- tion did not constitute “final agency action” as used under the [Administrative Procedure Act], the district court did not have subject matter ju- risdiction to evaluate the complaint under Rule 12(bX6) and should have dismissed this case un- der Rule 12(b)(1). We therefore vacate its order of October 30, 2002, as well as the supporting opin- ion, and remand with instructions to dismiss this case under Federal Rule of Civil Procedure 12(b\(1). Invention Submission Corp. v. Rogan, 357 F.3d 452, 460 (4th Cir. 2004). By order dated May 5, 2004, the district court did vacate its earlier dismissal order and dismissed this case under Federal Rule of Civil Procedure 12(b)(1). App. 3 Invention Submission Corporation filed a motion to vacate the district court’s May 5, 2004 order and to grant Invention Submission leave to file an amended complaint for the purpose of avoiding the jurisdictional issue. The district court denied this motion and reaffirmed its earlier dismissal order. Invention Submission now challenges the district court’s order denying its motion to vacate and for leave to amend. Because the district court was bound by the mandate of this court to dismiss this case for lack of subject matter jurisdiction, we affirm. I In January 2002, the Patent and Trademark Office (“PTO”) launched a media campaign to counter invention promotion scams. The print advertisements featured an inventor named Edward Lewis, along with text that identified him by name and read, “I spent $13,000 and three years ‘spinning my wheels’ with a company that promised my idea would make lots of money. They were right. It made lots of money . for them. I havent seen a penny.” The advertisement ended with a general state- ment about avoiding “invention promotion scams” and contact information for the PTO. A journalist for a cable television network, who saw the PTO’s advertisements, interviewed Lewis and pub- lished a story revealing that Lewis was referring in the advertisements to his relationship with Invention Submis- sion, a business engaged in assisting inventors with obtaining patents. The article revealed that Lewis had filed a complaint with the PTO in August 2001 that was “being processed.” The article also revealed that Invention App. 4 Submission was one of several companies investigated by the FTC in the 1990s “for misrepresentation in patent marketing schemes.” The article concluded with Invention Submission’s response that it did nothing wrong and that its representations and commercials misled neither Lewis nor anyone else. After the article appeared, Invention Submission commenced this action under the Administrative Proce- dure Act (“APA”), 5 U.S.C. § 704, against the PTO, alleging that the PTO’s advertising campaign was aimed at Inven- tion Submission to penalize it and ultimately to put it out of business. Invention Submission claimed that the cam- paign was an illegal final agency action that was arbitrary and capricious and exceeded any statutory authority conferred on the PTO. The PTO filed a motion to dismiss Invention Submis- sion’s complaint under Federal Rule of Civil Procedure 12(bX1), contending that the PTO advertising campaign was not a “final agency action” and therefore that the district court lacked subject matter jurisdiction to review its actions. The district court granted the motion to dis- miss but based its decision on Rule 12(b)(6), finding that “it is clear as a matter of law that no relief could be granted under any set of facts that could be proved consis- tent with the allegations.” The court observed that “(t]he PTO’s publications in this case were merely generic advertisements of agency programs not specifically nam- ing the plaintiff. Any harm to the plaintiff was, at most, indirect.” Finally, the court found that the agency’s con- duct was not a “final agency action” and that Invention Submission had not alleged any specific harm caused by the PTO’s actions. App. 5 On Invention Submission’s first appeal, we agreed with the district court that the PTO’s alleged conduct did not constitute final agency action and therefore was not reviewable under the APA. We observed: The text of the advertising material can only be construed to be an effort by the any right or obligation of any party. Invention Submission, 357 F.3d at 460 (emphasis added). In response to Invention Submission’s contention that in conducting the advertising campaign, the PTO harbored an intent to put Invention Submission out of business and that therefore the advertising campaign was agency action adversely affecting Invention Submission, we stated: acted the Inventors’ Rights Act — into a PTO sanction imposed on Invention Submission that would be reviewable in court, especially when the material itself does not reference an intent to pe- nalize any particular company. Id. Focusing particularly on the effect of the advertising campaig. on Invention Submission, we observed: If the PTO’s advertising made business more dif- ficult for Invention Submission by raising the public’s awareness, the decisions of members of Id. (internal quotation marks and citation omitted). We summarized our holding as follows: In short, the PTO’s advertising campaign warning the public about invention promotion scams was consistent with the PTO’s commission granted by the Inventors’ Rights Act of 1999, and in the circumstances of this case, the decision to pursue such a campaign, as well as its content, did not create a final agency action that is re- viewable in court. id. (emphasis added). Accordingly, we concluded that the district court did not have subject matter jurisdiction over the case and remanded it “with instructions to dismiss this case under Federal Rule of Civil Procedure 12(b)(1).” Id. During the course of its prior appellate briefing, Invention Submission argued that the district court's jurisdiction over its complaint could have rested on gen- eral equity jurisdiction under the holding of American School of Magnetic Healing v. McAnnulty, 187 U.S. 94 (1902), an argument that it raised for the first time on appeal. In response, we stated, “we do not address whether the ‘McAnnulty Doctrine,’ which Invention Sub- mission raises for the first time on appeal, provides a basis for judicial review of unlawful agency action.” Invention Submission, 357 F.3d at 457 n.“. After the case was remanded to the district court and the district court had dismissed the case under Rule App. 7 12(b\1), Invention Submission filed a motion to vacate the dismissal order and for leave to amend its complaint to allege jurisdiction under the McAnnulty doctrine. The district court, relying on the scope of our mandate on remand, denied Invention Submission’s motion and reaffirmed its dismissal under Rule 12(b)(1). In addition, the court observed that to reopen the case at that point in time “would defeat notions of judicial economy and final- ity.” Invention Submission now appeals the district court's order denying its motion to vacate and for leave to amend its complaint. II In challenging the district court’s reliance on the plain language of our mandate on remand, Invention Submis- sion contends that on remand, the district court was “free to pass upon any issue which was not expressly or impli- edly disposed of on appeal so long as consideration of the issue raised on remand is not inconsistent with the appel- late mandate.” Invention Submission argues that it would not have been inconsistent with our mandate to permit it to amend its complaint to rest jurisdiction on the McAn- nulty doctrine. It relies heavily on our statement made in the opinion on the first appeal that Invention Submission “relied exclusively on the APA” to establish subject matter jurisdiction, an issue that we disposed of on that appeal, and our observation that “we do not address whether the ‘McAnnulty Doctrine’ ... provides a basis for judicial review of unlawful agency action.” Invention Submission, 357 F.3d at 457 n.“. App. 8 The force of our prior mandate is governed by well- established principles. In general, once a case has been decided on appeal and a mandate issued, the lower court may not deviate from that mandate but is required to give full effect to its execution. See Stamper v. Baskerville, 724 F.2d 1106, 1107 (4th Cir. 1984). This “mandate rule” is a more powerful version of the law of the case doctrine and is based on “the principle that an inferior tribunal is bound to honor the mandate of a superior court within a single judicial system.” 18B Charles Alan Wright, Arthur B. Miller, & Edward H. Cooper, Federal Practice and Procedure § 4478.3 (2d. ed. 2002). As we observed in United States v. Bell, 5 F.3d 64, 66 (4th Cir. 1993) (quoting Sprague v. Ticonic National Bank, 307 U.S. 161, 168 (1939)), “[flew legal precepts are as firmly established as the doctrine that the mandate of a higher court is ‘control- ling as to matters within its compass.’” Under the man- date rule, therefore, a lower court generally may not consider questions that the mandate has laid to rest. Sprague, 307 U.S. at 168. Deviation from the mandate rule is permitted only in a few exceptional circumstances, which include (1) when “controlling legal authority has changed dramatically”; (2) when “significant new evidence, not earlier obtainable in the exercise of due diligence, has come to light”; and (3) when “a blatant error in the prior decision will, if uncor- rected, result in a serious injustice.” United States v. Aramony, 166 F.3d 655, 662 (4th Cir. 1999) (quoting Bell, 5 F.3d at 67) (internal quotation marks omitted). But it is clear that none of these exceptions applies here. Our review, therefore, is limited to consideration of the scope of our mandate and a determination of whether the district court faithfully executed it in dismissing this case without App. 9 permitting Invention Submission leave to file an amended complaint. The language of our mandate directed the district court to dismiss this case for lack of subject matter juris- diction and, on its face, does not authorize the district court to open the case for further adjudication. Because our order stated that the district court lacked jurisdiction, the court was not free to do anything else but to dismiss the case. As we have explained previously, “[clompliance with an order to relinquish jurisdiction necessarily pre- cludes the lower court from taking any further action other than dismissal, for to do so would involve retaining jurisdiction.” Baskerville, 724 F.2d at 1108. Thus, to comply with our mandate, the district court could only dismiss the case. [Alny action by the lower court other than immediate and complete dismissal [would have been] by definition inconsistent with and therefore a violation of - the order [to dismiss]. Jd. In short, our instruction to the district court was clear, direct, and limiting, and we conclude that the district court followed the mandate as directed. Thus, in restricting its action to that directed by the mandate, the district court did not err. Invention Submission’s reliance on our previous opinion’s footnote, 357 F.3d at 457 n.*, is misplaced. In limiting our discussion to whether the district court had jurisdiction under the APA, as invoked by Invention Submission, we simply took note that Invention Submis- sion had not properly raised the McAnnulty doctrine as a jurisdictional basis before the district court and therefore had not preserved that issue for consideration on appeal. While we noted this fact in the footnote, we did not in- struct the district court to consider that doctrine on remand. Had the district court done so anyway, it would App. 10 have had to violate what we did instruct: to dismiss the case for lack of subject matter jurisdiction. Because the district court was bound by the mandate of this court to dismiss this case for lack of subject matter jurisdiction, and the district court did dismiss this case we conclude that there is no basis to reverse its order. AFFIRMED. App. 11 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA Alexandria Division INVENTION SUBMISSION CORPORATION, Plaintiff v 1:02cv1038 (LMB) ) ) ) ) ) JAMES E. ROGAN, Undersecretary ? of Commerce for Intellectual ) Property and Director, ) United States Patent ) and Trademark Office, ) U.S. Department of Commerce, in his official capacity, ) Defendant. ORDER (Filed Aug. 13, 2004) Before the Court are plaintiff's Response to the Court’s Order Dated April 22, 2004, Motion to Vacate Order of May 5, 2004, and Motion for Leave to File an Amended Complaint. The government has filed its Opposi- tion, and the plaintiff has filed a reply. For the reasons that follow, plaintiff’s motions will be DENIED. On July 17, 2002, plaintiff filed its Complaint under the Administrative Procedures Act (APA), alleging that the U.S. Patent and Trademark Office (PTO) had violated the Inventors’ Rights Act, 35 U.S.C. § 297. Plaintiff seeks both declaratory and injunctive relief. Defendant moved to dismiss the Complaint under Fed. R. Civ. P 12(b)(1) for lack of subject matter jurisdiction on the ground that the PTO action at issue did not constitute final agency action. App. 12 Plaintiff did not seek to amend its complaint in response to the Motion to Dismiss, but opposed the motion on its merits. On October 30, 2002, this Court dismissed the Complaint under Fed. R. Civ. P 12(b\6) for failure to state a claim upon which relief could be granted. That decision was appealed to the United States Court of Appeals for the Fourth Circuit, which on February 11, 2004, affirmed the dismissal but remanded with instructions to dismiss the Complaint under Rule 12(b)(1) because the court lacked subject matter jurisdiction. After the mandate was re- turned, the Court, on April 22, 2004, advised the parties that it intended to dismiss the Complaint under Rule 12(bX1) unless they filed an objection within ten days. May 5, 2004 was the deadline for filing any objection to dismissal. On May 5, 2004, the Court, not having heard from the parties, entered an Order dismissing the Com- plaint. Apparently, plaintiff filed its opposition on the same day. Although the Complaint has been dismissed, the Court has considered plaintiff's motion. The original Complaint was brought under only one legal theory, that the APA had been violated. In affirming the dismissal of plaintiff’s Complaint, the Fourth Circuit held that the conduct of the PTO that is the subject of the Complaint did not constitute final agency action under the APA, and therefore this Court did not have subject matter jurisdiction over the Complaint. Invention Submission Corporation v. Rogan, 357 F.2d 452, 460 (4th Cir. 2004). In its Opinion, the Fourth Circuit noted plaintiff's argument that subject matter jurisdiction may rest outside the APA under the McAnnulty Doctrine, but declined to address that argument because plaintiff had pled its claims only under the APA, not the McAnnulty Doctrine. Id. at 457, n“. App. 13 Plaintiff has filed a petition for certiorari with the Su- preme Court, but has not asked for a stay. In its Motion for Leave to File Amended Complaint, plaintiff essentially seeks to re-plead its allegations under an entirely new legal theory, the McAnnulty Doctrine, which provides that the lack of final agency action may not necessarily deprive this Court of subject matter jurisdic- tion to hear the Complaint. Defendant opposes any effort by plaintiff to amend its Complaint at this stage in the proceedings, arguing that under the mandate rule, this court should not allow the Complaint to be amended to include entirely new claims. The government's argument has merit. The mandate rule “compels compliance on remand with the dictates of a superior court and forecloses relitigation of issues ex- pressly or impliedly decided by the appellate court. In addition, the rule forecloses litigation of issues decided by the district court but foregone on appeal or otherwise waived, for example because they were not raised in the district court.” United States v. Bell, 5 F.3d 64, 66 (4th Cir. 1993). In discussing plaintiff's argument that jurisdiction would lie under the McAnnulty Doctrine, the Fourth Circuit held that the issue had not been properly raised in the district court for consideration on appeal. It then remanded the case to this Court only with instructions to dismiss the Complaint for lack of subject matter jurisdic- tion. The Fourth Circuit did not direct the Court to reopen the case or consider the applicability of the McAnnulty Doctrine. Under the mandate rule, all this Court is au- thorized to do is dismiss this civil Complaint. To allow plaintiff to raise the McAnnulty Doctrine issue in an App. 14 amended complaint would be inconsistent with the Fourth Circuit’s opinion, because the Fourth Circuit found that plaintiff had waived that issue. In addition to violating the mandate rule, to allow the Plaintiff to amend its Complaint by adding a completely new legal theory at this stage would defeat notions of judicial economy and finality. “Although amendment of pleadings following remand may be permitted, such amendment cannot be inconsistent with the appellate court’s mandate. ... The general rule that leave to amend under rule 15 should be freely granted will not be ex- tended without limit when a rule 15 motion is brought after a claim has been fully litigated on the merits through appeal. At some point, there must be finality. Permitting amendment in this case would not enhance finality, but instead would encourage seriatim judgments in the same basic dispute, as a plaintiff continues to put forth new theories of recovery.” In re Beverly Hills Bancorp, 752 F.2d 1334, 1337-38 (9th Cir. 1984) (internal citations omitted). See also Rolo v. City Investing Co. Liquidating Trust, 155 F.3d 644, 654 (3d Cir. 1998) (leave to amend after remand properly denied when plaintiff sought to add claims that “could have been pled much earlier in the proceedings”). For these reasons, plaintiff’s Motion to Vacate Order of May 5, 2004, and motion for Leave to File an Amended Complaint are DENIED, and it is hereby App. 15 ORDERED that the Court’s Order of May 5, 2004, dismissing this action under Rule 12(bX1) be and is reaffirmed and this civil action is dismissed.’ The Clerk is directed to forward copies of this Order to counsel of record. Entered this 13th day of August, 2004. /s/ Leonie M. Brinkema Leonie M. Brinkema United States District Judge Alexandria, Virginia ' No Stay has been filed pending Supreme Court action on the petition. Because the mandate has been returned to the Court, the Court has the authority to dismiss this Complaint. App. 16 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA 4] ria Divisi INVENTION SUBMISSION CORPORATION, Plaintiff 1:02cv1038 (LMB) * ) ) ) ) . ) JAMES E. ROGAN, Under ) Secretary of Commerce for ) Intellectual Property and ) Director, United States ) Patent and Trademark Office, ) U.S. Department of Commerce, in his official capacity, Defendant. ) ORDER (Filed May 5, 2004) The parties have not filed any objections to the pro- posed dismissal of this civil action as described in our Order of April 22, 2004. Accordingly, it is hereby ORDERED that pursuant to the decision issued by the United States Court of Appeals for the Fourth Circuit, the October 30, 2002 Order and Memorandum Opinion issued by this Court are VACATED; and it is further ORDERED that this civil action be and is DIS- MISSED under Fed. R Civ. P 12(b\1). The Clerk is directed to forward copies of this Order to counsel of record. App. 17 Entered this 5th day of May, 2004. /s/ Leonie M. Brinkema Leonie M. Brinkema United States District Judge Alexandria, Virginia App. 18 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA Alexandria Division INVENTION SUBMISSION CORPORATION, Plaintiff Civil Action No. 1:02cv 1038 Vv ) ) ) ) ) JAMES E. ROGAN, Under Secretary of Commerce for ) Intellectual Property and ) Director, United States ) Patent and Trademark Office, ) U.S. Department of Commerce, in his official capacity, Defendant. ) ORDER (Filed Apr. 22, 2004) The United States Court of Appeals for the Fourth Circuit has returned the mandate in this civil action with instructions to dismiss this civil action under Fed. R. Civ. P 12(bX1) rather than Rule 12(b)(6), and to vacate the Court’s memorandum opinion. Accordingly, it is hereby ORDERED that the parties advise the Court within ten days of any reason why the Court should not comply with this Order at this time. The Clerk is directed to forward copies, of this Order to counsel of record. App. 19 Entered this 22nd day of April, 2004. /s/ Leonie M. Brinkema Leonie M. Brinkema United States District Judge Alexandria, Virginia App. 20 125 S. Ct. 415; 160 L. Ed. 2d 317; 2004 U.S. LEXIS 7119; 73 U.S.L.W. 3272 Invention Submission Corporation, Petitioner v. Jonathan W. Dudas, as Undersecretary of Commerce for Intellectual Property and Director, Patent and Trademark Office, Department of Commerce. No. 04-40. SUPREME COURT OF THE UNITED STATES November 1, 2004, Decided JUDGES: Rehnquist, Stevens, O’Connor, Scalia, Ken- nedy, Souter, Thomas, Ginsburg, Breyer. OPINION: Petition for writ of certiorari to the United States Court of Appeals for the Fourth Circuit denied. App. 21 357 F.3d 452 No. 02-2461 UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT INVENTION SUBMISSION CORPORATION, a Pennsylvania Corporation, Plaintiff-Appellant, v. JAMES E. ROGAN, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office, U.S. Department of Commerce, in his official capacity, Defendant-Appellee. October 30, 2003, Argued February 11, 2004, Decided COUNSEL: Edward B. Friedman, FRIEDMAN & FRIEDMAN, Pittsburgh, Pennsylvania, for Appellant. Rachel Celia Ballow, Assistant United States Attorney, Alexandria, Virginia, for Appellee. ON BRIEF: J. Stephen Purcupile, Carolyn M. Corry, FRIEDMAN & FRIEDMAN, Pittsburgh, Pennsylvania; Richard C. Sullivan, Jr, REED SMITH, L.L.P, Falls Church, Virginia, for Appellant. Paul J. McNulty, United States Attorney, Alexandria, Virginia, for Appellee. JUDGES: Before WILKINS, Chief Judge, and NIE- MEYER and SHEDD, Circuit Judges. Judge Niemeyer wrote the opinion, in which Chief Judge Wilkins and Judge Shedd joined. OPINION BY: NIEMEYER App. 22 OPINION: NIEMEYER, Circuit Judge: Invention Submission Corporation commenced this action under the Administrative Procedure Act (“APA”) against James E. Rogan in his official capacity as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (“PTO”), alleging that the PTO’s 2002 advertising cam- paign to alert the public about “invention promotion scams” was aimed at Invention Submission to penalize it and ultimately put it out of business. Invention Submis- sion alleged that the advertising campaign was an illegal final agency action that was arbitrary and capricious and exceeded any statutory authority conferred on the PTO. On the PTO’s motion to dismiss the complaint under Federal Rule of Civil Procedure 12(bX1), based on the ground that the PTO advertising campaign was not a “final agency action” and therefore that the district court lacked subject matter jurisdiction, the district court dismissed the action. See Invention Submission Corp. v. Rogan, 229 F. Supp. 2d 498 (E. D. Va. 2002). The district court, however, acted under Federal Rule of Civil Proce- dure 12(b\6), concluding that “under any set of facts that could be proved consistent with the [complaint’s} allega- tions,” no relief could be granted to Invention Submission. Reviewing the district court’s order de novo, we agree that the complaint must be dismissed, but not under Rule 12(b)(6). As we explain below, we conclude that because the PTO’s advertising campaign was not a final agency action a conclusion that the district court also reached in its opinion — the district court had no subject matter juris- diction to review it. See 5 U.S.C. § 704. We must therefore vacate the district court's order of October 30, 2002, as well App. 23 as the supporting opinion, and remand with instructions to dismiss Invention Submission’s complaint for lack of subject matter jurisdiction. I Congress enacted the Inventors’ Rights Act of 1999, 35 U.S.C. § 297, to protect inventors from invention promo- tion scams and the deceptive advertising related to them by authorizing the PIO to publicize complaints that it receives against invention promoters. See 145 Cong. Rec. 814521 (Nov. 10, 1999). The Act and the regulations adopted under it impose a duty on the PTO “to provide a forum for the publication of complaints concerning inven- tion promoters.” 37 C. FR. 54.1, see also 35 U.S.C. § 297(d). The Act and regulations do not, however, author- ize the PTO to conduct any independent investigations of invention promoters, authorizing instead enforcement by injured persons through civil actions. See 35 U.S.C. § 297(b), (d) 37 C. FR. § 4.1. In connection with its duty to publicize complaints concerning invention promoters, the PTO initiated an advertising campaign in January 2002 to alert the public to “invention promotion scams,” and its advertisements stated, “Make sure your ideas — and your money don't wash away. To learn more, call the U.S. Patent and Trademark Office toll-free.” In launching the media campaign, the PTO stated in a press release: This week, the United States Patent and Trademark office (USPTO) unveils a television and radio campaign in five media markets to counter the flood of deceptive advertising aimed at App. 24 America’s independent inventors. ... The Agency also will be placing print ads. “USPTO’s ads caution inventors that ‘if it sounds too good to be true, it is, said James E. Rogan, Under Secretary of Commerce for Intel- lectual Property. “Our ads offer practical infor- mation, guiding inventors to USPTO’s Office of Independent Inventor Programs, where they can get real help with patenting and marketing their inventions.” Every year invention promotion scams cost U.S. inventors an estimated $200 million. The spots feature an actual inventor, Edward Lewis, who lost several thousand dollars. In the print advertising published by the PTO, Edward Lewis is quoted as saying, “I spent $13,000 and three years ‘spinning my wheels’ with a company that promised my idea would make lots of money. They were right. It made lots of money . for them. I havent seen a penny.” A journalist for a cable television network, who saw the PTO’s advertising campaign, contacted the PTO and requested contact information for Lewis. After the PTO provided the information, the cable television network interviewed Lewis and published a story that revealed that, in the PTO-published quotation of Lewis, Lewis was referring to his relationship with Invention Submission Corporation, an invention promoter The article revealed that Lewis had filed a complaint with the PTO in August 2001 that was “being processed.” The article also revealed that Invention Submission was one of several companies investigated by the FTC in the 1990s “for misrepresenta- tion in patent marketing schemes.” It stated that in 1994, “without admitting or denying guilt, the company agreed App. 25 to pay a $1.2 million settlement for refunds in the case, as well as change its business practices.” The article included Invention Submission’s response to Lewis’ accusations that it did nothing wrong, that neither its representatives nor commercials misled Lewis or any other inventor.” Edward Lewis, from Sicklerville, New Jersey, who invented “BodyGuard” to “shield automobile paint while tough wheel-cleaning products do their work,” had indeed filed a complaint with the PTO against Invention Submis- sion on August 1, 2001, and the PTO sent a copy of the complaint for response to Invention Submission on March 1, 2002. Sometime before March 26, 2002, Invention Submission and Lewis resolved Lewis’ complaint, and, on that date, Lewis withdrew his complaint from the PTO. Accordingly, Invention Submission advised the PTO that it was not submitting a response to the complaint, and the PTO did not post Lewis’ complaint on the agency’s web site. A few months after Lewis withdrew his complaint from the PTO, Invention Submission commenced this action against the PTO under the APA, alleging that because the PTO was authorized only to receive customer complaints, provide invention promoters with notice and reasonable opportunity to respond, and provide a forum to publicize complaints and responses, the PTO exceeded its authority in publicizing Lewis’ complaint in its media advertising and illegally used the public media to single out Invention Submissicn to penalize it. As it alleged: [T)he PTO intentionally publicized ISC [Inven- tion Submission] as the invention company which was the subject of the Lewis complaint, for the purpose of stigmatizing ISC. App. 26 * The PTO knew that, if the Lewis complaint was not withdrawn, and was subsequently made publicly available on the PTO’s web site under the [Inventors’ Rights Act], ISC would be further identified with the PTO’s unfair and untrue tele- vision and print advertisements, and an addi- tional link would be established between ISC and the PTO’s statements about “scams” and false promises of money to Lewis. The PTO thereby knowingly violated the Unventors Rights Act's] requirement that it make the Lewis complaint publicly available only in a neutral forum, without comment or judg- ment, together with ISC’s response. In addition, Invention Submission’s complaint alleged that John Calvert, the Acting Director of the Office of Inde- pendent Inventor Programs at the PTO, “demonstrated lan] animus of the PTO against ISC when he stated an intention to solicit and investigate customer complaints despite the PTO’s lack of authority to do this.” Invention Submission’s complaint described a meeting of inventors at which Calvert was alleged to have said: The only way that we do not post it [a customer complaint] is if you withdraw it, and we have one company that Bob ... and I were talking about that has a tendency to settle quickly ... but we're going to get them up there yet. We got to find somebody that doesn’t want to settle and get their name on our Internet, on the Internet site, and we will have them up eventually. We have one up there now, and you can look at it. App. 27 The complaint concluded with allegations that in pursuing these actions directed against Invention Submission, the PTO “has taken final agency actions in the nature of imposing sanctions and/or failing to act in accordance with the [Inventors’ Rights Act] and the regulations,” and therefore, under the APA, the actions were “arbitrary, capricious, an abuse of discretion|[,] . . . contrary to consti- tutional right l.] in excess of statutory jurisdiction, author- ity, or short of statutory right.” Invention Submission sought declaratory and injunctive relief, as well as attor- neys fees. The PTO filed a motion to dismiss Invention Submis- sion’s complaint for lack of subject matter jurisdiction, asserting that the federal courts could review only “final agency actions” and that the PTO’s alleged conduct did not qualify as a final agency action. The district court granted the PTO’s motion, but it did so under Federal Rule of Civil Procedure 12(b\(6). The court assumed the facts of the complaint to be true and concluded that “it is clear as a matter of law that no relief could be granted under any set of facts that could be proved consistent with the allega- tions.” The court ruled first that because it was Lewis, not the PTO, who identified Invention Submission, it could only be speculation that the PTO was referring to Inven- tion Submission by quoting Lewis in the advertising. Focusing on Calvert’s statements, the district court ob- served that they were merely consistent with the congres- sional intent behind passage of the Inventors’ Rights Act that “invention promotion scams harm individual inven- tors and ought to be eliminated.” In addition, the court concluded that such statements could not be considered agency action. The district court also found that any harm sustained by Invention Submission was indirect because it App. 28 was not based directly upon what the PTO included in its advertising campaign. Therefore, the court concluded, “The PTO’s publications in this case were merely generic advertisements of agency programs not specifically nam- ing the plaintiff. Any harm to the plaintiff was, at most, indirect.” Finally, the district court rejected the plaintiff’s contention that PTO violated its own regulations by using the media to enforce a private complaint. It concluded: Even if plaintiff could demonstrate that the de- fendant violated agency regulations, an agency’s failure to follow its own regulations is only ac- tionable under the APA if it results in a final agency action. A violation of agency regulations alone, absent some harm to the plaintiff, is not reviewable. As discussed above, plaintiff has not alleged any specific harm caused by the defen- dant’s actions. Accordingly, the district court entered an order dated October 30, 2002, dismissing the complaint “with preju- dice.” This appeal followed. II Invention Submission contends that PTO’s advertising campaign was both false and unauthorized, targeting Invention Submission in order to penalize it and put it out of business. It argues that the Inventors’ Rights Act of 1999 granted the PTO only limited authority to create a forum to publish complaints and responses to them and that the PTO’s 2002 advertising campaign directed at Invention Submission went beyond this stated authoriza- tion. Therefore, it asserts that the campaign was illegal App. 29 agency action. Invention Submission relies heavily on Industrial Safety Equipment Association, Inc. v. EPA, 267 U.S. App. D.C. 112, 837 F.2d 1115 (D.C. Cir. 1988), to justify court review of this agency conduct under the APA.“ In Industrial Safety, the D.C. Circuit held that an agency's publication of a report evaluating respirators for their effectiveness in protecting against asbestos exposure was not an “agency action,” as used in the APA, that was reviewable in court, even though the report recommended against using several respirators that had already been certified for use. Observing that its own precedent in * In its brief, Invention Submission also seeks to justify the federal court's jurisdiction on its general equity jurisdiction to review unlawful actions of officials of an administrative agency, under the “McAnnulty Doctrine,” citing American School of Magnetic Healing u McAnnulty, 187 U.S. 94, 47 L. Ed. 90, 23 S. Ct. 33 (1902), and a plurality opinion in Joint Anti-Fascist Refugee Committee v. McGrath, 341 U.S. 123, 95 L. Ed. 817, 71 S. Ct. 624 (1951) Invention Submission did not, however, bring this action against the PTO under the “McAnnulty Doctrine,” but rather relied exclusively on the APA. In addition, it did not present this theory to the district court. In its brief, it argues that its reliance in the district court on Industrial Safety was the same as reliance on the “McAnnulty Doc- trine,” and because it relied on Industrial Safety before the district court, it therefore was, by implication, relying on the “McAnnulty Doctrine.” But this syllogism mischaracterizes Industrial Safety. The court in Industrial Safety did not discuss the “McAnnulty Doctrine,” a doctrine of equity jurisdiction apart from the APA, but rather was construing the APA itself. The discussion in Industrial Safety on which Invention Submission relied related to whether an agency's penalizing a party through adverse publicity was a “sanction” as defined by 5 U.S.C. § 551(10), which in turn was included as a component of “agency action,” defined in § 551(12). For these reasons, we do not address whether the “McAnnulty Doctrine,” which Invention Submission raises for the first time on appeal, provides a basis for judicial review of unlawful agency action. App. 30 Hearst Radio, Inc. v. FCC, 83 U.S. App. D.C. 63, 167 F.2d 225 (D.C. Cir. 1948) (holding that “agency action,” includ- ing its component term “sanction,” does not include an agency's publication of a report, even if the report is false and amounts to libel causing actual damage), might be too restrictive, the D.C. Circuit explained that Hearst Radio created a problem because it failed “to . protect l] parties from false or unauthorized agency news releases.” 837 F.2d at 1118. Inasmuch as the APA's definition of “agency action” includes agency sanctions, adverse publicity might be a “sanction” and therefore an agency action in certain Thus, though adverse impact alone would not necessarily make agency publicity reviewable as a sanction, an agency intent on penalizing a party through adverse publicity, especially false or unauthorized publicity, might well merit a re- view of its action. This conclusion would be espe- cially compelling if an information release caused destruction of property,” or “revocation .. . of a license.” Id. at 1119 (quoting 5 U.S.C. § 551(10)) (citation omitted). The court found no facts in the record before it to justify an exploration of the interpretation that adverse publicity might amount to a sanction, and it concluded that the agency's publication of the asbestos respirator report was not an agency action under any other component of the APA definition that would make it reviewable by a court. Id. Invention Submission’s argument that the district court had jurisdiction thus rests on its advancement of an interpretation of “agency action” that would include through the “sanction” component of the definition of App. 31 agency action — false or unauthorized advertising aimed at the plaintiff. See 5 U.S.C. §§ 551(10), 551(13). The PTO argues that our recent decision in Flue Cured Tobacco Cooperative Stabilization Corp. v. EPA, 313 F.3d 852 (4th Cir. 2002), which does not construe “agency action” so broadly as might be indicated by Industrial Safety, controls the outcome of this case. In Flue-Cured Tobacco, we held that publication of an EPA report that classified environmental tobacco smoke as a potentially harmful human carcinogen was not an agency action reviewable under the APA, even though the report was allegedly arbitrary and capricious and created harm to the plaintiff. The PTO argues that even though Invention Submission was displeased with the advertising campaign, it cannot challenge the campaign in the courts because the campaign at most produced only “coercive pressures on third parties” and did not signal the “consummation of the agency's decisionmaking process so as to ‘give rise to legal consequences, rights, or obligations.’” Addressing Inven- tion Submission’s reliance on Industrial Safety, the PTO argues that the D.C. Circuit’s statements in that case were only posited as potential holdings and were no more than dicta. In addition, the PTO argues that our decision in Flue-Cured Tobacco followed the D.C. Circuit’s decision in Hearst Radio, which the Industrial Safety decision criti- cized but did not overrule. For these reasons, the PTO contends that Industrial Safety is hardly persuasive precedent in this circuit. Thus, the issue presented is whether the PTO’s advertising campaign, allegedly aimed at Invention Submission to penalize it, constituted final agency action under the APA so as to be reviewable in court. See 5 U.S.C. §§ 702, 704. As a question of subject matter jurisdiction, App. 32 see Flue-Cured Tobacco, 313 F.3d at 857, we must address this issue before evaluating Invention Submission’s complaint for whether it states a claim upon which relief can be granted, see Steel Co. v. Citizens for a Better Env't, 523 U.S. 83, 93-95, 140 L. Ed. 2d 210, 118 S. Ct. 1003 (1998), although these questions are close to one another in circumstances such as are presented in this case, see Montana-Dakota Utils. Co. v. Northwestern Pub. Serv. Co., 341 U.S. 246, 249, 95 L. Ed. 912, 71 S. Ct. 692 (1951). Section 704 of the APA provides that “final agency action for which there is no other adequate remedy in a court lis] subject to judicial review.” 5 U.S.C. § 704. “Agency action” is defined to include “the whole or a part of an agency rule, order, license, sanction, relief, or the equivalent or denial thereof.” Id. § 551(13). Although each of the constituent elements of “agency action” are in turn defined in § 551, at bottom, a final agency action as used in §704 must be the “consummation of the agency's decisionmaking process ... [and] must be lan action] by which rights or obligations have been determined, or from which legal consequences will flow.” Bennett v. Spear, 520 U.S. 154, 178, 137 L. Ed. 2d 281, 117 S. Ct. 1154 (1997) (internal quotation marks and citations omitted); Flue- Cured Tobacco, 313 F.3d at 858. In Flue-Cured Tobacco, we explained that the persuasive value of agency reports or publications did not create a reviewable agency action under the APA because such reports or publications in themselves did not “create any rights, obligations, or consequences.” 313 F.3d at 860. As we summarized it: We do not think that Congress intended to create private rights of actions to challenge the inevita- ble objectionable impressions created whenever App. 33 controversial research by a federal agency is pub- lished. Such policy statements are properly chal- lenged through the political process and not the courts. Id. at 861. Those principles govern the disposition of this case. In this case, the advertising mater'al published by the PTO under the Inventors’ Rights Act did not name or single out Invention Submission or any other invention promoter. The advertisements were facially neutral, aimed at all invention promotion scams scams that the adver- tisements asserted were causing the public to lose $200 million each year. While the advertising did include a quotation from “Edward Lewis, Inventor,” it quoted his experience with an unidentified company. Lewis is quoted as saying that “I spent $13,000 and three years ‘spinning my wheels’ with a company that promised my idea would make lots of money.” (Emphasis added). Invention Submission argues that the advertising cause a journalist was able to irterview Lewis and obtain the details of his experiences with Invention Submission and because the PTO made ‘hat possible by providing the journalist with Lewis’ telephone number. Whether a third person could obtain sufficient information to link the two, however, does not taint the otherwise nonspecific advertis- ing. The PTO did not publish any material that linked Lewis with Invention Submission, and it did not post Lewis’ complaint on its web site. “(The Administrative Procedure Act does not provide judicial review for everything done by an administrative agency,” Hearst Radio, 167 F.2d at 227, and the PTO’s App. 34 advertising campaign, including its conduct in giving a journalist Lewis’ telephone number, is not the type of conduct that constitutes agency action that is reviewable in court under the APA. Other than the administrative decision to conduct an advertising campaign at all — a decision that Invention Submission has not challenged — the content of the campaign was not the consummation cf any decisionmaking process that determined rights or obligations or from which legal consequences flowed. See Bennett, 520 U.S. at 178; Flue-Cured Tobecco, 313 F.3d at 858. Moreover, by looking at the campaign material, the public would see only that a consumer complained about an invention promoter and that invention promotion scams are causing the public $200 million in losses every year. Surely Invention Submission would not suggest that the attribution in the advertisements of $200 million in losses to patent scams was in any respect focusing the public's eye on it. The text of the advertising material can only be construed to be an effort by the PTO to inform inventors of the perils and potential scams that they might encounter during the patent process. Such advertising did not crvate “legal consequences” for Invention Submission or any other member of the public cognizable as final agency action, and the campaign itself did not determine any right or obligation of any party. While Invention Submission points to the adverse effect it suffered as a result of the campaign, that effect was based on the fact that a journalist linked Invention Submission with Lewis, and such an indirect unpact does not transform the agency's conduct into final agency action under the APA. See Flue-Cured Tobacco, 313 F.3d at 860. If the PTO’s advertising made business more difficult for Invention Submission by raising the public’s awareness, App. 35 the decisions of members of the public “are attributable to independent responses and choices of third parties” and cannot be imputed to the PTO for purposes of determining whether its conduct was a final agency action. See id. at 861. Invention Submission argues that the advertising must not be considered only facially but also in light of the intent of PTO officials whose purpose was more clearly focused on Invention Submission. Such underlying intent of agency officials, however, does not convert the PTO’s legal advertising material warning generally of invention promotion scams the purpose for which Congress en- acted the Inventors’ Rights Act — into a PTO sanction imposed on Invention Submission that would be review- able in court, especially when the material itself does not reference an intent to penalize any particular company. The measure of the advertising campaign must be made by the information conveyed by it to the public. As we have noted, the effect of the PTO’s campaign so measured was not a regulatory effect reviewable in court, but at most an indirect effect from third parties and market forces. In short, the PTO’s advertising campaign warning the public about invention promotion scams was consistent with the PTO’s commission granted by the Inventors’ Rights Act of 1999, and in the circumstances of this case, the decision to pursue such a campaign, as well as its content, did not create a final agency action that is re- viewable in court. As we said in Flue-Cured Tobacco, this type of a campaign is “properly challenged through the political process and not the courts.” 313 F.3d at 861. App. 36 III Because the conduct of the PTO that is the subject of this action did not constitute “final agency action” as used under the APA, the district court did not have subject matter jurisdiction to evaluate the complaint under Rule 12(b\6) and should have dismissed this case under Rule 12(b)(1). We therefore vacate its order of October 30, 2002, as well as the supporting opinion, and remand with instructions to dismiss this case under Federal Rule of Civil Procedure 12(b)(1). VACATED AND REMANDED WITH INSTRUCTIONS App. 37 UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT JUDGMENT FILED: February 11, 2004 NO. 02-2461 CA-02-1038-A INVENTION SUBMISSION CORPORATION, a Pennsylvama Corporation Plaintiff-Appellant Vv. JAMES E. ROGAN, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office, U. S. Department of Commerce, in his official capacity Defendant-Appellee Appeal from the United States District Court for the Eastern District of Virginia at Alexandria In accordance with the written opinion of this Court filed this day, the Court vacates the judgment of the District Court. This case is remanded to the District Court for further proceedings consistent with the Court’s opin- ion. App. 38 A certified copy of this judgment will de provided to the District Court upon issuance of the mandate. The judgment will take effect upon issuance of the mandate. /s/ Patricia S. Connor CLERK App. 39 229 F. Supp. 2d 498 Civil Action No. 02-1038-A UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA, ALEXANDRIA DIVISION INVENTION SUBMISSION CORPORATION, Plaintiff, v. JAMES k. ROGAN, UNDERSECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE, U.S. DEPARTMENT OF COMMERCE, Defendant. October 30, 2002, Decided October 30, 2002, Filed COUNSEL: FOR PLAINTIFF: Richard C. Sullivan, Jr., Reed Smith LLP, Falls Church, VA. FOR DEFENDANT: Rachel C. Ballow, Asst. U.S. Attor- ney, U.S. Attorney s Office, Alexandria, VA. JUDGES: Honorable Leonie M. Brinkema, United States District Judge. OPINION BY: Leonie M. Brinkema OPINION: MEMORANDUM OPINION This matter is before the Court on defendant’s Motion to Dismiss plaintiff's complaint. For the reasons set forth below, the motion will be granted. BACKGROUND This case arises out of efforts by the United States Patent and Trademark Office (“PTO”) to implement the Inventors’ Rights Act of 1999 (“IRA”). 35 U.S.C. § 297 App. 40 (2002). The IRA was designed to protect inventors who each year “lose tens of millions of dollars” to “invention promotion scams.” 141 Cong. Rec. 814521 (Nov. 10, 1999). The IRA mandates certain disclosures by invention promoters to their customers and provides for a private right of action against invention promoters. The IRA also requires the Commissioner of Patents to receive com- plaints regarding invention promoters and make these complaints available to the public. 35 U.S.C. § 297. Spe- cifically, the IRA provides that the PTO shal! make all complaints received by the Patent and Trademark Office involving invention pro- moters publicly available, together with any response of the invention promoters. The Com- missioner of Patents shall notify the invention promoter of a complaint and provide a reason- able opportunity to reply prior to making such complaint publicly available. 35 U.S.C. § 297(d(1). In September of 2000, the PTO adopted regulations implementing the IRA, and set up a website on which to publish complaints received under the IRA. The regula- tions state that “the invention promoter named in the complaint will be notified of the complaint and given 30 days to rc spond. The invention promoters response will be made available to the public along with the complaint.” 37 CFR § 4.4 (2002). In August 2001, the PTO received a complaint from Edward Lewis regarding the plaintiff, Invention Submis- sion Corporation (“ISC”), in which Lewis alleged that he paid ISC for help patenting and marketing his invention and received nothing in return. Lewis wrote in his complaint App. 41 “the representative indicated to me that I would make a lot of money with my invention and I have made nothing.” Shortly after receiving Lewis’ complaint, the PTO con- tacted Lewis and solicited his participation in a PTO media campaign regarding invention promotion compa- nies. Lewis agreed to participate by appearing in televi- sion and print advertisements. On January 10, 2002, the PTO issued a press release announcing a nationwide media campaign “to counter the flood of deceptive advertising aimed at America’s inde- pendent inventors.” The campaign included television and print advertisements that featured a picture of Lewis and his statement that he spent $13,000 and three years and “fhasn't] seen a penny.” The advertisements, which ran from January through May of 2002, did not mention 180 by name. However, in response to a request from TechTV, a cable television network, the PTO disclosed contact information for Lewis to a TechTV reporter. After inter- viewing Lewis, TechTV ran a story in which it identified ISC as the invention promoter involved in the Lewis complaint. On March 1, 2002, after the general media campaign had begun, but before Lewis’ complaint was posted on the PTO website, the PTO gave ISC notice of the Lewis com- plaint. On March 26, 2002, Lewis attempted to withdraw his complaint, apparently after settling with ISC, and requested that the PTO discontinue using him in their media campaign. By letter that same day, John Calvert of the PTO informed Lewis that his request to withdraw his complaint was received and the complaint would not be posted on the website. The record establishes that Lewis’ complaint never appeared on the website. The TV ads, however, continued to run until March or April of 2002. App. 42 Plaintiff alleges in its complaint that the PTO’s actions with respect to ISC are motivated by bias. As evidence of this bias, plaintiff cites public statements by John Calvert, Acting Director of the Office of Independent Inventor Programs, in which he states that he hates “these invention marketing firms” and wants to “put these people out of business.” None of these statements mention [SC specifically. On June 17, 2002, plaintiff brought the instant complaint in which it claims that the PTO’s use of Lewis’ complaint in its media campaign was a final agency action which is reviewable under the Administrative Procedures Act (“APA”). Plaintiff seeks declaratory and injunctive relief. DISCUSSION A. Standard of Review A motion to dismiss pursuant to Rule Ibs) of the Federal Rules of Civil Procedure is properly granted where, assuming the facts in the complaint are true, it is clear as a matter of law that no relief could be granted under any set of facts that could be proved consistent with the allegations. Hishon v. King & Spalding, 467 U.S. 69, 73, 81 L. Ed. 2d 59, 104 S. Ct. 2229 (1984). Here, assuming the truth of plaintiff’s allegations regarding the PTO’s actions with respect to the Lewis complaint and the statements made by PTO officials, defendant makes two arguments for dismissal. First, defendant argues that the action taken by the PTO was not a final agency action within the meaning of the APA. Second, defendant argues that plaintiff’s claim is moot because all advertisements and references to the Lewis complaint have been discon- tinued. Because we find that plaintiff's complaint fails to App. 43 state a cause of action under the APA, we decline to address defendant's mootness argument. B. Administrative Procedures Act Claim The APA authorizes review of “final agency action” for which there is no other adequate remedy in a court. 5 U.S.C. § 704 (2002). The Act defines agency action as “the whole or part of an agency rule, order, license, sanction, relief, or the equivalent or denial thereof, or failure to act.” 5 U.S.C. § 551013) An agency action will be considered final for purposes of judicial review if it is definitive and has direct or immediate legal force or practical effect, if the questions at issue are purely legal, and if immediate judicial review would foster agency and judicial efficiency. Federal Trade Comm'n v. Standard Oil Co. of Cal., 449 U.S. 232, 239-40, 66 L. Ed. 2d 416, 101 S. Ct. 488 (1980). Although plaintiff's complaint is extremely vague as to the specific final agency action at issue, in its opposition to the Motion to Dismiss plaintiff makes clear that it claims the PTO’s conduct in publicizing the Lewis com- plaint outside the neutral forum mandated by the IRA, together with its purported determination that Lewis was a victim of a ‘scam,’ was final agency action which is reviewable under the APA.” Pl. Opp. at 14. We construe this explanation as an allegation that the PTO’s actions were in the form of a sanction against ISC. Plaintiff also alleges that the PTO’s actions are reviewable because they constitute a violation of the PTO’s own regulations regard- ing inventor complaints. At. oral argument, plaintiff's counsel represented that its view of final agency action rests upon the reasoning in Indus. Safety Equip. Assoc., Inc. v. EPA, 267 U.S. App. App. 44 D.C. 112, 837 Fu 1115 (D.C. Cir. 1988) (HEAD In ISA the court held that an EPA report recommending industry use of only two types of asbestos protection respirators did not constitute final agency action because it was advisory in nature and, therefore, did not have a direct impact on the plaintiffs. 837 F.2d at 1121. In dicta, however, the court appeared to reject absolute immunity for agency publications because such immunuty fails to protect parties from false or unauthorized agency news releases. Id. at 1118. The court said that “an agency intent on penalizing a party through adverse publicity, especially false or unau- thorized publicity, might well merit a review of its action.” Id. at 1119. Plaintiff contends that its complaint squarely presents the situation contemplated in ISEA Initially, we observe that this Court is not bound by dicta announced by an appellate court in another jurisdic- tion. However, even if we were bound by the ISEA dicta, the plaintiff would not prevail because it has failed to plead facts that would warrant judicial review of the PTO’s actions. First, the PTO’s media campaign hardly supports plaintiff's view that the PTO was “intent on penalizing” the plaintiff because the plaintiff is not named anywhere in the PTO materials. Plaintiff argues that it was “inevi- table” that ISC would be identified with these advertise- ments after the Lewis complaint was published on the PTO website, as required by the IRA. Had the PTO pub- lished Lewis’ complaint on their website as required by the IRA, ISC would have been identified as the subject of a complaint, regardless of the media campaign. However, the Lewis complaint was never posted on the website. It was Lewis, not the PTO, who publicly identified the plain- tiff to the media. ISC’s allegation that the combination of App. 45 the two publications would create the impression that the PTO considered ISC a “scam” operation is too speculative. Even if such an impression were created, an impression alone cannot constitute agency action. Plaintiff also cites to extemporaneous statements of try as a whole as evidence of the PTO’s desire to sanction plaintiff. This argument is unpersuasive because such statements by agency officials do not, without more, constitute final agency action. See Hazardous Waste Treatment Comm'n v. Reilly, 291 U.S. App. D.C. 131, 938 F.2d 1390, 1396 (D.C. Cir. 1991); Robinshaw Engineering, Inc. u United States, 891 F. Supp. 1134, 1150-51 (K. D. Va. 1985). Moreover, these statements, like the advertise- ments, do not mention the plaintiff in particular, but are directed at the industry generally. The PTO officials merely expressed a view, consistent with the Congres- sional intent behind passage of the IRA, that invention promotion scams harm individual inventors and ought to be eliminated. We find, therefore, that the PTO’s genera! statements about the invention promotion industry cannot be considered equivalent to the agency imposing a sanc- tion on the plaintiff. Second, the PTO media campaign does not order the plaintiff or any third party to engage in or refrain from any action. In cases considering agency publication as a sanction, courts are careful to distinguish agency publica- tions which are merely advisory in nature, and therefore not deemed agency action, from those that are agency action because they effect a parties’ legal rights. See ISKA. 837 F.2d at 1120; Pharmaceutical Mfrs. Asso. v. Kennedy, 471 F Supp. 1224, 1231 (D. Md. 1979). The PTO’s actions in this case do not even rise to the level of advising the App. 46 public not to deal with the plaintiff. The advertisements merely alert the public to the PTO’s concern about the invention promotion industry and how individual inven- tors may file complaints against invention promoters. Finally, plaintiff has not alleged that it has been directly harmed by the defendant's actions. Even if plain- tiff had alleged that its business had been harmed by the media campaign, the mere fact that activity by an agency has a “substantial impact” on a party, does not transform that activity into final agency action of which a party may seek judicial review under the APA. JSEA, 837 F.2d at 1121. Any harm to plaintiff's business based upon the PTO’s statements about invention promoters in general would be indirect and the result of the reactions and choices of individual inventors. Such an indirect impact is not sufficient to support a finding of agency action. See id. (rejecting appellant’s claim that an EPA report recom- mending certain asbestos protection respirators consti- tuted an agency sanction because it would likely result in decreased consumer demand). Plaintiff argues that the risk of a public connection between it and the PTO advertisement forced it to settle the Lewis complaint. Even if plaintiff felt forced to settle the Lewis complaint, such “harm” is also too indirect to render defendant’s actions agency action. It is mere speculation that plaintiff would not have settled the Lewis complaint in the absence of the advertisements. As counsel admitted at oral argument, plaintiff settles the majority of complaints against it and may well have settled this complaint unce it received the thirty-day notice of publica- tion on the website, regardless of defendant’s media advertising. App. 47 For all these reasons, we conclude that plaintiff's argument that its complaint states a claim for judicial review of the PTO’s publications under the APA fails. The PTO’s publications in this case were merely generic adver- tisements of agency programs not specifically naming the plaintiff. Any harm to the plaintiff was, at most, indirect. In its opposition to defendant's Motion to Dismiss, agency action because they were taken in violation of the IRA statute and agency regulations. However, plaintiff points to no specific regulation that the PTO has violated. Plaintiff complains that it was only notified of Lewis’ complaint after the media campaign had begun and seven months after the complaint was received by the PTO. The regulations do not designate a time limit within which the PTO must notify the invention promoter of a complaint. Instead, they require that a promoter receive sufficient time to respond to the com- plaint. “The invention promoter named in the complaint will be notified of the complaint and given 30 days to respond.” 37 CFR 544. Plaintiff was notified of the complaint and resolved it within thirty days of notification, thereby avoid- ing publication of the Lewis complaint on the PTO website. Even if plaintiff could demonstrate that the defendant violated agency regulations, an agency's failure to follow its own regulations is only actionable under the APA if it results in a final agency action. A violation of agency regulations alone, absent some harm to the plaintiff, is not any specific harm caused by the defendant’s actions. For these reasons we find that plaintiff's complaint fails to state e claim upon which relief can be granted and must be dismissed. An appropriate Order shall issue. App. 48 The Clerk is directed to forward copies of this Memo- randum Opinion to counsel of record. Entered this 30th day of October, 2002. Leonie M. Brinkema United States District Judge Alexandria, Virginia ORDER For the reasons stated in the accompanying Memo- randum Opinion defendant’s Motion to Dismiss is granted and it is hereby ORDERED that plaintiff’s complaint be and is DIS- MISSED WITH PREJUDICE.’ The Clerk is directed to forward copies of this Order to counsel of record. Entered this 30th day of October, 2002. Leonie M. Brinkema United States District Judge Alexandria, Virginia * This ruling renders moot all pending motions. App. 49 UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT FILED April 9, 2004 No. 02-2461 CA-02-1038-A INVENTION SUBMISSION CORPORATION, a Pennsylvania Corporation Plaintiff-Appellant V. JAMES E. ROGAN, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office, U.S. Department of Commerce, in his official capacity Defendant-Appellee On Petition for Rehearing and Rehearing En Banc The appellant’s petition for rehearing and rehearing en banc was submitted to this Court. As no member of this Court or the panel requested a poll on the petition for rehearing en banc, and As the panel considered the petition for rehearing and is of the opinion that it should be denied, IT IS ORDERED that the petition for rehearing and rehearing en banc is denied. App. 50 Entered for a panel comprised of Judge Wilkins, Judge Niemeyer, and Judge Shedd. For the Court /s/ Patricia S. Connor CLERK App. 51 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA Alexandria Division INVENIION SUBMISSION CORPORATION, Plaintiff, v. JAMES E. ROGAN, UNDER Civil Action No.: FOR INTELLECTUAL PROPERTY AND DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE, U.S. DEPARTMENT OF COMMERCE. in his official capacity, ) ) ) ) ) ) ) SECRETARY OF COMMERCE =) “99. 1038-A Judge Brinkema ) ) ) ) ) Plaintiff Invention Submission Corporation (“ISC”), by counsel, files the following Response to the Court’s Order Dated April 22, 2004, and Motion to Vacate the Court’s Order of May 5, 2004, and Motion for Leave to File Amended Complaint, as follows: PROCEDURAL BACKGROUND 1. ISC filed suit against the U.S. Patent and Trade- mark Office (PTO) in this Court alleging that a PTO advertising campaign wrongfully targeted ISC for adverse App. 52 publicity. The PTO filed a Motion to Dismiss the Com- plaint for lack of subject matter jurisdiction pursuant to Fed. R. Civ. P. 12(6)(1), asserting sovereign immunity. 2. By Memorandum Opinion and Order dated October 30, 2002, this Court dismissed ISC’s Complaint pursuant to Fed. R. Civ. P 12(b)(6), for failure to state a claim upon which relief maybe granted. 3. ISC filed an appeal with the Fourth Circuit Court of Appeals, seeking review of the October 30, 2002 Order dismissing the Complaint. 4. On February 11, 2004, the Fourth Circuit Court of Appeals issued its opinion in Invention Submission Corpo- ration v. Rogan, 357 F.3d 452 (4th Cir. 2004), vacating this Court’s Order of October 30, 2002, and remanding with instructions to dismiss this case under Fed. R. Civ. P. 12(bM1). The Fourth Circuit concluded that the conduct alleged in the Complaint did not constitute final agency action under the APA. The Fourth Circuit Court of Appeals has returned the mandate to this Court and jurisdiction has been reacquired by this Court. 5. By Order dated April 22, 2004, this Court re- quested that the parties advise the Court within ten days of any reason why the Court should not comply with the returned mandate to dismiss th civil action under Fed. R. Civ. P 12(b)(1), rather than Kule 12(b\(6), and to vacate the Court’s Memorandum Opinion and Order at this time. 6. ISC is currently preparing a Petition for Writ Of Certiorari to the United States Supreme Court asserting that the Fourth Circuit Court of Appeals’ decision raises important questions of federal jurisdiction pertaining to judicial review of ultra vires agency action under the APA App. 53 in cases where a party alleges that an agency utilized false or unauthorized adverse publicity to penalize that party. The Petition is due to be filed by July 8, 2004. The man- date entered by the Fourth Circuit Court of Appeals is not currently subject to a stay order issued by the Fourth Circuit Court of Appeals or the United States Supreme Court. RESPONSE TO THE COURT'S ORDER DATED APRIL 22, 2004 7. Prior to complying with the mandate returned in this action, ISC requests that the Court grant ISC leave to amend its complaint to plead its claims under equity jurisdiction and the McAnnulty Doctrine. 8. After reacquiring jurisdiction on remand, a district court may permit the plaintiff to amend pleadings and to vary or expand issues, provided that the amend- ment does not involve an issue disposed of on appeal. MOTION TO VACATE THE COURT’S ORDER OF MAY 5, 2004 9. The Court’s Order of April 22, 2004, ordered that the parties advise the Court within 10 days of any reason why the Court should not comply with the Fourth Circuit’s order. Under Rule 6(a) of the Federal Rules of Civil Proce- dure, the computation of any period of time prescribed or allowed by any order of court which is less than 11 days does not include intermediate Saturdays and Sundays. Thus, the Court’s Order of April 22, 2004, required re- sponse by the parties on or before May 6, 2004. App. 54 10. By filing this response to the Court's Order, and its Motion for Leave to File an Amended Complaint on May 5, 2004, ISC is within the time limits prescribed by the Court's April 22, 2004 Order. ISC now moves under FRCP 60 to vacate the May 5, 2004 Order, and asks this Court to do so to enable ISC to be heard on the issues timely raised in ISC’s response to the April 22, 2004 Order and its Motion for Leave to File Amended Complaint. Counsel for Defendant has informed counsel for ISC that Defendant has no objection to ISC’s Motion to Vacate, and indeed has only today filed Defendant’s response to the Court’s April 22, 2004 Order, having calculated the re- sponse date in the same manner as ISC. MOTION FOR LEAVE TO FILE AMENDED COMPLAINT 11. The relief requested by ISC is in response to the Fourth Circuit Court of Appeals’ statement that ISC had not pled claims under equity jurisdiction and the McAn- nulty Doctrine. In its opinion, in a footnote, the Fourth Circuit stated, as follows: ... Invention Submission Corporation seeks to justify the federal court's jurisdiction on its general equity jurisdiction to review unlawful ac- tions of officials of an administrative agency, un- der the “McAnnulty Doctrine,” citing American School of Magnetic Healing u McAnnulty, 187 U.S. 94, 47 L.Ed. 90, 23 S.Ct. 33 (1902), and a plurality opinion in Joint Anti-Fascist Refugee Committee v. McGrath, 341 U.S. 123, 95 L.Ed. 817, 71 S.Ct. 624 (1951). Invention Submission did not, however, bring this action against the PTO under the “McAnnulty App. 55 Doctrine,” but rather relied exclusively on the APA. For these reasons, we do not address whether the “McAnnulty Doctrine, provides a basis for judicial review of unlawful agency action. 357 F.3d at 457. 12. The Fourth Circuit Court of Appeals concluded that the Court’s authority to review ultra vires agency actions under equity jurisdiction and the McAnnulty Doctrine is separate and apart from the APA. In light of this distinction, the mandate requires this Court to dis- miss under Rule 12(b)\(1) for lack of subject matter juris- diction because the conduct of the PTO that is the subject of this action did not constitute final agency action under the APA. 13. ISC seeks leave to amend its complaint in accordance with Fed. R Civ. P 15 and 28 U.S.C. § 1653 in order to address the distinction raised by the Fourth Circuit Court of Appeals in its opin’»n and plead jurisdic- tion for its claim under equity jurisdiction and the McAn- nulty Doctrine. 14. Under Fed. R. Civ. P. 15(a), a party may amend its pleading once as a matter of course at any time before a responsive pleading is served, otherwise a party may so amend its pleading only by leave of court or by written consent of the adverse party, which leave shall be freely given when justice so requires. Amendment of pleadings to show jurisdiction is broadly authorized by 28 U.S.C. § 1653 at any stage of the proceeding. App. 56 15. Except for the jurisdictional basis for its claim, ISC’s Amended Complaint does not raise new or additional matters. See Amended Complaint attached hereto as Exhibit A. 16. Granting leave for ISC to amend its Complaint is not inconsistent with the Fourth Circuit Court of Appeals’ mandate which, while requiring dismissal under Rule 12(bX 1), does not address amendment of the Complaint pursuant to Fed. R. Civ. P. 15 and 28 U.S.C. § 1653 to plead jurisdiction in accordance with its opinion. 17. Justice requires that leave be granted to ISC in order to plead its claims under equity jurisdiction and the McAnnulty Doctrine. 18. The PTO is not prejudiced, as no responsive pleading has been filed, the parties have not engaged in discovery, and by statute any party may amend the juris- dictional allegations to show a basis for jurisdiction at any time whether in the trial or appellate court. 28 U.S.C. § 1653. The amended cause of action under the Court’s general equity jurisdiction and the McAnnulty Doctrine is not barred by any applicable statute of limitations. 19. Justice requires that ISC be afforded judicial review of the ultra vires actions of the PTO, as otherwise there would be no remedy afforded for what ISC contends was false or unauthorized adverse publicity used by the PTO to target and penalize ISC. 20. Fairness requires that ISC be afforded the opportunity to amend the jurisdictional basis for review to conform with the appellate decision issued by the Fourth Circuit Court of Appeals. App. 57 WHEREFORE, plaintiff Invention Submission Corpo- ration respectfully requests that the Court vacate the Order of May 5, 2004 and grant it leave to file the attached Amended Complaint and that the Court thereafter comply with the Fourth Circuit Court of Appeals’ mandate by dismissing only Count I of the Amended Complaint under the Administrative Procedures Act, leaving for considera- tion ISC’s claims in Count II of the Amended Complaint under equity jurisdiction and the McAnnulty Doctrine. Respectfully submitted, INVENTION SUBMISSION CORPORATION By Counsel REED SMITH LLP /s/ Ri Richard C. Sullivan, Jr., Esq. (VSB #27907) 3110 Fairview Park Drive, Suite 1400 Falls Church, Virginia 22042 Telephone: (703) 641-4200 Facsimile: (703) 641-4340 Edward B Friedman (Pa. I D. 09688) J. Stephen Purcupile (Pa. I. D. 39174) Elliot S. Katz (Pa. ID. 31454) FRIEDMAN and FRIEDMAN 900 Fifth Avenue Pittsburgh, PA 15219 (412) 261-5834 App. 58 CERTIFICATE OF SERVICE I hereby certify that a true and accurate copy of the foregoing Plaintiff's Response to the Court's Order Dated April 22, 2004, Motion to Vacate Order of May 5, 2004, and Motion for Leave to File Amended Complaint was hand delivered this 5th day of May, 2004 to: Rachel C. Ballow, Esq. Assistant United States Attorney 2100 Jamieson Avenue Alexandria, Virginia 22314 Richard. C. Sullivan, Jr. Richard C. Sullivan, Jr. App. 59 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA Alexandria Division INVENTION SUBMISSION ) Civil Action No.: CORPORATION, a Pennsylvania Corporation, 217 Ninth Street Pittsburgh, PA 15222 Plaintiff, AND DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE, U.S. DEPARTMENT OF COMMERCE, ) in his official capacity, ) 2121 Crystal Drive ) Arlington, VA 22202 ) ) Invention Submission Corporation files the following Amended Complaint against James E. Rogan, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office, U.S. Department of Commerce, in his official capacity. JURISDICTION AND VENUE 1. This court has federal question jurisdiction over the instant case under 28 U.S.C. 51331 as Invention App. 60 Submission Corporation (hereinafter “ISC”) seeks judicial review under the Administrative Practices Act (hereinafter “APA”) and nonstatutory judicial review under the court’s general equity jurisdiction and the McAnnulty Doctrine of the United States Patent and Trademark Office’s (herein- after “PTO”) conduct in acting and/or failing to act in an official capacity or under color of legal authority. Venue [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386016_0244%3A1. Public record. Not legal advice.