The full case caption appears at the end of this opinion.
Plaintiff Helfgott & Karas, P.C. appeals the dismissal of its claims by the UnitedStates District Court for the Southern District of New York. See Helfgott & Karas v.Lehman
, 47 F. Supp. 2d 425 (S.D.N.Y. 1998). At issue is the refusal of the Commissionerof the Patent and Trademark Office [FOOTNOTE 1]
to reinstate international prosecution of a patentapplication filed under the auspices of the Patent Cooperation Treaty. Because weconclude that the Commissioner acted arbitrarily and capriciously in dismissing theplaintiff�s petition to correct the erroneous Demand for International PreliminaryExamination, we vacate and remand. I The circumstances of this case should give pause to those who engage in thecomplex yet crucial administrative process known as patent prosecution before the UnitedStates Patent and Trademark Office (“the PTO”). Mistakes are inevitable, much as allthose involved try to minimize their possibility. Even if total elimination of mistakes is anillusory goal, their reasonable mitigation should not be. Sound judgment, flexibility, andthe careful following of considered processes are critical to ensuring that small mistakesdo not become large ones, and that mistakes of form do not overwhelm the correctnessof substance. Unfortunately, in this case, at least some of these elements were lackingfrom both parties to this dispute, leaving it to us to ascertain error, and assignresponsibility for it. A The story begins in late March 1996. Over a span of five days, the law firm Helfgott& Karas, P.C. (“Helfgott”) filed two international patent applications with the PTO. The first, listing the applicants as Helfgott, Dov Sheffer, and R.S.R. Adtec, isdesignated International Patent Application No. PCT/US96/03856, and entitled “FluidActuated Chuck” (“the �856 application”). The second, listing Helfgott and YosefEizenthal as applicants, is designated International Patent Application No.PCT/US96/04218, and entitled “Three Dimensional Puzzle” (“the �218 application”). Boththe �856 and �218 applications claim priority dates of March 1995, based on earlierfilings made in Israel. Each of the international applications was filed under the provisions of the PatentCooperation Treaty (“PCT”), an international agreement allowing inventors to streamlinethe process of obtaining patent rights across multiple member nations. See
PatentCooperation Treaty, art. 1 (hereinafter “PCT Treaty”). After filing with an “internationalauthority” in a member nation–in this case, the PTO–the applicant may request that theauthority perform a “preliminary examination,” a nonbinding opinion by the authorityrelating to the patentability of the invention disclosed in the application. See
PCT Treaty,art. 31. Requesting a preliminary examination offers the applicant a “first cut” at thepatentability of the invention without incurring the expense of pursuing multiple nationalapplications, and allows a ten-month delay in the prosecution of national applicationswithout loss of any rights. According to PCT rules, a request for international examinationmust be transmitted to the international authority via a filing called a “Demand forInternational Preliminary Examination” (“Demand”). See id.
A Demand must be filedbefore the end of the nineteenth month from the priority date of the application. See
PCTTreaty, art. 39. On October 21, 1996, Helfgott filed a Demand with the PTO. Of course, it is theresponsibility of the applicant to submit initially correct information in its Demand.Nevertheless, the Demand form listed the application number, filing date, and priority dateof the �218 application
, but listed the title (“Fluid Activated Chuck”), applicants, and”agent�s file reference number” relating to the �856 application
. But to appreciate the fullextent of uncertainty that surrounded this filing, one must also keep in mind that: (1) thefirst-listed applicant in both applications is exactly the same
(Helfgott), and (2) the “agent’sfile reference number,” a number used by applicants� agents for identification, differed byonly a single digit between the �856 and �218 applications. Looking back with the clarity of hindsight, there is no real dispute now between theparties that the Demand was intended to relate to the �856 application. Indeed,unbeknownst to the PTO, the �218 application was ordered abandoned by its inventorsone week after the Demand was filed. When it was presented with the document,however, the Commissioner of the Patent and Trademark Office (“Commissioner”)interpreted the Demand as requesting preliminary examination of the �218 application,not the �856 application. The Commissioner explains that his decision was basedprimarily on the international patent application number typed on the Demand form, andconfirmed by the identity of the filing and priority dates and the first-listed applicant. Having thus categorized the Demand, the Commissioner on November 21, 1996sent back a paper styled “Invitation to Correct Defects in the Demand” (“the Invitation”)–acommunication which itself did perhaps as much to create confusion as did the Demand. While the Invitation listed the �218 application number and the filing date related to the�218 application, and the first-listed applicant (Helfgott) related to both the �218application and the �856 application, the Invitation also listed the “agent�s file referencenumber” relating to the �218 application. That is, while the Demand listed the agent�sfile reference number from the �856 application, the Invitation did not
contain the samenumber–it instead listed the agent�s file reference number found on the �218 applicationitself. The Commissioner apparently believed that the inclusion of the agent�s filereference number relating to the �856 application on the Demand was a typographicalerror. There was no indication on the Invitation, however, that the agent�s file referencenumber thereon did not correspond to the agent�s file reference number on the Demand. No notification was ever provided to Helfgott that the Commissioner had substituted adifferent agent�s file reference number. The procedure followed by the Commissioner is in stark contrast to the PCTInternational Preliminary Examination Guidelines (“the PCT Guidelines”), which are formalbut nonbinding rules developed by international agreement to “give instructions as to thepractice to be followed in the various stages of the international preliminary examinationof international applications.” PCT Guidelines � I-3.2, I-3.3. The PCT Guidelinesspecifically contemplate that the International Preliminary Examining Authority (in thiscase, the PTO) will make simple corrections to the Demand. When making suchcorrections or changes, “[t]he [Commissioner] informs the applicant of the correction madeby sending him either a copy of the corrected sheet of the demand or by a separatenotification.” PCT Guidelines � 10.1. In addition, the Commissioner must make thecorrection on the original documentation, and “enter in the margin the letters �IPEA.�” Id.
There is no dispute that Helfgott was never notified of the change, and the recorddemonstrates that no correction was applied directly to the Demand and no entry of “IPEA”was made in the margins. [FOOTNOTE 2]
The situation took yet another unfortunate turn when personnel at Helfgott, uponreceipt of the Invitation, simply deposited the document into the “dead” file of the then-abandoned �218 application, based on the agent�s file reference number. That is, whilethe Invitation, by virtue of the “corrected” agent�s file reference number and otheridentifying information, had all outward appearances of relating to the �218 application,nobody at Helfgott paused to consider the interesting question of why the Commissionerwould be inviting them to correct errors in a Demand they did not file for an application thatthey considered abandoned. Indeed, over the next nine months, the Commissioner sentHelfgott at least four other documents relating to the �218 application, including a”Notification of Receipt of Demand,” an “Opinion” on patentability, an InternationalPreliminary Examination Report, and a Notification of Transmittal of InternationalPreliminary Examination Report. At no time did Helfgott contact the Commissioner to askwhy such documents were being prepared and transmitted for this application. B In September 1997, as the end of the 30-month period after which the �856application would have to be transmitted to the various member nations neared, Helfgottrealized that it had not received any communications from the PTO with respect to the�856 application. A review of their internal files resulted in the discovery of the errors inthe Demand. Believing that the Commissioner had simply failed to respond to theDemand, Helfgott on September 17, 1997, filed a “Petition for Expedited Action,” notifyingthe Commissioner of the errors in the Demand, asking that the errors be corrected, andrequesting immediate action on the Demand. The Commissioner responded by treatingthis initial request “as a petition under 37 C.F.R. ��1.182,” and dismissed it as beinguntimely “under 37 C.F.R. 1.181.” Section 1.181(f) provides that “any such petition notfiled within 2 months from the action complained of, may be dismissed as untimely.” Because Helfgott’s September�17, 1997, petition was filed more than two months after theCommissioner’s Invitation identified possible errors in the Demand, the September 17petition was dismissed as untimely. Helfgott then wrote a letter in early October 1997 to the Assistant Commissioner ofPatents, asking him “to look into the matter in the interests of justice and equity” pursuantto 37 C.F.R. ��1.183, which allows the Commissioner to suspend nonstatutory rules “in anextraordinary situation, when justice requires.” After receiving no response, Helfgott wrotefollow-up letters in early November and early December 1997. In late December, theCommissioner responded to Helfgott’s 37�C.F.R. ��1.183 petition, taking the position thatthe Demand was clearly directed to the �218 application and concluded that because thepreliminary examination had already been conducted on the �218 application, “it wouldbe improper to do this same work again.” The Commissioner further rejected that equityand justice demanded a different result, noting that “significant benefits have beenobtained in the [�218] application” by virtue of the completed preliminary examination. Helfgott requested reconsideration of this decision in early January 1998. TheCommissioner again rejected the request in a decision dated February 18, 1998. In March1998, Helfgott once again requested reconsideration, arguing that, among other things,the errors in the Demand could be rectified pursuant to PCT Rule 91.1, which allows thecorrection of “obvious” errors in documents filed with international authorities under theauspices of the PCT. The Commissioner also rejected this request for reconsideration,ruling that PCT Rule 91.1 requires that: (1)�the errors to be corrected are obvious; and(2)�that the correction itself be “the only rectification possible.” In April 1998, Helfgottrequested a further reconsideration, which was denied by the Commissioner in June 1998. C This suit followed. Helfgott argued to the District Court that the Commissioner erredboth in denying the September 17 petition as untimely, and in later deciding that no reliefwas available under PCT Rule 91.1. With regard to the untimeliness issue, Helfgottargued that the two month time limit for filing petitions under section 1.181 does not applyto petitions filed under section 1.182. The latter provision prescribes no time limit, and theformer limits the two month filing time to “such” petitions, with the “such” referring topetitions filed under section 1.181, not section 1.182. As for PCT Rule 91.1, Helfgottargued that the Commissioner’s understanding of the rule is unreasonable. On bothissues, the district court sustained the Commissioner’s positions as reasonable, eventhough the court determined that the Commissioner had “compounded” Helfgott’s problemsby altering the agent’s file reference number on the Invitation. Helfgott & Karas v. Lehman
,47 F. Supp. 2d 425, 432, 435 (S.D.N.Y. 1998). Consequently, the district court rejectedHelfgott’s contention that the Commissioner had violated the APA in refusing to providethe relief Helfgott sought. See id.
at 435. Helfgott now appeals the judgment of the district court, arguing that theCommissioner erred in denying the section 1.183 petition, which sought rectification of theobvious errors in the Demand under PCT Rule 91.1. [FOOTNOTE 3]
II We first address the question of our own jurisdiction. See
, Bender v.Williamsport Area Sch. Dist.
, 475 U.S. 534, 541 (1986) (“[E]very federal appellate courthas a special obligation to satisfy itself not only of its own jurisdiction, but also that of thelower courts in a cause under review, even though the parties are prepared to concede it”(quotations and citations omitted).). This appeal comes to us from a United States DistrictCourt, raising claims against the Commissioner of the PTO under the AdministrativeProcedure Act, 5 U.S.C. �� 702-06 (1994) (“the APA”). Our relevant jurisdictional authority is contained in 28 U.S.C. � 1295(a)(1) (1994), which states that thiscourt enjoys exclusive appellate jurisdiction over appeals “based, in whole or in part, onsection 1338 [of Title 28].” Section 1338(a), in turn, provides that district courts havejurisdiction over suits “arising under any Act of Congress relating to patents.” 28�U.S.C.� 1338(a) (1994). Thus, our jurisdiction turns upon whether the claims here arise (at leastin part) under the patent laws. In Hunter Douglas, Inc. v. Harmonic Design
, 153 F.3d 1318
, 1328-29 (Fed. Cir.1998), overruled on other grounds by Midwest Indus., Inc. v. Karavan Trailers, Inc.
, 175F.3d 1356 (Fed. Cir. 1999) (relevant portion en banc
), we analyzed whether claimssounding in state (in that case, California) unfair competition law arose under the patentlaws. We concluded that they did: resolution of the plaintiff�s complaint “necessarilydepend[ed] on resolution of a substantial question of federal patent law,” id.
at 1328(quoting Christianson v. Colt Indus. Operating Corp.
, 486 U.S. 800, 808-09 (1988))–in thatcase, whether inequitable conduct had been committed in the procurement of certainpatents. See id.
at 1328-29. This case requires a corresponding analysis in a solelyfederal context; we must consider whether the federal law claims here similarly requireresolution of patent law questions. The APA is clearly not a patent law. But this is not the end of the analysis. “Inorder to demonstrate that a case is one �arising under� federal patent law, �the plaintiffmust set up some right, title or interest under the patent laws, or at least make it appearthat some right or privilege will be defeated by one construction, or sustained by theopposite construction of these laws.�” Christianson
, 486 U.S. at 807-08 (quoting Pratt v.Paris Gas Light & Coke Co.
, 168 U.S. 255, 259 (1897)). In other words, the scope ofsection 1338 extends to (1) claims where federal patent law creates the cause of action,or (2) claims where the plaintiff�s right to relief necessarily depends upon resolution of a”substantial question of federal patent law.” Christianson
, 486 U.S. at 809. Here, becauseHelfgott’s claims invoke the APA, not federal patent law, the operative question is whetherHelfgott’s APA claims–that the PTO acted arbitrarily and capriciously in denying itspetitions to accept the Demand for the �856 application–can be said to raise a substantialquestion under the patent laws. See
, Hunter Douglas
, 153 F.3d at 1328-29(analyzing “naked” state law causes of action under prong (2) of Christianson
). We answer this question in the affirmative. Helfgott’s claims involve theperformance (or lack thereof) of the Commissioner�s duties under the provisions of thePCT. In particular, we note that section 364(a) of title 35 directs the PTO to act as theInternational Preliminary Examining Authority “in accordance with the applicable provisionsof the [PCT] treaty, the [PCT] Regulations, and this title.” Helfgott alleges that the PTO�srefusal to recognize the Demand as relating to the �856 application is in violation ofapplicable provisions of the PCT Treaty, regulations, and PTO regulations. Further,section 364(b) specifically notes that “[a]n applicant�s failure to act within prescribed timelimits in connection with requirements pertaining to a pending international application maybe excused upon a showing satisfactory to the Commissioner of unavoidable delay.” Likewise, Helfgott claims that any delays in the perfecting of the Demand with respect tothe �856 application are excusable. Accordingly, the actions of the PTO in complying withthe dictates of 35 U.S.C. � 364 clearly raise substantial questions under the patent laws. See Christianson
, 486 U.S. at 808. We thus hold that the question of whether theCommissioner has violated the APA in applying the PCT rules and regulations, as well asits own regulations, raises a substantial question under the patent laws sufficient to vestjurisdiction with the district court based in part upon 28 U.S.C. � 1338(a). Therefore, thesole avenue of appeal for these claims is to this court. See
28 U.S.C. � 1295(a). Accord Cedars-Sinai Medical Center v. Watkins
, 11 F.3d 1573, 1577-80 (Fed. Cir. 1993) (claimsbased on 42�U.S.C. � 5908–vesting title to inventions made in government labs to theUnited States–arise under the patent laws); Franchi v. Manbeck
, 947 F.2d 631, 633-34 (2dCir. 1991) (mandamus claims related to PTO qualifying exam arise under the patent laws); Morganroth v. Quigg
, 885 F.2d 843, 846 (Fed. Cir. 1989) (mandamus and APA claimsrelating to Commissioner�s refusal to revive abandoned patent application arise under thepatent laws); Athridge v. Quigg
, 852 F.2d 621, 623 (D.C. Cir. 1988) (concurring withanalysis in Wyden
, below); Wyden v. Commissioner of Patents & Trademarks
, 807 F.2d934, 936-37 (Fed. Cir. 1986) ( en banc
) (mandamus claims related to attorney�s authorityto practice before the PTO arise under the patent laws); Alco Standard Corp.�v.Tennessee Valley Auth.
, 808 F.2d 1490, 1493-94 (Fed. Cir. 1986) (claims under16�U.S.C. � 831r for reasonable compensation for patent infringement arise under thepatent laws); Dubost v. Patent & Trademark Office
, 777�F.2d 1561, 1564-65 (Fed. Cir.1985) (claims related to PTO�s refusal to accept an unsigned check for purposes ofcomputing a filing date arise under the patent laws). III Turning now to the merits, we address Helfgott�s contention that theCommissioner�s refusal to grant relief under 37 C.F.R. � 1.183 was an abuse ofdiscretion, thereby working a violation of 5 U.S.C. � 706(2)(A) (1994) (requiring courts to”hold unlawful and set aside agency actions . . . found to be arbitrary, capricious, an abuseof discretion, or otherwise not in accordance with law.”). The district court grantedsummary judgment in favor of the Commissioner on this issue, see Helfgott & Karas
, 47F. Supp. 2d at 436, which we review de novo
, see Conroy v. Reebok Int�l, Ltd.
, 14 F.3d1570, 1575 (Fed. Cir. 1994). Pursuant to 37 C.F.R. � 1.183, “[i]n an extraordinary situation, when justice requires,any requirement of the regulations . . . not required by the statutes may be suspended orwaived by the Commissioner.” Helfgott requested that the Commissioner allow thecorrection of errors in the Demand–to make clear that the Demand related to the ’856application, not the ’218 application. Helfgott argues that while it bears no small amountof blame for the circumstances, the Commissioner was also a primary contributor, andshould have accordingly exercised his discretion in this situation. We agree. First, we hold that the Commissioner misapplied PCT Rule 91.1 in denyingHelfgott’s petition under 37 C.F.R. � 1.183. That section (1.183) authorizes theCommissioner, in the interests of justice, to suspend or waive any otherwise applicablenon-statutory requirement. Through the section 1.183 petition, Helfgott sought permissionto correct the Demand in a manner that would preserve the October 21, 1996, filing dateof that document. In order to achieve that result, the Commissioner would either have toextend the time limit allowed for response to the Invitation–which he is authorized to dopursuant to PCT Rule 60.1(a)–or withdraw the flawed Invitation referring to the ’218application and reissue a correct Invitation to Correct Defects, thus allowing Helfgott torespond to that Invitation in a timely manner and make the corrections authorized by PCTRule 91.1. See
PCT Rule 60.1(b) (“If the applicant complies with the invitation within thetime limit . . . the demand shall be considered as if it had been received on the actual filingdate.”). Either of those two actions would provide the relief that Helfgott seeks–theopportunity to avail himself fully of the benefits of PCT Rule 91.1. That Rule (which islegally binding on the Commissioner) allows correction of “obvious errors” in a filing. Helfgott argues that Rule 91.1 allows the application number printed on the Demand to betimely changed to reflect that the Demand is related to the �856 application. TheCommissioner argues that such a change would not be an “obvious” change, as (in theCommissioner�s view) the Demand is related only to the �218 application. The dispute appears to be one of interpretation. Rule 91.1(b) states as follows: Errors which are due to the fact that something other than what wasobviously intended was written in the international application or otherpaper shall be regarded as obvious errors. The rectification itselfshall be obvious in the sense that anyone would immediately realizethat nothing else could have been intended than what is offered asrectification. The Commissioner argues that Rule 91.1(b) thus contains two requirements: (1)�thatthe error be “obvious”; and (2) that the correction itself be “obvious” to anyone. TheCommissioner argues that while the Demand obviously contained errors, the correctionof the application number was not for the Commissioner an obvious fix, and that thusHelfgott’s suggested change violates (2). In this respect, the Commissioner urges us toaccept his interpretation of Rule 91.1, namely that “anyone,” for the purposes of the Rule,can only mean the Commissioner. See Chevron U.S.A. v. Natural Resources Def. Council
,467 U.S. 837, 845 (1984). In this case, however, we find the Commissioner’s view of Rule91.1 to be unreasonable and thus not entitled to judicial deference. Cf
While wereadily concur with the Commissioner that Rule 91.1 contains the two prongs he suggests,we cannot agree with the Commissioner�s implicit contention that only the PTO isauthorized to point out and suggest obvious errors. There is no real dispute that theDemand contained significant–and obvious–errors. Thus, we accept as a given that theDemand was infected with obvious error: it contained information that was not intended. Once everyone concerned realizes the existence of obvious error, the question is whetherthe cure for the error would be obvious to “anyone.” The dispute is whether the change of the application number–thereby confirmingthe Demand�s relationship to the �856 application–would be an “obvious” change withinthe meaning of Rule 91.1 We hold that it would be. Under Rule 91.1, Helfgott is entitledto both
point out “obvious” errors in the Demand and suggest “obvious” changes. Thealterations that Helfgott suggest are plainly obvious once it is agreed that the Demand wassupposed to relate to the �856 application: a Demand relating to the �856 applicationplainly must list the �856 application number. Thus while the Commissioner may bereasonable in using the application number to drive his initial analysis of the obviouslyflawed Demand, adopting the Commissioner�s approach–that the change of anapplication number is not an “obvious” change–would seriously undermine PCT Rule 91.1. Applicants who mistakenly transposed digits in the application number placed on fileddocuments would be at risk that the Commissioner would adopt the wooden position hetakes here: that the application number cannot later be changed, notwithstanding theprovisions of PCT Rule 91.1, because the erroneous document appears to relate toanother application. This we cannot allow. Where the applicant points out an “obvious”error upon which there is no disagreement, and an “obvious” fix for that error, Rule 91.1authorizes the entry of such corrections. Here, Helfgott points to the obvious errors in theDemand, and suggests the obvious necessary changes. The Commissioner�s refusal toaccept these changes was legally incorrect. In addition, it is unarguable that the Commissioner bears some responsibility for theunnecessary expenditure of resources that led to Helfgott’s final petition to correct theDemand. As we noted above, the Commissioner sent a critical document–the Invitation–with an “agent’s file reference number” that did not match the Demand, thereby confusingthe relationship between the Demand and the Invitation. This, of course, led to the failureof Helfgott to timely recognize that the Demand was flawed. The unexpected action of thePTO–the change of the “agent’s file reference number” in contravention of the PCTGuidelines–warrants the use of the Commissioner’s discretionary authority to remedy themistakes. The argument for the exercise of discretion would appear to be especiallystrong in this case, where the harmful actions of the PTO were, as noted above, incontravention of the PCT Guidelines, which requires that the applicant be given noticewhenever documents filed with the PTO are altered. We therefore hold that the Commissioner erred in refusing to grant Helfgott’srequest for relief under PCT Rule 91.1. That error constitutes an abuse of discretion underthe APA on the Commissioner’s part, and the error is magnified by the Commissioner’serror in contributing to the confusion by changing the agent’s file reference number on theInvitation. Furthermore, when PCT Rule 91.1 is correctly understood, it becomes clear thatthe Commissioner’s consistently steadfast resistance to correction of the Demand wasunreasonable. With Helfgott’s 37 C.F.R. � 1.183 petition before him, the Commissioner wasrequired to grant Helfgott the relief sought, which was to allow the correction of the errorsin the Demand without loss of the October 21, 1996 filing date. Upon remand, we leaveit to the Commissioner’s sound discretion to determine which procedural route is besttraveled to secure this result. IV We vacate the district court’s summary judgment in favor of the Commissioner, andremand the case back to the district court with instructions to set aside the Commissioner’srulings and return the case to the Commissioner for further proceedings not inconsistentwith this opinion. COSTS No costs. VACATED & REMANDED
Effective March 29, 2000, the Commissioner of the Patent and TrademarkOffice is now known as the Director of that office. Because the district court and theparties refer to the position by its former title (“Commissioner”), we continue that usehere to avoid any confusion. FN2
We note that the Commissioner, in his brief and argument before this court,factually disputes
that the file reference number was “changed.” That is, theCommissioner implausibly suggests that because the Demand (in the Commissioner�sview) clearly related to the �218 application, the Invitation, by listing the reference numberfor the �218 application, was simply “further correspondence relating to the �218application, using information appropriate to identify that application.” See
Appellee�s Brf.at 29. Of course, the Commissioner fails to come to grips with the fact that such “furthercorrespondence” contained a file reference number that was different
from the verydocument (the Demand) that he interpreted as referring to the �218 application, and thatsuch alteration was effected by the PTO. FN3
Because Helfgott does not appeal the district court’s holding that theCommissioner properly applied the two month time period in section 1.181 to a section1.182 petition, see Helfgott & Karas
, 47 F. Supp. 2d at 433 n.5, we cannot reach this issueand rule in Helfgott’s favor–even though the time limit in section 1.181 seems by the plainmeaning of the section to apply only to that section. We can note, however, that theCommissioner’s rejection of the section 1.182 petition for untimeliness necessitated thefurther expenditure of private and public resources, as Helfgott pursued its request forrelief and the Commissioner steadfastly refused to permit correction of the evident errorsattributable to both parties.
United States Court of Appeals for the Federal Circuit 99-1308 HELFGOTT & KARAS, P.C., Plaintiff-Appellant, and DOV SHEFFER and R.S.R. ADTEC LTD., Plaintiffs, v. Q. Todd Dickenson, DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Defendant-Appellee. Michael F. Sarney
, Helfgott & Karas, P.C., of New York, New York, argued forplaintiffs-appellants. With him on the brief was Aaron B. Karas
. Mark Nagumo
, Associate Solicitor, Office of the Solicitor, of Arlington, Virginia,argued for defendant-appellee. With him on the brief was Albin F. Drost
, Acting Solicitor; John M. Whealan
, Acting Deputy Solicitor; and Linda Moncys Isacson
, Associate Solicitor. Of counsel were Scott A. Chambers
, and Nancy C. Slutter
, Attorneys, Office of theSolicitor. Appealed from: United States District Court for the Southern District of New York Judge Shira A. Scheindlin United States Court of Appeals for the Federal Circuit 99-1308 HELFGOTT & KARAS, P.C., Plaintiff-Appellant, and DOV SHEFFER and R.S.R. ADTEC LTD., Plaintiffs, v. Q. Todd Dickenson, DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Defendant-Appellee. DECIDED: April 14, 2000 Before PLAGER, CLEVENGER, and SCHALL, Circuit Judges
. CLEVENGER, Circuit Judge