United States District Court, District of Columbia
November 8, 2000
ROBERT S. WORLEY, PLAINTIFF,
UNITED STATES PATENT AND TRADEMARK OFFICE, ET AL., DEFENDANTS.
LAMBERTH, District Judge.
This matter comes before the Court on defendants' Motion to Dismiss,
or, in the Alternative, for Summary Judgment. Upon consideration of that
motion and supporting documents, plaintiff's opposition thereto,
defendants' reply, the entire record herein, and the relevant law, the
Court grants defendants' motion.
Plaintiff Robert Worley brings this action against the Commissioner of
the United States Patent and Trademark Office ("USPTO"). Worley alleges
that the Commissioner of the USPTO has "denied in an arbitrary and
capricious manner, without color of law and without justification,
Plaintiff's admission to practice before the USPTO" by giving him a
failing grade on his Patent Bar examination.' Plaintiff's Complaint at
¶ 21 (hereinafter "Compl. ¶").
The facts in this case are undisputed. Mr. Worley has sat for the
Patent Bar examination three times. On his first attempt in May 1995, he
failed the entire examination. On his second attempt in August 1996, he
passed the afternoon section and failed the morning section. On his third
attempt in August 1997, he once again failed the morning section,
receiving a grade of 66 when a grade of 70 was required to pass. Compl.
¶¶ 5-11. In April 1998, Mr. Worley submitted a formal request to the
USPTO for regrading of three of his answers, which, if granted, would
have given him a passing grade on the morning section. In his request, he
argued that his interpretations of the questions
and subsequent answers were reasonable, and that his answers should
therefore be graded as correct. The USPTO denied his request because the
USPTO relies upon its Model Answers both when grading and regrading
questions, and Mr. Worley's answers differed from the Model Answers.
Compl. ¶¶ 13-14. In September 1998, Mr. Worley then filed a petition
for review of the decision to deny his request for a regrade. The USPTO
denied his petition. Compl. ¶¶ 15-16.
On June 8, 1998, Mr. Worley filed this complaint alleging (a) that the
USPTO erroneously graded his examination answers as incorrect and that in
so doing, the USPTO breached a duty to people taking the patent
examination to correctly analyze and apply the relevant law; and (b) that
the USPTO, in this instance and in general, acts arbitrarily and
by preparing examinations that are not intended to
fairly evaluate the information possessed by the
candidate to assist others in preparing and
prosecuting patent applications, but rather is more
intent to discover and evaluate the applicant's
understanding of minutia, of trivia, of matters which
seldom if ever come into play in the preparation or
grading of a patent application and is used more to
grade answers wrong to refuse to admit people to
practice before the USPTO.
Compl. ¶¶ 18-20.
The USPTO filed a motion to dismiss, or in the alternative, for summary
judgment. The Court, for the reasons stated below, denies the USPTO's
motion to dismiss and grants the USPTO's motion for summary Judgment.*fn1
In accordance with the Administrative Procedures Act, 5 U.S.C. § 706
(2)(A), this Court uses a deferential "arbitrary and capricious" standard
when reviewing decisions of the Commissioner of the USPTO regarding
admission to practice before the USPTO. See Premysler v. Lehman,
71 F.3d 387, 389 (Fed.Cir. 1995). The function of this Court is not to
retry the facts, but rather to "review what has been done to determine
whether or not a fair hearing has been had and whether there is
substantial evidence to support the action of the Patent Office." Klein
v. Peterson, 696 F. Supp. 695, 698 (D.D.C. 1988). Finally, pursuant to
District of Columbia Local Civil Rule 83.7, the Court is limited in its
review to the record and proceedings of the USPTO.
The standard for review of the grading of a Patent Bar examination is
"whether the officials of the Patent Office acted fairly and without
discrimination in the grading of the plaintiff's examination, pursuant to
a uniform standard." Cupples v. Marzall, 101 F. Supp.2d 579, 583 (D.D.C.
1952). In Cupples, the court applied this standard by comparing the
plaintiff's examination with the examinations taken by two other
applicants to determine whether the examination was graded fairly and
without discrimination. Id. at 582-83. However, the court recognized that
this method was only "one reasonable approach to" applying the standard.
Id. at 582. The Court of Appeals declined to hold that the method used
was necessary, but did hold that the standard was appropriate. See
Cupples v. Watson, 204 F.2d 58 (D.C.Cir. 1953).
Since the USPTO now grades all examinations by comparing the answers in
the graded examination to a set of Model Answers, this Court finds it
unnecessary to use the comparison method used by the
court in Cupples. Since all exams are graded in reference to this
external document, use of the Model Answers fosters uniformity in grading
and precludes unfair and individually discriminatory grading.
This Court holds that the USPTO's use of a set of Model Answers to
grade patent bar examinations satisfies the Cupples standard because it
provides a set of uniform standards by which all examinations can be
fairly judged and is therefore not arbitrary and capricious. The Court
rejects Mr. Worley's argument that an examination regrade should consist
of an individual determination as to whether the individual's explanation
for their answer constituted a reasonable interpretation of the patent
law, rather than a determination as to whether the grading conformed with
the Model Answer. Permitting individualized and subjective regrading upon
request would promote, not reduce, the likelihood that the USPTO would
make arbitrary and capricious decisions about who passes and fails the
Patent Bar examination.
For the reasons stated above, the Court holds that the decision of the
Commissioner of the USPTO not to regrade Mr. Worley's examination answers
as correct when the answers did not conform with the USPTO's Model
Answers was not arbitrary and capricious. In a separate order this date,
the Court therefore DENIES defendants' motion, to dismiss and GRANTS
defendants' motion for summary judgment.