NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

MITCHELL R. SWARTZ,

Plaintiff-Appellant

v.

UNITED STATES PATENT AND TRADEMARK 

OFFICE, ANDREI IANCU, UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR OF THE UNITED STATES 

PATENT AND TRADEMARK OFFICE,

Defendants-Appellees

______________________ 

2018-1122

______________________ 

Appeal from the United States District Court for the 

Eastern District of Virginia in No. 1:17-cv-00482-LMBTCB, Judge Leonie M. Brinkema.

______________________ 

Decided: July 17, 2018

______________________ 

MITCHELL R. SWARTZ, Weston, MA, pro se. 

 NATHAN K. KELLEY, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, for 

defendants-appellees. Also represented by MICHAEL S.

FORMAN, BENJAMIN T. HICKMAN, THOMAS W. KRAUSE; 
2 SWARTZ v. PATO

TRACY DOHERTY-MCCORMICK, KIMERE JANE KIMBALL, 

Office of the United States Attorney for the Eastern 

District of Virginia, Alexandria, VA. 

 ______________________ 

Before PROST, Chief Judge, NEWMAN and LINN, Circuit 

Judges.

PER CURIAM. 

Mitchell R. Swartz brought a complaint in the Eastern District of Virginia pursuant to 35 U.S.C. § 145, in 

which he challenged the decision of the U.S. Patent 

Trademark Office rejecting six of Swartz’s patent applications—U.S. Patent Application No. 12/932,058; No. 

12/589,258; No. 13/544,381; No. 12/316,643; No. 

09/748,691; and No. 09/750,765—as unpatentable under 

35 U.S.C. §§ 101 and 112. Swartz also alleged various 

forms of misconduct by the patent office. The district 

court dismissed his complaint under Fed. R. Civ. P. 

12(b)(1) and 12(b)(6) and Swartz now appeals. Swartz v. 

Matal, No. 1:17-cv-482 (E.D.Va. Aug. 22, 2017) 

(Brinkema, J.) (“District Court Op.”). Because the District 

Court did not err, we affirm.

We begin with the ‘381 application. Section 145 creates a cause of action to challenge a “decision of the 

Patent Trial and Appeal Board.” At the time Swartz filed 

his complaint in district court, and throughout the pendency of this action before the district court’s decision, the

Board had not yet issued its decision with respect to the 

’381 application. Because there was no “decision” of the 

Board to challenge with respect to that application, the 

district court properly dismissed that portion of Swartz’s 

claim.

The district court also properly dismissed Swartz’s 

claims with respect to the ’058 and ’765 applications on 

the bases of collateral estoppel. In In re Swartz, 50 F. 

App’x 422, 424-25 (Fed. Cir. 2002) (“Swartz II”) (per 
SWARTZ v. PATO 3

curiam), this court affirmed the rejection of Swartz’s U.S. 

Patent Application No. 08/406,457 for failure of utility 

and enablement. The at-issue ’058 application is a continuation of the ’457 application, and the representative 

claims in the two are “identical,” as represented by the 

Board and uncontested by Swartz. 

Similarly, in In re Swartz, 232 F.3d 862, 864 (Fed. 

Cir. 2000) (“Swartz I”), this court held that the claims of 

Swartz’s U.S. Patent Application No. 07/760,970 were

unpatentable for failure of utility and enablement. The 

at-issue ’765 application is a continuation of the ’970 

application, and the representative claims in the two are 

nearly identical. 

The core requirements for collateral estoppel are that: 

the issue in question is identical to an issue previously 

decided, the issue was actually litigated in the prior 

proceeding, the resolution of the issue was necessary to 

the prior judgment, and the party challenging the issue 

must have been given a full and fair opportunity to litigate the issue in the prior proceeding. Jet, Inc. v. Sewage 

Aeration Sys., 223 F.3d 1360, 1366 (Fed. Cir. 2000). 

Swartz argues that the district court wrongly applied 

estoppel here because he submitted new references not 

present in the previous appeals to show utility, and 

because the applications here no longer include explicit

references to cold fusion.

Neither the new references nor the elimination of explicit reference to cold fusion avoids the application of 

collateral estoppel. Swartz has not shown that these 

differences “materially alter the question of invalidity.” 

See Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 

1342 (Fed. Cir. 2013). Substantially identical claims were 
4 SWARTZ v. PATO

previously found to be invalid as lacking utility and not 

enabled. That holding is binding on Swartz.1

We turn next to the ’258, ’643, and ’691 applications. 

The PTO carries the initial burden of challenging the 

utility of an invention. In re Brana, 51 F.3d 1560, 1566 

(Fed. Cir. 1995). However, the PTO carries that burden if 

the patent “suggest[s] an inherently unbelievable undertaking or involve[s] implausible scientific principles.” Id. 

As we have held, cold fusion suggests such an inherently 

unbelievable undertaking. Swartz I, 232 F.3d at 864. 

The burden therefore shifted to Swartz to show sufficient 

evidence to convince an ordinarily skilled artisan of the 

inventions’ utility. Id. at 864. The evidence and arguments Swartz presents do not satisfy this burden.

Swartz makes two inconsistent arguments: his inventions are not directed to cold fusion or LENR, and he 

presented new evidence to the district court proving the 

utility of LENR technology.

First, Swartz’s assertion that his inventions are not 

directed to cold fusion or LENR technology is baseless. 

The references Swartz relies on here are related to LENR 

technology. Moreover, the parent applications were 

expressly directed to cold fusion, as we previously held. 

 Second, the new evidence submitted by Swartz does 

not cure the lack of enablement or utility. The new evidence comprised reports by the Defense Intelligence 

Agency (“DIA”), Defense Threat Reduction Agency 

(“DTRA”), and other scientific articles. 

 

1 That this case is proceeding under § 145 in the 

district court, instead of through a direct appeal from the 

U.S. Patent and Trademark Office (“PTO”) is also inapposite—it is the identity of issues, inter alia, not the cause of 

action, that gives rise to collateral estoppel.
SWARTZ v. PATO 5

The DIA report cited Swartz’s research to support the 

statement, “In May 2002, researchers at JET Thermal in 

Massachusetts reported excess heat and optimal operating points for LENR manifolds.” That same report indicates fundamental skepticism about the result of the 

research. It notes that scientists from various nations 

“are devoting significant resources to this work in the 

hope of finding a new clean energy source. Scientists 

worldwide have been reporting anomalous excess heat 

production, as well as evidence of nuclear particles and 

transmutation.” It also states, “If nuclear reactions in 

LENR experiments are real and controllable, DIA assesses that whoever produces the first commercialized LENR 

power source could revolutionize energy production and 

storage for the future.” The DIA report also states that 

“much skepticism remains” about LENR programs. The 

DTRA reference strikes a similar note. It explains that 

LENR reactions “are showing some remarkable progress

. . . but experiments remain only thinly reproducible,” 

that they “suffer[] from a basic lack of understanding of 

the governing physics,” and that “it seems unlikely that 

deployable/useable devices could be expected within a five

to ten year horizon.”

These references do little to overcome the presumption of no utility. At best, they demonstrate some positive 

experimental results attained by Swartz, tempered by 

much remaining skepticism and uncertainty about the 

utility of the discussed technology. With respect to the 

remaining declarations and articles, the district court 

correctly concluded, “nowhere, for example, does [Swartz] 

explain how an invention described in any of the relevant 

patent applications was used in the course of any of the 

referenced demonstrations or experiments.” District 

Court Op. at 11. 

Swartz presents a number of additional arguments, 

none of which have merit. Swartz cites In re Oetiker, 977 

F.2d 1443 (Fed. Cir. 1992) for the proposition that the 
6 SWARTZ v. PATO

Board failed to make its prima facie case of invalidity. As 

discussed above, applications that suggest inherently 

unbelievable inventions satisfy the Board’s initial burden 

to show lack of utility, and we have previously held that 

Dr. Swartz’s LENR-related inventions here properly fall 

within that realm.

Swartz argues that the district court failed to apply 

the de novo review required under § 145. See Kappos v. 

Hyatt, 566 U.S. 431, 444 (2012). The district court explicitly applied a de novo standard of review, citing Hyatt. 

District Court Op. at 7.

Swartz argues that the PTO failed to “docket[]” and 

“sequestered” documents. Swartz does not explain what 

documents were not docketed or were hidden, or by whom, 

or their potential relevance to the utility and enablement 

determinations. Swartz also argues that the PTO “misdescribed” several of his patent applications as directed to 

cold fusion. According to Swartz, the ’058 application is 

properly directed to “a heat measurement system” and the 

’765 application is properly directed to “a measurement of 

hydrogen loading into a metal.” Regardless of how the 

applications are described, however, the nearly identical 

claims presented in the ’058 and ’765 applications have 

already been determined in Swartz I and Swartz II to be 

within the realm of the inherently unbelievable and, 

therefore, unpatentable. As discussed above, collateral 

estoppel properly forecloses revisiting that issue here. 

Swartz argues that the PTO has issued patents in the 

field, citing Dr. Swartz’s applications. Each patent is 

evaluated on its own terms, however, and the citation to 

Dr. Swartz’s applications does not demonstrate their 

utility.

Swartz next argues that the district court erred in 

dismissing his various Constitutional claims for discrimination, violation of due process, violation of his right to an 

impartial tribunal under 28 U.S.C. § 144, and violation of 
SWARTZ v. PATO 7

the patents clause of the Constitution. Swartz specifically 

relies on 42 U.S.C. § 1983 and Bivens v. Six Unknown 

Named Agents, 403 U.S. 388 (1971) to support these 

violations. Swartz does not explain why the district court 

erred in its conclusions that 42 U.S.C. § 1983 only applies 

to actions taken under color of law by “any State or Territory,” not the federal government, and that a Bivens

action cannot be brought against a federal employee in his 

official capacity. Swartz also has not proffered anything 

but a bare assertion of prejudice by the district court. 

Finally, Swartz has not shown error in the district court’s 

dismissal of his challenge under the patent clause of the 

Constitution. His entitlement to a patent under that 

provision is framed and defined by Title 35 of the U.S. 

Code, which includes explicit requirements for utility and 

enablement. Because the Board and district court adequately showed that Swartz’s inventions lack utility and 

enablement, he is not entitled to patents on those inventions.

We have considered Swartz’s other arguments, including his allegations of intentional torts, fraudulent statements, and criminal misconduct, and find them lacking in 

any merit. 

AFFIRMED

Costs

No costs.