N OTE : This disposition is nonprecedential.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

______________________ App eal from the United States District Court for the Eastern District of Virginia in No. 1:17

- cv

- 00482

- LMB

TCB, Judge Leonie M. Brinkema.

______________________

Decided: July 17, 2018

______________________

M ITCHELL R. S WARTZ , Weston, MA, pro se.

N ATHAN K. K ELLEY , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for defendants

- appellees. Also represented by M ICHAEL S. F ORMAN , B ENJAMIN T. H ICKMAN , T HOMAS W. K RAUSE ;SWARTZ v. PATO 2

T RACY D OHERTY -M C C ORMICK , K IMERE J ANE K IMBALL , Office of the United States Attorney for the Eastern District of Virginia , Alexandria, VA

.

______________________

Before P ROST , Chief Judge, N EWMAN and L INN , Circuit Judges.

P ER C URIAM

. Mitchell R. Swartz b rought a complaint in the Eas tern 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 applic ations— U.S. Pat ent Application N o. 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 cr eates a cause of action to challenge a “decision of the Patent Trial and Appeal Board.” At the time Swartz filed his complaint in district cour t, a nd throughout the pe ndency of this action before the district court’s decision

, the Board had not yet issued its dec ision with respect to the ’381 application

. Because there was no “decision” of the Board to challenge with respect to that application , t he district court properly dismiss ed 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 ”) (perSWARTZ v. PATO 3

curiam), this court affirmed the rejection of Swartz’s U.S. P atent A pplication No. 0 8/406,457 for failure of utility and enablement. The at

- issue ’058 application is a co ntinuation of the ’457 a pplication, 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. P atent A pplication No. 07/760,970 w ere unpatentable for failure of utility and enablement. The
at

- issue ’765 application is a continuation of the ’97 0 application, and the representative claims in the two are nearly identical

. T he 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 proceedi ng , 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 lit igate 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 e xplicit 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 wereSWARTZ v. PATO 4

previously found to be invalid as lacking utility and not enabled . T hat 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 unde rtaking or involve[s] implausi ble scientific principles

. ” Id. As we ha ve 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 o f the invention s’ utility. Id . at 864. The evidence and arg uments Swartz presents do not satisfy this burden.
Swartz makes two inconsistent arguments: his inve ntions are not directed to cold fusion or LENR , and he presented new evidence to the district c ourt 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 ev idence 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 inapp osite

— it is the identity of issues, inter alia

, not the cause of action, that gives rise to co llateral 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 opera ting points for LENR manifo l ds.” That same report ind icates 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 sour ce. Scientists worldwide have been reporting anomalous excess heat production, as well as evidence of nuclear particles and
tran smutation.” It also states , “ If nuclear reactions in LENR experiments are real and controllable, DIA asses ses that whoever pro duces the first commercialized LEN R 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 re main only thinly reproducible,” that they “suffer[] from a basic lack of understanding of the governing physics,” a nd 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 presum ption of no utility. At best, they demonstrate some positive experimental results attained by Swartz, tempered by much remaining skepticism and uncerta inty about the utility of the discussed technology. With respect to the remaining declarations and articles, t he district court correctly concluded, “nowhere, for example, does [Swartz] explain how an invention described in any of the relevant patent appl ications 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 theSWARTZ v. PATO 6

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 previ ously 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 ex plicitly 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 the ir potential relevance to the utility and enablement determinations

. Swartz also argues that the PTO “misd escribed” 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 cla ims 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 revisiti ng that issue here.
Swartz argues that the PTO has issued patents in the field, citing Dr. Swartz’s a pplications. Each patent is evaluated on its own terms, however, and the citation to Dr. Swartz’s a pplications does not demonstrate their utility.

Swartz next argues that the district court erred in dismissing his various Constitutional claims for discrim ination

, violation of due process

, violation of his right to an impartial tribunal under 28 U.S.C. § 144, and violation ofSWARTZ v. PATO 7

the patents clause of the Const itution. 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 conclusion s that 42 U.S.C. § 1983 only applies to actions taken under color of law by “any State or Terr itory ,” 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 as sertion 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 . H is entitlement to a patent under that provision is framed and defined by Titl e 35 of the U.S. Code, which includes explicit requirements for utility and enablement. Because the Board and district court ad equately showed that Swartz’s inventions lack utility and enablement, he is not entitled to patents on those inve ntions.

We have considered Swartz ’s other arguments , inclu ding his allegations of intentional torts, fraudulent stat ements, and criminal misconduct, and find them lacking in any merit

. AFFIRMED

Costs

No costs.