1 

# In the United States Court of Federal Claims

No. 15

- 413C (Filed: March 31 , 201 6 )

EVIDEO OWNERS, et al., Plaintiffs,

v. THE UNITED STATES,
Defendant. ) ) ) ) ) ) ) ) ) ) ) Rule 12(b)(1), Subject

- Mat ter Jurisdiction ; RCFC 12(b)(6), Failure to State a Claim; Implied Contract ; RCFC 9(k); Illegal Exaction ; Fifth Amendment Due Process

.

Joseph J. Zito , Attorney of Record, Ditthavong & Steiner, P.C., Alexandria, VA , for plaintiffs

. David A. Foley, Jr. , Trial Attorney, John Fargo , Director, Intellectual Property Staff, and Benjamin C. Mizer , Principal Deputy Assistant Attorney General, Commercial Litigation Branch, Civil Division, United States Depar tment of Justice, Washington, DC , and Heidi Bouregois, Of Counsel, Joseph Matal, Of Counsel, and Nicolas Oettinger, Of Counsel, United States Patent and Tr ademark Office, Washington, DC , for d efendant.
MEMORANDUM OPINION AND ORDER

I. INTRODUCTION
Plaintiffs , assignees or owners of certain patent applications submitted to th e United States Patent and Trademark Office (“ USPTO ”) , alleg e that the USPTO has violated the Due Process Clause of the United S t ates Constitution, breached certain implied

- in

- fact contracts with plaintiffs and illegally exacted certain fees from plaintiffs, by failing to inform plaintiffs of the fact that the ir patent applications have been referred to the U SPT O’s Sensitive Application Warning System (“S.A.W.S.”) program

. The government has moved to dismiss this matter for lack of subject

- matter jurisdiction and for failure to state a claim upon which relief may be granted, pursuant to Rules 12(b)(1) and 12(b)(6) of the Rules of the United States Court of Federal Claims (“RCFC”). Plaintiffs have also moved for oral argument. For the reasons set forth below , the Court (1) GRANTS the government ’s motion to dismiss and (2) DENIES plaintiff s ’ motion for oral argument as moot

.2 II. FACTUAL AND PROCEDURAL BACKGROUND 1

Plaintiffs , eVideo Owners, Mauro DiDomenico , Jr. , Douglas Buerger , Craig Linden, Realvirt LLC and Paul Barous , are either the owners or assignees of one or more patent applications that have been filed with the U nited States P atent and T rademark Office. Am. Compl. at ¶¶ 1, 17, 19

- 22. In the ir amended complaint, p laintiffs allege that the USPTO violated their substantive due process rights under the United States Constitution, breached implied

- in

fact contract s with plaintiffs and illegally exacted certain fees from plaintiffs , by failing to notify plaintiffs of the fact that the USPTO had referred their patent applications to the S.A.W.S.
program

. Id . at ¶¶ 15, 42, 64, 68

- 74

. Specifically, plaintiffs allege that the USPTO flagged their patent applications for additional review under the S.A.W.S. program after the applications had been submitted to the USPTO for approval. Id . at ¶¶ 15, 46, 50, 54, 58 . P laintiffs further allege they have been financially harmed and have experienced undue delay in the processing of the se patent applications , as a result o f the USPTO’s decision to refer the patent applications to the S. A. W.S

. program

. Id . at ¶¶ 15, 42, 46, 50, 54, 58

. In addition , plaintiffs allege that the USPTO violated 35 U.S.C. § 132(a) and its implementing regulation, 37 C.F.R. § 1.104(a)(2)

− which require that the USPTO notify patent applicants of a rejection, objection , or requirement relate d to a patent application

− by failing to notify plaintiffs of the fact that their patent applications had been referred to th e S.A.W.S.
program. Id . at ¶¶ 60

- 63

. In this regard, p laintiffs allege that if they had been notified of the referral to the S.A.W.S. program , they may have changed their strateg y in pursuing the patent applications . Def. Resp. to Pl. Supp. at 5; Pl. Supp. Rep. at 2. And so, plaintiffs s eek to recover all of the fees that they paid to the USPTO following the referral of their patent applications to

1 The facts recited in this Memorandum Opinion and Order are taken from plaintiffs’ amend ed complaint (“Am. Compl. at

__ ”), defendant’s motion to dismiss (“Def. Mot. at __”), plaintiffs’ opposition thereto (“Pl. Opp. at __”), defendant’s reply in support of its motion to dismiss (“Def. Rep. at __”) , plaintiffs’ supplemental brief (“Pl. Supp. at

__ ”), defendant’s supplemental brief (“Def. S upp. at

__ ”), plaintiffs’ response to defendant’s supplemental brie f (“Pl. Resp. to Def. Supp. at

__ ”), defendant’s response to plaintiffs’ supplemental brief (“Def. Resp. to Pl. Supp. at

__ ”), plaintiff s ’ reply in support of its supplemental brief (Pl. Su pp. Rep. at

__ ”), and defendant’s reply in support of its supplemental brief (“Def. Supp. Rep. at

__ ”) . Except where otherwise noted, the facts recited here are undisputed.3 the S.A.W.S. program, as well as all attorney’s fees paid during the review of their applications under the S.A.W.S. program

. Am. Compl. at P rayer for Relief.

A. The eVideo Owners A nd DiDomenico Patent Applications

P laintiff , Dr. Mauro DiDomenico, Jr. , has owned patent application numbers 09/840,868 and 13/333,840 since September 27, 2002. Pl. Opp. at 19

. Dr. DiDomenico i s the inventor of the technology underlying both of these patent applications

. Am. Compl. at ¶ 2. These patent applications involve systems and methods for providing video on demand services. Id . at ¶ 34.

P atent application number 09/840,868 (“ DiDomenico Patent Application 1”) was filed with the USPTO on April 25, 2001

. Id . at ¶¶ 3, 36. O n May 9, 2003, the USPTO issued a final rejection of DiDomenico Patent Application 1. Id . T he USPTO later acknowledged , however, that the final rejection was premature and withdrew the rejection. Id . at ¶ 36. Subsequently, o n June 30, 2003, the USPTO issued a non

- final rejection, which it also later withdrew. Id . On May 10, 2004, the USPTO issued a second final rejection, which it ag ain withdrew as improper. Id

. Finally, o n June 3, 2009, the USPTO issued a final rejection of DiDomenico Patent Application 1 based up on the doctrine of res judicata

. Id

. O n October 21, 2011, an appellate board of the USPTO reversed the patent examiner ’s final rejection decision. Id

. The amended complaint does not state whether DiDomenico Application 1 is still pending before the USPTO. See generally Am. Compl. Plaintiffs allege that DiDomenico Patent Application 1 has been referred to the S.A.W.S. program. Am. Compl. at ¶¶ 15, 39. Plaintiffs further allege that this patent application has been “delayed by a series of contentious rejections by the Examiner assigned to the case.” Id . at ¶ 36. In this regard, plaintiffs also contend that they have been waiting for more than thirteen years for the final disposition of this patent application. Id . at ¶¶ 3, 38.
The second DiDomenico patent application, patent application number 13/333,840 (“ DiDomenico Patent Application 2”), was filed with the USPTO on December 21, 2011

. Id . at ¶ 37. On November 6, 2014, the USPTO issued a final rejection of DiDomenico Patent Application 2 , and the final rejection has since been appealed

. Id

. Plaintiffs allege that DiDomen ico Patent Application 2 has also been referred to the S.A.W.S. program. Id . at ¶¶ 15, 39.4 B. The Buerger, Linden, Realvirt A nd Barous Patent Applications Plaintiffs Douglas Buerger, Craig Linden, Realvirt , LLC and Paul Barous are the owners or assignees o f several other patent applications filed with the USPTO

. See Am. Compl. at ¶¶ 4

- 7. Specifically, Douglas Buerger owns p atent a pplication number 13/602,835. Id

. ¶ ¶ 4, 43. Plaintiff Craig Linden is the assignee of p atent a pplication numbers 09/856,228, 10/469,800, and 12/172,993

. Id . at ¶ ¶ 5, 48. Plaintiff Realvirt, LLC owns p atent a pplication numbers 07/773,161 and 13/368,316 , which were filed with the USPTO on October 8, 1991

. Id . at ¶¶ 6, 21 , 52. Plaintiff Paul Barous is the assignee of p atent a pplication number 10/397,778. Id . at ¶¶ 7, 22. Plaintiffs do not state in the amended complaint whether the USPTO has accepted or rejected the Buerger, Linden, Realvirt a nd Barous patent applications, or whether any of these patent applications are curre ntly pending before the USPTO. See generally Am. Compl. Plaintiffs contend that the above

- mentioned patent applications have been referred to the S.A.W.S.
program. Id . at ¶¶ 46, 50, 54, 58.
C. The S.A.W.S. Program
The USPTO’s S.A.W.S. program i s a now
- defunct program that was intended “ to increase the quality of issued patents. ” Def. Mot. at 2. Under the S.A.W.S. program, patent applications that were of “ special interes t to the USPTO would be flagged by the agency for an additional in ternal quality a ssurance check. ” Id

. According to the government, approximately 0.04% of pending patent applications fell within the S.A.W.S. program each month , during the time period when the S.A.W.S. program was operational. Id. T he USPTO retired the S.A.W.S. program on March 2, 2015

. Id.

D. Procedural Background On April 24, 2015, plaintiff s filed the complaint in this matter. See generally Compl. On June 17, 2015, plaintiff s filed an unopposed motion to amend the pleadings. See Mot. to Amend Pleadings. The Court granted plaintiff s ’ motion to amend the pleadings on June 17, 2015, and plaintiff s filed their first amended complaint on th at date

. See June 17, 2015 Order; Am. Compl. On August 14, 2015, defendant filed a motion to dismiss this matter pursuant to RCFC 12(b)(1) and RCFC 12(b)(6). Def. Mot

. On September 14, 2015, plaintiff s filed a response and opposition to the defendant’s motion to dismiss. See generally Pl. Opp. On September 23, 2015,5 defendant filed a reply in support of its motio n to dismiss. See generally Def. Rep. Subsequently, plaintiff s filed a motion for oral argument. See generally Pl. Mot. for Oral Argument , Oct

. 6, 2015. On November 10, 2015, the Court ordered the parties to provide supplemental brief ing on whether the Court possesses jurisdiction to consider plaintiffs’ illegal exaction claim and whether the Court’s Tucker Act jurisdiction with respect to plaintiffs’ illegal exaction claim is displaced by the remedies available under 35 U.S.C. § 42(d) and 37 C.F.R. § 1 .26. See Nov. 10, 2015 Order. On December 14, 2015, the parties filed their initial supplemental briefs. See generally Pl. Supp.; Def. Supp. On January 11, 2016, the parties filed their supplemental responsive briefs

. See generally Pl. Resp. to Def. Supp.; Def. Resp. to Pl. Supp. O n January 25, 2016, the parties filed their supplemental reply briefs

. See generally Pl. Supp. Rep.; Def. Supp. Rep

. T he matter having been fully briefed, the Court resolve s the pending motion s to dismi ss and for oral argument

. III. LEGAL STANDARDS
A. RCFC 12(b)(1) , Jurisdiction And Standing When deciding a motion to dismiss upon the ground that the Court does not possess subject

- matter jurisdiction pursuant to RCFC 12(b)(1), this Court must assume that all

un disputed facts alleged in the complaint are true and must draw all reasonable inferences in the

non
- movant’s favor. Erickson v. Pardus , 551 U.S. 89, 94 (2007); RCFC 12(b)(1). But, plaintiff s bear the burden of establishing subject

- matter jurisdiction and they must do so by a preponderance of the evidence. Reynolds v. Army & Air Force Exch. Serv. , 846 F.2d 746, 748 (Fed. Cir. 1988). Should the Court determine that “it lacks jurisdiction over the subject matter, it must dismiss the claim.” Matthews v. United States , 72 Fed. Cl. 274, 278 (2006). In this regard , t he United States Court of Federal Claims is a court of limited jurisdiction and “possess[es] only that power authorized by Constitution and statute.

. . .” Kokkonen v. Guardian Life Ins. Co. of Am. , 511 U.S. 375, 377 (1994). The Tucker Act grants the Court jurisdiction over: [A]ny claim against the United States founded either upon the Constitution, or any Act of Congress or any regulation of an executive department, or upon any express6 or impli ed contract with the United States, or for liquidated or unliquidated damages in cases not sounding in tort. 28 U.S.C. § 1491 (a)(1) . The Tucker Act, however, is a jurisdictional statute; it does not create any substantive right enforceable against the Uni ted States for money damages . . . . [T]he Act merely confers jurisdiction upon [the United States Court of Federal Claims] whenever the substantive right exists.” United States v. Testan, 424 U.S. 392, 398 (1976). And so, t o pursue a substantive right a gainst the United States under the Tucker Act, a plaintiff must identify and plead a money

- mandating constitutional provision, statute or regulation; an express or implied contract with the United States ; or an illegal exaction of money by the United State s

. Cabral v. United States, 317 F. App’ x 979, 981 (Fed. Cir. 2008); (citing Fisher v. United States , 402 F.3d 1167, 1173 (Fed. Cir. 2005 ) ) ; see also Martinez v. United States , 333 F.3d 1295, 1302 (Fed. Cir. 2003)

. “[A] statute or regulation is money - mand ating for jurisdictional purposes if it ‘can fairly be interpreted as mandating compensation for damages sustained as a result of the breach of the duties [it] impose[s].’” Fisher , 402 F.3d at 1173 ( quoting United States v. Mitchell , 463 U.S. 206, 217 (1983)). In addition, plaintiffs must also demonstrate that they have standing to bring this claim. Aspex Eyewear, Inc. v. Altair Eyewear, Inc ., 288 F. App’x 697, 704 (Fed

. Cir. 2008); see also Bannum, Inc. v. United States , 115 Fed. Cl. 148, 150 (2014). To establish standing, plaintiffs must demonstrate: (1) injury in fact, (2) a causal connection between the injury and the conduct complained of , and (3) that it is “ ‘ likely, ’ as opposed to merely ‘ speculative, ’ that the injury will be ‘ redressed by a fa vorable decision. ’ ” Lujan v. Defenders of Wildlife , 504 U.S. 555, 560

- 61 (1992) (quoting Simon v. E. Ky. Welfare Rights Org. , 426 U.S. 26, 38, 43 (1976)).

B. RCFC 12(b)(6) When deciding a motion to dismiss based upon failure to state a claim pursuant to RCFC 12(b)(6), this Court must also assume that all undisputed facts alleged in the complaint are true and draw all reasonable inferences in the non

- movant’s favor. Erickson , 551 U.S. at 94; RCFC 12(b)(6). To survive a motion to dismiss pursuant to RCFC 12(b)(6), a complaint must contain facts sufficient to “state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly , 550 U.S. 544, 570 (2007); see als o Ashcroft v. Iqbal , 556 U.S. 662, 678 (2009). And so, when the complaint fails to “state a claim to relief that is plausible on its face,” the Court7 must dismiss the complaint. Iqbal , 556 U.S. at 678 (citation omitted). On the other hand, “[w]hen there are well

- pleaded factual allegations, a court should assume their veracity” and determine whether it is plausible, based on these facts, to find against the defendant. Id . at 679.
C. Implied

- I n - Fact Contracts A nd RCFC 9(k)
Plaintiffs bear the burden of proving the existence of a contract w ith the United States , and plaintiff s must show that there is “something more than a cloud of evidence that could be consistent with a contract to prove a contract and enforceable contract rights. ” D & N Bank v. United States , 331 F.3d 1374, 1376 (Fed. Cir. 2003). T his Court has long recognized that the Court’s Tucker Act jurisdiction does not extend to contracts that are implied in law. Hercules, Inc. v. United States , 516 U.S. 471, 423 (1996) ; Trauma Serv. Grp. v. United States , 104 F.3d 1321, 132 4 (Fed. Cir. 1997); Lion Raisins, Inc. v. United States , 54 Fed. Cl. 427, 431 (2002). And so, for plaintiffs ’ contract claim to fall within the Court’s Tucker Act jurisdiction, plaintiff s must prove that they entered into an express or implied

- in

- fact contract with the United States. Id

. To establish the existence of an implied

- in

- fact contract with the United States , a plaintiff must allege “ a mutual intent to contract , including an offer, an acceptance , and consideration. ” Trauma Serv. Grp. , 104 F. 3d at 1326. P laintiff s must also allege that the g overnment representative who entered into the contract on behalf of the United States had actual authority to contractually bind the government

. Id. Rule 9(k) of the Rules of the United States Court of Federal Claims further requires that, w h en pleading an express or implied

- in

- fact contract with the government, plaintiff s must “identify the substantive provisions of the contract or treaty on which th e party relies.” RCFC 9(k). “ In lieu of a description, [ plaintiffs ] may annex to the complaint a copy of the contract or treaty, indicating the relevant provisions. ” Id .; see also Gonzalez

- McCaulley Inv. Grp. , Inc. v. United States , 93 Fed. Cl. 710, 715 (2010).

D. Illegal Exaction While this Court typically does not possess subject

- matter jurisdiction to consider due process claims, the Court may consider claims that the government illegally exacted property “without due process of law, in contravention of the Due Process Clause of the Fifth Amendment to the Constitution.” Norman v. United States , 429 F.3d 1081, 1095 (Fed. Cir. 2005) (citing Casa D e Cambio Comdiv v. United States , 291 F.3d 1356, 1363 (Fed. Cir. 2002)); see also N.8 Cal. Power Agency v. Unite d States , 122 Fed. Cl. 111, 115 (2015) (citing Aerolineas Argentinas v. United States , 77 F.3d 1564, 1572 (Fed. Cir. 1996)) ; James v. Caldera , 159 F. 3d 573, 581 (Fed. Cir. 1998)

. In this regard, t he United States Court of Appeals for the Federal Circuit has held that this Court possesses jurisdiction to consider illegal exaction claims “‘ when the exaction is based upon an asserted statutory power. ’” Norman , 429 F.3d at 1095 (quoting Aerolineas Arg entinas , 77 F.3d at 1573) ; Casa De Cambio Comdiv , 291 F.3d at 1363; Caldera , 159 F. 3d at 581; Sartori v. United States , 58 Fed. Cl. 358, 362 (2003).
The Federal Circuit has held that an illegal exaction occurs when a “‘plaintiff has paid money over to th e [g]overnment, directly or in effect, and seeks return of all or part of that sum’ that ‘was improperly paid, exacted, or taken from the claimant in contravention of the Constitution, a statute, or a regulation.’” Aerolineas Argentinas , 77 F.3d at 1572

- 7 3 (quoting Eastport S.S. Corp. v. United States , 372 F.2d 1002, 1007 (Ct. Cl. 1967))

. In addition, t he Federal Circuit has further held that “ [t] o invoke Tucker Act jurisdiction over an illegal exaction claim , ” a plaintiff must demonstrate that the exaction was directly caused by the misapplication of a statute or regulation. Norman , 429 F.3d at 1095

- 96. P laintiff s must also establish that the statute or provision causing the exaction provides for a return of the money unlawfully exacted, either by its express terms or by necessary implication, when the statute or provision is violated. Id. at 1095

- 96 (citing Cyprus Amax Coal Co. v. United States , 205 F.3 d 1369, 1373 (Fed. Cir. 2000)). And so, to assert a valid illegal exaction claim, plaintiff s must show that: ( 1) they

“ [ ha ve] paid money over to the government , directly or in effect ; ” (2) the exaction was directly caused by the mis application of a provision of the Constitution, a statute or a regulation ; and (3) the violated law provides for “a return of [the] money unlawfully exacted.” Norman , 429 F.3d at 1095

- 96 (citations omitted); see also Aerolineas Argentinas , 77 F.3d at 1572

- 73. In addition, this Court has recognized illegal exactions that are direct, as well as illegal exactions that are “in effect.” Aerolineas Argentinas , 77 F.3d. at 1573. A direct illegal exaction occurs when money is paid directly to the government as a resu lt of the application of a statute or a regulation. Id .; see also Casa de Cambio Comdiv , 48 Fed. Cl. 137 at 144

- 45. By contrast, an “in effect” illegal exaction may occur when the government requires a plaintiff to make a payment on its behalf to a third

- party or when the government exacts property which it later sells and for which it receives money

. Aerolineas Argentinas , 77 F.3d at 1573

- 74 (citing Clapp v. United States , 12 7 Ct. Cl. 505, 512

- 13 (1954)); Bowman v. United States , 35 Fed. Cl. 397, 4019 (1 996) (stating that “cases such as the instant one

— where the [g]overnment exacts property which it later sells and for which it receives money

— must necessarily qualify for consideration under the established illegal exaction jurisdiction”).

E. Relevant USPTO S tatutes A nd Regulations

P ursuant to title 35, United States Code, s ection 132(a) , the USPTO must notify a patent applicant “ [w]henever, on examination, any claim for a patent is rejected, or any objection or requirement made .” 35 U.S.C. § 132(a). Section 132(a) further requires that the USPTO s tate

“ the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application .” Id

. If after receiving such information the patent applicant “ pers ists in his claim for a patent . . . the application shall be reexamined. ” Id

. In addition , t he USPTO ’s regulations define when notice to applicants is required and what information shall be p rovided to the applicant

. 37 C.F.R. § 1.104. The relevant regulation require s that patent applicant s “ be notified of examiner’s action ” and that the USPTO issue an O ffice action, stating the reasons for the adverse action and providing “ such information or references

. . . as may be useful in aiding the applicant

. . . to judge the propriety of continuing the prosecution.” I d

. IV. DISCUSSION The government has moved to dismiss plaintiffs’ amended complaint for lack of subject

matter jurisd iction and for failure to state a claim upon which relief may be granted, pursuant to RCFC 12(b)(1) and RCFC 12(b)(6). See Def. Mot. For the reasons set forth below, the Court grants the government’s motion to dismiss

. A. Plaintiff eVideo Owners Lacks Standing To Bring Its Claim As an initial matter, plaintiff eVideo O wners lacks standing to pursue its claim because eVideo Owners has never owned any of the patent applications at issue in this matter

. As established above, plaintiffs must demonstrate: (1) injury in fact ; (2) a causal connection between the injury and the conduct complained of ; and (3) that it is “‘ likely, ’ as opposed to merely

‘ speculative, ’ that the injury will be ‘ re dressed by a favorable decision ’” to establi sh sta nding. Lujan , 504 U.S. at 560

- 61 (quoting Simon , 426 U.S. at 38, 43); Pl. Opp. at 20 n.6.10 In its motion to dismiss, the government argues that eVideo Owners lacks standing to bring this action , because eVideo Owners has never owned DiDomenico Patent Application 1 or DiDomenico Patent Application 2 . Def. M ot. at 4. In this regard, t he government further argues that another entity

− eVideo, Inc orporated

− is the owner of the se patent applications

. Id

. P laintiffs do not dispute that eVideo Owners never o wned , n or served as an assignee of , DiDomenico Patent Application 1 or DiDomenico Patent Application 2 . Pl. Opp

. at 19

- 20

. 2 It is also without dispute that eVideo O wners does not own any of the other patent applications at issue in this

case. See generally Am. Compl

. Given th is, eVideo Owners simply could not have suffered an y injury related to the processing of the patent applications at issue in this case

. See Lujan , 504 U.S. at 560

- 61. And so, eVideo Owners lacks standing to bring its claim

. RCFC 12(b)(1).

B. Plaintiffs Fail To Establish An Implied

- In

- Fact Contract The Court must dismiss the remaining plaintiffs’ breach of contract claim because
p laintiffs have not establish ed the existence of an implied

- in

- fact contract with the United States. RCFC 12(b)(1) and 12(b)(6)

. It is well established that p laintiff s bear the burden of proving the existence of a n express or implied contract with the United States

. See D & N Bank , 3 31 F.3d at 1376. To satisfy this burden, plaintiffs must allege “ a mutual intent to contract, including an offer, an acceptance, and consideration. ” Trauma Serv. Grp. , 104 F.3 d at 1326. P laintiffs must also show that the government representative who entered into the contract on behalf of the United States had the authority to contractually bind the government . Id. In addition, this Court has long recognized that t he Court’s Tucker Act jurisdiction does not exte nd to contracts that are implied in law. Hercules, Inc. , 516 U.S. at 423; Id. at 1324; Lion Raisins , 54 Fed. Cl. at 431

. And so, the Court does not possess subject

- matter jurisdiction to consider claims based upon a n implied

- in

- law contract

. Id

. T he C ourt must dismiss plaintiff s ’ breach of contract claim here, because p laintiffs allege th at they have entered into implied

- in

- law

− rather than implied

- in

- fact

− contract s with the United States

. In the amended co mplaint, plaintiffs allege that they entered into an implied

- in

- fact

2 P laintiffs attach a document styled as an assignment of rights and reversion agr eement, dated March 27, 2001, to their opposition to the government’s motion to dismiss. Pl. Opp. at Ex. 3. In that document, Dr. DiDomenico assigns his ownership rights in DiDomenico Patent Application 1 and DiDomenico Patent Application 2 to eVideo, I ncorporated. Id . Plaintiffs acknowledge that eVideo, Incorporated dissolved in 2009. Pl. Opp. at 20.11 contract with the United States each time that plaintiffs submitted a patent application to the USPTO . Am. Compl. at ¶ 74; Pl. Opp. at 5

- 8. In this regard, plaintiffs contend that the USPTO breached these implied

- in

- f act contracts by failing to notify plaintiffs of the fact that the ir patent applications had been referred to the S.A.W.S. program. Am. Compl. at ¶ 41; Pl. Opp. at 8, 10, 17.

A plain reading of the amended complaint makes clear that plaintiffs rely upon the USPTO’s notice statute and its implementing regulation to establish th e existence of their alleged
contract s with the government. Am. Compl. at ¶ 64; see also Pl. Opp. at 5

- 6, 9

- 10

. In th is regard, plaintiffs state in the amended complaint that they and other patent applicants “were not notified, in accordance with 35 U.S.C. § 132(a)

. . . [about the ] reasons for a rejection, or objection or requirement associated with the S.A.W.S. designation [of their patent applications] .” Am. Compl. at ¶ 63 (emphasis supplied)

. Plaintiffs further state that they “were denied notice under 35 U.S.C. § 132(a) and 37 C.F.R. § 1.104(a) (2) ” prior to paying the official fees and attorney’s fees necessary to prosecute their patent applications after the referral to the S.A.W.S.
program

. Id . at ¶ 64. In addition, in their opposition to the government’s motion to dismiss , plaintiffs also contend that : 35 U.S.C. §132(a) sets a mandatory performance condition that is incumbent upon the USPTO for its fulfillment of the implied

- in

- fact contracts between patent applicants and the USPTO. Breaches by the USPTO arose in the USPTO’s intentional omissions and, in some cases, outright refusals to notify Plaintiffs of the S.A.W.S. program designation applied to their patent app lications. Notification to patent applicants of any type of objection and/or rejection by the USPTO during the examination process of a patent application is mandated by 35 U.S.C. §132(a) and 37 C.F.R. §1.104(a)(2). Pl. Opp. at 5

- 6

. This Court has long recognized that “ a duty imposed by law [does] not create a contract within the Tucker Act jurisdiction of the [C]ourt.” See Lion Raisins, Inc. , 54 Fed. Cl. at 432; see also City of Cincinnati v. United States , 153 F.3d 1375, 1377 (Fed. Cir. 1998) (“Implied

- in

- fact contracts, which are within the jurisdiction of the Court of Federal Claims, differ significantly from implied

- in

- law contracts, which impose duties that are deemed to arise by operation of law and are outside the jurisdiction of the Court of Federal Claims.”)

. Here , it is clear that plaintiffs point to a duty that arises by operation of law to establish the alleged contracts with the United12 States

. See 35 U.S.C. § 132(a); 37 C.F.R. § 1.104(a)(2). Such a duty cannot create a n implied

in

- fact contract that would fall within the Court’s jurisdiction under the Tucker A ct. Lion Raisins , 54 Fed. Cl. at 432. A nd so , the Court must dismiss plaintiffs’ breach of contract claim for lack of subject

- matter jurisdiction

. RCFC 12(b)( 1 ). 3

C. The Court Must Also Dismiss Plaintiffs’ Illegal Exaction Claims Plaintiffs similarly fail to establish that the Court may entertain their illegal exaction claims. And so, for the reasons discussed below, the Court must dismiss these claims pursuant t o RCFC 12( b )(1) and 12(b)(6).

1. The Court Does Not Possess Jurisdiction To Consider Plaintiffs’ Illegal Exaction Claim Regarding The Payment Of Official Fees As an initial matter, t he Court does not possess jurisdiction to consider plaintiffs’ illegal

exac tion claim related to the ir payment of official fees to the USPTO. I n this regard, i t is well established that a n illegal exaction claim exists whe n a “‘plaintiff has paid money over to the [g]overnment, directly or in effect, and seeks return of all or part of that sum’ that ‘was improperly paid, exacted, or taken from the claimant in contravention of the Constitution, a statute, or a regulation. ’ ” Aerolineas Argentinas , 77 F.3d at 1572

- 73 (quoting Eastport S.S. Corp , 372 F.2d at 1007). The United States Court of Appeals for the Federal Circuit has also held that to assert a valid illegal exaction claim, plaintiff s must show that: (1) they “ [ ha ve] p aid money over to the government, directly or in effect ; ” (2) the exaction was directly caused by the misapplication of a provision of the Constitution, a statute, or a regulation ; and (3) the violated law provides for “a return of [the] money unlawfully e xacted.” Norman , 429 F.3d at 1095

- 96 (citations omitted); see also Aerolineas Argentinas , 77 F.3d at 1572

- 73

. 4

3 F or the same reason, the Court must also dismiss plaintiffs ’ breach of contract claim s for failure to state a claim pursuant to RCFC 12(b)(6).

4 In the amended complaint, p laintiffs cite to 35 U.S.C. § 132(a), 37 C.F.R. § 1.104(a)(2) and 37 C.F.R. § 1.17 to establish jurisdiction. Am. Compl. at ¶ 16

. But, none of these provisions “mandate compensation for damages sustained as a result of the breach of the duties they impose .” Fisher v. United States , 402 F.3d 1167, 1173 (Fed. Cir. 2005)

. Plaintiffs also cite to various USPTO’s fee regulations set forth in 37 C.F.R. §§ 1.16, 1.17, 1.18, 1.19, 1.20, 1.445, 1.492 and 1.482

. Pl. Supp. at 1; Pl. Resp. to Def. Supp. at 1 . But, plaintiffs do not contend that the misapplication of these regulations caused the illegal exaction alleged in th e amended complaint

. And so, plaintiffs cannot rely upon these regulations to establish jurisdiction under the Tucker Act. Norman v. United States , 429 F.3d 1081, 1095

- 96 (Fed. Cir. 2005)

.13 Plaintiffs fail to establish that the Court possesses jurisdiction to consider their illegal exaction claim to recover official fees in this case , because they do not show that the alleged misapplication of the USPTO’s notice statute and its implementing regulation directly caused the illegal exaction

. Norman , 429 F.3d at 10 96. In the ir supplemental briefs , p laintiffs argue that an i llegal exaction has occurred in this case , because they might have taken a different approach to the prosecution of the patent applications had plaintiffs been notified of the referral to the S.A.W.S. program

. 5 Pl. Supp. at 3. P laintiffs further argue that one or more of the different approaches that they might have taken could have reduced the amount of the official fees paid to the USPTO

. I d . at 4

. But, plaintiffs also acknowledge that , had they actually been notified of the referral to the S.A.W.S. program , they may not have ceased the prosecution of their patent applications

. See Pl. Supp. at 3; Def. Resp. to Pl. Supp. at 5; Pl. Rep. to Supp. at 2. In fact, four of the five options that plaintiffs outline in their briefs to show how they might have prosecut ed their patent applications differently involve continu ing with the prosecution of the se patent applications

− and apparently paying the official required fees for doing so . Pl. Supp. at 3. Given this, plaintiffs have simply not shown h ow the alleged misapplication of the USPTO’s notice statute and its implementing regulation could have directly resulted in the illegal exaction of the official fees paid to process their patent applications

. Norman , 429 F.3d at 1096

. And so , plaintiffs have not satisfied the jurisdictional requirement under Norman to show that the violation of these notice provisions directly cause d the illegal exaction alleged in this case. Id .; RCFC 12(b)(1).

P laintiffs also fail to establish that the Cou rt possess es jurisdiction to entertain their illegal exaction claim related to official fees because the USPTO’s notice statute and implementing regulation do not provide for the return of money unlawfully exacted. Id. (citing Cyprus Amax Coal Co. , 205 F. 3d at 1373). As discussed above, an illegal exaction claim brought under the Tucker Act must also pertain to a statute or regulation that if violated provide s for the “return of money unlawfully exacted.” Norman , 429 F.3d at 109 5 (“ a claimant must demonstrate that the statute or provision causing the exaction itself provides . . . that ‘ the remedy

5 Plaintiffs also allege a substantive due process claim in the amended complaint. Am. Compl. at ¶¶ 27 , 68

- 74 . This Court has long recognized that substantive due process clai ms do not fall within the limited jurisdiction of this Court. United States v. Connolly , 716 F.2d 882, 887 (Fed. Cir. 1983)

. And so, the Court does not possess jurisdiction to entertain that claim. RCFC 12(b)(1).14 for its violation entails a ret urn of money unlawfully exacted’” ( quoting Cyprus Amax Coal Co. , 205 F.3d at 1373 ) (emphasis supplied ))

. In the amended co mplaint, p laintiffs allege that the USPTO violated 35 U.S.C. § 132 (a) and 37 C.F.R. § 1.104 (a)(2) . Am. Compl. at ¶¶ 42, 64. But, neither of these notice provisions expressly , or by necessary implication , provide for “a return of money unlawfully exacted. ” 35 U.S.C. § 132(a) ; 37 C.F.R. § 1.104(a)(2) ; see also Norman , 429 F.3d at 1095

. And so, plaintiffs have not established that the Court possesses jurisdiction to consider their illegal exaction claim with respect to the payment of official fees

. Id. at 1095

- 96 (citing Cyprus Amax Coal Co. , 205 F.3d at 1373). 6

2. Plaintiffs Do Not Allege A Plausible Illegal Exaction Claim Regarding The Payment Of Attorney’s Fees

T he Court must also dismiss plaintiffs’ illegal exaction claim related to payment of attorney’s fees for failure to state a claim. In th e amended complaint, plaintiffs allege that the USPTO illegally exacted certain fees that plaintiffs paid to their attor neys in connection with the prosecution of their patent applications. Am. Compl. at ¶¶ 42, 64, 72

. Because this claim involves the payment of money to plaintiffs’ attorneys, rather than to the government, the Court construes plaintiffs’ claim to be a cla im involving an illegal exaction “in effect .” See Aerolineas Argentinas , 77 F.3d at 1573

- 74. It is well established that to allege a plausible claim of an illegal exaction in effect, plaintiffs must show either that the government requested the payment o f these attorney’s fees, or that the government benefitted from the payment of the fees. Id .; see also Bowman , 35 Fed. Cl. at 401

. Plaint iffs make no such showing here

. Rather, the amended complaint makes clear that the payment of these fees was at the behest of, and for the benefit of, plaintiffs in the prosecution of their patent applications. Am. Compl. at ¶ 64, Prayer for Relief ; s ee Aerolineas Argentinas , 77 F.3d at 1573

- 74. Given this, plaintiffs s imply do not state a plausible illegal exaction claim with respect to the payment of attorney’s fees. And so, t he Court must dismiss plaintiff s ’ illegal exaction claim related to these fees for failure to state a claim

. RCFC 12(b)(6)

.

6 Because the Court dismisses plaintif fs’ illegal exaction claim related to the payment of official fees upon other grounds , the Court does not reach the issue of whether dismissal of this claim is also warranted due to the fact that the Court’s Tucker Act jurisdiction is displaced by the stat utory and regulatory scheme for refunding official fees provided for in 35 U.S.C. § 42(d) and 37 C.F.R. § 1.26. Def. Mot. at 13 ; see also 35 U.S.C. § 42(d) ; 37 C.F.R. § 1.26.15 D. Plaintiffs’ Motion For Oral Argument Is Moot

P laintiffs have also filed a motion for oral argument. See Pl. Mot. for Oral Argument

. Because the Court has determined that dismissal of this matter is warranted for lack of subject

matter jurisdiction and for failure to state a claim upon which relief may be granted , the Court den ies plaintiffs ’ motion as moot

. See, e.g ., Wojtczak v. United States , No. 12

- 449C, 2012 WL 4903025, at *4 (Fed. Cl. Oct. 17, 2012) (“Because plaintiff . . . has not raised allegations over which this court has jurisdiction, the court denies these motions as moot .”).

V. CONCLUSION In sum, when reading the amended complaint in the light most favorable to plaintiffs and draw ing all reasonable inferences in plaintiffs’ favor, the Court must conclude that dism issal of this case is warranted.

P laintiffs have simply not met their burden to show that the Court possesses jurisdiction to consider their claims. It is without dispute that plaintiff eVideo Owners never owned any of the patent applications at issue in this matter. And so , eVideo Owner s lacks standing to bring its claim. It is similarly without dispute that plaintiffs rely upon the USPTO’s notice statute and its implementing regulation to show existence of their alleged contracts with the government and that the Court does not possess jurisdiction to consider claims based upon such implied

- in

- law
contracts.
T he Court is also without jurisdiction to consider plaintiffs’ illegal exaction claim to recover official fees, because plaintiffs have not demonstrated that the all eged misapplication of the USPTO’s notice statute and regulation directly caused the illegal exaction alleged by plaintiffs, or that these notice provisions provide for the return of money

. In addition, plaintiffs fail to state a plausible illegal exactio n claim with respect to the payment of attorney ’ s fees , because they cannot show that the government requested , or benefitted from , the payment of the se fees

.16 And so, f or th e foregoing reasons, the Court GRANTS defendant’s motion to dismiss and DENIES , as moot , plaintiff s ’ motion for oral argument

. The Clerk is directed to enter judgment accordingly

. Each party to bear its own costs.
IT IS SO ORDERED

.

s/ Lydia Kay Griggsby LYDIA KAY GRIGGSBY Judge