## United States Court of Appeals for the Federal Circuit

05-1204

CATHERINE LACAVERA, Plaintiff-Appellant,

v.
JON W. DUDAS, Under Secretary of Commerce for Intellectual Property and Director of the United States Pat ent and Trademark Office, Defendant-Appellee.

Catherine C. Lacavera , of San Francisco, California, pro se. John M. Whealan , Solicitor, Office of the Solici tor, United States Patent and Trademark Office, of Arlington, Virginia, argu ed for defendant-appellee. With him on the brief were Sydney O. Johnson, Jr. and James R. Hughes , Associate Solicitors. Appealed from: United States District Court for the District of Columbia Judge John D. Bates

## United States Court of Appeals for the Federal Circuit

05-1204

CATHERINE LACAVERA, Plaintiff-Appellant,

v. JON W. DUDAS, Under Secretary of Co mmerce for Intellectual Property and Director of the United States Patent and Trademark Office, Defendant-Appellee.

__________ ________________ DE CIDED: February 6, 2006

__________________________ Before NEWMAN, MAYER, and GAJARSA, Circuit Judges

. MAYER, Circuit Judge

. Catherine Lacavera appeals t he judgment of the United States District Court for the District of Columbia denying her motion for summary judgment and granting summary judgment in favor of the United St ates Patent and Trademark Office (“PTO”). Lacavera v. Toupin , Civ. Action No. 03-14 69 (D.D.C. Nov. 30, 2004). ∗ Because the PTO’s decision to grant Lacaver a limited recognition was cons istent with it s regulations and supported by the record, its regulations do not exceed the statutory authority, and it did not deny Lacavera equal protection, we affirm.

∗ During the pendency of this appeal, at the PTO’s request and with Lacavera’s consent, Jon W. Dudas, Director of the PTO, was substituted for James Toupin, PTO General Counsel , as the defendant-appellee.Background The PTO has statutory author ity to regulate attorney pr actice before it purs uant to 35 U.S.C. § 2(b)(2)(D) (2000), which provides: the [PTO] may establish regulations, not inconsistent with law, which . . . may govern the recognition and conduct of . . . attorneys . . . representing applicants or other parties before the Office, and may require them . . . to show that they are of good mora l character and reputation and ar e possessed of the necessary qualifications to render to applicants or other persons valuable serv ice, advic e, and assistance in t he present a tion or prosecution of their applic ations or other business before the Offic e

. . . . From this authority, the PTO has issued regulations to govern the recognition of attorneys. Under 37 C. F.R. § 10.7(a)(2) (2003), ∗∗ in order to be registered, an indiv i du a l must establish that she is “[o]f good moral c haracter and repute; . . . [p]ossessed of the legal, scientific, and technica l qualifications . . . and . . . otherwise competent to advise and assist applicants for patents.” An ali en “may be registered . . . provided . . . [r]egistration is not incons istent with the terms upon whic h the alien was admitted to, and resides in, the U n ited States .” 37 C.F.R. § 10.6(a). A liens for whom registration would be inconsistent with legal restrictio ns imposed on them may, nevertheless, be granted “limited recognition,” see id. § 10. 9(b), a status which allows them to practic e before the PTO, but confines t heir activities to those aut horized by the Immigration and Naturalization Service (“INS”), now the Un ited States Bureau of Citiz enship and Immigration Services. With respect to no nimmigrant aliens, the PTO has interpreted

∗∗ Effective July 26, 2004, the PTO c hanged it s regulations pertaining to the representation of others. See 69 Fed. Reg. 35428 (June 24, 2004) . As a result of these changes, sections 10.6, 10.7, and 10.9 were removed and reserved, and the applicable regulations governing the repres entation of others are now f ound at sections 11.6, 11.7, and 11.9. See 37 C. F.R. § 11 (2005). Sections 10.6, 10.7, and 10.9 were, however, the governing regulat i ons for Lacavera’s administrative action and her request for judicial review before the tria l court. Hence, in reviewing the trial court’s decision, we use sections 10.6, 10.7, and 10.9.

05-1204 2section 10.9(b) to dictate that they are not registered upon passing the patent examination, but rather are “given limited recognition under 37 CFR § 10.9(b) if recognition is consistent with the capacity of employm ent authorized by the INS.” See PTO, General Requirements Bulletin (Nov. 3, 1999) (“ GRB ”). Lacavera, a Canadian citi zen and nonim m igrant ali en, bega n working in the United States as an at torney in September 2001 pursuant to a one year TN visa, whic h permitted her only to prepare and prosecute pat ent applic ations at the New York office of the White & Case law firm. In January 2002, Lacav era began t he applic ation process for recognition before the PTO, and she suc c e ssfully passed the April 1 7 , 2002, patent examination. Becaus e of l egal r e strictions imposed by her visa, s he was granted limited recognition. Although Lacaver a’s vis a had a one y ear duration, she rec e ived timely
extens ions from the INS, and the PTO extended her limit ed recognition period accordingly

. At the time this appeal was fi led, Lacavera held an H- 1B visa and, with the appropriate INS authorization, had changed employers

. He r pres ent visa has a three year duration and lists preparat ion and prosecution of paten t applications f o r Google, Inc. as her sole employable activity. Her cu rrent limited recognition status is consistent with her work and time re strictions. After Lacavera was initially granted limited recognition on July 8, 2002, she challenged the PTO’s decis ion t o deny her fu ll registration. The PTO General Couns el denied her challenge, and Lacavera filed suit in the United States District Court for the District of Columbia under t he Administrative Proced ure Act, 5 U.S.C. §§ 702-706 (2000), claiming that (1) the PT O’s decision was incons istent with its regulations, (2) the regulations exceeded the author ity of their enabling statut e, and (3) the PTO ’ s dec i sion denied her equal protection. The trial co urt denied Lacavera’s motion for summary

05-1204 3judgment and granted summary judgment in favor of the PTO. Lacavera appeals, and we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). Discussion We review the trial court’s grant of summary judgment without deference, reapplying the same standard as the trial court. See Star Fruits S.N.C. v. United States , 393 F.3d 1277, 1281 (Fed. Cir. 2005). Summary judgment is appropriate “if the pleadings, depositions , answers to interrogat ories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law. ” Fed. R. Civ. P. 56(c). Apply i ng this standard, we reject each of Lacavera’s arguments. Lacavera c ontends that the PTO ’ s dec isio n was an abuse of disc retion because it improperly found full registra tion incons istent with the legal restrictions imposed by h e r visa. “An abuse of discretion occurs w here the decision is based on an erroneous interpretation of the law, on factual findings that ar e not supported by substantial evidenc e, or represents an unr easonable judgment in we ighi ng relevant f a ctors.” Star Fruits , 393 F.3d at 1281. The “scope of revi ew under [this] standard is narrow and a court is not to substitute its judgment for that of the agency.” Motor Vehicle Mfrs . Ass’n of U.S., Inc. v. State Farm Mut. Ins. Co. , 463 U.S. 29, 43 (1983) . Moreover, “[a]n agency’s interpretation of its own regulations is entitled to substantia l deference and will be accepted unless it is plai nly erroneous or incons is t ent with t he regulation.” Star Fruits , 393 F.3d at 1282. The PTO based its decision to grant limit ed recognition on the interpretation of section 10. 9(b) found in the GRB , an interpretation that we believe reasonably interprets that regulation, and on its conclus i on that Lacavera’s visa restrictions were inconsistent

05-1204 4with full recognition. Because granting Lac av era full registration would hav e given her PTO approval to do work in whic h she c oul d not lawfully engage, we find no abuse of discretion in the PTO’s determi nation that granting her full registration was inconsistent with the terms of her visa. Moreover, th e decision t o grant limited recognition with restrictions consistent with those in her visa correctly applied sections 10.6(a) and 10.9(b) and the GRB , and was, therefore, not an abuse of discr etion or ar bitrary and capricious. Lacavera next argues that the PTO ex c eeded the authority granted to it by
35 U.S.C. § 2(b)(2) in promulgating regulations that take into account visa restrictions when deter mining whether or not to grant full re cognition. Under 35 U.S.C. § 2(b)(2) , the PTO has broad authority to govern the conduct of proceedings before it and to govern the recognition and conduct of attorneys. See Stevens v. Tamai , 366 F.3d
1325 , 1333 (Fed. Cir. 2004) . Because the PTO is specifically c h arged wit h administering this statute, we analyze a challenge to t he st atutory authority of it s regulations under the Chevron framework. See United States v. Mead Corp. , 533 U.S. 218 (2001) ; Chevron U.S.A. Inc. v. Natural Res. Def. Counc il , 467 U.S. 837 (1984). First, we determine whether the statute speaks to the issue of the c hallenge, and if it is silent or ambiguous, we def er to the agenc y’s reas onable interpretation. See Ch evron , 467 U.S. at 842-43. In this cas e , the statute is silent as to whether the PTO may consider visa restrictions in determining whether or not t o grant recognition. However, the statute states that the PTO “may require [applicants] . . . to show that they ar e . . . possessed of the necess a ry qualific ations to render to applic ants . . . valuable service.” 35 U.S.C. § 2(b)(2)(D) (emphasis added). It was reasonable for the PTO to interpret leg a l

05-1204 5authority to render s e rvice as being a necessary qualific ati on. Accordingly, it was reasonable for the PT O to enact regulations that limit a n alien’s ab ility to pract i ce before it to those activities in wh ic h the alien may lawfully engage. Ther efore, the PTO did not exceed its statutory author ity in promulgating the r egulations in question. Finally, Lac avera contends that she was de nied equal protection. We review her claim under the rational review st andard. See Mathews v. Diaz , 426 U.S. 67, 78 (1976). Lacavera offered no evidenc e that she was treated unequally as compared to other aliens with visa restricti ons, and therefore she suffered no individual equa l protection violation. See City of Cleburne v. Clebur ne Living, Inc. , 473 U.S. 432, 439 (1985)

. Moreover, because the regulati ons in question are rationally related to a legitimat e government interest, e.g., minimizing the u nauthorized practice of law before the PTO and its attendant public harm, they do not vi olate the equal protec tion claus e and are, therefore, valid. Id. at 440. Conclusion Accordingly, the judgment of the United States District Court for the District of Columb ia is affirmed. COSTS No costs. AFFIRMED

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