FILED

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF VIRGINIA

MAR

12 2013

ALEXANDRIA DIVISION
CLf:HK, U.S. DISTRICT COURT

NAREN CHAGANT1

NO'-,!" OLK, VA

Plaintiffs,
v.

Civil Action No. J'. \%^ ^70-

1Ion. TERESA STANEK REA,

Under Secretary of Commerce for Intellectual Property and Acting

Director of the United States Patent and

Trademark Office,
Defendant.

COMPLAINT TO AUTHORIZE DIRECTOR OF THE UNITED STATES PATENT AND

TRADEMARK OFFICE TO ISSUE LETTERS PATENT

Plaintiffs Naren Chaganti, et al., allege as follows:

THE PARTIES

1. The plaintiffs are named inventors in a patent application that is rejected by the United
States Patent and Trademark Office as being unpatentable. 2. The defendant is the Honorable Teresa Stanek Rea, in her official capacity as Under

Secretary of Commerce for Intellectual Property and Acting Director of the United States and
Patent and Trademark Office.

JURISDICTION AND VENUE

3. This action is brought under the patent laws of the United States and therefore this Court has jurisdiction over this action pursuant to 28 U.S.C. 1331 and 35 U.S.C. 145. 4. Pursuantto 28 U.S.C. 1391(e) and 35 U.S.C. 145, the United States District Court
for the Eastern District of Virginia is the proper venue for this action.
5. Plaintiffs are the named inventors of two issued patents.

6. Plaintiffsare named inventors in certain other patent applications filed with the United States Patent and Trademark Office ("PTO" or "agency"), including the patent application that is
the subject of this Complaint, U.S. Patent Application Serial No. 09/634,725 ("the 725
application"), which was filed on August 5,2000.

7. In or about June 2010, the PTO allowed certain claims of the 725 application deeming

them patentable. After Plaintiffs removed certainoptional language from the claims, the PTO
rejected the claims on the grounds that it found additional relevant art that would render the
claims unpatentable.

8. In refusing to issue a patent for the claimsat issue, the PTO did not follow or apply the relevant regulatory and statutory provisions as elaborated by the case law. The PTO is in error in
not complying with the laws and guidelines during examination, review of the examiner's
actions, reconsidering the PTO's actions and in not following the precedent.

9. Upon receiving a final rejection, Applicants timely petitioned to the PatentTrial and
Appeals Board (PTAB), which affirmed the Examiner.

10. Applicants filed a Motion for Rehearing, which was denied on November 13,2012.

11. Applicants then filed a Notice of Appeal to the Federal Circuit with the PTO on
November 17,2012, but on February 4,2013 the Solicitor notified the Applicants of the

determination that the Notice did not comply with the regulations of the PTO, specifically, 37
C.F.R. 90.1-90.3.

12. On February 4,2013, Applicants requested the Director to grant an extension of time
to file a petition for review under 37 C.F.R. 90.3(c)(l)(ii).

13. On March 4,2013, pursuantto the authority granted under 37 C.F.R. 90.2(a)(1), the
DirectornotifiedApplicants of the Decision and Order extending the time to file a petition for
review until March 25,2013.

14. As this Complaintis filed within the period extended by the Director, this Court has
jurisdiction over the controversy.
CAUSE OF ACTION

(For Issuance of the 725 application as a Patent)

15. Plaintiffs incorporate the allegations from Paragraph nos. 1-14hereinby reference. 16. As amended, the 725 application has Claims45-61 ("pending claims")directed to
the subject matter "Online Personal Library". 17. The PTO rejected each of the pending claims under 35 U.S.C. 103(a) as unpatentable over a combination of references.

18. During prosecution, the Examiner did not apply the law correctly, in that:

a) the selected references were from areas of technical endeavor not analogous to the
instant claims;

b) a key reference relied upon expressly teaches away from the suggested
combination;

c) the suggested combination of references does not disclose all the elements or
features of the claimed subject matter; and

d) the Examiner did not show any legally valid reason to combine references from

disparate areas of technology and relied on hindsight using the claims as a

blueprint to piece together the references despite the scant relevance of the
references to the instant claimed subject matter.

19. Plaintiffs appealed to the Patent Trial and Appeals Board (PTAB) from the
examiner's rejections. The PTAB sustained the examiner on the rejections under 35 U.S.C.
103(a).

20. Plaintiffs requested rehearing of the PTAB's decision, which was denied.

21. Accordingly, Plaintiffs have exhausted their administrative remedies before the
agency, and now seek relief from this Court under 35 U.S.C. 145.

20. During the examination process and administrative review the agency made

reversible errors of fact and law in that the decision to reject the pending claims for obviousness is unsustainable under the facts of record or the applicable legal precedent. The agency's refusal to grant a patent on the pending claims is unsustainable as a matter of law and proper procedure.
21. Each of the pending claims is patentable and the 725 application satisfies all the applicable regulatory and statutory requirements

22. Therefore, the Court is requested to rule that the PTO should issue a patent on the
725 application for the claimed subject matter.
PRAYER FOR RELIEF

WHEREFORE, Plaintiffs respectfully request that Judgment be entered for Plaintiffs, and
that Plaintiffs be granted the following relief

(1) A decree that the PTO erred in concluding that the 725 application does not satisfy
the requirements for the grant of a patent under the Patent Laws;

(2) A decree that Plaintiffs are entitled to receive a U.S. patent for the subject matter
claimed in the 725 application:

(3) A decree authorizing the Director of the United States Patent and Trademark Office to
issue a patent for the subject matter claimed in the 725 application; and

(4) Such other and further relief as may be proper, just and equitable under the
circumstances.

Respectfully submitted.

Naren Chaganti Virginia State Bar # 42653 Attorney for Plaintiffs Naren Chaganti et al. 713 The Hamptons Lane Town and Country, MO 63017 (650)2487011 phone (314) 434-4663 fax Naren@Chaganti.com E-mail