Full text
No. 2026-1167
IN THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
ASHLESHA A. NESARIKAR, ANIKA A. NESARIKAR, ABHIJIT R.
NESARIKAR,
Plaintiffs-Appellants
v.
THE UNITED STATES PATENT AND TRADEMARK OFFICE, JOHN A.
SQUIRES, Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office,
Defendants-Appellees
On Appeal from the United States District Court for the Eastern District of Texas in
Case No. 4:25-cv-00423-JCB-JDL, District Judge J. Campbell Barker
Appellants’ Informal Appendix
Of:
Ashlesha A. Nesarikar, pro se;
Anika A. Nesarikar, pro se;
and Abhijit R. Nesarikar, pro se;
hereinafter “Inventors”
Table of Contents for Appendix
1DC: district court Doc.
FC: CAFC Doc.
i
Filed by
Description
DC 36
Appx0001
DC 37
Appx0007
FINAL JUDGMENT
DC 1
Appx0008 Plaintiffs
Complaint
DC 1-1
Appx0024 Plaintiffs
Exhibit A
DC 1-2
Appx0083 Plaintiffs
Exhibit B
DC 2
Appx0097 Plaintiffs
MOTION for Preliminary Injunction
DC 2-2
Appx0105 Plaintiffs
Exhibit C
DC 2-3
Appx0109 Plaintiffs
Exhibit D
DC 2-4
Appx0120 Plaintiffs
Exhibit E
DC 2-5
Appx0126 Plaintiffs
Exhibit F
DC 8
Appx0138 Plaintiffs
DC 10
Appx0143 Plaintiffs
DC 11
Appx0145 Defendants
Doc.1
Appx
Number
District
Judge
ORDER adopting Report and
Recommendations.
District
Judge
Plaintiffs Certification of Generative Artificial
Intelligence Usage
NOTICE Plaintiffs Notice of Defendants
Failure to Respond and Motion for Grant of
Preliminary Injunction
MOTION for Extension of Time to File
Response/Reply as to 2 MOTION for
Preliminary Injunction
Table of Contents for Appendix
1DC: district court Doc.
FC: CAFC Doc.
ii
Filed by
Description
Doc.1
Appx
Number
DC 12
Appx0150 Plaintiffs
DC 13
Appx0155
DC 16
Appx0159 Defendants
DC 16-1
Appx0196 Defendants
Exhibit A
DC 17
Appx0199 Defendants
DC 21
Appx0222 Plaintiffs
DC 21-1
Appx0235 Plaintiffs
Exhibit G
DC 21-2
Appx0281 Plaintiffs
Exhibit H
DC 21-3
Appx0284 Plaintiffs
Exhibit I
DC 26
Appx0287 Defendants
DC 26-1
Appx0295 Defendants
Exhibit A
DC 26-2
Appx0300 Defendants
Exhibit B
RESPONSE in Opposition re 11 MOTION for
Extension of Time to File Response/Reply as
to 2 MOTION for Preliminary Injunction
Magistrate
Judge
ORDER granting 11 Motion for Extension of
Time to File Response to 2 MOTION for
Preliminary Injunction
RESPONSE in Opposition re 2 MOTION for
Preliminary Injunction
MOTION to Dismiss and Supporting
Memorandum
REPLY to Response re 2 MOTION for
Preliminary Injunction
SUR-REPLY to Reply to Response re 2
MOTION for Preliminary Injunction
Table of Contents for Appendix
1DC: district court Doc.
FC: CAFC Doc.
iii
Filed by
Description
Doc.1
Appx
Number
DC 26-3
Appx0302 Defendants
Exhibit C
DC 28
Appx0304 Plaintiffs
DC 28-1
Appx0308 Plaintiffs
Exhibit J
DC 29
Appx0320 Plaintiffs
DC 30
Appx0322 Plaintiffs
DC 30-2
Appx0348 Plaintiffs
Exhibit K
DC 30-3
Appx0380 Plaintiffs
Exhibit L
DC 31
Appx0387 Defendants
DC 32
Appx0400 Plaintiffs
DC 32-1
Appx0412 Plaintiffs
Exhibit M
DC 33
Appx0416
REPORT AND RECOMMENDATION
RESPONSE in Support re 2 MOTION for
Preliminary Injunction, 27 MOTION for Leave
to File Response to Defendants New Evidence
NOTICE and Request for Speedy
Consideration
RESPONSE in Opposition re 17 MOTION to
Dismiss and Supporting Memorandum
REPLY to Response re 17 MOTION to
Dismiss and Supporting Memorandum
Defendants' Reply in Support of its Motion to
Dismiss
SUR-REPLY to Reply to Response re 17
MOTION to Dismiss and Supporting
Memorandum
Magistrate
Judge
Table of Contents for Appendix
1DC: district court Doc.
FC: CAFC Doc.
iv
Filed by
Description
Doc.1
Appx
Number
DC 34
Appx0424 Plaintiffs
DC 35
Appx0434 Defendants
Appx0440
Notice of Appeal
Appx0442
District Court Civil Docket
OBJECTION to 33 Report and
Recommendations
RESPONSE to 34 Objection to Report and
Recommendations
FC 1-2
(pg. 1-2)
District
Court
FC 1-2
(pg. 3-7)
District
Court
- 1 -
No. 4:25-cv-00423
Ashlesha A. Nesarikar et al.,
Plaintiffs,
v.
The United States Patent and Trademark Office et al.,
Defendants.
ORDER
Plaintiffs Ashlesha A. Nesarikar, Anika A. Nesarikar, and Ab-
hijit R. Nesarikar filed this action against defendants U.S. Patent
and Trademark Office (USPTO) and Coke Morgan Steward, Act-
ing Director of the USPTO, for allegedly violating the Due Pro-
cess clause of the Fifth Amendment, the Paperwork Reduction
Act, and 35 U.S.C. §§ 123(e), 132. Doc. 1. The case was referred
to a magistrate judge.
Defendants filed a motion to dismiss plaintiffs’ claims pursu-
ant to Federal Rule of Civil Procedure 12(b)(1). Doc. 17. The mag-
istrate judge issued a report and recommendation that all of plain-
tiffs’ claims be dismissed without prejudice for lack of standing.
Doc. 33. Plaintiffs objected to the report, primarily contending
that they maintain proper standing to bring their claims. Doc. 34.
Defendants responded. Doc. 35.
The court reviews the objected-to portions of a report and rec-
ommendation de novo. 28 U.S.C. § 636(b)(1); Fed. R. Civ. P.
72(b)(3). In conducting a de novo review, the court examines the
entire record and makes an independent assessment under the
law. See Alexander v. Verizon Wireless Servs., L.L.C., 875 F.3d 243,
249 (5th Cir. 2017).
I. Plaintiff’s first objection
Plaintiffs first object that the magistrate judge disregarded
plaintiffs’ sur-reply (Doc. 32), that was filed the same day the
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report was published, and their reply for their motion for a pre-
liminary injunction (Doc. 21). Doc. 34 at 2. For one, it was not
error for the magistrate judge not to refer to a reply brief on plain-
tiffs’ motion for a preliminary injunction—a motion that was not
the basis of the report and recommendation. Further, plaintiffs’
mere speculation that the magistrate judge did not consider Doc.
21 is not grounds for error. In addition, plaintiffs do not identify,
and the court cannot ascertain on independent review, which spe-
cific portions of Docs. 21 or 32 would have materially altered the
report’s conclusions. Thus, plaintiffs’ first objection is overruled.
II. Plaintiff’s second objection
Second, plaintiffs object to the report’s conclusion that they
lack standing to bring their claims. Doc. 34 at 2. Standing has
three elements:
(1) “the plaintiff must have suffered an injury in fact—the
invasion of a legally protected interest that is (a) concrete
and particularized and (b) actual or imminent, not conjec-
tural or hypothetical”;
(2) “that injury must be fairly traceable to the defendant's
challenged conduct”; and
(3) “it must be likely, as opposed to merely speculative,
that the plaintiff's injury will be redressed by a favorable
judicial decision.”
Texas v. U.S. Dep’t of Homeland Sec., 756 F. Supp. 3d 310, 337
(E.D. Tex. 2024) [DHS] (citing Lujan v. Defs. of Wildlife, 504 U.S.
555, 560 (1992)).
Plaintiffs contend that because there is a presumption under
federal law that inventors of a patent are the patent’s “owners,” it
is defendants’ burden to rebut that presumption with evidence of
an assignment of all rights to the patent. Doc. 34 at 2. But it is the
burden of the party invoking jurisdiction—here, plaintiffs—to es-
tablish standing once a defendant has filed a motion to dismiss
under Rule 12(b)(1). DHS, 756 F. Supp. 3d at 337 (citing Clapper
v. Amnesty Int’l USA, 568 U.S. 398, 411–12 (2013)); see also
Case 4:25-cv-00423-JCB-JDL Document 36 Filed 10/01/25 Page 2 of 6 PageID #:
506
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Menchaca v. Chrysler Credit Corp., 613 F.2d 507, 511 (5th Cir.
1980).
Plaintiffs have admitted that they are, at a minimum, obligated
to assign their rights in patent application no. 18/069,288 (“’288
application”) to their former employers. Doc. 30 at 8–9. But as
the report appreciates, an “assignment” of a patent to a previous
employer can mean one of two things—automatic assignment or
a promise to assign the patent in the future. Omni MedSci, Inc. v.
Apple Inc., 7 F.4th 1148, 1152 (Fed. Cir. 2021). Plaintiffs leave the
court to only speculate whether the assignment to their previous
employers automatically assigned the rights to the ’288 applica-
tion or whether they maintained an interest in the patents when
they filed suit. And because “[w]hich type of assignment is in-
tended ‘depends on the contractual language,’” id.,—language
plaintiffs do not provide, plead, or include anywhere in their var-
ious filings—their standing to proceed with their allegations in-
volving the ’288 application is too speculative considering defend-
ants’ motion.
To be sure, plaintiffs assert that their assignment of patent ap-
plication no. 17/906,844 (“’844 application”), which “result[s]
from the same employment,” indicates that the ’288 application
is not an automatic assignment. Doc. 34 at 3. Although it is un-
clear as to whether plaintiffs reference the ’288 or ’844 applica-
tion, plaintiffs claim that the assignment’s language of “I hereby
sell and assign unto Shalaka A. Nesarikar . . . ,” does not create an
automatic assignment. Id.
For one, if plaintiffs allege that this language is associated with
the ’844 application, such an assignment has no bearing on the
effect of plaintiffs’ assignment of the ’288 patent. More im-
portantly, the contractual language that plaintiffs cite in their ob-
jections shows an automatic assignment—not an obligation to as-
sign. See, e.g., Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568,
1570, 1572 (Fed. Cir. 1991) (finding that if an employee “agrees to
grant and does hereby grant” patent rights, the employer’s rights
automatically vest when the invention was made); see also
Case 4:25-cv-00423-JCB-JDL Document 36 Filed 10/01/25 Page 3 of 6 PageID #:
507
Appx0003
- 4 -
PerDiemCo, LLC. v. IndusTrack LLC, No. 2:15-cv-00727, 2016
WL 6534524, at *5 (E.D. Tex. Oct. 18, 2016) (concluding that lan-
guage stating, “I hereby assign . . .” creates an automatic assign-
ment), R. & R. adopted by, 2016 WL 6518994 (E.D. Tex. Nov. 2,
2016). Thus, plaintiffs’ inclusion of that assignment language—
whether associated with the ’288 or ’844 application—casts fur-
ther doubt on plaintiffs’ standing to assert causes of action for
rights associated with the ’288 application.
Aside from a lack of ownership interest, Plaintiffs have also
failed to show either a concrete financial or reputational interest
in the ’288 application. Plaintiffs do not object to the report’s con-
clusion that they lack a financial interest in the patent application.
Moreover, plaintiffs’ general contention that defendants’ discon-
tinued review of the ’288 patent “is harmful to [plaintiffs’] repu-
tation as pro se applicants” (Doc. 34 at 7) is insufficient, as the
court is unaware of any legal precedent that has found that harm
to a person’s reputation as a “pro se applicant” is enough to con-
stitute a concrete, particularized, and actual or imminent injury.
But see Pierre v. Vasquez, No. 20-51032, 2022 WL 68970, at *3 (5th
Cir. Jan. 6, 2022) (unpublished) (finding that a plaintiff suffered
sufficient reputational consequences of bearing “the sex offender
label.”). Further, because the court agrees that plaintiffs have not
adequately pleaded that they have sufficient ownership rights of
the ’288 application, the court cannot readily conclude that plain-
tiffs’ alleged harm is “particularized” to them. See id. (citing
Lujan, 504 U.S. at 560, n.1 (explaining that “particularized . . .
means that the injury must affect the plaintiff in a personal and
individual way” (cleaned up))).
Plaintiffs have failed to carry their burden that they main-
tained any legal, financial, or reputational rights to the ’288 appli-
cation. Thus, there is no concrete, particularized injury for the
court to redress, and it was not error for the report to conclude
that plaintiffs have not carried their burden in proving standing to
assert their claims.
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508
Appx0004
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III. Plaintiff’s third objection
Third, plaintiffs object to the report’s conclusion that plain-
tiffs lack standing to assert a claim under the Paperwork Reduc-
tion Act (“PRA”). Doc. 34 at 5. As other courts have recognized,
the PRA does not create a private right of action for alleged viola-
tions of the act, only a defense to an administrative or judicial en-
forcement action. See 44 U.S.C. § 3512(b); Smith v. United States,
No. 08-10288, 2008 WL 5069783, at *1 (5th Cir. Dec. 2, 2008)
(per curiam) (unpublished).
Here, because plaintiffs do not assert the protections of the
PRA as a defense, and the court agrees that the PRA does not cre-
ate a private right of action, it was not error for the report to rec-
ommend dismissing plaintiffs’ claims under the PRA. See, e.g.,
Smith, 2008 WL 5069783, at *1 (finding that the district court
correctly found a lack of subject-matter jurisdiction because the
PRA “provides a defense to administrative or judicial enforce-
ment actions, but does not create a private right of action for al-
leged violations of the statute”).
IV. Plaintiff’s fourth objection
Lastly, plaintiffs argues that the report failed to consider its
claim under 5 U.S.C. § 552a. Doc. 34 at 7. This claim, however,
cannot be found anywhere on the face of plaintiffs’ complaint. See
generally Doc. 1. Thus, because plaintiffs failed to plead a claim
under § 552a in their complaint, it was not error for the magistrate
judge to not consider it.
V. Conclusion
Having reviewed the magistrate judge’s report de novo, the
court overrules plaintiffs’ objections and accepts the report’s
findings and recommendations. The court grants defendants’ mo-
tion to dismiss (Doc. 17), denies plaintiffs’ motion for a prelimi-
nary injunction (Doc. 2) as moot, and dismisses this action with-
out prejudice. Any pending motions are denied as moot.
Case 4:25-cv-00423-JCB-JDL Document 36 Filed 10/01/25 Page 5 of 6 PageID #:
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So ordered by the court on October 1, 2025.
J. CAMPBELL BARKER
United States District Judge
Case 4:25-cv-00423-JCB-JDL Document 36 Filed 10/01/25 Page 6 of 6 PageID #:
510
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- 1 -
No. 4:25-cv-00423
Ashlesha A. Nesarikar et al.,
Plaintiffs,
v.
The United States Patent and Trademark Office et al.,
Defendants.
FINAL JUDGMENT
The court, having considered plaintiffs’ case and rendered its
decision by separate opinion, enters judgment that plaintiffs’
claims are dismissed without prejudice. The clerk of court is di-
rected to close the case.
So ordered by the court on October 1, 2025.
J. CAMPBELL BARKER
United States District Judge
Case 4:25-cv-00423-JCB-JDL Document 37 Filed 10/01/25 Page 1 of 1 PageID #:
511
Appx0007
FILED
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS APR 2 4 2025
SHERMAN DIVISION
ASHLESHA A. NESARIKAR,
ANIKA A. NESARIKAR, and
ABHIJIT R. NESARIKAR,
Plaintiffs,
-v-
THE UNITED STATES PATENT AND
TRADEMARK OFFICE and
COKE MORGAN STEWART, in her
official capacity as the Acting Director of
the United States Patent and Trademark
Office,
Defendants.
CLERK, U.S. DISTRICT COURT
) TEXAS EASTERN
)
)
)
)
)
) Case No.
)
)
)
)
)
)
)
COMPLAINT FOR A CIVIL CASE
PARTIES
1. Plaintiffs, Ashlesha A. Nesarikar, Anika A. Nesarikar, and Abhijit R. Nesarikar
(hereinafter Inventors), reside at 8025 Ambiance Way, Plano, TX 75024.
2. The United States Patent and Trademark Office (USPTO) is a federal agency
headquartered at 600 Dulany St. Alexandria, VA 22314.
3. Coke Morgan Stewart is sued in her official capacity as the Acting Director of the
USPTO. Acting Director Stewart s principal place of business is in Alexandria, VA.
JURISDICTION AND VENUE
4. This Court has subject matter jurisdiction over this action under 28 U.S.C. § 1331
because it is a case arising under the Constitution and laws of the United States and under
1
Case 4:25-cv-00423-JCB-JDL Document 1 Filed 04/24/25 Page 1 of 16 PageID #: 1
Appx0008
28 U.S.C. § 1361 because it is a case to compel an officer or employee of the United
States and an agency thereof to perform their duty.
5. The venue is proper under 28 U.S.C. § 1391(e) because Inventors reside in this district.
6. Defendants have waived sovereign immunity under the Administrative Procedure Act
(APA).
STATEMENT OF CLAIM
7. Inventors filed nonprovisional US Patent Application No. 18/069,288 (hereinafter 288)
on 12/21/2022 with the USPTO.
8. Inventors received a filing receipt dated 1/13/2023 accepting Inventors micro entity
certifications in ‘288. Inventors also received a filing receipt on 02/10/2023 indicating
that the application was ready for examination.
9. On the filing date of ‘288, the USPTO s regulations stated The Office will generally not
question certification of entitlement to micro entity status that is made in accordance with
the requirements of this section (37 CFR 1.29(h)). As of March 2025, the regulation
remained unchanged.
10. On 04/22/2024, the USPTO sent a Notice of Payment Deficiency (hereinafter Demand or
Demand288) stating this application is not in condition for examination (Ex. A pg. 3)
and [t]he application [‘288] has been removed from the examiner's docket (Ex. A pg.
4).
2
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Appx0009
11. Demand represents a change in policy to question certification of entitlement to micro
entity status and require evidence from applicants. The USPTO provided neither notice
nor rationale for the policy change to the public or Inventors.
12. Inventors were not provided with notice or opportunity to respond prior to the removal of
the application from the examination queue.
13. Inventors were harmed by the removal of 288 from the examination queue. The removal
delays due examination of the application. Further, Inventors were harmed by the
USPTO s abrupt and retroactive reversal alleging that Inventors failed to make the
application in condition for examination. The USPTO preemptively shifted the burden of
delay relating to Demand onto Inventors without providing notice or opportunity to
respond.
14. Demand alleged prima facie evidence that the submitted certification is in error and
referenced 37 CFR 1.29(a) (Ex. A pg. 3). Demand omitted reference to 37 CFR 1.29(b).
Demand disregarded 37 CFR 1.29(b) in alleging prima facie evidence that the submitted
certification is in error .
15. Demand relied on cherry picking”1 37 CFR 1.29(a) at the expense of 37 CFR 1.29(b).
1 Wikipedia: Cherry picking (https://en.wikipedia.org/wiki/Cherry_picking; accessed April 2025)
Cherry picking, suppressin evidence, or the fallacy of incomplete evidence is the act
of pointing to individual cases or data that seem to confirm a particular position while
ignoring a significant portion of related and similar cases or data that may contradict that
position, [emphasis in original]
3
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16. At the time of Demand, the Director lacked published and vetted provisions and
processes to duly and consistently evaluate responses under (II) in Demand, which stated
II. If applicant asserts that the certification of micro entity status was not made in error,
... (Ex. A pg. 3).
17. Demand in effect was limited to two options: either concede that “the [micro entity]
certification was erroneous (Ex A pg. 3), or contact “Patents Ombudsman (Ex. A pg.
4):
Questions about the contents of this notice should be directed to the Office of Patents
Stakeholder Experience (OPSE), Stakeholder Support Division (SSD), Patents Ombudsman at
571-272-5555.
18. The Patents Ombuds Office (hereinafter POO) states: “We assist applicants when normal
processing has stalled (Ex. B pg. 12). A party that routinely exercises unilateral
authority has no need to rely on an ombudsman; rather those dissatisfied with the
authority may seek an ombudsman. If the party exercises its unilateral authority while
invoking an ombudsman, it generally indicates the party s need to skirt due process,
suppress rational argument, and stall judicial review. Demand, in invoking POO as the
only available contact, indicated that the USPTO recognized its deficiency with respect to
duly and consistently evaluatin a rebuttal of the allegation of prima facie evidence and
that “normal processing regarding Demand is not available. At the time of Demand, the
deficiency precluded due evaluation of 37 CFR 1.29(b).
19. On 04/22/2024, a request for interview regarding Demand, including (II) in Demand, was
made to the examiner of 288 as identified by the USPTO s online system. On 04/23/24,
the examiner responded to the interview request, and stated in part: I am not examining
the application (Ex. A pg. 26).
4
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20. In a video conference on 04/26/2024, the examiner indicated that the USPTO did not
know exactly what was needed from Inventors when asked about the specific information
the USPTO needed in support of micro entity status under 37 CFR 1.29(b).
21. In response to an inquiry on 04/29/2024 about the procedure to deliver Inventors
response to Demand under 37 CFR 1.29(b), the examiner on 04/30/2024 directed
Inventors to the Office of Patent Legal Administration (OPLA) (Ex. A pg. 31). The
response confirmed that the USPTO recognized its deficiency with respect to duly and
consistently evaluating a response under (II) in Demand.
22. On 05/01/2024, Inventors, on the examiner s instructions, directed the inquiry to OPLA
(Ex. B pgs. 2 and 3). On 05/03/2024, Inventors had not received a response, and directed
the inquiry to the TC Group Director whose signature appeared on the Demand (Ex. B
pg. 2). On 05/06/2024, OPLA responded: The contact and phone number regarding the
notice is listed on the second page of the notice (Ex. B pg. 2). OPLA’s response
confirmed that the USPTO recognized its deficiency with respect to duly and consistently
evaluating a response under (II) in Demand.
23. On 05/06/2024, Inventors, in light of OPLA’s response, directed the inquiry to the POO
(Ex. B pgs. 5 and 6). On 05/07/2024, POO indicated that (II) in Demand is not available
to Inventors (Ex. B pg. 5) while evading Inventors’ inquiry (Ex. B. pg. 6). On the same
day, Inventors reiterated the inquiry (Ex. B pg. 5). On 05/10/2024, POO directed
Inventors to submit a Notification of Loss of Micro Entity Status (Doc Code:
MES.LOSS ) (Ex. B pg. 4). POO’s demand that Inventors act under (I) in Demand and
submit notification of loss of micro entity status indicates that the USPTO provisioned
only for concessions. POO’s response confirmed that the USPTO recognized its
5
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deficiency with respect to duly and consistently evaluating a response under (II) in
Demand. POO indicated to Inventors that there was no other option than to concede that
the [micro entity] certification was erroneous (Ex. A pg. 3).
24. The results of Inventors good faith efforts and inquiries indicate that the USPTO lacked
procedure regarding the change in policy and confirmed that the USPTO recognized its
deficiency with respect to duly and consistently evaluating a response under (II) in
Demand.
25. Demand violated The Paperwork Reduction Act, including 44 U.S.C. §3512 - Public
protection. Demand failed to display a valid OMB control number while requiring a
collection of information (Ex. A pgs. 2-4). The USPTO s actions flowing from Demand
penalized Inventors for allegedly failing to comply with the collection of information. For
example (Ex. A pg. 4):
If applicant does not timely respond
in accordance with (I) or (II) above, or is unable to ake one of these responses because icro
entity status was not established in good faith, then the application ill be abandoned.
26. The violation of 44 U.S.C. §3512 indicates exhaustion of administrative remedies
available at the USPTO for Inventors.
27. Joanne Burke left a voicemail for Inventors on 05/07/2024. Inventors called back on
05/08/2024. In a phone conversation on 05/08/2024, Burke identified herself as a USPTO
paralegal specialist who works on NFEE notices. Burke mentioned her call was
prompted by an internal email about Inventors NFEE notice, but refused to answer
Inventors’ questions about the internal email. On the phone call, Burke was informed that
Inventors needed to respond under (II) to Notices of Payment Deficiency, but the notices
6
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lacked guidance, including a Doc Code , about the procedure to respond under 37 CFR
1.29(b) in Patent Center. Burke suggested filing responses to the notices as miscellaneous
letters in the USPTO s Patent Center. Burke provided the address Attn: Office of
Petitions, Mail Stop Petitions, Commissioner for Patents, P.O. Box 1450 Alexandria, VA
22313-1450 for the submission.
28. On 05/23/2024, per Joanne Burke s guidance, Inventors filed a petition (hereinafter First
Petition or First Petition288) responding to Demand. On 08/08/2024, the USPTO sent a
decision (hereinafter First Decision or First Decision288) on First Petition. On
09/09/2024, Inventors filed a petition (hereinafter Second Petition or Second Petition288)
requesting review of First Decision. On 10/23/2024, the USPTO sent a decision
(hereinafter Second Decision or Second Decision288) on Second Petition. On
11/19/2024, Inventors filed a petition (hereinafter Third Petition or Third Petition288)
requesting review of Second Decision (Ex. A).
29. As an affiliate of the Office of Petitions of the USPTO, Shirene W Brantley, Attorney
Advisor, OPET, as the Director s representative (hereinafter Brantley), signed decisions
on Inventors’ petitions, including First Decision and Second Decision.
30. Brantley sent a notice of abandonment on 02/11/2025 for 288 (Ex. A pg. 58-59).
31. In a decision sent after abandonment on 03/06/2025 (hereinafter Refusal), Brantley
refused to address the Third Petition. (Ex. A pgs. 23-24).
32. Refusal precludes with finality remedy of the harms flowing from Demand and remedy
of the denial of due process within the USPTO.
7
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33. Brantley admitted to not addressing Inventor s evidence and Inventor’s argu ents based
on the evidence presented in the November 19, 2024 reply (Ex. A pg. 24). [T]he
November 19, 2024 reply is the duly filed petition referred to herein as Third Petition.
34. In the notice of abandonment, see petition decision mailed Oct 23, 2024 for details (Ex.
A pg. 59) indicates that Brantley claims to have had foreknowledge of Inventors’
11/19/2024 petition at the time of Brantley’s petition decision of 10/23/2024.
35. Brantley, by refusing to address the 11/19/2024 petition, at least evaded complying with
37 C.F.R. § 1.104(d)(2) by disregardin “Applicants respectfully request that Shirene
Brantley provide an affidavit or declaration setting forth specific factual statements and
explanations to support the personal knowledge in compliance with 37 C.F.R. §
1.104(d)(2) (Ex. A pgs. 18 and 19).
36. Brantley’s ruling that “[t]he November 19, 2024 reply ... will not be addressed (Ex. A
pg. 24) is unlawful.
37. In Refusal, Brantley erroneously required payment of extension fees under 37 CFR
1.136(a) for consideration of a duly filed petition.
38. Brantley’s ruling that [t]he November 19, 2024 reply has been entered into the
application, but will not be addressed on merits (Ex. A pg. 24) indicates exhaustion of
administrative remedies available to Inventors at the USPTO.
39. Brantley unlawfully invoked “cherry picked 1 provisions from: patent rules for petitions,
patent rules for office actions, and Office of Patents Stakeholder Experience (OPSE),
Stakeholder Support Division (SSD), Patents Ombudsman (see, e.g., Demand and Second
Decision).
8
Case 4:25-cv-00423-JCB-JDL Document 1 Filed 04/24/25 Page 8 of 16 PageID #: 8
Appx0015
40. Brantley s cherry picking 1 constitutes violation of due process.
41. Cherry picking 1 of provisions by the USPTO between patent rules for petitions and
patent rules for office actions discourages development of new technologies and violates
the rights of small businesses and inventors.
42. Demand failed to make a prima facie case. In response to First Petition and Second
Petition, the USPTO attempted to evade the failure by appending new allegations,
altering previous arguments, and making progressively expanding arbitrary and ad hoc
demands for evidence. In Demand and each of the USPTO s actions flowing from
Demand, the USPTO failed to provide reasoned analysis and a rational connection
between proven facts and the USPTO s actions.
43. Inventors stated in Third Petition (Ex. A pg. 18; also see Ex. A pg. 7 regarding First
Decision):
In addition to the foregoing, Shirene Brantley erred in failing to address
Inventors’ prior remarks regarding application 10165455. This includes at least
(see response of 09/08/2024 and 09/09/2024 for Applications)
To assist applicant in checking its records, the Office i providing ap licant with the a plication
numbers of ubli hed a lications an patents that name inventors Abhijit R. Ncsarikar of Plano,
TX an Dallas. TX. Ashlcsha A, Ncsariktir of Pl no, TX, and An ka A. Ncsarikar f Plano. TX.
10165455 ( bhijit R. Ncsarikar only)
Despite In entors earches after receiving Shirene Brantley s letter, Inve tors have not fo nd
application #10165455. Inventors, in good faith, conclude that ap lication #10165455, if it
exists, is not ublished. Shirene B antley s e ror undermines Inventors ability to respond to
Shirene Brantley s letter.
The failure constitutes a concession to Inventors’ arguments. Inventors traverse
Shirene Brantley’s reliance on unevidenced allegations regarding alleged
application 10165455 (e.g., regarding filing, assignment, publication, and
inventorship of alleged application 10165455). In light of Inventors’ previous
9
Case 4:25-cv-00423-JCB-JDL Document 1 Filed 04/24/25 Page 9 of 16 PageID #: 9
Appx0016
responses, Shirene Brantley further errs in maintaining the unevidenced
allegations, e.g.:
The August X, 2024 letter identifies other prior-filed applications that name at least one of the
three joint invento s. Ap lication 10165455 name only bhijit R. Nesarikttr as a joint in entor.
Shirene Brantley s alle ations regarding alleged application 10165455 are Shirene
Brantley s personal knowledge. The personal knowledge is not indicated by the
current application, not supported by evidence, and not identified in statute,
regulation, or executive order. Applicants respectfully request that Shirene
Brantley provide an affidavit or declaration setting forth specific factual
statements and explanations to support the personal knowledge in compliance
with37C.F.R. § 1.104(d)(2).
Brantley materially misrepresented (hereinafter First Misrepresentation) the alleged
publication of alleged application 10165455 in stating that the Office is providing
applicant with the applic tion numbers of published applications and patents (Ex. A pg.
7). A search on 09/05/2024 described 10165455 as “... not available. The number may
have been incorrectly typed, or assigned to an application that is not yet available for
public inspection (Ex. B pg. 9).
44. Brantley’s failure to provide an affidavit or declaration setting forth specific factual
statements and explanations to support the personal knowledge in compliance with 37
C.F.R. § 1.104(d)(2) (Ex. A pg. 18, lines 15-17) indicates exhaustion of administrative
remedies available at the USPTO for Inventors.
45. First Misrepresentation by Brantley indicates exhaustion of administrative remedies
available at the USPTO for Inventors.
46. Inventors stated in Third Petition (Ex. A pgs. 18-19)
10
Case 4:25-cv-00423-JCB-JDL Document 1 Filed 04/24/25 Page 10 of 16 PageID #:
10
Appx0017
In addition to the foregoing, Shirene Brantley argues that no assignment has
been recorded constitutes evidence of erroneous certification , which is Shirene
Brantley s personal knowledge. The personal knowledge is not indicated by the
current application, not supported by evidence, and not identified in statute,
regulation, or executive order. Applicants respectfully request that Shirene
Brantley provide an affidavit or declaration setting forth specific factual
statements and explanations to support the personal knowledge in compliance
with37C.F.R. § 1.104(d)(2).
Brantley materially misrepresented (hereinafter Second Misrepresentation) that no
assignment has been recorded constitutes “evidence of erroneous certification .
47. Brantley’s failure to provide an affidavit or declaration setting forth specific factual
statements and explanations to support the personal knowledge in compliance with 37
C.F.R. § 1.104(d)(2) (Ex. A pg. 19, lines 3-5) indicates exhaustion of administrative
remedies available at the USPTO for Inventors.
48. Second Misrepresentation by Brantley indicates exhaustion of administrative remedies
available at the USPTO for Inventors.
49. Inventors stated in Third Petition (Ex. A pg. 19)
In addition to the foregoing, Shirene Brantley errs in newly introducing alleged
requirements including, e.g.:
Applicants must provide evidence to su port the assertion that the inventors arc obligated lo
assign rights in a sufficient number of prior-filed a lications to a rior em loyer, such that the
a lication filing limit in 37 CFR 1.29(a)(2) was not excee e . Applicants must provide
evi ence of em loyment-related contractual r legal obligations to assign rights in ie p eviously
filed applications to a prior employer, A co y of n assignment or a copy of contract showing an
obligation to assign woul suffice.
[emphasis in original]
which is Shirene Brantley’s personal knowledge. The personal knowledge is not
indicated by the current application, not supported by evidence, and not identified
in statute, regulation, or executive order. Applicants respectfully request that
Shirene Brantley provide an affidavit or declaration setting forth specific factu l
11
Case 4:25-cv-00423-JCB-JDL Document 1 Filed 04/24/25 Page 11 of 16 PageID #:
11
Appx0018
statements and explanations to support the personal knowledge in compliance
with 37 C.F.R. § 1.104(d)(2).
Brantley materially misrepresented (hereinafter Third Misrepresentation) the micro entity
certification in USPTO Form PTO/SB/15A, which states under (2) APPLICATION
FILING LIMIT:
(2) APPLICATION FILING LIMIT - Neither the applicant nor the inventor nor a joint inventor has
been named as the in entor or a joint inventor on more than four previously filed U.S. patent
applications, excluding provisional applications and international ap lications un er the Patent
Cooperation Treaty (PCT) for which the basic national fee under 37 CFR 1 492(a) was not paid,
and also excluding patent applications for hich the applicant has assigne all ownership rights,
or is obligated to assign all o nership ri hts, as a result of the ap licant's previous employment.
50. Brantley s failure to provide an affidavit or declaration setting forth specific factual
statements and explanations to support the personal knowledge in compliance with 37
C.F.R. § 1.104(d)(2) (Ex. A pg. 19, lines 12-14) indicates exhaustion of administrative
remedies available at the USPTO for Inventors.
51. Third Misrepresentation by Brantley indicates exhaustion of administrative remedies
available at the USPTO for Inventors.
52. In First Decision, Brantley materially misrepresented (hereinafter Fourth
Misrepresentation) that a review of the other five applications on the above-identified
list of 12 applications and corresponding Office assignment records does not reveal any
evidence that the inventors have assigned or are under an obligation by contract or law to
assign all ownership rights in those applications to another entity/party (Ex. A pg. 8).
Inventors refuted misrepresentations, including Fourth misrepresentation, on 09/05/2024
in emails (Ex. A pgs. 49 and 54), on 09/06/2024 by fax (Ex. A pg. 52), and again in
Second Petition (Ex. A pgs. 46, 47, 49, 52, and 54), stating, e.g., Shirene Brantley erred
as assignment of application number 17906844 was recorded on 07/13/2023 and is
12
Case 4:25-cv-00423-JCB-JDL Document 1 Filed 04/24/25 Page 12 of 16 PageID #:
12
Appx0019
publicly accessible through the USPTO s website (reel/frame: 064245/0121) (Ex. B pg.
7).
53. UPSTO failed to provide proper notice to Inventors of relevant procedures, requirements,
and evidence relied upon by the USPTO. Inventors repeatedly requested (Ex. A pgs. 46,
47, 50, 53, and 55) restarted period for reply under MPEP 710.06 in light of the following
(Ex. A pgs. 50, 53, and 55):
1. as Inventors responded on 05/23/2024 with candor and good faith to the Notice of Payment
Deficiency mailed on 04/22/2024;
2. as Shlrene Br ntley s lett r (of 08/08/2024) alleges insuffici ncy of Inventors response of
05/ 3/2024 ba ed on ne allegation not previously res nted to In entors; and
3. as Shirene Brantley s letter dated 08/08/2024 contains material isrepresentation
The request was disregarded.
54. The material misrepresentations violate due process.
55. The failures to comply with 37 C.F.R. § 1.104(d)(2) indicate violations of due process.
56. Material misrepresentations by the USPTO discourage development of new technologies
and violate the rights of small businesses and inventors.
57. The failure of Demand to display a valid 0MB control number for a collection of
information and the resulting penalties imposed on Inventors are at least arbitrary,
capricious, an abuse of discretion, or otherwise not in accordance with law.
58. Brantley s cherry picking 1 is at least arbitrary, capricious, an abuse of discretion, or
otherwise not in accordance with law.
59. The material misrepresentations are at least arbitrary, capricious, an abuse of discretion,
or otherwise not in accordance with law.
13
Case 4:25-cv-00423-JCB-JDL Document 1 Filed 04/24/25 Page 13 of 16 PageID #:
13
Appx0020
60. The failures to comply with 37 C.F.R. § 1.104(d)(2) are at least arbitrary, capricious, an
abuse of discretion, or otherwise not in accordance with law.
61. Inventors have exhausted administrative remedies available at the USPTO.
62. Demand and the USPTO s actions flowing from Demand affected Inventors rights and
interests. For example, the USPTO denied Inventors right to examination of a duly filed
nonprovisional patent application, and consequently, the right to a patent on an invention.
Demand and the USPTO’s actions flowing from Demand further harm Inventors.
63. Demand and the USPTO’s actions flowing from Demand, combined with a lack of
procedural safeguards, erroneously deprived Inventors of their rights and interests and
imposed undue burden on Inventors. Further, the USPTO’s actions risk erroneous
deprivation of rights and interests of small businesses and inventors who need, assert, and
maintain patent fee discounts based on micro entity certifications.
64. Demand and the USPTO’s actions flowing from Demand were contrary to the
Gove ment’s interest. The erroneous deprivation of rights and interest discourages
development of new technologies and violates the rights of small businesses and
inventors. Further, Brantley’s ad hoc actions and requirements created administrative
burdens to the USPTO. For example, the lack of published and vetted provisions and
processes to duly and consistently evaluate responses under (II) in Demand resulted in
the need for multiple rounds of petitions, emails, and other communications across
multiple departments of the USPTO. The USPTO’s errors in addressing petitions, emails,
and other communications evidences the burden caused by the USPTO’s actions, or the
14
Case 4:25-cv-00423-JCB-JDL Document 1 Filed 04/24/25 Page 14 of 16 PageID #:
14
Appx0021
USPTO s willful disregard of Inventors good faith efforts to bring necessary facts to the
USPTO s attention, or both.
65. Economic barriers faced by inventors motivated Congress to provide for, and inventors to
certify, micro entity status. The same economic barriers deter micro entity applicants
from pursuing judicial review of administrative actions (e.g., decisions not on
patentability) by the USPTO. The USPTO has taken advantage of this fact in denying
Inventors due process through Demand and the USPTO s actions flowing from Demand.
66. Advancement in artificial intelligence (Al) is our national priority. To that end, the
executive and legislative branches have supported advancement of Al by small
businesses and inventors, for example, by lowering financial burden in securing patent
rights, by directing the USPTO to duly and consistently process patent applications, and
by directing the USPTO to actively assist small businesses and inventors. Inventors
applied for Al patents with the USPTO in good faith. However, the USPTO’s actions
flowing from Demand are an abuse of public trust, devoid of public benefit, and an
impedance to the national priority.
RELIEF REQUESTED
Inventors request the following relief:
1. Order the reversal of Notices of Payment Deficiency sent on 04/22/2024 in Inventors’
applications.
2. Order the Director to issue a written statement ratifying Inventors’ micro entity status for
the dates on which micro entity fees were paid in Inventors’ applications.
15
Case 4:25-cv-00423-JCB-JDL Document 1 Filed 04/24/25 Page 15 of 16 PageID #:
15
Appx0022
3. Order the reversal of adverse consequences arising out of the Notices of Payment
Deficiency, including payments made in excess of the micro entity fees due, in Inventor s
applications.
4. Prohibit Defendants from effectuating or aiding others in effectuating adverse
consequences arising out of the Notices of Payment Deficiency.
5. Order that petitions to the Director to reverse adverse consequences, including adverse
consequences to PTA (patent term adjustment) that Inventors identify as arising out of
the Notices of Payment Deficiency, be granted within 30 days without charge or fee.
6. Prohibit Defendants from any future actions in Inventors applications alleging erroneous
micro entity status.
7. Any other relief that the Court deems just and appropriate.
Date: April 23, 2025
Respectfully submitted,
Ashlesha A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
asedt0425@icloud.com
Anika A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
anedt0425@icloud.com
Abhijit R. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
edt0425@nesarikar.com
Inventors and Plaintiffs
16
Case 4:25-cv-00423-JCB-JDL Document 1 Filed 04/24/25 Page 16 of 16 PageID #:
16
Appx0023
146553J 8069288_2024-04-22_NFEE_001 2
146553_18069288_2024-04-22_NFEE_002 3
146553_18069288_2024-08-08_PETDEC 5
146553_18069288_2024-10-23_PETDEC 10
146553_18069288_2024-11-19_LET. 16
146553_18069288_2024-11-19_N417 21
146553_18069288_2025-03-06_PETDEC 23
146553_18069288_2024-05-23_LET._001 25
146553_18069288_2024-05-23_LET._002 26
146553_18069288_2024-05-23_LET._003 40
146553_18069288_2024-05-23_LET._004 42
146553_18069288_2024-05-23_N417 44
146553_18069288_2024-09-09_LET. 46
146553_18069288_2024-09-09_N417 56
146553_18069288_2025-02-11_ABN 58
Exhibit A
18/069288
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 1 of 59 PageID #:
17
Appx0024
United States P tent and Trademark Office
UNITED STATES DEPARTME T OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO.
FILING DATE
FIRST NAMED INVENTOR
ATTORNEY DOCKET NO.
CONFIRMATION NO.
18/069,288
12/21/2022
Abhijit R. Nesarikar
3954
146553 7590 04 22 2024
Abhijit R. Nesarikar, Ashlesha A. Nesarikar,
Anika A. Nesarikar
8025 Ambiance Way
Plano, TX 75024
ART UNIT
PULLIAM, CHRISTY ANN R
EXAMINER
PAPER NUMBER
2100
NOTIFICATION DATE
DELIVERY ODE
04/22/2024
ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceedin .
The time period for reply, if any, is set in the attached co munication.
Notice of the Office communication was sent electronically on above-indicated "Notific tion Date" to the
follo ing e-mail address(es):
ab@nesarikar.com
anika.nesarikar@utdallas.ed
nesari karas @ g ail .com
PTOL-90A (Rev. 04/07)
146553_18069288_2024-04-22_NFEE_001
2
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 2 of 59 PageID #:
18
Appx0025
United States Patent and Trademark Office
Commissioner for Patents
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
NOTICE OF PAYMENT DEFICIENCY
This notice is to infonn the applicant that the United States Patent and Trademark Office (USPTO)
has identified an apparent error in the entity status afforded the above-identified application.
Applicant is given TWO MONTHS fro the date of this Notice within which to respond to avoid
abandonment. Extensions of time may be obtained by filing a petition accompanied by the
extension fee under the provisions of 37 CFR 1.136(a).1
Applicant has submitted a certification of micro entity status based upon the gross income basis
and paid fees in the above-identified application based upon this certification. In order to qualify
for micro entity status under the gross income basis, 37 CFR 1.29(a)(2) requires the applicant to
certify [n either the applicant nor the inventor nor a joint inventor has been named as the inventor
or a joint inventor on more than four previously filed patent applications, other than applications
filed in another country, provisional applications under 35 U.S.C. 111(b), or international
applications for which the basic national fee under 35 U.S.C. 41(a) was not paid. As explained
in MPEP 509.04(a)(1)(B), an application still counts against this filing limit even if it has been
abandoned or patented, and even if it did not claim micro entity status. When this application was
filed, the applicant, the inventor, or a joint inventor was named on more than four previously filed _
j patent applications. This isprimafacie evidence that the submitted certification is in error because '
Uhe filing limit in 37 CFR 1.29(a)(2) was exceeded. Accordingly, the payments made in this ¦
application "based uponTfie apparently "err6nebus micfo ehfity certification are cleficTent
Because the deficient payments include one or more of the basic filing fee for utility under 37 CFR
rEl_6 a) the uti_lity_s_earch fee under 37 CFR 1.16(k and_the utility.exami_natio_n_fee_under_37 CFR
11.16(o), this application is not in condition for examination. In order to avoid abandonment,
[applicant must respond in one of two ways: i
I 1
1 . . .... 1
| I. If the certification was erroneous, the applicant must provide an itemization of the total'
i deficiency payment and pay the deficiency owed in accordance with 37 CFR 1.29(k). The;
"Notfficatroh of Loss of Enti lement to Micro Entity Status form (Form SB746O) may be
used to sub it the deficiency. This form is available at https:, 7uspto.gov/PatentFor s. The
current USPTO fee schedule may be viewed at https://www.uspto.gov/learning-and-
resources/fees-and-payment/uspto-fee-schedule.
FII. If applicant asserts that the certification of micro entity status was not made in error,[
i
1 All the rules cited in this Notice may be viewed in their entirety at
https:// w .uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf. For patent applications filed under 35 U.S.C.
111(a) undergoing prioritized examination (Track One), applicant is reminded that any request for an extension of
time, iiiclu ing an extension, of time for the purpose of tes oti itig to thi notice, w ll cause the a plication io be
ineligible for rther treatment under lire prioritized exa ination prograin. In ad ition, a request for an extension of
ti e prio t the grant of prioritize exa ination status will revent such status; from being gr nted. See MP.EP
708.02(b , sub-section (I)(B)(4).
146553_18069288_2024-04-22_NFEE_002
3
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 3 of 59 PageID #:
19
Appx0026
applicant must reply with an explanation and any necessary evidence that is sufficient to
rebut the vnra facie evidence of an erroneous certification. Applicant is reminded that the
reply must be made with candor and good faith under 37 CFR 1.56. Pursuant to applicant s
duties under 37 CFR 1.4 and 11.18, applicant should have m de a reasonable inquiry into
the facts before making the certification. It is these particular facts that applicant must
provide in order to rebut theprhnafacie case. Simply identifying the previously submitted
f certlfTcafidn'o r recertifying-would- not be suTficierit.-Appricahf is fe indedllfaf ft Ts-in the-i
| best position to perform an inquiry into whether the applicant, the inventor, or a joint ]
i inventor was named on more than four previously filed patent applications when this ,
] application was filed to determine whether an assertion of micro entity status in this 1
[ application is appropriate. !
Applicant is given TWO MONTHS from the mailing date of this Notice to file a response as
outlined above. Extensions of time are available under the provisions of 37 CFR 1.136(a).2 The
reInove3 from the examiner s docket (if assig ed) pendmg resolufion of the
i issues note herein, or expiration of thelime period set forth. If applicant does=not timely respond 1
in accordance with (I) or (II) above, or is unable to make one of these responses because micro j
i entity status was not established in good faith, then the application will be abandoned. ]
Only a registered practitioner authorized by the applicant or the applicant who is not represented
by a practitioner can sign a response or make changes to the application. Note that an applicant
who is a juristic entity must be represented by a registered practitioner. See 37 CFR 1.31. While
the Office cannot recommend a registered practitioner, the link below provides a searchable list of
registered practitioners: https://oedci.uspto.gov/OEDCR.
I
1 Questions about the contents of this notice should be directed to the Office of Patents '
i Stakeholder Experience (OPSE), Stakeholder Support Division (SSD), Patents Ombudsman at 1
] 571-272-5555. !
John Cottingham
TC Group Director, TC 2100
2 For patent applications filed under 35 U.S.C. 111(a) undergoing prioritized examination (Track One), applicant is
reminded that any request for an extension of time, mcludmg an extension of time for the ur ose of res onding i
this notice, will cause the application to be ineligible for further treatment under the prio itized examin tion
program. In ad ition, equest tor an exten ion of time p ior to the grant of ioritized examination status will
prevent such status fro bein granted. See MPEP 708.02(b), sub-section (1)(.B)(4).
2
146553_18069288_2024-04-22_N FEE_002
4
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 4 of 59 PageID #:
20
Appx0027
United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexa dria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO.
FILING DATE
FIRST NAMED INVENTOR
ATTORNEY DOCKET NO.
CONFIRMATION NO.
18/069,288
12/21/2022
Abhijit R. Nesarikar
4as-morphism
3954
146553 7590 08 08/2024
Abhijit R. Nesarikar, Ashlesha A. Nesarikar,
Anika A. Nesarikar
8025 Ambiance Way
Plano, TX 75024
EXAMINER
PULLIAM, CHRISTY ANN R
ART UNIT
PAPER UMBER
2100
NOTIFICATION DATE
DELIVERY MODE
08/08/2024
ELEC RONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached co unication.
N tice of the Office communic tion was sent electronically on above-indicated "Notification Date" to the
following e-m il address(es):
ab@nesarikar.com
anika.nesarikar@utdallas.edu
nesarikaras@gmail.com
PTOL- 0A (Rev. 04/07)
146553_18069288_2024-08-08_PETDEC
5
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 5 of 59 PageID #:
21
Appx0028
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
Commissioner for Patents
www.uspto.gov
In re Application of
Ncsarik r ct al.
Application No. 18/069,288
Filed: 21 Dec 2022
LETTER
For: Systems and Methods for Intelligent :
Awareness and Intent for Autonomous :
Ve icles :
The U.S. Patent and Trademark Office has received your reply on May 23, 2024 to the Notice of
Payment Deficiency mailed on April 22, 2024 ( Notice ) and it has been entered into the
application. The reply, however, is an insufficient response to the Notice for the reason(s) listed
below. A sufficient and persuasive reply ust be timely filed to prevent ABANDONMENT of
the above-identified application.
The period for reply continues to run from the date of the Notice mailed on April 22,2024.
As stated in the Notice, in order to qualify for micro entity status under the gross income basis,
37 CFR 1.29(a)(2) requires the applicant to certify [n]either the applicant nor the inventor nor a
joint inventor has been named as the inventor or a joint inventor on more than four previously
filed patent applications, other than applications filed in another country, provisional applications
under 35 U.S.C. 111(b), or international applications for which the basic national fee under 35
U.S.C. 41(a) was not paid. According to Office records, inventor Abhijit R. Nesarikar has been
named as an inventor on 12 previously filed patent applications, and inventors Ashlesha A.
Nesarikar and Anika A. Nesarikar have been named as an inventor on 11 previously filed patent
applications,1 which is prima facie evidence that the certification of micro entity status in this
application was erroneous.
Applicant replied on May 23, 2024 to the Notice of Deficiency Payment issued on April 22,
2024 asserting that the micro entity certifications were not submitted in error, relying on the
exception in 37 CFR 1.29(b). Applicant states that each of the inventors of the USPTO
provisional patent application No. 63265932 (entitled Intelli ent Awareness and Intent for
Autonomous Vehicles , filed December 22, 2021), was obligated to assign the rights in the
provisional patent application No. 63265932 and its child applications as a result of each of the
1 It is noted that Application Nos. 18069263, 18069288. 18069382, 18069474, 18069596, 18069721, 18069819, and
18069883 were all filed on December 21, 2022.
146553_18069288_2024-08-08_PETDEC
6
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 6 of 59 PageID #:
22
Appx0029
Application No. 18/069,288
Page 2
inventors previous employment in the state of Texas. The child application (e.g., nonprovisional
application numbers re: 18069263, 18069288, 18069382, 18069474, 18069596, 18069721,
18069819, and 18069883, all filed on December 21, 2022.
Applicant s reply has attempted to invoke the exception to the application filing limit set forth in
37 CFR 1.29(b), which states that [a]n applicant, inventor, or joint inventor is not considered to
be na ed on a previousl filed a plication for pu oses of arag aph (a)(2) of this section if the
applicant, invent r, or joint inventor has assigned, is under an obligation b cont act or law to
assi n, all ownership rights in the application s the re ult of the applicant’s, invent r’s, or joint
in entor’s previous e pl yment. But as exp ained in MPEP 509.04(a)(lI), for 1.29(b) to
a l , not onl must, all o nership rights h ve been ssigned, or be under an existing oblig tion
by contract or law to be ssigned, the assignment r obli ation to assign must h ve resulted from
employment with a previous e ployer. This requi es that the applicant, inventor, or j int
inventor as a former empl yee of the previous e ployer, an that the assi nment or oblig tion
to assign as the result f such previous employment as opp e to the applicant’s, inventor’ ,
or joint inventor’s own enterprise
Applicant’s May 23, 202 reply fails to provide an e planation and the necessary evidence to
demonstrate its entitlement to this exception, i.e., evidence that a sufficient number of the
previously filed patent applications were obliged to be (or actually) assigned to a previous
employer such that the application filing limit in 37 CFR 1.29(a)(2) as not exceeded. The
Notice requires this in a persuasive reply. As explained in the Notice, if applicant asserts that
the certification of icro entity status as not made in error, applicant must reply with an
explanation and any necessary evidence that is sufficient to rebut the prima facie evidence of an
erroneous certification.
According to Office records, inventor Abhijit R. Nesarikar has been named as an inventor on 12
previously filed patent applications, and inventors Ashlesha A. Nesarikar and Anika A. Nesarikar
have been named as an inventor on 11 previously filed patent applications.; . . . i
iTo assist applicant in checking its records, the Office is providing applicant ith the application i
jnumbers of published applications and patents that name inventors Abhijit R. Nesarikar of Plano,,
X and Dallas, TX, Ashlesha A. Nesarikar of Plano, TX, and Anika A. Nesarikar of Plano, TX.
110165455 (Abhijit R. Nesarikar only)
The following a lications na e all three invent rs:
159407 2
16591555
173034 7
17 06844
18069263
18069 82
146553_18069288_2024-08-08_PETDEC
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Appx0030
Application No. 18/069,288
Page 3
18069474
180695 6
18069721
18069819
18069883
Applicant s May 23, 2024 reply omits Application Nos. 10165455, 15940792, 16591555,
17303497, and 17906844.
Applicant s May 23, 2024 reply is insufficient to demonstrate its entitlement to this exception,
i.e., evidence that a sufficient number of the previously filed patent applications were obli ed to
be (or actually) assigned to a previous employer such that the application filing limit in 37 CFR
1.29(a)(2) was not exceeded.
While the May 23, 2024 reply states the inventors are obligated to assign their right in
Application No. 63265932 and its child applications, Application Nos. 18069,263, 18069,288,
18069382, 18069474, 18069596, 18069721, 18069819, and 18069883, a review of those
applications and Office assignment records does not reveal any evidence that the inventors have
assigned or are under an obligation by contract or law to assign all ownership rights in the
applications to another entity/party.
Furthermore, a review of the other five applications on the above-identified list of 12
i applications and corresponding Office assignment records does not reveal any evidence that the
i inventors have assigned or are under an obligation by contract or law to assign all ownership
i rights in those applications to another entity/party.
I
In addition, the reply fails to identify the previous employer of the three joint inventors. It only
discloses that the previous employment was in the state of Texas.
Applicant is informed that the exception under 37 CFR 1.29(b) does not apply if the three joint
inventors are current employees of the entity to which they are under an obligation by contract or
law to assign all ownership rights in the applications. The exception under 37 CFR 1.29(b) only
applies if the inventors are former employees. It is noted that the mailing addresses for the three
joint inventors identified the Application Data Sheets filed in 11 of the 12 above-listed
applications is 8025 Ambiance Way, Plano, TX 75024, which corresponds to the current address
for Plano Intelligence Inc. On August 5, 2024, Ashlesha A. Nesarikar’s Linkedin page indicates
that she is currently Chief Executive Officer of Plano Intelligence, Inc. and has been since 2016.
Under the above circumstances, applicant would have exceeded the application fding limit set
forth in 37 CFR 1.29(b), the exception under 37 CFR 1.29(b) would not apply, and applicant
would not be entitled to micro entity status.
Unless applicant submits a persuasive explanation and the necessary evidence to rebut the
prima facie evidence of an erroneous certification, or itemizes and pays the payment
deficiency, within the period for reply set by the Notice mailed on April 22, 2024, the
146553_18069288_2024-08-08_PETDEC
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Appx0031
Application No. 18/069,288
Page 4
application will be abandoned. As set forth in the Notice, extensions of time are available
under the provisions of 37 CFR 1.136(a).
Applicant is reminded that any reply must be made with candor and good faith under 37 CFR
1.56. Pursuant to applicant s duties under 37 CFR 1.4 and 11.18, applicant should have made a
reasonable inquiry into the facts before making the micro entity certification, and filing the reply
to the Notice. It is these particular facts that applicant must provide in order to rebut the prima
facie case. For instance, to demonstrate entitlement to the previous employment exception to the
application filing limit, applicant must provide sufficient explanation and evidence regai ing the
inventors employment history. This includes providing the identity of current and previous
employer(s) and either associated dates of employment or associated applications excepted under
37 CFR 1.29(b). Applicant could also provide evidence of actual assignments or employment-
related contractual or legal obligations to assign rights in the previously filed applications.
Preferably, the latter evidence should be provided in the form of a list identifying, for each
previously filed application naming the inventors, the applicable rccl/framc numbers where the
actual assignments or evidence of an obligation to assign were recorded with the Office, or, if
such documents are being recorded concurrently with the reply to the Notice, by providing
copies of the assignments or the evidence of an obligation to assign with the reply.
Questions about the contents of this letter should be directed to the Office of Patents Stakeholder
Experience (OPSE), Stakeholder Support Division (SSD), Patents Ombudsm at 571-272-5555.
/SHIRENE W BRANTLEY/
Attorney Advisor, OPET
146553_18069288_2024-08-08_PETDEC
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Appx0032
United States Patent and Trademark Office
UNITED STATES DEPARTME T OF C MMERCE
United State Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO.
FILI G DATE
FIRST NAMED INVENTOR
ATTORNEY DOCKET NO.
CONFIRMATION NO.
18/069,288
12/21/2022
Abhijit R. Nesarikar
3954
146553 7590 10/2 /2024
Abhijit R. Nesarikar, Ashlesha A. Nesari ar,
Anika A. Nesarikar
8025 Ambiance Way
Plano, TX 75024
ART UNIT
PULLIAM, CHRISTY NN R
EXAMINER
PAPER NUMBER
2100
NOTIFICATION DATE
DELIVERY MODE
10/23/2024
ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceedin .
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-m il address(es):
ab@nesarikar.com
anika.nesarikar@utdallas.edu
nesarikaias@gmail.com
PTOL-90A (Rev. 04/07)
146553_18069288_2024-10-23_PETDEC
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Appx0033
United States Patent and Trademark Office
Commissioner for Patents
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, V 22313-1450
www.uspto.gov
In re Application of
Nesarikar et al.
Applic tion No. 18/069,288
Filed: 21 Dec 2022
For: Systems and Methods for Intelligent
Awareness and Intent for Autonomous
Vehicles
LETTER
The U.S. Patent and Trademark Office has received your reply on September 9,2024 to the Notice
of Payment Deficiency mailed on April 22, 2024 ( Notice ) and it has been entered into the
application. Applicants September 9, 2024 reply was untimely, because it was received after the
expiration of the two month period for reply set forth in the Notice mailed on April 22, 2024, but
was not accompanied by a petition for an extension of time and the appropriate fees. Applicants
requested an extension of time, if necessary to avoid abandonment, but did not provide
authorization to charge a deposit account in the September 9, 2024 reply. In addition, even if
September 9, 2024 reply had been timely, it is insufficient to demonstrate applicants entitlement
to the previous employment exception to the pplication filing limit set forth in 37 CFR 1.29(b).
A complete, sufficient and persuasive reply, or alternatively, an itemization and payment of the
deficiency, must be timely filed to prevent ABANDONMENT of the above-identified application.
The period for reply continues to run from the date of the Notice mailed on April 22, 2024.
1. Reply must be timely
The application will become abandoned unless applicants obtain an extension of the period for
reply. The petition must be accompanied by the appropriate fees as set forth in 37 CFR 1.17 (see
the current fees below). The d te on which the reply, the petition and the fees have been filed is
the date of the reply and also the date for purposes of determining the period of extension and the
corresp nding amount of the fee due. The expiration of the time period is determined by the
amount of the fee paid. Applicants are advised that extensions may not be granted under 37 CFR
1.136(a) for more than FIVE MONTHS beyond the time period set in the Notice.
Mail Date of Notice: 4/22/24
Last date that extension may be obtained: 11/22/24
146553_18069288_2024-10-23_PETDEC
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Appx0034
Application No. 18/069,288
Page 2
(Notice: The petition and fee must be received by this date, or include a proper certificate of
mailing under 37 CFR 1.8 with a date on or before this date, and extend the time to include this
date).
Length of Extension
of time
Fee under 37 CFR 1.17(a)
(response due on or
before)
Undiscounted
Small Entity
Micro Entity
4 Months (10/22/24)
$2320
$928
$464
5 Months (11/22/24)
$3160
$1264
$632
Replies must be received in the USPTO within the set time period or must include a proper
Certificate of Mailing or Transmission under 37 CFR 1.8 with a mailing or transmission date
within the set time period. For more information and a suggested format, see Form PTO/SB/92
andMPEP512.
2. Reply must be sufficient and persuasive
As stated in the Notice, in order to qualify for micro entity status under the gross income basis,
37 CFR 1.29(a)(2) requires the applicant to certify [n]either the pplicant nor the inventor nor a
joint inventor has been named as the inventor or a joint inventor on more than four previously
filed patent applications, other than applications filed in another country, provisional applications
under 35 U.S.C. 111(b), or international applications for which the basic national fee under 35
U.S.C. 41(a) was not paid. According to Office records, inventor Abhijit R. Nesarikar has been
named as an inventor on 12 previously filed patent applications, and inventors Ashlesha A.
Nesarikar and Anika A. Nesarikar have been named as an inventor on 11 previously filed patent
applications,1 which is prima facie evidence that the certification of micro entity status in this
application was erroneous.
Applicants reply has attempted to invoke the exception to the application filin limit set forth in
37 CFR 1.29(b), which states that [a]n applicant, inventor, or joint inventor is not considered to
be named on a previously filed application for purposes of paragraph (a)(2) of this section if the
applicant, inventor, or joint inventor has assigned, or is under an obligation by contract or law to
assign, all ownership rights in the application as the result of the applicant s, inventor’s, or joint
inventor’s previous employment.
The September 9, 2024 reply states, in pertinent part:
1 It is noted that Application Nos. 18/069,263,18/0 9,288, 18/069,382, 18/069,474, 18/069,596, 18/069,721,
18/069,819, and 18/069,883 were all filed on December 21, 2022.
146553_18069288_2024-10-23_PETDEC
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Appx0035
Application No, 18/069,288
Page 3
In ent rs res en in good faith., that on an before the f itsg. ste of the cxirrent appUeidion:
1, Ash xha esar&ai' and Aaika gsarlkai have bean oblig t d to assign the rights
in pr dskired pat nt a lications 63/705,2fJb and 62>t2&$.$32 (an thasr c il
applications) as a result of each of their prior employinstit with M Dentiai, P LC, Pla o.
TX.
2. Abhijit Nc satikar hast teen ribiigate ts> assig the tights in rovisi al patctsl
ap lica ions (?2/?05>296 and 63/265.932 (and their chil applications) as a restilt f his
prior ereploy eni wit A vantee Coo h g, I c, iano, TX,
Fro before the ftling date of the en s t ap lication th ugh to ay, Axhieshss Ncsarikar and
Anikn Nes rikm' have not been iployed by y Dentist PLLC and Abhijit Nesasikar has not
bees employed by A v ech. Consal.ting hie.
However, a review of the Office assignment database reveals no assignment has been recorded
for either Application No. 62/705,296 or Application No. 63/265,932.
Applicants May 23, 2024 reply states, The child application (e. ., nonprovisional application
numbers are: 18069263, 18069288, 18069382, 18069474, 18069596, 18069721, 18069819, and
18069883, all filed on December 21, 2022. A review of the Office assignment database reveals
no assignment has been recorded for any of the child applications identified by applicants.
The August 8, 2024 letter identifies other prior-filed applications that name at least one of the
three joint inventors. Application 10165455 names only Abhijit R. Nesarikar as a joint inventor.
The following applications name all three inventors as joint inventors: Application Nos.
15/940,792, 16/591,555, 17/303,497, and 17/906,844. A review of the Office assignment
database reveals no assignment has been recorded for Application Nos. 10/165,455, 15/940,792,
16/591,555, and 17/303,497. An assignment has been recorded for Application No. 17/906,844
at reel/frame 064245/0121. The assignment for Application No. 17/906,844 gives rights to
Shalaka A. Nesarikar. My Dentist, PLLC and Advantech Consulting, Inc., the prior employers
of the three joint inventors, are not the assignees of Application No. 17/906,844.
As explained in MPEP 509.04(a)( ), for 1.29(b) to apply, n t only ust all ownership ri hts
have been assigned, o be unde an exis ing obli ation b cont act or l to be assi ned, the
assi nment or obligation t assign ust have resulted from emplo ment with a previous
employer. his requi es that the ap licant, invento , or joint in entor was a fo mer e ployee of
the previous employer, and that the assignment o obligati n to assign s the result of uch
previous empl yment as o posed to the a plicant s, invento ’s, or joint in entor’s own
enterprise. In other words, a former employee must have assigned ownership rights or be under
an bligation b c ntract or law to assign o nership ights in a previ usly filed application t a
former e pl yer in order to demonstrate entitle ent to the section 1.29(b) excepti n.
146553_18069288_2024-10-23_PETDEC
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Appx0036
Application No. 18/069,288
Page 4
Applicants September 9, 2024 reply is insufficie t because applicants have ot rovided
adeq ate evidence that all ownership rights in a sufficient number of the ri r tiled pplications
have been assigned or are under an obligatio by contr c or law to be assi ned t a previous
employer.
Regarding the assi nment/obli ation to assi n component of the analysis: As discussed above,
no assignment has been reco ded (1) for pplication No. 62/705,296 or Ap lication N .
63/265,932, (2) or any of the child ap lications identified by a plicant, and (3) for A licati n
Nos. 10165455, 15940792, 16591555, and 17303497. The only application with a recorded
assig ment is pplication No. 17/906,844, and the assignee is Shalaka. A. esarik , not the
rior employers of the joint inventors, My Dentist, PLLC and Advantech Consulting, Inc.
Applicants must provide evidence to support the assertion that the inventors are obligated to
assign rights in a sufficient number of prior-filed applications to a prior employer, such that the
application filing limit in 37 CFR 1.29(a)(2) was not exceeded. Applicants must provide
evidence of employment-related contractual or legal obligations to assign rights in the previously
filed applications to a prior employer, A copy of an assignment or a copy of contract showing an
obligation to assign would suffice.
Regarding the previous employer component of the analysis: Please kee in mind that the
assi nment or obli ation to assi n must have been the result of previous employment, as
pposed to the joint inventor s o n enterprise. ccording to w . ovcb.com, Advantech
Consulting, Inc. is owned by ABHIJIT R NESA IK R f 8025 AMBIANCE WAY, PLANO,
Tex s, USA. If Abhijit R Nesarik r is an ow er, rather than an employee of Advantech
Consulting, Inc., an applications assigned or under an obligation by contract or la to be
assi ned by him to Advantech Consulting, Inc. oul not f ll under the section 1.29(b)
exception. The inve tor must have been an em loyee of the compa y in or er for the section
1.29(b) exception t apply. Factors to c nside are hether the party ecei e pa checks from
the company, whether the com any withheld state and/or federal taxes from the party’s
paychecks, whethe the party received W2s fr m the company, and hether the party had
o nership interest in the c m an at any ti e the arty as associated ith the company. Plea e
state for the record whether bhijit R. Nesarikar as an em l yee of Advantech C n ulting, Inc.
Applicants’ reply is insufficient to demonstrate its entitlement to this exception because it fails to
provide evidence that a sufficient number of the previously filed patent applications were
obligated to be assigned or were actually assigned to a previous/former employer, such that the
application filing limit in 37 CFR 1.29(a)(2) was not exceeded.
The April 22, 2024 Notice requires this showing in a persuasive reply. As explained in the
Notice, if applicant asserts that the certification of micro entity status was not made in error,
applicant must reply with an explanation and any necessary evidence that is sufficient to rebut
the prima facie evidence of an erroneous certification.
Unless applicants submit a persuasive explanation and the necessary evidence to rebut the
prima facie evidence of an erroneous certification, OR itemize and pay the payment
deficiency, within the period for reply set by the Notice mailed on April 22, 2024, the
146553_18069288_2024-10-23_P ETDEC
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Appx0037
Application No. 18/069,288
Page 5
application will be abandoned. As set forth in the Notice, extensions of time are available
under the provisions of 37 CFR 1.136(a).
Applicants are reminded that any reply must be made with candor and ood faith under 37 CFR
1.56. Pursuant to applicants duties under 37 CFR 1.4 and 11.18, applicants should have made a
reasonable inquiry into the facts before making the micro entity certification, and filing the
replies to the Notice. It is these particular facts that applicants must provide in order to rebut the
prima facie case. For instance, to demonstrate entitlement to the previous employment exception
to the application filing limit, applicants must provide sufficient evidence regarding the
inventors employment history. Applicants must provide evidence of employment-related
contractual or legal obligations to assign rights in a sufficient number of the previously filed
applications to a prior employer, such that the application filing limit in 37 CFR 1.29(a)(2) was
not exceeded.
Regarding finances: Applicants assert no extension of time is required to make the September 9,
2024 reply timely filed. The Office does not concur. The only period running against applicants is
th t which was set in the April 22, 2024 Notice. Applicants were given two months from the April
22, 2024 mail date of the Notice to either provide a persuasive explan tion and the necessary
evidence to rebut the prima facie evidence of an erroneous certification, OR itemize and pay the
["payment deficiency. The May 23, 2024 reply did not include a persuasive explanation and the
[necessary evidence to rebut theprima facie evidence of an erroneous certification. Therefore, the 1
period for reply continued to run.
Please note that any response to the present letter will require submission of an appropriate
extension of time fee. See chart on second page of letter. Applicants are once again reminded that
extensions may not be granted under 37 CFR 1.136(a) for more than FIVE MONTHS beyond the
time period set in the Notice, with Friday, November 22, 2024 being the last possible date that an
extension may be obtained.
Questions about the contents of this letter should be directed to the Office of Patents Stakeholder
Experience (OPSE), Stakeholder Support Division (SSD), Patents Ombudsman at 571-272-5555.
/SH1RENE W BRANTLEY/
Attorney Advisor, OPET
146553_18069288_2024-10-23_PETDEC
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Appx0038
1
IN THE UNITED STATES PATENT A D TRADEMARK OFFICE
Application No: 18/069,288
Filed: 12/21/2022
Examiner: PULLIAM, CHRISTYANN R
Group Art Unit: 2100
Atty. Dkt. No: 4as-morphism
Confirmation Number: 3954
Applicants and Inventors:
Abhijit R. Nesarikar
Ashlesha A. Nesarikar
Anika A. Nesarikar
2 Title of Invention: Systems and Methods for Inte ligent Awareness and Intent for Autonomous
3 Vehicles
RESPONSE TO NOTICE OF PAYMENT DEFICIENCY
4
5 Attn: Office of Petitions
6 C ommi s si oner for P atents
7 P.O. Box 1450
8 Alexandria, VA 22313-1450
9
10 Commissioner:
11 Inventors good faith reply of 05/23/2024 to the Notice of Payment Deficiency mailed on
12 04/22/2024 in the current application (hereinafter Notice) was sufficient to show error by the
13 USPTO in sending Notice and remains sufficient in light of Shirene Brantley s errors. On
14 04/22/2024, the USPTO mailed payment deficiency notices (hereinafter Notices) regarding
15 applications 18069263, 18069288, 18069382, 18069474, 18069596, 18069721, 18069819, and
16 18069883 (hereinafter Applications). The USPTO failed to make ptima facie case of erroneous
17 certification of micro entity status in each of Notices. Inventors respectfully request that in light
18 of Inventors’ compliance with 37 CFR 1.29, the USPTO withdraw each of Notices and each of
19 Shirene Brantley’s letters in each of Applications.
Certificate of Tr nsmission under 37 CFR 1.8: I hereby certify that this correspondence (along with any paper referred to as
being attached r enclosed) is being transmitted via the USPTO s patent electronic filing system. The date of transmission is the
receipt date accorded by the electronic filing receipt for this correspondence.
Electronic si nature for Ashlesha . Nesarikar: /Ashlesha A Nesarikar/ Dated 1/19/2024 Phone: 469-371-4983
1
146553_18069288_2024-11 -19_LET.
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Appx0039
1 Regarding Shirene Brantley s letters dated 08/08/2024, 08/09/2024, 10/22/2024, and 10/23/2024,
2 Shirene Brantley errs at least by materially misrepresenting facts, disregarding Inventor-provided
3 evidence and Inventors’ arguments based on the evidence, making arbitrary and ad hoc demands
4 for evidence, and threating to abandon Applications. The errors at least undermine Inventors’
5 right to respond. The errors, including threat of abandonment, represent at least a violation of due
6 process and a possibility of irreparable harm.
7 Shirene Brantley states that Applications will be abandoned in the letters of 10/22/2024 and
8 10/23/2024, e.g.:
Unless applicant submits a persuasive ex lanation and the neces ary evi ence to rebut the
prima facie ev ence of an erroneous certification, OR itemizes and pays the payment
deficiency, within the period for repl set by the Notice mailed on April 22,2024. the
a lication will be abandoned, s set forth in the Notice, extensions of time are vailable
under the rovisions of 37 CFR LI3(»< ).
9 [emphasis in original]
10 Abandonment of any of Applications due to any of Notices would constitute actions by the
11 USPTO that are at least arbitrary, capricious, an abuse of discretion, or otherwise not in
12 accordance with law.
13 Errors in Shirene Brantley s letters of 08/08/2024 and 08/09/2024 regarding Applications were
14 called to the attention of the USPTO, and Inventors requested a restarted period for reply, in
15 communications to the USPTO on 09/05/2024, 09/06/2024, 09/08/2024, and 09/09/2024. Shirene
16 Brantley’s letters of 10/22/2024 and 10/23/2024 fail to address the errors and the timely request
17 for restarted period for reply under MPEP 710.06. The failures constitute at least Shirene
18 Brantley’s concession to Inventors’ arguments.
19 In addition to the foregoing, the letters of 08/08/2024 and 08/09/2024 are Shirene Brantley’s first
20 notification providing the USPTO’s identification of alle ed prior applications naming one or
21 more of Inventors and the USPTO’s first official assertion of allegedly required evidence.
22 Flnventors sufficiently responded regarding Applications on 09/08/2024 and 09/09/2024. Shirene ]
' , . . . i
23 [ Brantley’s continued delay of examination, threat of abandonment, demands of expanding scope i
Certificate of Transmission under 37 CFR 1.8: I hereby certify that this correspondence (along with any paper referred to as
being attached or enclosed) is being transmitted via the USPTO s patent electronic filing system. The date of transmission is the
receipt date accorded by the electronic filing receipt for this correspondence.
Elect onic signature for Ashlesha A. Nesarikar: /Ashlesha A Nesarikar/ Date: 11/19/2024 Phone: 469-371 -4983
2
146553_18069288_2024-11 -19_LET.
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Appx0040
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3
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5
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7
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9
10
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15
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Phone: 469-371-4983
3
146553 18069288 2024-11-19 LET.
18
Certificate of Transmission under 37 CFR 1.8: I hereby certify that this correspondence (along with any paper referred to as
being attached or enclosed) is being transmitted via the USPTO s patent electr nic filing system. The date of transmission is the
receipt date accorded by the electronic filing receipt for this correspondence.
Electronic signature for Ashlesha A. Nesarikar: /Ashlesha A Nesarikar/ Dated 1/19/2024
i for new information, and refusal to revise the period for reply despite reliance on new allegations 1
i 1
' not previously presented to Inventors create an undue burden for Inventors. ,
1 In addition to the foregoing, Shirene Brantley erred in failing to address Inventors prior re arks ,
i i
i regarding application 10165455. This includes at least (see response of 09/08/2024 and 1
i 1
109/09/2024 for Applic tions) ]
i 1
i |
i 1
i Tt:< asist spptieasii. ssi chsc iag its bsksssR ths Oftfec is wife with the 1
i BusibiBS of puidi.s.ho sspniicaiiiMi.s {stiftfiis ihst fSiRSs'. isivei s Abhijii . Nisatlkst ot Plans;,
] TX ;«ssl IXl s. TX. shicshs A. fesriksr Ida®, I asd Anta A, sssttar of I iw, TX< [
, ... |
I 1
1 Des ite fovstdore' searehos after tveeivina Shirene Brantlev s fctiter. Inventors have .act found
!
ap lication 10 i 6545$, Inventors, in good faith, eonelude that pplicatio 1010'5455. if it '
exists, is ot puUtshciL Shirene Brantley s etxor imder tsinss In ertwrs' alniity io respond to '
i
, Shirene Bsaat v's lette . i
i '
i The failure constitutes a concession to Inventors arguments. Inventors traverse Shirene ]
i Brantley’s reliance on unevidenced allegations regarding alleged application 10165455 (e.g., !
i 1
i regarding filing, assignment, publication, and inventorship of alleged application 10165455). In
i light of Inventors previous responses, Shirene Brantley further errs in maintaining the i
i
'unevidenced allegations, e.g.:
! 1
i 1
i The Atigusl 8. 2024 ictier ide tifies other nof 'filed s pheatfons that itame at least ooe of the
three wait bweiMors. Aeoliciitkai 10165455 names only Abhipt R. eaari at' as & foi t tnw i'. i
i 1
i '
[ Shirene Brantley’s allegations regarding alleged application 10165455 are Shirene Brantley’s ,
i '
i personal knowledge. The personal knowledge is not indicated by the current application, not
i
j supported by evidence, and not identified in statute, regulation, or executive order. Applicants i
1 .....'
1 respectfully request that Shirene Brantley provide an affidavit or declaration setting forth specific ,
i i
i factual statements and explanations to support the personal knowledge in compliance with 37 '
C.F.R. § 1.104(d)(2). !
f 1
Tn addition to the foregoing, Shirene Brantley argues that no assignment has been recorded ]
onstitutes evidence of erroneous certification , which is Shirene Brantley’s personal i
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 18 of 59 PageID
#: 34
Appx0041
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
Phone: 469-371-4983
4
146553_18069288_2024-11 -19_LET.
19
Certificate of Tr nsmission under 37 CFR 1.8: I hereby certify that this correspondence (along with any paper referred to as
being attached or enclosed) is being transmitted via the USPTO s patent electronic filing system. The date of transmission is the
receipt date accorded by the electronic filing receipt for this correspondence.
Electronic si nature for Ashlesha A. Nesarikar: /Ashlesha A Nesarikar/ Date: 1/19/2024
'knowledge. The personal knowledge is not indicated by the current application, not supported by]
! evidence, and not identified in statute, re ulation, or executive order. Applicants respectfully '
i '
i request that Shirene Brantley provide an affidavit or declaration setting forth specific factual !
i i
i statements and explanations to support the personal knowledge in compliance with 37 C.F.R. §
; 1.104(d)(2).
I
I - . , n
iIn addition to the foregoing, Shirene Brantley errs in newly introducing alleged requirements ,
including, e.g.: i
i '
i _ '
i lsestisss r iss gv tesiire jo s ppsM ihft as ertai i at she nvaimrs are obl gaicd to 1
assign sights in a suiTkwat t tmber at'priot-Sled appli«if.tons 1» 3. prim em layeo such that she i
i appl atinn filing iiaiil 37 CTR i was not exceeded. nnlicaate rovide 1
i f dfencent eiaploynsesiMelatetl eontracmal or legal obligatio s k> assia rights m the pawtoui v i
1 fibi applfcatas. la a. Prior etnslaygr, A eo y of as assigaraetii or a copy of contract showing an
i obl.ifiai.ton to assign wold soffit®, i
i i
I I
i[emphasis in original] '
I 1
I 1
[which is Shirene Brantley s personal knowledge. The personal knowledge is not indicated by the [
i . . . 1
icurrent application, not supported by evidence, and not identified in statute, regulation, or [
[executive order. Applicants respectfully request that Shirene Brantley provide an affidavit or >
i '
'declaration setting forth specific factual statements and explanations to support the personal [
[knowledge in compliance with 37 C.F.R. § 1.104(d)(2).
In addition to the foregoing, Inventors traverse any requirements by Shirene Brantley to disclose
sensitive, proprietary, or nonpublic information regarding Inventors or Inventors’ prior
employers. As an attorney, Shirene Brantley knows that employers would not allow such
disclosures. Such requirements are not in accordance with statute and regulations and constitute
discrimination and violation of due process.
In addition to the foregoing, Shirene Brantley errs at least by materially misrepresenting facts,
including, e.g.:
According to ww .govcb.com, Advantech Consulting, Inc is owned by Abhijit R Nesarikar...
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 19 of 59 PageID
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Appx0042
1 Shirene Brantley errs in relying on unverified statements from anonymous online sources.
2 Shirene Brantley further errs because the statement is a material misrepresentation of facts.
3 Www.govcb.com does not support Shirene Brantley s statement. Shirene Brantley further errs in
4 disregarding that www.govcb.com indicates that Advantech Consultin , Inc is a Woman Owned
5 Business .
6 Shirene Brantley s unevidenced assertion that
7 According to www.govcb.com, Advantech Consulting, Inc is o ned by Abhijit R Nesarikar...
8 is Shirene Brantley’s personal knowledge. The personal knowledge is not indicated by the
9 current application, not supported by evidence, and not identified in st tute, regulation, or
10 executive order. Applicants respectfully request that Shirene Brantley provide an affidavit or
11 declaration setting forth specific factual statements and explanations to support the personal
12 knowledge in compliance with 37 C.F.R. § 1.104(d)(2).
13 Shirene Brantley’s letters and the actions of the USPTO have introduced an undue burden and
14 are not in accordance with law. Each of Inventors’ micro entity certifications is valid. No
15 deficiency payment is due. Inventors respectfully request that in light of Inventors’ compliance
16 with 37 CFR 1.29, and failure of the USPTO to make a primafacie case of erroneous
17 certification of micro entity status, the USPTO withdraw Notice.
18 For at least the foregoing reasons, no extension of time is required. Inventors reserve the right to
19 make additional arguments.
20
21
22 Date: 11/19/2024
23 /Ashlesha A Nesarikar/ /Anika A Nesarikar/ /Abhijit R Nesarikar/
24 Ashlesha A. Nesarikar Anika A. Nesarikar Abhijit R. Nesarikar
Certificate of Transmission under 37 CFR 1.8: I hereby certify that this correspondence (along with any paper referre to as
being attached or enclosed) is being transmitted via the USPTO s patent electronic filing system. The date of transmission is the
receipt date accorded by the electronic filing receipt for this conespondence.
Electronic signature for Ashlesha A. Nesarikar: /Ashlesha A Nesarikar/ Date: 1/19/2024 Phone: 469-371-4983
5
146553_18069288_2024-11 -19_LET.
20
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Appx0043
Page 1 of 2
UNITED STATES
P TENT ND TRADEMARK OFFICE
P.O. Box 1450
Alexandria, VA 22313 - 1450
www.uspto.gov
ELECTRONIC ACKNOWLEDGEMENT RECEIPT
APPLICATION #
18/069,288
RECEIPT DATE/TIME
11/19/2024 08:13:22 PM Z ET
ATTORNEY DOCKET #
4as-morphism
Title of Invention
Systems and Methods for Intelligent Awareness and Intent for Autonomous Vehicles
Application Information
APPLICATION TYPE
Utility - Nonprovisional Application
under 35 USC 111(a)
PATENT #
-
CONFIRMATION #
3954
FILED BY
Abhijit Nesarikar
PATENT CENTER #
68030793
FILING DATE
12/21/2022
CUSTOMER #
146553
FIRST NAMED
INVENTOR
Abhijit R. Nesarikar
CORRESPONDENCE
ADDRESS
-
AUTHORIZED BY
-
Documents
TOTAL DOCUMENTS: 1
DOCUMENT
4as-morphism-
ResponseToOct22Letter 5
pages.pdf
PAGES DESCRIPTION
SIZE
(KB)
5
Miscellaneous Incoming Letter
312 KB
Digest
DOCUMENT
MESSAGE DIGEST(SHA-512)
4as-morphism-
ResponseToOct22Letter 5
pages.pdf
90F72388DA11E7D258E0DADEA7373844D5D2A993452295399
68552E3B9982CD0EB49F400F005F5B084DD9E04BE5BE2B57E
DBB669D3E2EABB26FF5F6598B1C7C0
This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents, characterized
by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a Post Card, as
described in MPEP 503.
146553_18069288_2024-11 -19_N417
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Appx0044
Page 2 of 2
New Applications Under 35 U.S.C. 111
If a new application is being filed and the application includes the necessary components for filing date (see 37 CFR 1.53(b)-(d)
and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this cknowledgement
Receipt will establish the filing date of the application
National Stage of an International Application under 35 U.S.C. 371
If a timely submission to enter the national stage of an international application is compliant with the conditions of 35 U.S.C.
371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a national stage
submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
New International Application Filed with the USPTO as a Receiving Office
If a new international application is being filed and the international application includes the necessary components for an
international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number and of the
International Filing Date (Form PCT/RO/105) will be issued in due course, subject to prescriptions concerning national security,
and the date shown on this Acknowledge ent Receipt will establish the international filing date of the application.
146553_18069288_2024-11 -19_N417
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Appx0045
United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Pate t and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO.
FILING DATE
FIRST NAMED INVENTOR
ATTORNEY DOCKET NO.
CONFIRMATION NO.
18/069,288
12/21/2022
Abhijit R. Nesarikar
4as-morphism
3954
146553 7590 03/06/2025
Abhijit R. Nesarikar, Ashlesha A. Nesarikar,
Anika A. Nesarikar
8025 Ambiance Way
Plano, TX 75024
ART UNIT
PULLIAM, CHRISTY ANN R
EXAMINER
PAPER NUMBER
2100
NOTIFICATION DATE
DELIVERY MODE
03/06/2025
ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceedin .
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
follo ing e-mail address(es):
ab@nesarikar.com
anika.nesarikar@utdallas.edu
nesarikaras@gmail.com
PTOL-90A (Rev. 04/07)
146553_18069288_2025-03-06_PETDEC
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Appx0046
United States Patent and Trademark Office
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
Co missioner for Patents
www.uspto.gov
In re Application of
Ncsarikar ct al.
Application No. 18/069,288
Filed: 21 Dec 2022
LETTER
For: Systems and Methods for Intelligent :
Awareness and Intent for Autonomous :
Vehicles :
The U.S. Patent and Trademark Office has received your reply on November 19,2024 to the Notice
of Payment Deficiency mailed on April 22, 2024 ( Notice ). The Notice set a two month period
for response, with extensions of time available under 37 CFR 1.136( ) for reply.
The November 19, 2024 reply was not accompanied by an appropriate extension of time under 37
CFR_Ll_36(a , and the maximum_extendable_period_for timely re ly to the_April 22, 2024_N tice _
i has expired. Therefore, the November 19, 2024 reply was untimely filed. The November 19, 2024 i
1 reply has been entered into the application, but will not be addressed on the merits. i
I I
It is noted a Notice of Abandonment was mailed on February 11, 2025.
Questions bout the contents of this letter should be directed to the Office of Patents Stakeholder
Experience (OPSE), Stakeholder Support Division (SSD), Patents Ombudsman at 571-272-5555.
/SHIRENE W BRANTLEY/
Atto ey Advisor, OPET
146553_18069288_2025-03-06_P ETDEC
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Appx0047
i'he NoUe f ay ni Ost cy dated April 22. 2024 (hereinafter Notice) asserts that
tarve evki nee that the s mitte certitleadou is in ror has bee p ovided. The ass r io s is in
error. Nchc otrril 37 ('ER 1.29 (h)5 hich . eqairss:
(b,; An sppiknan nivefitor, or joint mvenUM is not rotiskisracl ¦<> be named o 3 neviotislY filed a hraiioti
fe pGr <:>s.e:i; >>f aragra h (a)!?.) of this soctioti if •he appilcsnt, iavet'tor, or joint inv sn or hasasdgtifxl, o
is isnder an ohiigstiof by contract o iasy to assigt-. ali osvne shi rights in ths tipniitation as the reeo : pf ths
a lteaxa t.. inventor •-:. o join inysntor s previous enipioythent.
In addition o the fnrvgoing, on and before the filing ate of the eurre i application, each of the
nven ors of the USFfG p o isional al p lic don o. 63265932 (en iikd ' ntellige t
Awareness a td Intent for Autonom us Vehicles , tiled December 22, 02.1), wag obligate to
assi n the righ s n the p o isional patent a plication No. 6326.5932 and its chil applications as
a result of each of the in entors previous e loyment in the s ate of Texas. he chi ld
application (e,g„. nonp?xi isi< ai a lication) numbers a e; 18069263.. 18069288.18069382,
180 9474. 18069596, 1 0697 1 1 06981.9, an 1806 8 3, all filed on December 21,202 .
In addi ion o the leregf>ir:g, see attaehed Exhibit A , hich on age states:
Ihem k nv l it on tiie •ni ixa et'pivviom.l 'hled atent a plieaiiens that may be excluded jftim the fear
revioiisiy iilei.t ap tieatiesi'' iittiit cen ained in the ' gr&fe itseointri definition fbr rtricro eatiiy siatys tin the
batm of rior ertsploynietti.
In addition to the foregoing, none of the inventors ctirreritly exceeds the application filing li it
aecor iug to 37 CFR 1.29. No f rther arguments am required a this time. Applicants rese e the
right to make further arguments.
A hlesha . Nesa ikar
Invento
A ika . esarikar
Inventor
£••• | *
Ablmit R. Nesarikar
Inventor
Amedea Invetiis Act • Al A) i-'rcquend Asked Quesisons: Am rica Invsrii; Aei (ASA > •¦ Pees ¦-•¦ Other
https:.'W:ib.iii'rt'(i¥s.»nt;wsb/2{i246i1022lS916/}Hu-!;:/fw v'!Y.usi)t(i.g;>vg;;ite3triia s./aiueriya' inve!'!lS'Oet-aiaAaaeri<?a-
laysnis-aso -aiakeqisei fo-viked type-brOwse-iN tSO k
146553_18069288_2024-05-23_LET._001
25
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Appx0048
RE: USPTO Automated Interview Request (AIR): ction Required - Received interview for US Application Number 18069263
Subject: RE: USPTO Automated Interview Request (AIR): Action Required - Recei e interview for US
Application Number 18069263
From: ' Pulliam, Christyanri R." <Christyann.Pullia @USPTO.GOV>
Date: 4/23/2024, 3:07 PM
To: Ashlesha esarikar <cpctas@ncsari ar.com>
Ashlesha
Yes I can talk on Friday April 26 at 11. I sent a Teams link for the meeting.
Chr styann
From: Ashlesha Nesarikar <epctas@nesarikar.com>
Sent: Tues ay, April 23, 2024 10:37 AM
To: Pulliam, Christyann R. <Christyann.PLslliam@USPTO.GOV>
Cc: uspto@nesarikar.com
Subject: Re: USPTO Auto ated Int r iew Request (AIR): Action equire - Recei ed inter iew for US Application
Number 18069263
CAUTION: This em il has originate fro aSm o sfoe <>f USPTU. PLEASE CONSIDER THE SOURCE before responding, clickin
on lin s, or opening attachments.
QAS Pullia ,
Thank you for your reply and the infor ation.
Would you be abl to talk on any of the ornings (any time before 12:00 ET) of pril 25 (Thursday),
April 26 (Friday), May 02 (Thursday), or May 03 (Friday)? If not, please let me know the earli st
available time tha works for you.
Thank you.
Ashlesha
On 4/23/2024 7:54 AM, Pulliam, Christyann . wrote:
_ Ashlesha_N_esarika_r,
i l_am_not_exa ining_the appHcadon I hol ing it while we await the response to the Notice of Fees
maile 4/22/ 0 . I a not available at th times you requ sted but could talk at a different time.
Ho ever, I think the information you nee in on the Micro Entity certification form:
(2) APPLIC TIO FILING LIMIT ~ Neither the a plicant nor the inventor nor a j int inv tor has
boon naned as he inve tor or a join inve to re than fw provioosty filed U.S. pa en
spplicatinns. exciuding pro isional ap lications and intemahonsi icaifons un er hs Patent
Coo er tion Treaty ( C T) for whic the basic national fss under 37 CFR 1. S2.(s) was not paid,
and also e cludi g patent a pifoations for which the a piice t has assigned all osvnershi hghfe.
or is obligated to assign al! ownership rights, a a result of the applicant's revious e loyment.
146553_18069288_2024-05-23_LET._002
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Appx0049
RE: USPTO Automated Intei-view Request (AIR); ction Required - Receive interview for US A plication Nu ber 18069263
And the Fee notice
w w xw.w«. .v -. - v vv,' w v. ." v .v'f •. v ww .- v wv w •. v.'.v v . 5 w.y
Appltea has s b i e a cart & rai af ky a s base up s the gro s mowie bas
an p d to i As sba d itiiisd apphcat sn ba e pon this t ibcauoii to or er to t aitiy
far miero esthy staiux under toe gmss inetm basis 3'7 C L2 »(2> requires the s plicant io
o ify ::<[n]e ther the a licant nor ihe ia tosr» a jtost toventor fen been na e tmte luw tor
or a join inventor on w th&afour ptovtoutdy filed pstoto sppU&stions ether than sppl n k a
filed n another country, yrtwiskwl a i ietoiuns un er Ito U. S.C, totobl or totoroitoauid
a plieattoas for which, the baa c itonal fee u der 35 US.C. 41(a) t a not paid/ As ex aine
i MP 5fe .G4(XXl)(BX an applienUon still count agains thi filing limit even If i has b en,
abandoned or patente , an even If it did not claim micro etoisy statu . When his a plicmton w s
fifed, the ap licant, the in ventor, or a joint tovantor was named on i om than four reviously file
patent ap iic.at.ia.us. bis is rrs /atoe evidence that the sub itted emli.t st.ion is in e it beeausa
the filing limit In 37 CM .L7W aX2) as meeeded... Accor ingly, the paymen made in this
p lica ion based u on the appa ently erameous micro entity certifie tfon are deficient.
Which also goes onto explain what is needed in the response if yo think you are a mic o entity or if you
need to correct the status an fees paid.
Both can be viewed in Patent Center - http.sj//www.ys to.gp /p;:d.ents/b<i$jcs/s:Hilin.e7pate
If yo still have questions, please feel free call me. You do not need to set up a formal interview. You
can also contact Inventor Assistance C nter at 800-786-9199 OR 571 -272-1000 or the Application
Assistance Unit at 888-786-0101 OR 571-272-4000 OR HelpAAll@U5pto.gav.
Christyann Pulliam
TC 2100
US Patent and Tra emark Office
571-270-1007
From: PTO Automated Interview Req st <PTp tomated.inte;rviewR qiiest@.L(S.PTO..GOy>
Sent: Mon ay, A ril 22, 2024 6:30 PM
To: P lliam, h i tyann R. <Chns mPtollam@U_SPTOJGO.y>
Cc: PTO Automat d Int rvi Request <PTOAirtomatedinteryiewReauest@USPTO.GOV
Subject: USPTO Automated Interview Request (AI ): Action equire - Received int rvie for US
Ap lication Nu ber 18069263
Importance: High
CH ISTYANN R. PULLIAM,
This is an Automated Interv ew Request (AIR) made by Ashiesha A. Nesarikar for a lication number
18/069,263 for 4-29-2024 10:00 AM ET. The preferre intervie type is: Video Conference. Please
res ond to this inter ie request within 1 business day.
Alternative sugg ste interview dat an ti e: -29- 0 4 11:00 AM ET
Alternative su ested int rvie date an time: 4-29-2024 12:00 P ET
Topic for Discussion: Regarding the notice date 4/22/2024,1 am ho ing to get an un erstan ing of the
nature of evidence require in support of micro entity status. As a ro se inventor, I a preciate any
clarity you ay provide. If these times dont work, lease let me kno .
146553_18069288_2024-05-23_LET._002
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Appx0050
RE; USPTO A tomated Interview Request (AIR): ction Required - Received i tervie for US A plication Number 18069263
Please contact Ashlesha A. Nesarikar by calling +1 4693714983 or emailing
set up an interview or d ny if appropriate. Note, if you are denying an interview, the inter ie request
fla will not be cleared until you ve contacte your SPE.
Examiner may grant or deny the inter iew in accordance with current USPTO intervie policy, ractice
and rocedure (See MPEP 713).
By rec i in this AIR submission, the a plicant has certified that:
This submission is requeste to be accepted as an authorization for this intervie to communicate via
the internet. Recognizing that Internet com unications are not secure, I hereby authorize the USPTO
to com unicate with the un ersigned concerning schedulin of the intervie via video conference,
instant essaging, or electronic mail, an to con uct the interview in accor ance ith office practice
including ideo conferencing.
Next step:
Once determine if an intervie is appropriate, Exa iner ay email or all the ap licant to set up or
deny the intervi w.
If you're oing to deny the intervie , please contact your SPE to clear the trackin off of your dashboard.
If you need assistance please contact yo r SPE, an interview Specialist from your TC or see Quick
Reference Gui e.
Than you.
Please do not reply to this mes age; it as sent from an un onitor d e-mail address.
146553_18069288_2024-05-23_LET._002
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Appx0051
Accepted: Discuss 18069263
Subject; Accepted: Discuss 18069263
From; Ashlesha N sarikar <epctas@nesarikar.com>
Date; 4 23/2024, 5:17 PM
To: "Pulh'am, Christyann R." <ChristyanD.PuHi3m@USPTO.GOV>
Ashl sha Nesarikar <epctas@nesarikar.com> has accepted your event invitation.
Titl : Discuss 180692 3
Location: Microsoft Teams eeting
WhenT Friday, April 26, 2024 10:00 AM - 10:25 A
Organizer: Pulliam, Christyann R. <Christyann.Pulliam@USPTO.GOV>
Descri tion:
icrosoft Teams Need help?<htt s://aka.ms
e ting ID: 229 252 469 84
Passcode: yP7SWW
Dial-in by phone
+1540-566-5633„808231106#<tel:41540S665633„808231:106> Unit d
States, Roanoke
Findalocalnumbe r https; /diahn. teams, mjcrosoft om/d leat 9c-
a$2e • 02b- 9a - d 150 lOO39675?id -808231106>
Phone conference ID: 808 231 106#
Fororganizers: Meetingoptionschttps:Z tea s. icrosoft.epm
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Accepted: Discuss 18069263
Attendees: Ashlesha Nesarikar <epctas@nesarikar,com>
Attachments: -
invite.ics
3.8 KB
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RE: USPTO Automated Interview Request (AIR); ction Required - Received interview for US Application Number 18069263
Subject: RE: USPTQ Automated Interview Request (AIR): ction Required - Received intervi w for US
Application Number 18069263
From: ' Pulliam, Christyann R." <Christyann.Pulliam@USPTO.GOV>
Date: 4/30/2024, 7:35 AM
To: Ashlesha Nesarikar <epctas(®nesarikar.com>
CC: "us to(®nesarikar.com" <uspto@nesarikar.com>
Ashlesha,
I - -- -- -- --
| I suggest you call the Office of Patent Legal dministration Helpline (571-272-7701) with these questions, )
i i
Christyann
From: Ashlesha Nesarikar <epctas@nesarikar.corn>
Sent: Mond y, April 29, 2024 5:58 PM
To: P lliam, Christyann R. <Christyann.Pulliam@USPTO.GOV>
Cc: us to@nesarikar.com
Subject: Re: USPTO Automate Interview Request (AIR): Action Required - Receiv interview for US Ap lication
Number 18069263
.S' \ Th s email has onginated ss'-ss s ... i't x.ss'ss' cFID PLEASE CONSIDER TH SOU CE before respondifie, clicking: I
Ion links, or o|
xv' X
jening att chments..
. ....
MQAS Pulliam,
Thank you for your response.
To follow up, the exception under 37 CFR 1.29(b) applies. I realize that the Notice of Payment
Deficiency does not pro ide instructions to submit an electronic response (e.g., via Patent Center)
under that xc ption. I am particularly looking for a Doc Code and/or Document D scription for
submitting the response in Patent Center.
I am r viewing 37 CFR 1.29. I'll follo up if there ar any oth r questions. Please note, no agreement
was reached in our interview or subse uent emails.
Thank you for your hel .
Thank you,
Ashlesha
On 4/26/2024 2:27 PM, Pulliam, Christyann R. rote:
Ashlesha,
After iscussing the icro entity rules ith you today, I romised to et you a little ore information
about th assi nment exceptions to the icro entity ap lication count. You also asked about hat
response the Office ould pro ide if you pro i e such evid nce.
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RE: USPTO Automated Inten cw Request (AIR); ction Required - Received interview for US Application Number 18069263
1, The prior employment exception is narro . You can direct detailed questions about your situation
to the Office of Patent Legal A ministration Helpline (571-272-7701).
1. You need to provi e evidence tha a sufficient number of the previo sly filed atent
a lica ions ere obliged to be (or actually) assigned to a re ious em loyer such that the
application filing li it in 37 CFR 1.29(a)(2) was not exceede .
1. Prior employ ent exception only applies when the inventor as an employee not
an independent contractor or collaborator, etc.
. A licant must provide sufficient explanation and evid nce regar ing the inventors
em loyment history.
1. This includes provi ing the identity of current/previous employer(s) and ei her
associate ates of em loyment or associate pplic tions excepte under 37 CFR
1.29(b).
2. pplicant could also ro ide evi ence of actual assignments or ployment-related
cont act al or legal obligations to assign ri hts i the reviously filed a lications.
1. Preferably, this should be rovi e in the for of a list identifying, for each
pre io sly filed a l cation namin the inventors, the a licable eel/fra e
numbers where the actual assi nments or e ide ce of an obli ation to assign
ere recor ed with the Office, or, if such documents are bein recorded
concurrently ith the reply to the Notice, by rovidin copies of the
assi n ents or the evidence of an obli ation to assign with the r ly.
. If the response to the Fee Notice you rovide is ar uments about why ap licant is entitled to
micro entity status, hether they are insufficient or sufficient, you ill recei e a response from
the Offic .
I ho e this infor ation ans ers your q estion. You can reach out to me or the Office of Patent Le al
A ministration Helpline (571-27 -7701) with further questions.
Christyann Pulliam
TC 2100
US Patent an Trademark Office
571-270-1007
From: Ashlesha Nesar kar <epctas esarikar.com>
Sent: Tues ay, April 23, 024 10:37 AM
To: Pulliam, Christyann R. <Christ.yann.Pu Iia USPTQ,G(3V>
Cc: us to nesankancom
Subject: Re: USPTO Automated Inter ie Request ( IR): Action Require - Received interview for US
Application u ber 18069263
This email has originated (torn a ource outsi e p WM PLEASE CONSIDER THE SOURCE before
r sponding, clicki g on links, or opening attach ents.
MQ S Pulliam,
Thank you for your reply and the information.
Would you be able to talk on any of the mornings (any time before 12:00 ET) of April 25
(Thursday), April 26 (Friday), May 02 (Thursday), or May 03 (Friday)? If not, please let me
know the earliest available tim that works for you.
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RE: USPTO Automated Interview Request (AI ): ction Required - Received interview for US Application Number 18069263
Thank you,
Ashiesha
On 4/23/2024 7:54 AM, Pulliam, Christyarm R. rote:
Ashlesha Nesarikar,
I am not examining th application. I holding It while e await the response to the Notice
of Fees maile /22/2024. I am not available at the times you requested b t could talk at a
different time. Ho ever, I th nk the information you need in on the Micro Entity
c rtification for :
(2) APPLICATIO FILING LIMIT~ ther Ih® applicant no? the in anto? ncr a joint I svshtor h s
'tteen named ss ths inw hr s it in ento on more lhan sur ptsvioasty Med U. S: patent
a piiaations, e cluding pro isiortai apsMcatl s astd intsmationai apptiGStions under the Patent
CiXt erat m Treat (PCT) for whic the baste national foe trt for 37 CFR1 was not aid,
an also SKOludin g p nt ap lieattona for hich ttts a? i nt has assigned all owfiersrhip righfo,
or is. .obiiqafod to assign all ownership rights, as a result of t e applican s evious a ploy am.
nd the Fee notice
pplica t has sub itted a ce fwatkm of mie e tit stslus based u tm the gross- inco basis
sod p id loss m tbe ab ve ktotified a plieatioa based u on this eertifatiaa. fe order to ualify
t icro en i y st tus tmtler the g oss int ne basis, 37 CF I .2 IaX3) eqtitres the ap deani to
certify ss[n|atdmf the s pltettm to the mvetitor nor ajoitd iswetw has b name as the inventor
or a jontt rttvehtor dtt mate than Ixm f wtxtsly fsie atent sppitcafimts,. other than pplications
filed is another emtatty, r isio al a iie tiorfo tmder3t> ill(b), or imematiumtl
ap He atisns for which the basic natimml :lee under 3$ U. S 41(a) was nor paid. As explaine
in MPEP tM aXlRH , n a plieafmtt still ctxmts agaittst this filing limit even if it h s been
abantk ed or atented, and even if it i nni claim micto entit status. Wl t this ap licstiert was
tiled, the a Ucahi, the i ventor, m a joint invento watt name , on mu e than fou ptovitxtsl fil
atent a lications. This is 'fettr <? evi ettce that the submitted certil' -alion is in error because
the fil g limit in 37 CFR L29(aX.2) w s exceede , ecordh'sgly, the pay en s made in thia
pbeaiioivbased upon the a pare dy errmmous icro entity eertifseatiort are deflei iJ
Which also goes onto explain hat is nee ed in the response if you think you are micro
entity or if ou need to correct the status and fees paid.
Both can be viewe n Patent Center - https: / w¥ .u:sptG. ;py/
gaten tpojs
If you still have questions, please feel f ee call m . You do not nee to set up a for al
inter i w. You can also contact Inventor Ass stance Center at 800 -786-9199 OR
571 ¦¦272-1000 or the Application Assistance Unit at 888-786--0101 OR 571 - 72-4.000 OR
HelpA pto.gov,
Christyann Pulliam
TC 2100
US Patent and Trade ark Office
571-270-1007
From . PTO Automated Interview Request <PTQAatomated!nterviewReauest(j®USP Q.GOV>
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RE: USPTO Automated Interview Request [ I ): ction Required - Received interview for US A plication Nu ber 18069263
Sent: Monday, April 22t 2024 6:30 PM
To: Pulliam, Christyann R.
Cc: PTO Automated Interview Request .PTQ tomatetHnterM
Subject: USPTO Automated Inter ie R quest (AIR): Action e uire - Received intervie
for US Application Nu ber 18069 63
Importance: High
CHRISTYANN R. PULLIAM,
This is an Automated Intervie Re uest (AIR) a e by Ashlesha A. Nesarikar for
application number 18/069,263 for 4-29-2024 10:00 AM ET. The preferred intervie ty e
is: Video Conference. Please r s ond to this interview request within 1 business day.
Alternati e suggest d intervie date and ti e: 4-29-202 11:00 AM ET
Alt rnati e su ested interview date and time: 4-29-202412:00 PM ET
Top c for Discussion; Regarding the notice date 4/22/2024,1 am hoping to get an
understandin of the nature of evidence required in support of icro entity status. As a
pro se inve tor, I a reciate any clarity you ay ro i e, if these ti es ont work, lease
let e know.
Please contact Ashlesha A. Nesarikar by calling +1 693714983 or emailing
&petas@nesar! r<com to set up an interview or deny if a ro riate. Note, if you are
denying an intervie , the inter ie request fla ill not be cleared until you've contacted
our SPE,
Exa iner ay grant o deny the inter iew in accordance with current USPTO intervie
policy, p actice and ro edur (See PEP 713).
By receiving this AIR submission, the appl cant has ce tified that:
This submission is requested to be acce ted as an authorization for this interview to
co municate via the internet. Recognizing that Internet co unications are not secure,
I hereby authorize the USPTO to com unicate with the undersigned concerning
schedulin of the intervie via vi eo conference, instant essagin , or electronic ail,
an to conduct the intervie in accor ance with office practice including vi eo
conferencing.
Next step:
Once dete mined if an inter ie is appropriate. Exa iner ay e ail or all the applicant to
set up or deny the inter ie .
If you're going to deny the interview, lease contact your SPE to clear the tracking off of
your dashboard.
If you n ed assistance lease contact your SPE, an Inter iew .Speci list fro your TC or see
Quic
Thank you.
Please do not reply to this message; it was sent from an unmonitored e-mail address,
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Appx0057
RE: Request for missing infor ation regarding Notice of Payment Deficiency
Subject: RE: Request for missing information regarding Notice of Payment Deficiency
From: Patent Practice <PatentPractice@USPTO.GOV>
Date: 5/6/2024, 2:29 PM
To:Ashiesha Nesarikar <epctas@nesarikar.com>, "Cottin ha , John"
<John.Cottin ha @USPTO.GOV>
CC: "iispto@nesari ar.com" <uspto@nesarikar.com>
Thank you for your inquiry.
The contact and phone number regarding the notice is listed on the second pa e of the notice.
From: Ashlesha Nesarikar <e ctas@nesarikar.com>
Sent: Friday, May 3, 2024 4:03 PM
To: Cott n ham, John <John.Cottin ham@USPTO.GOV>; Patent Practice <Patent ractice@USPTO.GO >
Cc: uspto@nesarika .com
Subject: Re: R q est fo i si g information regarding Notice of Pay ent Deficiency
J
AyfiON: This e ail has originated fro a source oum-Je of USP'iD. PLEASE CONSIDER THE SOURCE before responding, clic ing i
ion links, or opening attachments.
To: John Cottingham
TC Grou Director, TC 2100
Director Cottingha ,
As a pro se applicant. I m reaching out to you as you hav signed the notice dated 04/22/2024 (titled:
Noti e of Payment Defi iency) regardin Application No. 18069263 (and similarly applications:
18069288, 18069382, 18069474, 18069596, 18069721, 18069819, and 18069883). Could you
expedite the provision of th requested informa ion below? Please see below my email to Patent
Legal Administration on May 01, 2024.
Thank you,
Ashlesha Nesarikar
On 5/1/202 8:24 PM, Ashlesha Nesarikar wrote:
Res ectfully,
The notices ated 04/22 024 (titled: Noti e of Pay ent D ficiency) regar ing Application No. 18069263
(an si ilarly ap lications: 18069288,18069382, 1806947 , 18069596, 18069721,18069819, and
18069883), with Examiner P lliam, Christyann , Art Unit 2100, ere sent in error.
Though the ot ces cite 37 CF 1.29(a)(2) as a justification for the alle ed pay ent deficiency, the
notices omit 37 CFR 1.29(b), hich modifies 37 CFR 1.29 (a)(2) and the justification.
For the pro se applicants, the notices further omit ho to submit a esponse under 37 CF 1.29(b) in
Patent Center, e. ,, a Doc Co e (and descri tion) in Patent Center for the a plicants to use hen
1 6553_18069288_2024-05-23_LET._002
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RE: Request for missing information regarding Notice of Payment Deficiency
su mitting responses to the notices.
The applicants respectfuHy r quest any help and/or information Patent Legal Ad inistration can provide.
This request for infor ation is a follow up on my intervie and emails with MQAS Pullia .
Thank you,
/Ashlesha A Nesarikar/
Ashlesha A. Nesarikar
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Rc: Request for missing information regarding No ice of Payment Deficiency
Subject; Re: Request for missing information regarding Notice of Payment Deficiency
From: pctas@nesarikar.com
Date: 5/21/2024, 5:02 PM
To: PatentsO budsmanOffice@uspto.gov, PatentsO budsOffi e@uspto.gov
CC: epctas@ne5arikar.c0 , '"us t0@ne5arikar.com" <us to@nesarikar.cgm>
Hi Patrick,
Thank you for your response. I don t think the information fro your last e ail a lies to
my situation. It a ears to be the doc code for noti ication of loss of micro entity
status.
I will respon to the Notice based on y phone call with loa ne Burke fro the Office of
Petitions on 05/08/2024. She infor ed me that I can sub it a letter in icating Ap li ants'
contin e micro entity statuses under a descri tion of Miscellaneous Letter, and that if I
call her after sub ission, she will make sure it is routed properly.
Than you for your help.
/AshLesha Nesarikar/
Ashlesha A. Nesarikar
I
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Rc: Request for missing information regarding Notice of Payment Deficiency
hank yon for yonr response. Hots'ever.t yonr response oe no ans er he
specific question that I ask d., I will r iterate below;
' For ths pro so applican s.,, the-no i e further csslt. how o sutssi a-
res onse un er 37 CFh 1.2& b in Patent C n er., e,g.a Do Co e (and
des ri tion) in Paten Center for h ap licants to use when sub itting
res onses: to the notices.. The applicants request hel i submi ing the
rsxp&mx® in Pate t Cen er.
Thank yoas
/Pshtss 'in A A essrife r/
Ashlesha A. he arikar
On S/7/2324 11: 0 AK., .PS eii bu siBsnOfflc usjs o. wrote:
hank you for contacting the Patents O budsman Office., Please see res onse below.
Hello.,
The notice is NOT in error,. Even though it takes 1 inventor to have subssitteo at least
4 •¦son ro isi nal applica i n t snake thi a lication not qualify for «:ier<s ., every
invantbr listed has shbrsitts ?sor th n nop provisional a iicati ns< This
ap lication and an other a lication an of these inventors are on sebs ited after
this ap lication does not qualif for micro entity status as it state in the HPCb
50§,04(>a}(i . B rulo which is on ths notice.
SR, l-8S73i0S43
Bes r gar s.,
Patri ok
Patents Gr buds
[THREAD X :1-E6MRT ]
........,.. Original Mosssgo
from: epetas nesarikar..,.c ss-
Sent;. 5/S/141A bO;.20:54
& r 5iiS.p sssgr .r< c »>
Subjec : Reques for STissing in ormation regarding Notice of Payment Deficiency
CAUTl'ON: This stissil as srigi d sk frsen s source outsid of USFTQ. PLEASE CUNSXDEE THE
SGdRCc before responding., c icking on links, or opening attach ents.
Rospsotfully;,
The notices dated 0 /22/2024 (titled: Notice of Payment Deficiency)
regarding A plication No, 10bE9263 (a d similarl a lications:
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Rc: Request foi missing information regarding Notice of Payment Deficiency
%• •• x- *' BJ »xx \» . » X X X. .» . >•¦ A y x.'x. »• C, A- ••• X t •
146553 18069288 2024-05-23 LET. 002
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1
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146553_18069288_2024-05-23_LET._003
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Application No: 18/069, 288
Examiner: PULLIAM, CHRISTYANN R
Filed: 12/21/2022
Group Art Unit: 2100
Applic nts:
Atty. Dkt. No: 4as-morphism
Abhijit R. Nesarikar
Ashlesha A. Nesarikar
Confirmation Number: 3954
Anika A. Nesarikar
Title of Invention: Systems and Methods for Inte ligent Awareness and Intent for Autonomous
Vehicles
Certificate of Transmission under 37 CFR 1.8
I hereby certify that this correspondence (along with any paper referred to as being attached or enclosed) is being
transmitted via the USPTO s patent electronic filing system. The date of transmission is the receipt date accorded
by the electronic filing receipt for this correspondence.
Electronic signature for Ashlcsha A. Nesarikar: /Ashlcsha A Nesarikar/
Date: May 23, 2024 Phone: 469-371-4983
RESPONSE TO NOTICE OF PAYMENT DEFICIENCY
Attn: Office of Petitions
Mail Stop Petitions
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Commissioner:
In response to the Notice of Payment Deficiency (hereinafter Notice) mailed April 22, 2024,
Applicants respectfully assert that the certifications of micro entity status are valid. Applicants
arguments in support of Applic nts certifications of micro entity status accompany this paper.
Communications with MQAS Pulliam and others regarding Notice are included as Exhibit B.
1
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 40 of 59 PageID
#: 56
Appx0063
1 Applicants believe that no extensions of time are required beyond those which may otherwise be
2 provided for in documents accompanying this remark. However, if required to prevent
3 abandonment, then Applicants request such extension of ti e under 37 C.F.R. 1.136(a).
4 Date: 05/23/2024
5 /Ashlesha ANesarikar/
6 Ashlesha A. Nesarikar
2
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#: 57
Appx0064
Amenea Invents Act ( IA-) Fre uently ke4 Quertio | USPTO
l>ttp: /. :' eb.e>vhive.<«rg;\veb/202 04<)221 ov.Zp
i a« nic rvkrt M s-i»...
, ... ,. B hib.it A.
brntt g - ent owner ohi-n scop o Jeoient?
fcotsne nesus
> Who s pe mi tfed to submit patent owner stato ents?
> If a third party cites a patent owner state ent, can a thi natt keep hist/lter dentity
confi e nt: si?
What types of wr tte statements by a patent owner a he sub itte i to the official
file of e pate t?
Oihsr
40
> is a written statement of the pa nt owner tegardirig claim scope filed i a proceeding
before the hiternatis sl Trade Commission (iTC) sligibls for submission?
> What is the effective date tor ths citation of patent owner tatements provision in the
S hsr
35 AIA?
T x Sh«tft§;es
America Invents Act ( IA) - Derivation Proceedings - Other
dihsr
> Ca a pa ty to a tietivatiori procee ing ap eal tee Soar 's fint-i ecision? (Qtiestiori;
OE'RIOSO)
> in lieu of s erivation, can the pa ties to a erivation piocsedisig esolve invento ship tn
any other way? (Qdeatidn: 0ER1070)
> Cart (he pat ties to a erivation proceeding engage in seltlewiefit (Questio ;; DER1680)
F Whai are the • equisemetste for seeking a detivatlon procee ing? (Question DERI&20)
? Whai statutor requirements tn si a etitioner rnesi ifi a petition for a deri ation
procee ing? .{Question; DERIOSO)
> Whai is the sitan ar for inntiiutfng a srivstion roceeding an who will ocido whether
the stan ar is met? (Question: GER104&)
*¦ How wili the Boar conclude a eri ation proceeding? ( uestion; llERiC'bfJ;
> What is the effect ve ate for the eri ation rovision in the AI ? (Question: LfEI' i OlQ)
America Invents Act (AIA Fees»Oth r
When Wsil ths USPTO begin coitet tig the additions' $400. {an Si OD for a atl entity)
fpr.sn original patent application (except for a design, plant, or provis nal applic tion)
that is not filed electronicafiy? (Question: FSE3000)
> Do prosisionai and noiiprovisional applications both coun toward the filing limit for
urposes of Pstabfisihing n-io e tf sty status utsder the gross i coffle“ basis? {Quesfios:
FEE432?)
If an applicant, filed nu erous nonprovis nal patent applications in connection with the
ap licant's revious; em loyment, can the a licant qualify as a micro entity under the
"gross ncome definition aft r leaving that employment? (Q estion: F£E o3f>
146553_18069288_2024-05-23_LET._004
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#: 58
Appx0065
ienc Tnve< fs ct. (A:A-) Fre e tly Ai-ke-3 | USPTO
l>#1p>:z7web.6>vhive.OTg/xveb/20 2404 22i'59 6/hKiw:, w'w;v.u»pK« oovVpatenss/l«ivx/mr.«-»c.x-cfivectj>-e>...
Yes, (bs a p afi:. ot&n a iy n sy i» . ualify as a •nio o entity. Thwe f«; bri t an lb nuf"«bet cf
reviously.Js ed atents lu'-atioris tbst I' ay ba az';»JGad from the re iously file appli ation'
w aineu ?n tbe sroas inuoioe dciinittab fof niiern eabty state > on lhe bas;-> of oor
mpl yment
1 an applicant doss not quality s a tnitto tity." would the applicant autoinaticat y be
coitsidfirad a largs entity?'1 (Question; FF.E4SQ5;
? If an appticaiiots 5s allowed pilot to the itn la nialton of the new fee sche le, but the
applicant pays ths isstis. and publ cation tees on or after March IS, 2013. doss the
applicant need to pay the new toe amount of S2.08Q (i,e., large enti issue iee o
> It the atent Maintenance Fee Remin er notice was mailed prior to the iinplernentatiort
of the hew fas.schedule, but the nisihtenshes top is paid on or after March 59,2013,
after the new eterit toe sche ule beco es s toclive, dues s palentee nee to a the
What will ha pen if I forget to ay a new atent fee a ount tepuited On o after March
IS, 2013, but instead pay the patent'toe amount applicable before Match 19.2013?
(Qusstmtr, FESS320)
> Will toes collected in FY 201' in excess of USf TO s a ro iatio s be. eposited into ths
R se ve Fun creato by Se tion 22 of the Act? ( sestic : FEE7000)
> I would lilts to ensure that I atn paying the propet fse atnou i for a articula servi.es.
How do I determin ths new atent fee amounts? (Question: F£E&'200i
> i un erstand that on arch 19.2013. the USPi'O wiU offer re uced fees for micro entity
e ticants end patentees. I have etermine that l qualify es a icro sntily a plicant.
Where can I locate ths new micro entity fess? (Question: rEE825C)
> hen calculating the fes for a secon or subsequent ROE, o I count the nu ber of
RCEs file for that application in toial, or only the numbe of RCEs file far that
application in total, or onl the.nu be of RCEs frlnd sine® ihe new fee was astablishe
¦ if at) ap licant f le an a pasl brief an aid th® fee fot fil ng the b ief before March 19,
2013. will the applicant also he require to pay the fee to forwar an appeal re uired on
or after Ma ch 19,. ;?013? (Question: FEE8305)
If an applicant is no lunge eligible for micro entity status, can the a plicant ake a
sim ie statementof loss of status without i entif ing which rs uireme tls} far micro
entit status is no langsr BBtesfieri? (Question: FEF.47OT)
> if an ap licant loses eligibility far ntierp entit tatus, can the a p-icartt pay ths fee in ths
small or un iscounted amount, as appropriate, without notifying the Office of loss of
micro entity status? (Question; FEE 4705)
If a micro entity applicant files a loss oi entitlement to cro enilty status and wants to
claim s all entit status, can tbs applicant do so in a single filing with the Cities or is
the ap licant re uirsd to file both a loss of eniitiernenS of micro anti
> On what date wyll I nave to begin a ing the new patent fee amounts set forth in ths
atent fee final rule? (Questtom EE61O0)
146553_18069288_2024-05-23_LET._004
43
?oiil
4Um2024. ll:>? AM
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 43 of 59 PageID
#: 59
Appx0066
UNITED STATES
PA ENT AND TRADEM RK OFFIC
Page 1 of 2
P.O. Box 1450
A exandria, V 223 3 -1450
www.uspto.gov
ELECTRONIC ACKNOWLEDGEMENT RECEIPT
APPLICATION #
18/069,288
RECEIPT DATE/TIME
05/23/2024 08:50:37 PM Z ET
ATTORNEY DOCKET #
4as-morphism
Title of Invention
Systems and Methods for Intelligent Awareness and Intent for Autonomous Vehicles
Application Information
APPLICATION TYPE
Utility - Nonprovisional Application
under 35 USC 111(a)
PATENT #
-
CONFIRMATION #
3954
FILED BY
Abhijit Nesarikar
PATENT CENTER #
65654933
FILING DATE
12/21/2022
CUSTOMER #
146553
FIRST NAMED
INVENTOR
Abhijit R. Nesarikar
CORRESPONDENCE
ADDRESS
-
AUTHORIZED BY
-
TOTAL DOCUMENTS: 4
Documents
DOCIWE T
as-morphism-Fee Notice
Ftesponse,pdf
ReplyT NoticeOfPaymentDefi
ofenc .pdf
ExhibitA AIA Frequently
Asked Questions USPTO
img.pdf
ExhibitB Com unications
img.pdf
P GES DESCRIPTION
SIZE (KB)
Miscellaneous Incoming Letter
143 KB
1
iscellaneous Inco ing Letter
327 B
isoeilaneoi s Incoming Lette
535 KB
14
Miscellaneous inco ing Letter
3526 F
146553_18069288_2024-05-23_N417
44
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 44 of 59 PageID
#: 60
Appx0067
Page 2 of 2
Digest
DOCU E T
ESS GE Di EST(SH 12)
¦4as-morph sm-Fee Notic
F isponse.pdf
82DDD313D5DAA5BDE678DD7756A62F10FC99CEDD29354DB
DAB827FF6E60CD962237D46B636E07E45A640B885C5B0E421
07D130853AE0E38E4402BD601A9DF8A4
F ep yTo oticeOfF aymeiitD fic
ency.pdf
59607D4883D3CAGE8D63DA32368616308C23 54EB33 70E66
6A7AB9BE4FDE4AA2A58FCFEF7E4F9A9ED610286A85E7BCD3
91BCAC70E68AB20573961C54C0A33F0
ExhibitA IA reqisent y Asked
Questions USPTO img. df
62D742326AA119F09A9D5F906 92F38286 55FAE31C7D6A6A5
79626AE234C434D16799543AB069C2B099CE824DBAE72FB0F
C D93BC93CA2B54E ;F41C1C22F7AA
Exh bitB Communications
img.pdf
F51D5C4B2626DD7AF04556B9C5A69DF816482 5 43584837B
DFD97ED5D21CFB8C5FFC6 A158C4736F88A4O0BE1A90C14D
1D075 E643495E0DD8001E3C66DF808
T s Acknowiedgemsnl Receipt evi ences receipt on tn noted date by the USP7O ci the indicated ocuments; charact rized
by the applican , and including page counts, where applicable. It ser es as evidence of recei t similar o a Post Car , as
de cribe in MPEP 503.
Hew A plications Un er 35 U.S.C. 11
If new application is being filed and the application includes the necess ry component for filing date (see 37 CPi-'l ¦|.53(b)-(d)
n MP P 506), st Filing Receipt (37 CFR 1.54) will be issued in due course nd the date shown on this Acknowle ge ent
Receipt will establish the filing dale of the ap lic tion
national Stage of an Internstionsl Application unde 35 U.S.C. 371
if a ti ely sub ission to ente the nation l t ge of an internati nal application is co pli nt ilt: the conditions of 35 Li S.C.
371 and oilie a lic ble requirements a Fo PGTZDO/EO/903 in ic ting accept nce of the ap lication as a national st ge
sub ission under 35 U.S.C. 371 will be issued in ddition io the Filing Receipt, in due cou se.
Hew inte nadonal p lication Filed with the US TO as a Receiving Office
If new internation l a plic tion i being file and the intern tional ap lication includes the necessa co ponents for an
inte nation l filing date (see PCT Article 11 and MPEP1810), a Notification of the Intern tional A plication Nu be an of se
International Filing D te (Form PCT/RO/105) will be Issued in due cou se, subject to prescriptions concorning national secu ity,
and the d te shown on this Acknowledge ent Receipt ill establish ths intern tional filing d te ol the a lication.
146553_18069288_2024-05-23_N417
45
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#: 61
Appx0068
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146553 18069288 2024-09-09 LET.
46
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Ap lication No: 18/069,288
Filed: 12 21 2022.
Examiner: PULLIAM, CHRISTY ANN R
Group Art Unit: 2100
Applicant and Inventors;
Atty. Dkt. No: 4as-mor hism
Abhijit R. Nesarikar
Ashlesha . Ne arikar
Confirmation Number: 3954
A ika A. Nesarikar
Title of Invention: Systems and Methods for Intelligent Awareness an Intent for Autonomous
Vehicles
Certificate of Trans ssion under 37 C FR 1.8
I hereby certify that this corr spondence (along with any pape referre to as being attached o enclosed) is being
transmitted via the USPTO s p tent electronic filing system. The ate of tr nsmission i the receipt date accor ed
by the elect onic filing receipt for tliis cor espo ence.
Electronic signature for Ashlesha A. Nesarikar; /As lesha Nesarikar/
Date: 09/09/2024 Phone: 469-371-4 83
RESPONSE TO NOTICE OF P YMENT DEFICIENCY
Attn: Office of Petitions
Mail Stop Petitions
Commissioner for Patents
P.O. Box 1450
Alexandria, V A 22313-1450
Co missioner:
Regarding Shirene B antley s letter dated 08/08/2024, Shirene Brantley errs in statin on pa e 1
The reply, however, is an insufficient response to the Notice for the reason(s) listed below .
(
1 Shirene Brantley errs at least b materially misrepresenting facts. At least the errors undermi e ,
i '
i Inventors ability to respond. Errors in Shirene Brantley s letter were c lled to the attention f
1
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 46 of 59 PageID
#: 62
Appx0069
1
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146553_18069288_2024-09-09_LET.
47
i the Office, and Inven ors requested a r started period for reply in communications to the USPTO ]
i i
on 09/05/2024 an again on.09/06/2024 (see attachments which arc incorporated herein). ]
l _______ ____ ___
Inventors good faith reply of 05/23/2024 to the Notice of Payment Deficiency mailed on
4/22/2024 (hereinafter Notice) was sufficient to show error by t e USPTO in ending Notice
an re ains ufficient in light of Shirene Brantley s errors. The USPTO f ils to make aprima
facie case of erroneous certification of icro entity status. Inventor re ectfully re uest that in
light of Invent s co pliance ith 37 CFR 1.29, the USPTO with raw Notice and Shirene
,
Brantley’s letter. Otherwise, in light of error in Shirene Brantley s letter, the USPTO must sen 1
1 , J
i a correctio an start a new peri d for reply under MPEP 710.06, ,
In ad ition to the foregoing, Shirene Brantley er s in st tin
Applicant is inionned that tlie exception under 37 CFR 1.29(b) oes not apply if the three joint
inventors are current employees of the entity to hich they are under an obligation by contract or
law to assign all ownership rights in the a plications. .The exception un er 37 CFR 1.29(b) only
applies if the inventors are former e ployees. It is noted that the mailing addresses for the three
joint inventors identified the Application D ta Sheets filed in 11 of the 12 above-listed
applications is 8025 Ambiance Way, Plano, TX 75024, which corresponds to the current a ress
fo Plano Intelligence Inc. On August. 5, 2024, Ashlesha A. Nesa ikar s Linkedin age indic tes
that she is currently Chief Executive Officer of Plano nt lligence, Inc. nd has been sinc 2016.
Inventors respond in good faith, that on and before the filing date of the current application:
1. Ashlesha Nesarikar and Anika Nesarikar have been obligate to assign the rights
in provisional atent a plications 6 705,296 an 63/265,932 (and their child
applic tions) as a result of each f thei prior employ ent with My Dentist, PLLC, Plano,
TX.
2. Abhijit Nesarikar has been obligated to assi n the ights in provisional patent
applic tions 62/705,296 and 63/265,932 (and their child a plications) a result, of his
rior employment with Adva tech Consulting, Inc, Plano, TX.
From before the filing date of the current application through to ay, Ashlesha Nesarikar and
Anika esarikar have not been employe by' My Dentist PLLC and Abhijit Nesarikar has not
been e loyed by dvantech Consulting Inc.
2
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 47 of 59 PageID
#: 63
Appx0070
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146553_18069288_2024-09-09_LET.
48
Currently, AshleshaNesarikar is employed by Plano Intelligence Inc. Plano, TX and General Al
LLC, Plano, TX. Anika Ncsarikar is employed by General Al LLC a d Plano Intelligence Inc.
Abhijit Nesarikar is em loyed by A I Fintech hie, Plano, TX.
For at least the fo egoing reasons, no xtensio f time is required. Howeve , if require to
prevent ab ndonment, then Inventors request such extensi n of time under 3'7 C.F.R, LI 36( ). If
any fees are due (fo example, related to extensions, net a dition of claims, etc.). Inventors
respectfully request that USPTO notify Inventors of the additional fee.
Date: 09/09/2024
/Ashlesha Nesarik r/
shle ha A. Nesarikar
/Anika Nesarikar
Anik A. Nesarikar
/Abhijit R Nesarik r/
Abhijit R. Nesarikar
3
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 48 of 59 PageID
#: 64
Appx0071
Attn: Shirenc Brantley, Attorney Advisor, OPET
Subject; Attn: Shirene Brantley, Attorney Advisor, OPET
From: Ashlesha Nesarikar <epctas@n sarikar.com>
Date: 9/5/2024, 8:48 PM
To: PatentsOmbudsmanOffice@uspto.go , PatentsOmbudsOffice@uspto.gov
CC: epctas@nesarikar.com, ' us to@nesarikar.co " <uspto@nesarikar.com>
ttn: Shirene Brantley, Attorney Advisor, OPET
Shirene Brantley s letters d ted 08/08/202 an 08/09/2024 regarding application numbers
18069263,18069288, 18069382, 18069474, 18069596, 18069721, 18069819, and 18069883 cont in
material mis epresentations.
For example, in at least Shirene Brantley's letter dated 08/08/2024 re ardin application No.
18/069,263, Inv ntors of the a plication (Ashlesha A. Nesarikar, Anika A. Nesarikar, an Abhijit R.
esarikar) do not recognize a plication #10165 55. Shirene Brantley erred. The letter states on pa e
2
Te w st ta itt rvs rfc, 4 Offic livsss with t s s dliwivd
s kssx ' sH sd i si s Wi s wi vs ® tsH r 8.. Hs ika s< H ss,
X l I liw T . Asklefe - s i sr ef Hwx T , rsasi Ask&rs A.. Nssssribas' X.
l iCAAS? ( bkijli X. Nswfar <Wyi
Despite Inventors searches after receivin Shirene Brantley's letter, Inventors have not found
application #10165455. In entors, in good faith, conclude that application #10165455, if it exists, s
not published. Shirene Brantley s error undermines Inventors' ability to respond to Shirene Brantley s
lett r.
To reiterate, Abhijit Nesari a does not recognize a plication #10165455. Based on filing dates of
neighboring a plication numbers, the application app ars to have been filed in 2002. To the best of
his recollection, Abhijit Nesa ikar did not authorize filing of an application on his behalf in 2002.
(
] In addition to the foregoin , Shirene Brantley's letter states on age 3
i i
[ F d WKW, a rgvfew csf orber fn v os rbe I of 1
1 ap i rar Ans nod Other r rds dfxjs i vt A nn whfesw the 1
i isrvwtoss hnve isssl s!<A <sr w ta an »bisga!ss>n b wiiraei or bsw so as sign all wsershs ,
ff hh in ttae to wdta- [
i i
i i
] Shirene Brantl y erred as assignm nt of appli ation number 17906844 was recorded on 07 13/20 3 j
j and is ubli ly accessible throu h USPTO's website (reel/frame: 06 2 5/0121). Application number
_ _179068_ 4_is_ a child "application of" p rov isloriaT applicatron #627705,~296."Oh and 6efor~e"the filln 'date"
of application No. 18/069,263, each of the inventors of th USPTO pro isional pate t application No.
#6 /705,296 was obli ated to assi n the rights in the rovisional patent ap lication No. #62/705, 96
and its child applications (e. ., 17906844 and 17303497) as a r sult of each of the inventors' pre ious
employment in the state of Texas.
Shi ene B antley errs in materially misr resenting facts in correspondence with Inventors. Further,
146553_18069288_2024-09-09_LET. 49
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9/7/2024,1:41 PM
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 49 of 59 PageID
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Appx0072
Attn: Shircne Brantley, Attorney Advisor, OPET
Shirene Brantley errs in mandating, un r the threat of abandonment, disclosure of Inventors
information that is personal, nonpublic, and sensiti e.
Ba ed on the foregoing,
r
i 1. as Inventors res onded on 05/23/2024 with candor and ood faith to the Notice of Payment i
Deficiency mailed on 04/22/2024; ]
j 2. as Shirene Brantley's letter (of 08/08/2024) all es insufficie cy of Inventors' respon e of (
05/23/2024 base on new alle ations not pr viously present to Inventors; and ]
1 3. as Shirene B antley's letter dated 08/08/2024 cont ins aterial misr presentations (
I
Shirene Brantley errs in stating on pa e 1 The reply, however, is an insufficient response to the
Notice for the reason(s) listed belo .
[ Accordin ly, Inventors request at least tha the period for re ly be restarted under MPEP 710.06 for !
" Shirene 'Bra htl y's reftefs dafeci'03/(T872O2 4"ana'0B7CJ972024-reg"ardihg ap Iica tfoh m'befs J
18069263, 18069288, 18069382, 18069474, 18069596, 18069721, 8069819, a d 18069883.
Ashlesha Nesarikar may be contacted at (469)371-4983,
Respectfully,
Inv ntors
/Ashlesha A esarikar/ /Anika A Nesarikar/ /Abhijit R esarikar/
Ashlesha A. Nesarikar Anika A. Nesarikar Abhijit R. Nesarikar
Date: 09/05/2024
50
146553_18069288_2024-09-09_LET.
2 of 2
9/7/2024,1:41 PM
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 50 of 59 PageID
#: 66
Appx0073
THE U TED STATES Fa ENT A D TRA EMARK OFEICR
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App i xs No: R 'OSE, TOT
Fi ; MEN D SS
Hva N:
Exa Mer: PUL1J M. CHRISTYANN R
{A'i.. up Axt 2109
; tty. Dkt. g; Ga ntG A i
Ndj. l R Kesarik&r
(?A lpnsyon Nux bsr: 3850
A lksta . Nesadkar i
, ;.dks , NcS D - i
Titte oflnveaEan; MeEKubioN Syste s lb" RtklHgeN Awwaess a d t r nitw us
VvNciiA
Ttts: Shi ty B mNy; tlorn A' Advs . DRE f
(MmridsU otter fcr Ptncnt?
P.O. B x 1450
Ale GH-ld . V 2031 T'14S0
Shkene Branlkl N kO t UskO 98 ’08/202 aod 0M0N2024 rei Olng ispplicatkn umbers
lg06«363: DN69S8R 18069382 18069 7 . 18069596. 18669721, l b98i9. and 18060883
contain ateEM '' . ' x >
For sxampfc.. k: a bast Nhitsine Br ntley A letter dated 08818/2024 fegardrng appitsadon No.
18/069, 63, ksAkOA ef tbe a Hea kfr ( Mk h . esarik&r, Antka . No ankra. and Abhyh
R. NesarikaA do not A sag G appHcatlGa #19165455. Slti oe Brandey err .Thfe letter states
on page 2
nr/ rr ofaani/ar; i
1 t e eby e ' thst tfeh f,i \ ¦ beistg s'1 \ ' x ' ' «x x « Fax No.
(S7n273-8300i ?t : Attn:; Ehnena Brtnnky. ttorney Adsisor, DPE . Comtnissto e ibr Patents.
P.0. Bgx 1456, lexandria, V 233 3-1439. e s the date sho n bek>w.
Slgt afo: , -d M's \ \.. <M,sk
N< e: shlesha A, Neaarikar l>;5U::09 0tx 2624
„............„
146553_18069288_2024-09-09_LET.
51
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146553_18069288_2024-09-09_LET.
Tv ass i a|j l ass it} che ag i resxsrds, ite Oftiec s$ pswtdtRg a ikatsi. w h She a p&: hxl
BYiSi sfttSts SSil SiSiS Osw! :}«!» AS8h.P R. N&SJli'SK.Si'SSJ
.X asO O iss. IX, AX cxhs A. Ns adkai oi TX. fiss As s A, <w&ar of Pi&so, .
19:654111 A hs k R Ms? ssMIas »¦ •.;;¦ ?
Desphe I ve tors s&archs affer re® .ng Shnwfc Brakttey s teller, toVd Ars ha e i l fbuPG
a plieat i: #101654S5,. lavontGi-p, hi seed f iih, ci®eh<<fc ihsi s l aiteB ? 19K>Mite.: 0 it
exivte, is itei published, Shis et Brantley's errer xtawdne inventers iteiiky te respond te
Shi cn ranflsy 's ielten
It) reitet e, Abhij U Ne arikdr does not recognize, fippliear te #10.l6 455. Based an hhng date
>.-f petehbor ng appheatiun teimber , the application appears to h ve been tiled rn 2004. i o the
be t of i rgeoileetion., Abhhii c arikar id not atehenae ffiirsg of ao tippheteion on is behalf
hi 2-002,i i
J hi ad ition to the fo egoirai., Shirene Brantley's letter states an page I [
I I
ftertir rsnofe. a revie rU ihe other five appheatte is on tee alx p'teenofftte fist ot d
! appl steoisv and eun spoadi} : Oftiee iissignmesi teetrrds does nut teveai any s iiifes s? ih.« ths '
s ;vi? i;.<s r: liis.vs assipp vil or are uader aa »blig;teo s by er atntet o taw SO a ign ail u nerdu
• sisrht ; la teove aoptleteiac io ns sr csr&yfpariy ¦ i
Is' I
I I
[ Xhiltete? Sriintley erred a assig e of ap heatios riurnber t s viMrteH was recorde an
! 07/13/2023 and is pubitely aoees ibte ih snigh I SF ) A website (reet mtee; 064245/9121), !
i _
pphc&Ucn number 1 /906844 Is & ehild ap Ucntiou of provisional a iieteion #6z/7o5,296. O
and before the bling date ofapplicatinn Na. OVte>9;26 ach of he in en rs of the USPTO
prrjvisiottei patent a lkadou o. #62 705.296 as obligated to assign the sig a in the
pnovlsionte teent apphentten o, 462/705.276 and its child appheations (s.g„ 17906844 and
17303 97 a a re ult of each of the hivernors previous n ioy ent in the state of Texas.
Shtene Brantley errs >« ntete bdly rnlsre iosentlite teet ?u co tespun knee vvith in unter .
Fu the . Shherte S x titey errs in nteudatl pi. unde the dsmat of ahasrdopnteut. i closure oi
Inv ntors in r atlun hat is ersonal, non ablk, a aeusitive.
n/ 4 ?'£ O/;' M4t.£.6¥O f
1 hereby ee iify that this eo espu idsswe Is being tran itted by teaimtef [USP; 1 ax No.
<5?l}27 MKn te: Attn; bhi eneBrantley, Attorne A i or. O BT. Currrmissioner fo Famrtts.
P.O. Box 1450. Alexandrite VA 22313-1 50, on the date show belo .
Sign ture; /Ashlesha Kesarikar/
Na e: Asblesha A. 'teesarikar l.hneUO/06r 1.} 4
' ' '' •¦)
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 52 of 59 PageID
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146553_18069288_2024-09-09_LET.
53
1.. ss 5x;spo ded on 05/23/2024 vUh eandor arsd goad feith k> he Mohce of
i Paym nt De&ieney n fed an 04/22 20 ; i
i i
| 2, ns Sh ame Br tey's fetter tof 08 08 0 ) alleges i ufHciency of te en e' response '
i f 05/23 02 based ou new alkgations not previous y presented to Inventors; and !
1 3. as Slu Krsa stfeyfe tetter dated 08/08/ 424 conta ns m te ial ntistvpressntedans j
Shi ene Bramtey errs in sisthte on age 1 The reply, htn e , is an svsffee response to. the
A- Ok »a t b» ed ",
,
1 Aceordipgly.. feventers re uest as least that rhe perted for reply be restarted tttteer MPE? 710,90
fo Shi ene Brantley's tet ers dated 08/08/ 0 4 and 08/00 2024 regarding ..application uumbets
fefe tfo, 18069 88, 18 69382. 18069474, 18009596,1896972 L 1806981 fo and 180698(0.
Aehtes te ewikar may be unttteeted at {46 s3? 0'4983.
Ites tetfoUy,
Invertes s
Ashiesha A Nesa tkar/
, ite ' \' ,,> \,S'
Dais; 99 05 2024
/Anfo.a A Ne iku/
Atrika A, Nesa ikar
/Ablifot. R Nesarika /
Ablfoit R. esarikar
CPA77AfofoTA F 4.FTA &' 01? TRA AAAffiXfohV
I hereby eertif fosi this: cnrr«s siden-::e i ; being transmi ted by faeslmds (IfSPTD I? ax No.
¦ 5?s)2?3 '83Q0j o: At n: Shirene emte . ttorn y Ad ierm O PETv Ce missfortet for Patents,
P.O. Bo>; 1450, Alexandrite V 2 813-1456, on the date shown beimv.
Sigste u a: /Ashifefoa A estfofatr
Na e: Afedsshu A. Ns s-arikar Datet69 06/2024
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 53 of 59 PageID
#: 69
Appx0076
Attn: Shircnc Brantley, Attorney Advisor, OPET
Subject; Attn: Shirene Brantley, At orney Advisor, OPET
From; Ashlesha Nesarikar <epctas@nesarikar.com>
Date: 9/5/2024, 9:01 PM
To: patentpractice@uspto.gov, "Pulliam, Christyann R." <Christyann.Pulliam@USPTO.GOV>
CC: epc as@nesarikar.com, ' us to@nesarikar.com <us to@nesarikar.co >
Attn: Shirene Brantley, Attorney Advisor, OPET
Shirene Brantley s letters dated 08/08/2024 and 08/09/2024 regarding a plication numbers
18069263,18069288, 18069382, 18069474, 18069596, 18069721, 18069819, and 18069883 contain
material misrepresentations.
For example, in at l ast Shirene Brantley's letter dated 08/08/2024 regardin application No.
18/069,263, inventors of the ap lication (Ashlesha A. Nesarikar, Anika A. Nesari ar, and Abhijit R.
Nesarikar) do not recognize a plication #10165 55. Shirene Brantley erred. The letter states on pa e
2
Te w is its riss? O s® is it
TX r l Dsrife T A., rfftaa, , sssl sska .. Mgssssto Plt r. X,
Despite Inventors searches after receiving Shirene Brantley's letter. Inventors have not found
application #10165455. Inventors, in good faith, conclude that application #10165455, if it exists, is
not published. Shirene Brantley's error underm nes Inventors' ability to res ond to Shirene Brantley's
letter.
To reiterate, Abhijit Nesarikar does not eco nize application #10165455. Based on filing dates of
nei hboring a plication numbers, th ap lication appears to have been filed in 2002. To the best of
his recolle tion, Abhijit Nesarikar did not authorize filing of an application on his behalf in 2002.
I
i In addition to the fore oin , Shirene Brantley's letter states on page 3 i
1 I
I I
[ ef lb® ell w th® s idetidfW Ita of 1.2 i
] h suecs w as® fer b e tract or Iw fes sli wwship
| ri hts in t apptattons to tihar tt /jw y. i
¦ i
I I
1 Shirene Brantley erred as assignment of application nu ber 17906844 was recorded on 07/13/2023 i
i and is publicly accessible throu h USPTO's website (reel/frame: 06 2 5/0121). A plication umber ]
17 068 4 is a child application of rovisional pplication #62/705,296. On and before the filin date
of application o. 18/069,263, each of the inventors of the USPTO pro isional pat nt application No.
#62/705,296 was obligated to assi n the rights in the provisional patent ap lication No. #62/705,296
and its child applications (e. ., 179068 4 and 17303497) as a result of each of the inventors' previous
e ploym nt in the state of Texas.
Shiren Brantley errs in aterially misrepres nting facts in corr spondence with Inventors. Further,
146553_18069288_2024-09-09_LET. 54
1 of 2
9/7/2024,1:41 PM
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 54 of 59 PageID
#: 70
Appx0077
Attn; Shirenc Brantley, Attorney Advisor, OPET
Shirene Brantley errs in mandating, un er the threat of abandonment, disclosure of Inventors
information that is personal, nonpublic, and sensiti e.
Ba ed on the foregoing,
i 1. as Inventors responded on 05/23/2024 with candor and good faith to the Notice of Pay ent j
i Deficiency mailed on 04/22/202 ; '
i 2. as Shirene Brantley's letter (of 08/08/2024) all ges insufficiency of inventors' response of
i 05/23/2024 based on new allegations not previously present d to Inventors; and
i 3. as Shirene Brantley's letter dated 08/08/2024 contains material misrepresentations ]
I
Shirene Brantley errs in statin on page 1 The reply, however, is an insufficient response to the
Notice for the reason(s) listed belo .
, ,
) ccor in ly, Inventors request at least tha the eriod for reply be restarted under MPEP 710.06 for ,
SFiire ne B~raritrey/s T tters dated-08708/2024’a’n’d’0’870972024’r a’rdin applicatfo’n’n’u’mbers
18069263, 18069288, 18069382, 18069474, 18069596, 18069721, 1806 819, and 18069883.
shlesha Nesarikar may be con acted at ( 69)371-4983.
Respectfully,
Inventors
/Ashlesha A Nesarikar/ /Anika A Nesarikar/ /Abhijit R esarikar/
Ashlesha A. Nesarikar Anika A. Nesari ar Abhijit R. Nesarikar
Date: 09/05/2024
55
146553_18069288_2024-09-09_LET.
2 of 2
9/7/2024,1:41 PM
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 55 of 59 PageID
#: 71
Appx0078
USDlO
UNITED STATES
PATENT ND TRADEMARK OFFICE
Page 1 of 2
P.O. Box 1450
Alexandria, V 22313 - 1450
www.uspto.gov
ELECTRONIC ACK OWLEDGEMENT RECEIPT
APPLICATION #
18/069,288
RECEIPT DATE/TIME
09/09/2024 08:06:17 PM Z ET
ATTORNEY DOCKET#
4as-morphism
Title of Invention
Systems and Methods for Intelligent Awareness and Intent for Autonomous Vehicles
Application Information
APPLICATION TYPE
Utility - Nonprovisional Application
under 35 USC 111(a)
PATENT # -
CONFIRMATION #
3954
FILED BY Abhijit Nesarikar
PATENT CENTER #
67102976
FILI G DATE 12/21/2022
CUSTOMER #
146553
FIRST NAMED Abhijit R. Nesarikar
INVENTOR
CORRESPONDENCE
ADDRESS
-
AUTHORIZED BY -
Documents
TOTAL DOCUMENTS: 1
DOCUMENT
PAGES
DESCRIPTION r n
(KB)
4as-morphism.pdf
10
Miscellaneous Incoming Letter 2212 KB
Digest
DOCUMENT
MESSAGE DIGEST(SHA-512)
2AD0D16AAF5AE178D64E2612EC070B47A53A5B61813502455
4as-morphism.pdf
03E2A839CF8E3DCE0D96B0D234F06CE09684644924EA3D1B
2D97D58B43A9ACCA9E1D95C611995AA
This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents, characterized
by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a Post Card, as
described in MPEP 503.
New Applications Under 35 U.S.C. 111
146553_18069288_2024-09-09_N417
56
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 56 of 59 PageID
#: 72
Appx0079
Page 2 of 2
If a new application is being filed and the application includes the necessary components for filing date (see 37 CFR 1,53(b)-(d)
and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this Acknowledgement
Receipt will establish the filing date of the application
National Stage of an International Application under 35 U.S.C. 371
If a timely submission to enter the national stage of an international application is compliant with the conditions of 35 U.S.C.
371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a national stage
submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
New International Application Filed with the USPTO as a Receiving Office
If a new international application is being filed and the international application includes the necessary components for an
international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number and of the
International Filing Date (Form PCT/RO/105) will be issued in due course, subject to prescriptions concerning national security,
and the date shown on this Acknowledgement Receipt will establish the international filing date of the application.
146553_18069288_2024-09-09_N417
57
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 57 of 59 PageID
#: 73
Appx0080
United States P tent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO.
FILING DATE
FIRST NAMED INVENTOR
ATTORNEY DOCKET NO.
CONFIRMATION NO.
18/069,288
12/21/2022
Abhijit R. Nesarikar
4as-morphism
3954
146553 7590 02/11/2025
Abhijit R. Nesarikar, Ashlesha A. Nesarik r,
Anika A. Nesarikar
8025 Ambi nce Way
Plano, TX 75024
EXAMINER
P LLIAM, CHRISTYANN R
ART UNIT
PAPER NUMBER
2100
NOTIFICATION DATE
DELIVERY MODE
02/11/2025
ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceedin .
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ab@nesari ar.com
anika.nesarikar@utdallas.edu
nesarikai as@gmail.com
PTOL-90A (Rev. 04/07)
146553_18069288_2025-02-11_ABN
58
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 58 of 59 PageID
#: 74
Appx0081
- The MAILING DA TE of this communication appears on the cove sheet with the correspondence address-
Notice of Abandonment
Application No.
18/069,288
Applicant(s)
Nesarikaretal.
Exa iner
Christyann R Pulliam
Art Unit
2100
This application is abandoned in view of:
1.0 Applicant's failure to timely file a proper reply to the Office letter mailed on 22 April 2024.
(a) A reply was received on (with a Certificate of Mailing or Transmission dated ), which is after the expiration of the
period for reply (including a total extension of time of month(s)) which expired on .
(b) A proposed reply was received on , but it does not constitute a proper reply under 37 CFR 1.113 to the final rejection.
(A proper reply under 37 CFR 1.113 to a final rejection consists only of:(1) a timely filed amendment which places the
application in condition for allowance; (2) a timely filed Notice of Appeal (with appeal fee); or (3) if this is utility or plant
application, a timely filed Request for Continued Examination (RCE) in compliance with 37 CFR 1.114. Note that RCEs are not
permitted in design applications.)
(c) A reply was received on but it does not constitute a proper reply, or a bona fide attempt at a proper reply, to the non-final
rejection. See 37 CFR 1.85(a) and 1.111. (See explanation in box 8 below).
(d) 0 No reply has been received.
2. Applicant's failure to timely pay the required issue fee and publication fee, if applicable, within the statutory period of three months
from the mailing date of the Notice of Allowance (PTOL-85).
(a) The issue fee and publication fee, if applicable, was received on (with a Certificate of Mailing or Transmission dated
), which is after the expiration of the statutory period for payment of the issue fee (and publication fee) set in the Notice of
Allowance (PTOL-85).
(b) The submitted fee of $ is insufficient. A balance of $ is due.
The issue fee required by 37CFR 1.18 is $ . The publication fee, if required by 37 CFR 1.18(d), is $ .
(c) The issue fee and publication fee, if applicable, has not been received.
3. Applicant's failure to timely file corrected drawings as required by, and within the three-month period set in, the Notice of
Allowability (PTO-37).
(a) Proposed corrected drawings were received on (with a Certificate of Mailing or Transmission dated ), which is
after the expiration of the period for reply.
(b) No corrected drawings have been received.
4. The letter of express abandonment which is signed by the attorney or agent of record or other party authorized under 37 CFR 1.33
(b). See 37 CFR 1.138(b).
5. The letter of express abandonment which is signed by an attorney or agent (acting in a representative capacity under 37 CFR
1.34) upon the filing of a continuing application.
6. The decision by the Patent Trial and Appeal Board rendered on and because the period for seeking court review of the
decision has expired and there are no allowed claims.
7. The dismissal of the appeal in an application having no allowed claims. (When an appeal is dismissed in an application having no
allowed claims the application stands abandoned. See MPEP 1215.04 subsections l-V for an explanation of the reasons why an
appeal is dismissed.)
8. 0 The reason(s) below:
i The responses to the fee notice were not accepted (see petition decision maile Oct 23, 2024 for details) and the period for reply 1
/CH ISTYANN R PULLIAM/
Quality Assurance Specialist, Art Unit 2100
Petitions to revive under 37 CFR 1.137, or requests to withdraw the holding of abandonment under 37 CFR 1.181, should be promptly filed to minimize
any negative effects on patent term.
U.S. Patent and Tra emark Office
PTOL-1 32 (Rev. 04-19)
146553_180o9288_2025-02-11 _ABN
Notice of Abandonment
Part of Paper No. 20250206
59
Case 4:25-cv-00423-JCB-JDL Document 1-1 Filed 04/24/25 Page 59 of 59 PageID
#: 75
Appx0082
email May 06, 2024-RE_ Request for missing information regarding Notice
of Payment Deficiency 2
email May 21,2024-Re_ Request for missing information regarding Notice of
Payment Deficiency 4
Assignment Julyl 32023 17906844 7
Search Result Sept 05, 2024 10165455- Patent Center - USPTO 9
Patents Ombuds Office USPTO 12
Exhibit B
USPTO Other
Case 4:25-cv-00423-JCB-JDL Document 1-2 Filed 04/24/25 Page 1 of 14 PageID #:
76
Appx0083
Subject: RE: Request for missing information regarding Notice of Payment Deficiency
From: Patent Practice <PatentPractice@llSPTO.GOV>
Date: 5/6/2024, 2:29 PM
To: Ashlesha Nesarikar <epctas@nesarikar.com>, "Cottingham, John"
<John.Cottin ham@USPTO.GOV>
CC: "uspto@nesarikar.com" <uspto@nesarikar.com>
Thank you for your inquiry.
1 The contact and phone number regarding the notice is listed on the second page of the notice, i
Fror Ashlesha Nesarikar <epct_as@nesa_rikar.com>
! Sent: Friday, May 3, 2024 4:03 PM i
[ To: Cottingham, John <John.Cottingham@USPTO.GOV>) Patent Practice <PatentPractice@USPTO.GO\/>
_Ccr uspt6@nesarTkar7com
Subject: Re: Request for missing information regarding Notice of Payment Deficiency
CAUTION: This email has originated from a source outs de of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking
on links, or opening attachments.
To: John Cottingham
TC Group Director, TC 2100
Director Cottingham,
As a pro se applicant, I'm reaching out to you as you have signed the notice dated 04/22/2024 (titled:
Notice of Payment Deficiency) regarding Application No. 18069263 (and similarly applications:
18069288, 18069382,18069474, 18069596, 18069721,18069819, and 18069883). Could you
i expedite the prd TsTon of the"requested information”below?”Plea se see" Below m~y e"rnairt6 Patent" 1
' Lega Administration on May 01, 2024. i
Thank you,
Ashlesha Nesarikar
On 5/1/2024 8:24 PM, Ashlesha Nesarikar wrote:
Respectfully,
The notices dated 04/22/2024 (titled: Notice of Payment Deficiency) regarding Application No. 18069263
(and similarly applications: 18069288, 18069382,18069474, 18069596, 18069721,18069819, and
18069883), with Examiner Pulliam, Christyann R, Art Unit 2100, were sent in error.
Though the notices cite 37 CFR 1.29(a)(2) as a justification for the alleged payment deficiency, the
notices omit 37 CFR 1.29(b), which modifies 37 CFR 1.29 (a)(2) and the justification.
For the pro se applicants, the notices further omit how to submit a response under 37 CFR 1.29(b) in
Patent Center, e.g., a Doc Code (and description) in Patent Center for the applicants to use when
email May 06, 2024-RE_ Request for missing information regarding Notice of Payment Deficiency
2
Case 4:25-cv-00423-JCB-JDL Document 1-2 Filed 04/24/25 Page 2 of 14 PageID #:
77
Appx0084
submitting responses to the notices.
i The app icants respectfully request any help and/or information Patent Legal Administration can provide. ]
This request for information is a follow up on my interview and emails with MQAS Pulliam.
Thank you,
/Ashlesha A Nesarikar/
Ashlesha A. Nesarikar
email May 06, 2024-RE_ Request for missing information regarding Notice of Payment Deficiency
3
Case 4:25-cv-00423-JCB-JDL Document 1-2 Filed 04/24/25 Page 3 of 14 PageID #:
78
Appx0085
Subject: Re: Request for missing information regarding Notice of Payment Deficiency
From: epctas@nesarikar.com
Date: 5/21/2024, 5:02 PM
To: PatentsOmbudsmanOffice@uspto.gov, PatentsOmbudsOffice@uspto.gov
CC: epctas@nesarikar.com, "uspto@nesarikar.com" <uspto@nesarikar.com>
Hi Patrick,
Thank you for your response. I don t think the information fro your last email applies to
my situation. It appears to be the doc code for notification of loss of micro entity
status.
I will respond to the Notice based on my phone call ith loanne Burke from the Office of
Petitions on 05/08/2024. She informed me that I can submit a letter indicating Applicants'
continued icro entity statuses un er a description of Miscellaneous Letter, and that if I
call her after submission, she will make sure it is routed properly.
Thank you for your help.
/Ash Lesha A Nesarikar/
Ashlesha A. Nesarikar
On 5/10/2024 10:18 A , PatentsOnibudsmanOffice uspto.gov wrote:
Thank you for contacting the Patents O buds an Office. Please see response below.
Hello,
I
iThe NFEE docu ent does say ho to submit a response. You can use docu ent code ES.LOSS. i
I ¦
SR. 1-857710647
Best regards,
Patrick
Patents Ombuds
[THREAD ID:1-E6MRID]
Original Message
From: e ctas@nesarikar.com
Sent: 5/7/202 02:11:25 PM
To: PatentsOmbu smanOffice@uspto. ov; PatentsOmbudsOffice@uspto. ov
Cc: "uspto@nesarikar.com" <uspto@nesarikar.com>
Subject: Request for issing infor ation regarding otice of Paym nt Deficiency
CAUTION: This e ail has originated from a source outside of USPTO. PLEASE CONSIDE THE
SOURCE before responding, clickin on links, or openin attachments.
Hi Patrick,
email May 21,2024-Re_ Request for issing information regarding Notice of Payment Deficiency
4
Case 4:25-cv-00423-JCB-JDL Document 1-2 Filed 04/24/25 Page 4 of 14 PageID #:
79
Appx0086
iThank you for your response. However, your response does not answer the1
[speci ic question that I asked. I ill reiterate belo : i
"For the pro se a plicants, the notices further omit ho to submit a
response under 37 CFR 1.29(b) in Patent Center, e.g., a Doc Code (and
d scription) in Patent Center for the applicants to use h n submitting
responses to the notices. The applicants request help in submitting the
response in Patent Center."
Thank you,
/AshLesha A Nesarikar/
Ashlesha . Nesarikar
On 5/7/2024 11:40 AM, PatentsOmbudsmanOffice(5)us to.gov rote:
Thank you for contacting the Patents Ombudsman Office. Please see response belo .
Hello,
The notice is NOT in error. E en though it takes 1 inventor to have submitted at least
4 non pro isional applications to make this application not qualify for micro - every
in entor listed has sub itted more than 4 non pro isional applications. This
application an any other ap lication any of these inventors are on submitted after
[this-ap_plication does not-qualify for_n7icro_ entity" statusi as it states in the MPEP
509”.04(aJ(i)(B)”r”ule hich-i”s”on”fh”e”notice "
SR. 1-857710647
Best regards,
Patrick
Patents Ombuds
[THREAD ID:1-E6MRID]
Original Message
From: e ctasfanesarikar. o
[Sent: 5/_672024 04:20:54 PM I
1 To: _ atentsOmbudsOffice(a)uspto. ov [
Cc : "uspto(a)nesarikar.com" <uspto@nesarikar. com>
Subject: Request for missing information regarding Notice of Payment Deficiency
CAUTION: This email has ori inated from a source outside of USPTO. PLEASE CONSIDER THE
SOURCE before responding, clicking on links, or opening attach ents.
Res ectfully,
The notices dated 04/22/2024 (titled: otice of Pay nt Deficiency)
re arding Application o. 18069263 (and si ilarly applications:
email May 21, 2024-Re_ Request for issing information regarding Notice of Payment Deficiency
5
Case 4:25-cv-00423-JCB-JDL Document 1-2 Filed 04/24/25 Page 5 of 14 PageID #:
80
Appx0087
18069288 18069382, 18069474, 18069596, 18069721, 18069819, and
18069883), with Examiner Pulliam, Christyann R, Art Unit 2100, were sent
in error. Though t e notices cite 37 CFR 1.29(a)(2) as a justification
for the alleged pay ent deficiency, the notices omit 37 CFR 1.29(b),
hich modifies 37 CFR 1.29 (a)(2) and the justification.
r i
i For th pro se applicants, the notices further o it how to sub it a i
ce-Sponse _under_3_7_CFR_l_.29 b) _in_P_atent_C_ente_ri _e_.g._,_a Doc. C de_(_and
descri tion) in Patent Center for the applicants to use when submitting
responses to the notices. The applicants request help in sub itting the
response in Patent Center.
Thank you,
/AshLesha A Nesarikar/
Ashlesha A. Nesarikar
email May 21,2024-Re_ Request for missing information regarding Notice of Payment Deficiency
6
Case 4:25-cv-00423-JCB-JDL Document 1-2 Filed 04/24/25 Page 6 of 14 PageID #:
81
Appx0088
PATENT ASSIGNMENT COVER SHEET
ERAS ID: PAT8055835
SUBMISSION TYPE:
NEW ASSIGNMENT
NATURE OF CONVEYANCE:
ASSIGNMENT
CONVEYING PARTY DATA
RECEIVING PARTY DATA
PROPERTY NUMBERS Total: 1
NAME OF SUB ITTER:
SHALAKA A. NESARIKAR
SIGNATURE:
/Shalaka A Nesarikar/
DATE SIGNED:
07/13/2023
508008697
Electronic Version v1.1
Stylesheet Version vt .2
Total Attachments: 1
source=AssignmentSigned_0723#page1 .tit
usptosh@nesarikar.com
SHALAKA A. NESARIKAR
8025 AMBIANCE WAY
PLANO, TEXAS 75024
PATENT i
REEL: 064245 FRAME: 0121 '
508008697 107/13/2023
CORRESPONDENCE DATA
Fax Number:
Correspondence will be sent to the e-mail address first; if that is unsuccessful, it will be sent
using a fax number, if provided; if that is unsuccessful, it will be sent via US Mail.
Email:
Correspondent Name:
Address Line 1:
Address Line 4:
Name
Execution Date
ABHIJIT R. NESARIKAR
07/13/2023
ASHLESHA A. NESARIKAR
07/13/2023
ANIKA A. NESARIKAR
07/13/2023
Name:
SHALAKA A. NESARIKAR
Street Address:
8025 AMBIANCE WAY
City:
PLA O
State/Country:
TEXAS
Postal Code:
75024
Property. T pe
Numbe
Application Number:
17906844
Assignment Julyl 32023 17906844
7
Case 4:25-cv-00423-JCB-JDL Document 1-2 Filed 04/24/25 Page 7 of 14 PageID #:
82
Appx0089
SSIGNMl iN l
W EREAS. I, the undersigned inventor tor one of the un ersigned joint inventors), of residence
as listed, having invented certain new an u eful improvements a below entitle , or which
application for United States Letters Patent is ma e;
WHEREAS, ShalakaA. Mesarikar. residing, at 8035 Ambiance Way. Pla o. TX 75024, is
desirous of acquiring my entire right, title, and interest in an to the ai application and any
Leiters Patent t at may i sue thereon;
NOW, T EREFORE, for goo an valuable consi eration, the receipt of which is hereby
ackn wledge . I hereby sell an assign unto Shalaka A. Nesarikar, her successors, an her
assigns, my enti e right, title, and interest in an to the said applicati n an any Letters- Patent
that may issue thereon.
Further, I shoul reasonably aid Shalaka A. Nesarikar in legal, judicial, and a ministrative
proceedings regar ing the sai ap lication and the sai Letters Parent in accordance with terms
to be mutually agree upon.
Title
j
e ote Mon toring With Artificial ljn ligen.ee An Awareness M chine
Nonprovisional
A lication No.
17/906 84
Filing Date
09/20/2022
SZ •
[Bate
rinte Name f Inventor
Abhijit R. Nesarikar
Res dence
8025 Ambiance Way, Plant. . TX 75024
Signature of j, ( _
Inventor
r •; i
Date i O'?/IS 2.0'2.
Printed ame of Inventor
Ashlesha A. esarikar
I
Resi ence
8025 mbiance Way, Plano. TX 75024
7 r 1 |n.
Printe ame ol Inve tor
Anika A. Nesarikar
Residence
8025 Ambiance Way , Plano. TX 5024
RECORDED: 07/13/2023
PATENT
REEL: 064245 FRAME: 0122
Assignment July 32023 17906844
8
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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
F LED
ASHLESHA A. NESARIKAR,
ANIKA A. NESARIKAR, and
ABHIJIT R. NESARIKAR,
Plaintiffs,
-v-
THE UNITED STATES PATENT AND
TRADEMARK OFFICE and
COKE MORGAN STEWART, in her
official capacity as the Acting Director of
the United States Patent and Trademark
Office,
Defendants.
APR 2 k 2025
) CLERK, U.S. DISTRICT COURT
) TEXAS EASTERN
)
)
)
) Case No.
)
)
)
)
)
)
)
PLANTIFFS MOTION FOR A PRELIMINARY INJUNCTION
The Director s actions threaten to imminently deprive Inventors (Plaintiffs) of remedies
including this judicial review by extorting a concession from Inventors that the [micro entity]
certification was erroneous (Ex. A pg. 3). The reach of the extortion threatens Inventors other
applications in the USPTO with disruption and abandonment. Irreparable loss including:
disrupting examinations already underway in other applications, financial harm, reputational
harm, and loss of patent ri hts is imminent. The origin of the extortion may be traced back to the
Notices of Payment Deficiency sent on 04/22/2024 in, e.g., application nos. 18/069288 and
18/069382.
1. Inventors incorporate by reference all allegations contained in the Complaint.
2. The Notices of Payment Deficiency sent on 04/22/2024 (e.g., Demand) and Brantley’s
decisions (e.g., Second Decision and Refusal), represent irrational actions and unlawful harm.
1
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The irrational actions and unlawful harm further present imminent threat of irreparable harm to
all of Inventors applications that included certifications of micro entity status. In response to
Brantley s decisions and irrational actions (e.g., in Second Decision), Inventors opted to pay
excess fees across multiple applications. The excess fee payments did not deter the Director from
extortionate and irrational actions. The Director in effect offered only one option: Inventors
falsely concede that the the [micro entity] certification was erroneous (Ex. A pg. 3). The
extortionate and irrational actions pose an extreme hardship for Inventors and represent
imminent threat of irreparable harm to property, finances, and reputation.
3. On 11/19/2024, excess fees were paid in 18/069382 (hereinafter 382) (Ex. C pg. 2).
Inventors, in good faith, expected abatement of the threat of abandonment after the payment of
excess fees. The payment met the requirements set by the Director to cure the alleged fee
deficiency. Inventors rejected Director’s demand for the concession. The payment was made in
accordance with the alleged time limit arbitrarily set by the Director (the alleged time limit was
not in accordance with the USPTO’s Requirements of a petition 1). The Director disregarded
and misappropriated the payment of fees. On 02/06/2025, despite accepting the fees, the Director
abandoned ’382 (Ex. C pg. 3) without any mention of the fees paid and without responding to the
petition filed on 11/19/2024 (Ex. C pg. 4) accompanying the payment.
4. In good faith, on 02/26/2025, Inventors notified the Director of the misappropriated
payment in ‘382 in a Request for Corrected Filing Receipt (Ex. C pg. 3). To the best of
Inventors’ knowledge, the Director’s practice is to respond to a request for corrected filing
1 https://www.uspto.gov/patents/apply/petitions/01-requirements-petition
Generally a petition not filed within two (2) months from the action complained of may be
dismissed as untimely.
2
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Appx0098
receipt within days. In addition to the failure to respond to the payment and the petition
accompanying the payment, the Director failed to respond to the request for filing receipt (Ex. C
pgs. 3 and 4).
5. If Inventors were to succumb to the extortion, the reach of the extortion would excuse the
Director from rationally justifying abandonments of Inventors applications (e.g., abandonment
of 382 on 02/06/2025; Ex. C pg. 3), and the Director would evade accountability for the
material misrepresentations, the violations of due process, the misappropriation of payments, the
failure to respond to timely filed petitions (e.g., of 11/19/2024 in 382; Ex. C pg. 4), and the
failure to follow the USPTO s guidelines in interacting with pro se applicants, among others.
The extortion and the Director s attempt to evade accountability disserves the public interest.
Further, the extortion and the Director’s attempt to evade accountability discourages
development of new technologies and violates the rights of small businesses and inventors.
6. In 2024 and 2025, the USPTO sent more than 10 Notices of Fee Deficiency challenging
micro entity certifications, including in application no. 18/120,998 (hereinafter ‘998) (Ex. F).
Inventors are not affiliated with ‘998.
7. In ‘998, the Notice of Fee Deficiency was sent on 04/19/2024 (Ex. F pg. 2). The final
petition decision of 03/07/2025 (Ex. F pg. 7) indicates that the reply [on 10/09/2024 in ‘998] is
untimely [emphasis in original] and that [the] application is being referred to Technology
Center 2100 for appropriate action in the normal course of business . The decision did not
abandon ‘998 and as of 04/15/2025, the Patent Center status did not indicate ‘998 as abandoned.
(Ex. F pg. 8).
3
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Appx0099
8. In light of 998, the extortion in 288 and ‘382 represents discrimin tion against
Inventors.
9. As evidenced before, Inventors fear with good reason that the Director s irrational actions
will continue unabated. Inventors fear that irreparable harm, at least from the extortion, is
imminent. Inventors expect the irreparable harm to encroach on all of Inventors patent
ap lications. The irrational actions have already encroached on at least, e.g., application no.
18/611,669 (hereinafter ‘669) (Ex. D pgs. 2 and 6-8) and application no. 16/592,555 (hereinafter
‘555) (Ex. E pgs. 3-6).
10. The Director falsely alleged erroneous micro entity certifications and fee deficiency in
‘669 (Ex. D pgs. 2, 5, 10, and 11).
11. On 02/07/2025, Inventors called the examiner of ‘669 to request that the Patent Center
status of ‘669 (Ex. D pg. 2) reflect readiness for examination. On 02/11/2025, the status of ‘669
displayed Docketed New Case-Ready for Examination 02/10/2025 (Ex. D pg. 5).
12. In ‘669, Inventors responded to the Notice of Payment Deficiency of 01/17/2025
(hereinafter Demand669) (Ex. D pgs. 6-8) by filing a Request for Corrected Filing Receipt on
02/02/2025 (Ex. D pg. 9). On 02/06/2025, Demand669 was withdrawn (Ex. D pgs. 10 and 11).
13. On 02/06/2025, the same day as withdrawal of Demand669, Brantley breached the
procedure stated in ‘998 that [the] application is [to be] referred to Technology Center 2100 for
appropriate action in the normal course of business (Ex. F pg. 7). Brantley, without responding
to pending petitions or fee payments, abruptly abandoned several of Inventors’ applications,
including ‘288 (Ex. A pgs. 58 and 59) and ‘382 (Ex. C pg. 3). Brantley, under the guise of
abandonment, evaded accountability for responding to pending petitions and fee payments. The
4
Case 4:25-cv-00423-JCB-JDL Document 2 Filed 04/24/25 Page 4 of 8 PageID #: 94
Appx0100
request for corrected filing receipt in 382 filed on 02/26/2025 (Ex. C pg. 3) has gone
unanswered for over 50 days.
14. Brantley retaliated in response to the withdrawal of Demand699 by abruptly abandoning
‘382.
15. Brantley s retaliation further extended to other applications by Inventors.
16. The prosecution of ‘555 is at an advanced stage. Inventors, as a part of an appeal to the
Patent Trial and Appeal Board (hereinafter PTAB), filed an Appeal Brief which was forwarded
to the examiner of‘555 on 10/19/2024 (Ex. E pg. 2). Inventors have advanced prosecution of
‘555 in good faith. The Director s communication sent on 04/10/2025 indicates imminent harm
to ‘555 and threatens to undo efforts of not only Inventors, but also examiners. The examiners of
‘555 and Inventors have contributed to the prosecution history, developing an application that is
ready for appeal. The extortion, if allowed to continue, promises imminent harm to ‘555,
Inventors, and the faith of inventors in the USPTO.
17. In ‘555, the Director engaged in undisclosed activities. The transaction history states:
02/27/2025 Interview Request Correction (Ex. E pg. 2). Inventors were not included in any
interview represented by the transaction entry. The undisclosed activity in light of the irrational
actions and the extortion further heightens the extent and imminence of the harm to Inventors.
18. In the communication of 04/10/2025, the Director demands false concessions from
Inventors that the micro entity certifications made in ’555 were in error. The communication
shortened the period for reply to one month. In light of the irrational actions and the extortion,
the demand and the shortened period for reply further heighten the extent and imminence of the
harm to Inventors.
5
Case 4:25-cv-00423-JCB-JDL Document 2 Filed 04/24/25 Page 5 of 8 PageID #: 95
Appx0101
19. The Director wielded the threat of discontinuing examination to create extreme
uncertainty as a basis for the extortion. The USPTO is aware that discontinuing examination of
an application (e.g., 288) is harmful to Inventor s reputation as pro se applicants. The USPTO
publicly discredited the pro se applicants by unlawfully abandoning patent applications (e.g.,
288). Grant of this injunction is the only hope for Inventors to prevent further harm from
accruing.
20. Discontinuation of examination reduces the length of patent term. Restarting examination
after it is discontinued would not cure the loss of patent term. Any attempt to mitigate the loss
after the fact would require further petition to the Director, representing undue uncertainty and
expense. Discontinuing examination incurs at least undue loss of patent value.
21. Inventors believe that Inventors will prevail on the merits. Inventors Complaint relies on
specific and evidenced facts showing the USPTO’s actions harming Inventors, among them
actions that: denied examination of at least the ‘288 application without due process; violated the
Paperwork Reduction Act, including 44 U.S.C. §3512; and are arbitrary, capricious, an abuse of
discretion, or otherwise not in accordance with law. The facts presented in this request for
injunction further support the Complaint.
22. Irreparable harm will result if the injunction is not granted. The USPTO’s actions form a
pattern of placing an increasing, irrational, and undue burden on Inventors. The USPTO has,
over the course of a year, unduly expanded the scope of its demands, withheld information from
Inventors, introduced new allegations at whim, required new disclosures while shrinking
Inventors’ time for reply, and delayed responding to Inventors’ papers if a response was ever
made. As a result of the extortionate activities, Inventors must remain perpetually vigilant that
the USPTO will sua sponte throw into question the readiness for examination of any of
6
Case 4:25-cv-00423-JCB-JDL Document 2 Filed 04/24/25 Page 6 of 8 PageID #: 96
Appx0102
Inventor s applications, at a time convenient to the USPTO and without regard to the stage of
exa ination the applications are in. Inventors have increasingly diverted their resources to
responding to the USPTO s demands and countering the extortionate activities. The time
invested by Inventors cannot be recovered. Neither can reputational harm be reversed. Inventors
urge the Court to avert future loss by granting the injunction.
23. The balance of equities and hardship favor injunctive relief. The USPTO s own
regulation (e.g., 37 CFR 1.29(h)) and prior practices indicate that the USPTO would not be
harmed by injunctive relief. Inventors, on the other hand, would face disproportionate burden
and loss in the absence of injunctive relief due to the threat to all of Inventor’s applications,
which represent the culmination of over eight years of Inventors’ efforts on application processes
alone.
24. Granting the injunction is in the public interest. Left unchecked, the Director’s actions
discourage development of new technologies and violate the rights of small businesses and
inventors. Unlawful actions harm the public interest.
Injunctive Relief Requested
The imminent harm to Inventors cannot be reversed in the ordinary course of litigation. Inventors
respectfully urge the Court to grant speedy relief from the extortion.
Inventors request the following relief at least for the duration of this suit:
1. Prohibit Defendants from any future actions alleging erroneous micro entity status in
applications and patents naming Inventors.
7
Case 4:25-cv-00423-JCB-JDL Document 2 Filed 04/24/25 Page 7 of 8 PageID #: 97
Appx0103
2. Order the reversal of papers sent by Defendants arising out of allegations of erroneous
micro entity status in Inventors applications, including Notices of Payment Deficiency
sent on 04/22/2024.
3. Prohibit disruptions by Defendants arising out of allegations of erroneous micro entity
status in the prosecution of Inventors patent applications.
4. Order Defendants to return excess payments made by Inventors arising out of Notices of
Payment Deficiency sent on 04/22/2024.
5. Any other relief that the Court deems just and appropriate.
Date: April 23, 2025
Respectfully submitted,
Ashlesha A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
asedt0425@icloud.com
Anika A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
anedt0425@icloud.com
Abhijit R. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
edt0425 @nesarikar. com
Inventors and Plaintiffs
8
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Appx0104
18069382 Fee History - Application - Patent Center - USPTO 2
18069382 Documents - Application - Patent Center - USPTO 3
18069382 Transactions - Application - Patent Center - USPTO 4
Exhibit C
18/069382
Case 4:25-cv-00423-JCB-JDL Document 2-2 Filed 04/24/25 Page 1 of 4 PageID #:
101
Appx0105
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Application #
Confirmation #
Attorney Docket #
Patent #
18/069,382
2467
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Filing or 371 (c)date
Status
12/21/2022
Abandoned-Failure to
Respond to an Office Action
02/06/2025
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11/20/2024
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09/08/2024
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12/21/2022
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12/21/2022
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12/31/2024 Information Disclosure Statement (IDS) Filed
12/31/2024 Information Disclosure Statement (IDS) Filed
: 12/24/2024 Information Disclosure Statement (IDS) Filed
i 12/24/2024 Information Disclosure Statement (IDS) Filed
s 12/24/2024 Information Disclosure Statement (IDS) Filed
12/24/2024 Information Disclosure Statement (IDS) Filed
f 11/19/2024 Petition Entered * 1 2
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18069382 Transactions - Application - Patent Center - USPTO
4
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18611669 Transactions - Application - Patent Center - USPTO Feb 2
18611669 Transactions - Application - Patent Center - USPTO Apr 5
146553_18611669_2025-01-17_NFEE_001 6
146553_18611669_2025-01 -17_NFEE_002 7
146553_18611669_2025-02-02_CFILE 9
146553_18611669_2025-02-06_M327 10
Exhibit D
18/611669
Case 4:25-cv-00423-JCB-JDL Document 2-3 Filed 04/24/25 Page 1 of 11 PageID #:
105
Appx0109
Transactions - Application - Patent Center -USPTO
https://patcntccntcr.uspto.gov/applications/18611669/ifw/transactions?application=%2Fworkbcnch...
I of3
An official website of the United States government Here's how you k ow
18/611,669 | Risk Evaluation and Threat Mitigation Using Artificial Intelligence
["PRIVATE IEW I
Application #
Confirmation#
Attorney Docket # Patent #
18/611,669 3899
-Edit
Filing or 371(c)
date
03/20/2024
I Status (
' AWAITING I
, RESPONSE FOR 1
I INFORMALITY,
I FEE DEFICIENCY ,
1 OR CRF ACTION I
! 01/15/2025 1I
Application Data
Docu ents & Transactions
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ddress & Attorney/Agent
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D te ? 4-
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t 4 |
02/07/2025
Email Notification
• 02/06/2025
Mail Miscellaneous Communication to Applicant |
02/05/2025
i
Miscellaneous Communication to Applicant-No Action Count i
02/05/2025
Email Notification
02/05/2025
Filing Receipt-Replacement
01/17/2025
Electronic Review
01/17/2025
Electronic Re iew
01/17/2025
E ail Notification
j 01/17/2025
Mail Fee Due Notice or other requirement (eg. signature) ,
• 01/15/2025
Fee Due Notice or other requirement
12/23/2024
Information Disclosure Statement (IDS) Filed
12/23/2024
Information Disclosure Statement (IDS) Filed
12/23/2024
Information Disclosure Statement (IDS) Filed
12/23/2024
Information Disclosure Statement (IDS) Filed
12/22/2024
Information Disclosure Statement (IDS) Filed
| 12/22/2024
Information Disclosure Statement (IDS) Filed
12/ 2/2024
Information Disclosure Statement (IDS) Filed
i 12/22/2024
Information Disclosure Statement (IDS) Filed
12/22/2024
Information Disclosure Statement (IDS) Filed
12/22/2024
Information Disclosure Statement (IDS) Filed
12/22/2024
Information Disclosure Statement (IDS) Filed
2/7/2025. 10:37 AM
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Date
Transaction Description
12/22/2024
Information Disclosure Statement (IDS) Filed
12/21/2024
; Information Disclosure Statement (IDS) Filed
12/21/2024
i Information Disclosure Statement (IDS) Filed
12/21/2024
Information Disclosure Statement (IDS) Filed
12/21/2024
Information Disclosure Statement (IDS) Filed
12/09/2024
Email Notification
12/09/2024
Mail O.P. Petition Decision
12/05/2024
Applicant Has Filed a Verified Statement of S all Entity Status in
Compliance with 37 CFR 1.27
12/05/2024
Mail-Record Petition Decision of Granted to Make Entity Status large
12/04/2024
Record Petition Decision of Granted to Make Entity Status large
12/04/2024
O.P. Petition Decision
11/19/2024
Case Docketed to Examiner in GAU
10/29/2024
Petition Entered
08/07/2024
Email Notification
08/07/2024
Letter Accepting Rescission of Permission for Search Results Access by
Foreign IPO
08/07/2024
Filing Receipt-Updated
08/07/2024
Letter Accepting Rescission of Permission for Application Access by Foreign
IPO
07/08/2024
i Rescinded SB/69
| 07/08/2024
1 Rescission of the SB/39 form
05 07/2024
Email Notification
; 05/07/2024
; Application Is No Complete
: 05/07/2024
Mail Pre-Exam Notice
05/07/2024
Filing Receipt
05/06/2024
Case Docketed to Examiner in GAU
05/06/2024
Application Dispatched from OIPE
| 05/06/2024
; Sent to Classification Contractor
05/06/2024
: FITF set to YES-revise initial setting
I 05/06/2024
Patent Term Adjustment - Ready for Examination
05/03/2024
Application ready for PDX access by participating foreign offices
05/03/2024
Application ready for PDX access by participating foreign offices
05/01/2024
Applicant Has Filed a Verified Statement of Micro Entity Status in
: Compliance with 37 CFR 1.29
| 05/01/2024
• Applicant Has Filed a Verified Statement of Small Entity Status in
Compliance with 37 CFR 1.27
2/7/2025. 10:37 AM
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Date
Transaction Description
i 03/20/2024
PGPubs nonPub Request
03/20/2024
: PTO/SB/69-Authorize EPO Access to Search Results
03/20/2024
Applicants have given acceptable permission for participating foreign
03/20/2024
Entity Status Set To Undiscounted (Initial Default Setting or Status Change)
: 03/20/2024
Initial Exam Team nn
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Here's how you know v
18/611,669|-:
| PRIVATE VIEW |
Risk Evaluation and Threat Mitigation Using Artificial Intelligence
Application #
Confirmation # Attorney Docket # Patent #
18/611,669
3899 -Edit
r
Filing or 371 (c) date | Status
03/20/2024
1 Docketed New Case-Ready l
for Examination 02/10/2025 1
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02/05/2025
Miscellaneous Communication to Applicant-No Action Count
02/05/2025
Email Notification
02/05/2025
Filing Receipt-Replacement
01/17/2025
Electronic Review
01/17/2025
Electronic Re iew
01/17/2025
Email Notification
01/17/2025
Mail Fee Due Notice or other requirement (eg. signature)
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Appx0113
United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent an Tra emark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO.
FILING DATE
FIRST NAMED INVENTOR
ATTORNEY DOCKET NO.
CONFIRMATION NO.
18/611,669
03/20/2024
Abhijit R. Nesarikar
3899
146553 7590 01/17/2025
Abhijit R. Nesarikar, Ashlesha A. Nesarikar,
Anika A. Nesarikar
EXAMINER
P LLIAM, CHRISTY ANN
8025 Ambiance Way
Plano, TX 75024
ART UNIT
PAPER NUMBER
2100
DELIVERY MODE
NOTIFICATIO DATE
ELECTRONIC
01/17/2025
Please find below and/or attached an Office communication concerning this application or proceedin .
The time period for reply, if any, is set in the attached co unication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ab ©nesarikar.com
anika.nesaiikar@utdallas.edu
nesaiikaras@g ail.com
PTOL-90A (Rev. 04/07)
146553_18611669_2025-01 -17_NFEE_001
6
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110
Appx0114
United States Patent a d Trademark Office
Commissioner for Patents
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
NOTICE OF PAYMENT DEFICIENCY
This notice is to inform the applicant that the United States Patent and Trade ark Office (USPTO)
h s identified an apparent error in the entity status afforded the above-identified application.
Applicant is given TWO MONTHS from the date of this Notice within which to respond to avoid
abandonment. Extensions of time may be obtained by filing a petition accompanied by the
extension fee under the provisions of 37 CFR 1.136(a).1
Applicant has submitted a certification of micro entity status based upon the gross income basis
and paid fees in the above-identified application based upon this certification. In order to qualify
for micro entity status under the gross income basis, 37 CFR 1.29(a)(2) requires the applicant to
certify [njeither the applicant nor the inventor nor a joint inventor has been named as the inventor
or a joint inventor on more than four previously filed patent applications, other than applications
filed in another country, provisional applications under 35 U.S.C. 111(b), or international
applications for which the basic national fee under 35 U.S.C. 41(a) was not paid. As explained
in MPEP 509.04(a)(1)(B), an application still counts against this filing limit even if it has been
abandoned or patented, and even if it did not claim micro entity status. When this application was
filed, the applicant, the inventor, or a joint inventor was named on more than four previously filed
patent applications. This isprimafacie evidence that the submitted certification is in error because
the filing limit in 37 CFR 1.29(a)(2) was exceeded. Accordingly, the payments made in this
application based upon the apparently erroneous micro entity certification re deficient.
Because the deficient payments include one or more of the basic filing fee for utility under 37 CFR
1.16(a), the utility search fee under 37 CFR 1.16(k), and the utility examination fee under 37 CFR
1.16(o), this application is not in condition for examination. In order to avoid abandonment,
applicant must respond in one of two ways:
I. If the certification was erroneous, the applicant must provide an itemization of the total
deficiency payment and pay the deficiency owed in accordance with 37 CFR 1.29(k). The
Notification of Loss of Entitle ent to Micro Entity Status form (Form SB/460) may be
used to ubmit the deficiency. This form is available at https://uspto.gov/FatentFor s. The
current USPTO fee schedule may be viewed at https: /www.uspto.gov/learning-and-
resources/fees-and-payment/uspto-fee-schedule.
II. If applicant asserts that the certification of micro entity status was not made in error,
1 All the rules cited in this Notice may be viewed in their entirety at
https://wwv.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf. For patent applications filed under 35 U.S.C.
111(a) undergoing prioritized examination (Track One), applicant is reminded that any req est for an extension of
ti e, including an extension of ti e for the purpose of res on ing to this notice, will cause the a plication to be
ineligible for further treat ent under the p ioritize exa ination p o am. In a dition, request for an extension of
time prior to the grant of rioritize exa ination status will, revent such status fro being gr nte . &e MPEP
708.02(b), sub-section (1)(B)(4).
146553_18611669_2025-01 -17_NFEE_002
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Appx0115
applicant must reply with an explanation and any necessary evidence that is sufficient to
rebut theprima facie evidence of an erroneous certification. Applicant is re inded that the
reply must be made with candor and good faith under 37 CFR 1.56. Pursuant to applicant s
duties under 37 CFR 1.4 and 11.18, applicant should have made a reasonable inquiry into
the facts before making the certification. It is these particular facts that applicant must
provide in order to rebut theprima facie case. Simply identifying the previously submitted
certification or recertifying would not be sufficient. Applicant is reminded that it is in the
best position to perfonn an inquiry into whether the applicant, the inventor, or a joint
inventor was named on more than four previously filed patent applications when this
application was filed to determine whether an assertion of micro entity status in this
application is appropriate.
Applicant is given TWO MONTHS from the mailing date of this Notice to file a response as
outlined above. Extensions of time are available under the provisions of 37 CFR 1.136(a).2 The
application has been removed from the examiner s docket (if assigned) pending resolution of the
issues noted herein, or expiration of the time period set forth. If applicant does not timely respond
in accordance with (I) or (II) above, or is unable to make one of these responses because micro
entity status was not established in good faith, then the application will be abandoned.
Only a registered practitioner authorized by the applicant or the applicant who is not represented
by a practitioner can sign a response or make changes to the application. Note that an applicant
who is a juristic entity must be represented by a registered practitioner. See 37 CFR 1.31. While
the Office cannot recommend a registered practitioner, the link below provides a searchable list of
registered practitioners: https://oedci.uspto.gov/OEDCI/.
Questions about the contents of this notice should be directed to the Office of Patents
Stakeholder Experience (OPSE), Stakeholder Support Division (SSD), Patents Ombudsman at
571-272-5555.
John Cottingham
TC Group Director, TC 2100
2 For patent applications filed under 35 U.S.C. 111(a) undergoing prioritized examination (Track One), applicant is
reminded that any request for an extension of time, inclu ing n extension of time for the urp se of res onding io
this notice, will cause the application to be inel igible for urther treatment unde the rioritize examination
program. In addition, a request for an extension of time prior to the rant of p io itized e a inat ion status will
prevent such status fro being grante . See MPEP 708.02(b), sub-section (I) .B)(4).
2
146553_18611669_2025-01-17_NFEE_002
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Appx0116
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Application No: 18/611,669
Filed: 03/20/2024
Examiner: PULLIAM, CHRISTYA N R
Group Art Unit: 2100
Applicants:
Atty. Dkt. No:
Abhijit R. Nesarikar
Ashlesha A. Nesarikar
Confirmation Number: 3899
Anika A. Nesarikar
Title of Invention: Risk Evaluation and Threat Mitigation Using Artificial Intelligence
REQUEST FOR FILING RECEIPT
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Commissioner:
Applicants respectfully request a filing receipt reflecting the current entity status for application
18/611,669.
Date: 02/02/2025
/Ashlesha A Nesarikar/
/Anika A Nesarikar/ /Abhijit R Nesarikar/
Ashlesha A. Nesarikar
Anika A. Nesarikar Abhijit R. Nesarikar
146553_18611669_2025-02-02_CFILE
9
Case 4:25-cv-00423-JCB-JDL Document 2-3 Filed 04/24/25 Page 9 of 11 PageID #:
113
Appx0117
United States Patent and Trademark Office
UNITED STATES DEPARTME T OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO.
FILING DATE
FIRST NAMED INVENTOR
ATTORNEY DOCKET NO.
CONFIRMATION NO.
18/611,669
03/20/2024
Abhijit R. Nesarikar
3899
146553 7590 02/06/2025
Abhijit R. Nesarikar, Ashlesha A. Nesarikar,
Anika A. Nesarikar
EXAMINER
P LLIAM, CHRISTYANN R
8025 Ambiance Way
Plano, TX 75024
ART UNIT
P PER NUMBER
2100
NOTIFICATION DATE
DELIVERY MODE
02/06/2025
ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceedin .
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ab@nesarikar.com
anika.nesaiikar@utdallas.edu
nesarikaras@gmail.com
PTOL-90A (Rev. 04/07)
146553_18611669_2025-02-06_M327
10
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#: 114
Appx0118
UNITED STATES DEPARTMENT OF COMMERCE
U.S. Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
APPLICATION NO./
CONTROL NO.
FILING DATE
FIRST NAMED INVENTOR/
PATENT I REEXA INATION
ATTORNEY DOCKET NO.
18/611,669
03/20/2024
Nesarikar et al.
EXAMINER
Abhljlt R. Nesarikar, shlesha A Nesarikar, Anl a Nesarikar
8025 Ambiance Way
Plano, TX 75024
Christyann R Pulliam
ART UNIT
PAPER
2100
20250205
DATE MAILED:
Please find below and/or attached an Office communication concerning this application or
proceeding.
Commissioner for Patents
The fee notice mailed January 17, 2025 was sent in error. No response is required. The fee issues and entity status were
corrected in October-December 2024.
/CHRISTYANN PULLIAM/
Quality Assurance Specialist, TC 2100
PTO-90C (Rev.04-03)
146553_18611669_2025-02-06_M327
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#: 115
Appx0119
16591555 Transactions - Application - Patent Center - USPTO 2
146553_16591555_04-10-2025_PETDEC 3
Exhibit E
16/591555
Case 4:25-cv-00423-JCB-JDL Document 2-4 Filed 04/24/25 Page 1 of 6 PageID #:
116
Appx0120
4/13/25.3 43 PM
An official website of the United States governme t
Here's Iww yo Know v
Transactions - Application - Patent Center - USPTO
16/591,55512a-nskeval:
Risk Evaluation and Threat Mitigation Using Artificial Intelligence | private view~|
Application #
16/591,555
Filing or 371 (c) date
10/02/2019
Confirmation #
1418
Attorney Docket It
2a-riskeval Edit
1 Status |
I Appeal Brief (or
1 Supplemental Brief) '
1 Entered and Forwarded to ,
j Examiner 10/19/2024 i
Patent#
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Showing 1 to 10 of 161 entries
Date
Transaction Description
04/10/2025
Email Notification
04/10/2025
Mail O.P. Petition Decision
04/08/2025
Mail-Petition Decision-Dismissed
04/07/2025
Petition Decision-Dismissed
04/06/2025
O.P. Petition Decision
03/21/2025
Petition Entered
[ 02/27/2025
j
Interview Request Correction |
02/05/2025
Email Notification
02/05/2025
Filing Receipt-Corrected
12/24/2024
Email Notification
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1 t
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hltps//patentcentBr.usptogov/appl:catons/16591555/ifv//transactions?application=%2Fw<xkbench%2Fap l>cations
16591555 Transactions - Application - Patent Center - USPTO
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Appx0121
< 2 United States P tent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.usplo.gov
APPLICATION NO.
FILING DATE
FIRST NAMED INVENTOR
ATTORNEY DOCKET NO.
CONFIRMATION NO.
16/591,555
10/02/2019
Abhijit R. Nesarikar
2a-riskeval
1418
146553 7590 04/10 2025
Abhijit R. Nesarikar, Ashlesha A. Nesarikar,
Anika A. Nesarikar
8025 Ambiance Way
Plano, TX 75024
ART UNIT
HOANG, MICHAEL H
EXAMINER
P PER NUMBER
2122
NOTIFICATION DATE
DELIVERY MODE
0 /10/2025
ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceedin .
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ab@nesarikar.com
anika .nes arikar @ utdallas.edu
nesarikaias@gmail.com
PTOL-90A (Rev. 04/07)
146553_16591555_04-10-2025_PETDEC
3
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118
Appx0122
United Sta es Patent and Trademark Office
Commissioner tor Patents
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
www.uspto.gov
In re Application of
Nesarikar el al.
Application No. 16/591,555
Filed: October 02, 2019
For: Risk Evalu tion and Threat Mitigation
Using Artificial Intelligence
DECISION ON PETITION
This is a Notice regarding the request for acceptance of a fee deficiency submission under 37
CFR 1.29(k) filed October 29, 2024.
The Office no longer investigates or rejects original or reissue applications under 37 CFR 1.56.
1098 Off. Gaz. P t. Office 502 (January 3, 1989). Therefore, nothing in this Notice is intended
to imply that an investigation was done.
The fee deficiency submission under 37 CFR 1,29(k) is NOT ACCEPTED.
Applicant should note that 37 CFR I.29(k) states: If status as a micro entity is established in
good faith in an application or patent, nd fees as a micro entity are paid in good faith in the
application or patent, and it is later discovered that such micro entity status either was established
in error, or that the Office was not notified of a loss of entitlement to micro entity status as
required by paragraph (i) of this section through error, the error will be excused upon compliance
with the separate submission and itemization requirements of paragraph (k)( 1) of this section and
the deficiency payment requirement of paragraph (k)(2) of this section.
(1) Any paper submitted under this paragraph must be limited to the deficiency payment
(all fees paid in error) required for a single application or patent. Where more than one
applic tion or patent is involved, separate submissions of deficiency payments are
required for each application or patent (see § 1.4(b)). The paper must contain an
itemization of the total deficiency payment for the single application or patent and
include the following information:
146553_16591555_04-10-2025_PETDEC
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Application No. 16/591,555
Page 2
(i) Each particular type of fee that was erroneously paid as a micro entity, (e.g.,
basic statutory filing fee, two-month e tension of time fee) long with the current
fee amount for a small or non-small entity, as applicable;
(ii) The micro entity fee actually paid, and the date on which it was paid;
(iii) The deficiency owed amount (for each fee erroneously paid); and
(iv) The total deficiency payment owed, which is the sum or total of the
individual deficiency owed amounts as set forth in paragraph (k)(2) of this
section.
The itemization submitted with present request fails to fully comply ith requirements (i), (ii),
(iii) and (iv). In regards to (i), all the fees that were erroneously paid as a micro entity along with
the current fee amount were not provided (e.g., extension of time). For this reason, requirements
(ii), (iii) and (iv) has not been met. As a result, the present request cannot be accepted at this
time.
Applicant should submit the itemization within ONE (1) MONTH from the mail date of this
Notice. This time limit is non-extendable. Failure to timely respond may result in the return of
the fee deficiency paper, at the option of the Office.
Further correspondence with respect to this matter should be addressed as follows:
By mail:
Mail Stop PETITION
Commissioner for Patents
P. 0. Box 1450
Alexandria, VA 22313-1450
By FAX:
(571) 273-8300
ATTN: Office of Petitions
By hand:
United States Patent and Trademark Office
Customer Service Window, Mail Stop Petitions
Knox Building, Room 1D80
501 Dulany Street
Alexandria, VA 22314
By internet:
Patent Electronic Filing System1
1 The Patent Center at https://patentcenter.uspto.gov (for help using Patent Electronic Filing System call the Patent
Electronic Business Center at (866) 217-9197).
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Application No. 16/591,555
Page 3
Telephone inquiries regarding this decision should be directed to JoAnne Burke at (571) 272-
4584. All other inquiries regarding the status of published or unpublished applications may be
obtained fro Patent Center t https://patentcenter.uspto.gov. Unpublished application
information in Patent Center is available to registered users. All other inquiries concerning the
examination of this application should be directed to the ssigned Technology Center.
<5&urke/
JoAnne L. Burke
Lead Paralegal Specialist
Office of Petitions
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165337_18120998_2024-04-19_NFEE_001 2
165337_18120998_2024-04-19_NFEE_002 3
165337_18'120998_2025-03-07_PETDEC 5
18120998 Transactions - Application - Patent Center - USPTO 8
18120998 Documents - Application - Patent Center - USPTO 10
Exhibit F
18/120,998
Case 4:25-cv-00423-JCB-JDL Document 2-5 Filed 04/24/25 Page 1 of 12 PageID #:
122
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United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO.
FILING DATE
FIRST NAMED INVENTOR
ATTORNEY DOCKET NO.
CONFIR ATION NO.
18/120,998
03/13/2023
Feipeng Liu
8984
165337 7590 04/19/2024
Genesis Materials Innovations, LLC
24602 Community Center Dr.
Spring, TX 77389
EXAMINER
PULLIAM, C RISTY ANN R
ART UNIT
PAPER NUMBER
2100
MAIL DATE
DELIVERY MODE
04/19/2024
PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached co munication.
PTOL-90A (Rev. 04 07)
165337_18120998_2024-04-19_NFEE_001
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United States Patent and Trademark Office
Commissioner for Patents
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
NOTICE OF PAYMENT DEFICIENCY
This notice is to infonn the applicant that the United States Patent and Trademark Office (USPTO)
has identified an apparent error in the entity status afforded the above-identified application.
Applicant is given TWO MONTHS fro the date of this Notice within which to respond to avoid
abandonment. Extensions of time may be obtained by filing a petition accompanied by the
extension fee under the provisions of 37 CFR 1.136(a).1
Applicant has submitted a certification of micro entity status based upon the gross income basis
and paid fees in the above-identified application based upon this certification. In order to qualify
for micro entity status under the gross income basis, 37 CFR 1.29(a)(2) requires the applicant to
certify [njeither the applicant nor the inventor nor a joint inventor has been named as the inventor
or a joint inventor on more than four previously filed patent applications, other than applications
filed in another country, provisional applications under 35 U.S.C. 111(b), or international
applications for which the basic national fee under 35 U.S.C. 41(a) was not paid. As explained
in MPEP 509.04(a)(1)(B), an application still counts against this filing limit even if it has been
abandoned or patented, and even if it did not claim micro entity status. When this application was
filed, the applicant, the inventor, or a joint inventor was na ed on more than four previously filed
patent applications. This isprimafacie evidence that the submitted certification is in error because
the filing limit in 37 CFR 1.29(a)(2) was exceeded. Accordingly, the payments made in this
application based upon the apparently erroneous micro entity certification are deficient.
Because the deficient payments include one or more of the basic filing fee for utility under 37 CFR
1 16(a), the utility search fee under 37 CFR 1.16(k), and the utility examination fee under 37 CFR
1.16(o), this application is not in condition for examination. In order to avoid abandonment,
applicant must respond in one of two ways:
I. If the certification was erroneous, the applicant must provide an itemization of the total
deficiency p yment and pay the deficiency owed in accordance with 37 CFR 1.29(k). The
Notification of Loss of Entitle ent to Micro Entity Status form (Form SB/460) ay be
used to ubmit the deficiency. This form is available at https:,7 uspto.gov/P tentForms. The
current USPTO fee schedule may be viewed at https://www.uspto.gov/learning-and-
resources/fees-and-payment/uspto-fee-schedule.
II. If applicant asserts that the certification of micro entity status was not made in error,
1 All the rules cited in this Notice may be viewed in their entirety at
https://ww .uspto.govAveb/offices/pac/mpep/consolidated_rules.pdf. For patent applications filed under 35 U.S.C.
111(a) undergoing prioritized examination (Track One), applicant is reminded that any equest for an extension of
time, including an extension, of ti e fat the p rpose f res on ing to Ini notice, will ca e the ap lication to be
ineligible for further t eat ent un er the prioritize exa ination progr m. In ad ition, a request for an extension of
time p ior to the grant o prioritized exa ination status will prevent such status fro bein granted. MPEP
708.02(b , sub-section (I)(B) 4).
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applicant must reply with an explanation and any necessary evidence that is sufficient to
rebut the -znrafacie evidence of an erroneous certification. Applicant is reminded that the
reply must be made with candor and good faith under 37 CFR 1.56. Pursuant to applicant s
duties under 37 CFR 1.4 and 11.18, applicant should have made a reasonable inquiry into
the facts before making the certification. It is these particular facts that applicant must
provide in order to rebut theprimafacie case. Simply identifying the previously submitted
certification or recertifying would not be sufficient. Applicant is reminded that it is in the
best position to perform an inquiry into whether the applicant, the inventor, or a joint
inventor was n med on more than four previously filed patent applications when this
application was filed to determine whether an assertion of micro entity status in this
application is appropriate.
Applic nt is given TWO MONTHS from the mailing date of this Notice to file a response as
outlined above. Extensions of time are available under the provisions of 37 CFR 1.136(a).2 The
application has been removed from the examiner’s docket (if assigned) pending resolution of the
issues noted herein, or expiration of the time period set forth. If applicant does not timely respond
in accordance with (I) or (II) above, or is unable to make one of these responses because micro
entity status was not established in ood faith, then the application will be abandoned.
Only a registered practitioner authorized by the applicant or the applicant who is not represented
by a practitioner can sign a response or make changes to the application. Note that an applicant
who is a juristic entity ust be represented by a registered practitioner. See 37 CFR 1.31. While
the Office cannot recommend a registered practitioner, the link below provides a searchable list of
registered practitioners: https://oedci.uspto.gov/OEDCV.
Questions about the contents of this notice should be directed to the Office of Patents
Stakeholder Experience (OPSE), Stakeholder Support Division (SSD), Patents Ombudsman at
571-272-5555.
John Cottingham
TC Group Director, TC 2100
2 For patent applications filed under 35 U.S.C. 111 (a) undergoing prioritized examination (Track One), applicant is
re inded that any lequest for an extension of time, including n extension of ti e for the urpose of responding i
this n tice, will cause the application to be ineligible for further treatment under the prioritized exa ination
rogram. Ln ad ition, a request for a!) extension of time prior to the r nt of p ioritized examination tatus will
prevent such status fro being granted. See MPE.P 708.02(b), sub-section (1)(B)(4).
165337_18120998_2024-04-19_NFEE_002
2
4
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® United States P tent and Trademark Office
\
I
g
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexa dria, Virginia 22313-1450
www.uspto.gov
PPLICATION NO.
FILING DATE
FIRST NAMED INVENTOR
ATTORNEY DOCKET NO.
CONFIRMATION NO.
18/120,998
03/13/2023
Feipeng Liu
8984
165337 7590 03/07/2025
Genesis Materials Innovations, LLC
24602 Community Center Dr.
Spring, TX 77389
EXAMINER
PULLIAM, CHRISTYANN R
ART UNIT
PAPER NUMBER
2100
MAIL DATE
DELIVERY MODE
03/07/2025 PAPER
Please find below and/or attached an Office communication concerning this application or proceedin .
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
165337_18120998_2025-03-07_PETDEC
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United States Patent and Trademark Office
Commissioner for Patents
United States Patent and Trademark Office
P.O. Box 1450
Alexan ria, VA 22313-1450
www.uspto.gov
In re Application of
Liu ct al.
Application No. 18/120,998
Filed: March 13, 2023
For: ENGINEERED SELF-HEALING
HYDRAULIC-CEMENT CONCRETE BY
BIOMIMICRY
DECISION ON PETITION
This is a notice regarding renewed your request for acceptance of a fee deficiency submission
under 37 CFR 1.29(k) filed October 9, 2024.
The Office no longer investigates or rejects original or reissue applications under 37 CFR 1.56.
1098 Off. Gaz. Pat. Office 502 (January 3, 1989). Therefore, nothing in this Notice is intended
to imply that an investigation was done.
Applicant should note that 37 CFR 1.29(k) states: If status as a micro entity is established in
good faith in an application or patent, and fees as a micro entity are paid in good faith in the
application or patent, and it is later discovered that such micro entity status either was
established in error, or that the Office was not notified of a loss of entitlement to micro entity
status as required by paragraph (i) of this section through error, the error will be excused upon
compliance with the separate submission and itemization requirements of paragraph (k)( 1) of
this section and the deficiency pay ent requirement of paragraph (k)(2) of this section.
(1) Any paper submitted under this paragraph must be limited to the deficiency
payment (all fees paid in error) required for a single application or patent. Where
more than one application or patent is involved, separate submissions of deficiency
payments are required for each applic tion or patent (see § 1.4(b)). The paper ust
contain an itemization of the total deficiency payment for the single application or
patent and include the following infor ation:
(i) Each particular type of fee that was erroneously paid as a micro entity,
(e. ., basic statutory filing fee, two-month extension of time fee) along with
the current fee amount for a small or non-small entity, as applicable;
(ii) The micro entity fee actually paid, and the date on which it was paid;
(iii) The deficiency owed amount (for each fee erroneously paid); and
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Application No. 18/120,998
Page 2
(iv) The total deficiency payment owed, which is the sum or total of the
individual deficiency owed amounts as set forth in paragraph (k)(2) of this
section.
A review of the record has determined that a reply to the Notice of Payment Deficiency mailed
i April 19, 2024 was received by the office on October 9, 2024. However, the reply is improper I
' because it is untimely. The Notice of Payment Deficiency set a shortened statutory period for '
reply of two "( ) months, with up to five (5 J months of extensions of tFmc a'vailaLrc uridcr the" -
provisions of 37 CFR 1.136(a). Since no extensions of time we e obtained, the fee deficiency
submission under 37 CFR 1.29(k) is NOT ACCEPTED.
Item(s) (i), (iii) and (iv) has not been fully met. In regards to (i), each particular type of fee that
was erroneously p id as a micro entity along with the current fee amount, however, the current
fees were omitted from the itemization.
Additionally, petitioner has not provided the correct amount owed for each fee as a result,
requirement (iii) has not been met. For this reason, requirement (iv) cannot be determined if it
has been fully satisfied.
This application is being referred to Technology Center 2100 for appropriate action in the normal !
i course of business. 1
Telephone inquiries concerning this decision should be directed to the undersigned whose
telephone number is (571) 272-1058. Information regarding the status of published or
unpublished applications may be obtained from Patent Center at https://patentcenter.uspto.gov.
Unpublished application information in Patent Center is available to registered users. All other
inquiries conce ing the examination of this application should be directed to the assigned
Technology Center.
Idn eta
Angela Walker
Pa alegal Specialist
Office of Petitions
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18/120,998|-:
ENGINEERED SELF-HEALING HYDRAULIC-CEMENT CONCRETE BY BIOMI ICRY
| PUBLIC VIEW |
Application #
18/120.998
Filing or 371 (c)date
03/13/2023
Confirmation#
8984
Attorney Docket #
( Status
I AWAITING RESPONSE FOR '
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I DEFICIENCY OR CRF
I ACTION 04/19/2024 |
Patent #
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03/07/2025
Petition Decision-Dismissed
03/07/2025
O.P. Petition Decision
10/09/2024
Petition Entered
10/09/2024
Miscellaneous Incoming Letter
10/02/2024
Mail O.P. Petition Decision
10/02/2024
Mail-Petition Decision-Dismissed
10/02/2024
Petition Decision - Dismissed
10/02/2024
O.P. Petition Decision
08/21/2024
Petition Entered
08/14/2024
Mail O.P. Petition Decision
08/13/2024
Mail-Petition Decision-Dismissed
08/13/2024
Petition Decision-Dismissed
08/13/2024
O.P. Petition Decision
07/12/2024
Petition Entered
06/27/2024
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06/27/2024
Petition Decision-Dismissed
06/26/2024
O.P. Petition Decision
04/24/2024
Petition Entered
04/24/2024
Appl Has Filed a Verified Statement of Micro to Small Entity Status
04/19/2024
Mail Fee Due Notice or other requirement (eg. signature)
04/18/2024
Fee Due Notice or other requirement
01/23/2024
Case Docketed to Examiner in GAU
07/27/2023
Application ready for PDX access by participating foreign offices
07/27/2023
PG-Pub Issue Notification
05/04/2023
Case Docketed to Examiner in GAU
05/04/2023
Application Dispatched from OIPE
04/17/2023
Sent to Classification Contractor
04/17/2023
FITF set to YES - revise initial setting
04/17/2023
Patent Term Adjustment-Ready for Examination
04/17/2023
Mail Pre-Exam Notice
04/17/2023
Application Is Now Complete
04/17/2023
Filing Receipt
04/06/2023
Notice Mailed-Application Incomplete-Filing Date Assigned
04/06/2023
Mail Pre-Exam Notice
04/06/2023
Notice Mailed-Application Incomplete-Filing Date Assigned
04/06/2023
Filing Receipt
04/04/2023
Applicant Has Filed a Verified Statement of Micro Entity Status in Compliance with 37 CFR 1.29
03/13/2023
Entity Status Set To Undiscounted (Initial Default Setting or Status Change)
03/13/2023
Initial Exam Team nn
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Documents - Application - Patent Center - USPTO
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ENGINEERED SELF-HEALING HYDRAULIC-CEMENT CONCRETE BY BIOMI ICRY
| PUBLIC VIEW |
Application #
Confirmation # Attorney Docket # Patent #
18/120,998
8984
Filing or 371 (c) date
03/13/2023
Status
AWAITING RESPONSE FOR
INFORMALITY, FEE
DEFICIENCY OR CRF
ACTION 04/19/2024
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1
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
ASHLESHA A. NESARIKAR,
ANIKA A. NESARIKAR, and
ABHIJIT R. NESARIKAR,
Plaintiffs,
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
Case No. 4:25-cv-00423-JCB-JDL
-v-
THE UNITED STATES PATENT AND
TRADEMARK OFFICE and
COKE MORGAN STEWART, in her
official capacity as the Acting Director of
the United States Patent and Trademark
Office,
Defendants.
Plaintiffs’ Certification of Generative Artificial Intelligence Usage
Inventors file this certification in response to the STANDING ORDER ON DISCLOSURE AND
CERTIFICATION REQUIREMENTS FOR USE OF GENERATIVE ARTIFICIAL
INTELLIGENCE of 04/09/2025 by United States Magistrate Judge John D. Love.
1.
Inventors (Plaintiffs) are scientists, engineers, developers, deployers, testers, verifiers,
and users of artificial intelligence (AI), including generative AI. Inventors have filed numerous
patent applications related to Inventors’ AI related work. Inventors filed their first provisional
patent application related to AI on March 30, 2017.
2.
Inventors’ education, training, and work experiences support Inventors’ AI related work.
3.
Ashlesha Nesarikar and Anika Nesarikar are AI small business owners in Texas.
Case 4:25-cv-00423-JCB-JDL Document 8 Filed 04/29/25 Page 1 of 5 PageID #:
151
Appx0138
2
4.
Ashlesha earned her undergraduate degree in Computer Science as part of the Computing
Scholars Honors Program (admission offered by invitation and requires passing a competitive
exam) with a focus on artificial intelligence and machine learning from the University of Texas
at Dallas in Richardson, Texas (GPA: 3.9/4.0). She was granted a full-ride scholarship as a
National Merit Scholar. While in school, Ashlesha led a team of her peers to national level
recognition in the US Ignite Smart Gigabit Communities Challenge, winning the challenge in a
competitive field including industry and academia1, 2. Ashlesha’s efforts were featured in media
including KRLD radio and NBC 5 in a televised interview3. As an AI expert, Ashlesha has been
interviewed by publications such as Scientific American4 and Voice of America5. Ashlesha was
invited to present an AI demonstration at the US Ignite Application Summit and Smart Cities
Connect Conference & Expo6 in a center-stage presentation. As a thought leader in AI
technology, Ashlesha was invited to speak about ethics in facial recognition and AI7 on a panel
with industry and humanities experts. As an entrepreneur, Ashlesha envisions positive social
impacts of AI. To that end, she led a multidisciplinary team of technologists and healthcare
professionals and proposed community-wide use of AI to alleviate COVID-19 stress to services
and infrastructures8.
1 https://www.us-ignite.org/an-ai-platform-is-born/
2 https://www.richardsoneconomicdevelopment.com/news/press-release-plano-intelligence-launches-new-inotify-
platform-that-powers-award-winning-ai-app-for-video-monitoring-and-identification-of-public-safety-threats
3 https://www.nbcdfw.com/news/local/utd-school-security-4p-40618_dallas-fort-worth/69023/
4 https://www.scientificamerican.com/article/why-deepseeks-ai-model-just-became-the-top-rated-app-in-the-u-s/
5 https://web.archive.org/web/20241107161035/https://www.vozdeamerica.com/a/peligra-su-trabajo-con-la-
inteligencia-artificial-/7008248.html
6 https://www.youtube.com/watch?v=LyKCYPxmoKk
7 https://www.youtube.com/watch?v=IRWfCVjwn6k
8 https://arxiv.org/abs/2007.12312
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5.
Anika is pursuing an undergraduate degree in Computer Science as part of the
Computing Scholars Honors Program (admission offered by invitation and requires passing a
competitive exam) at the University of Texas at Dallas in Richardson, Texas with a focus on AI
and machine learning (current GPA 3.9/4.0). She was granted a full-ride scholarship as a
National Merit Scholar. Anika has been admitted to the computer science Fast-Track Program,
which “enables exceptionally gifted senior undergraduate students to include master’s level
courses in their undergraduate degree”9.
6.
Abhijit Nesarikar is an AI small business owner. Abhijit attained his doctorate in
Chemical Engineering from Northwestern University (Evanston, IL) in the Department of
Chemical Engineering. He received a full-ride scholarship and graduated in 1995 with a GPA of
4.0/4.0. Abhijit’s research has been related to the fields of polymers, physics, chemistry,
mathematics and computation, and engineering. Abhijit has authored and coauthored several
peer reviewed publications in national and international journals. Abhijit has over 25 years of
industry experience at the local, national, and international levels. Abhijit’s industry consulting
experience spans diverse industries: oil and gas, defense, telecommunications, transportation,
finance (e.g., banking, charge processing, clearing and settlement, exchange activity, insurance,
fraud detection and prevention, and trading), retail, software, hardware and integration,
healthcare, and research.
7.
As AI professionals, Inventors use generative AI in the ordinary course of work to
develop strategies, gain insights, identify risks and ways to mitigate them, and quickly learn new
fields. The use of generative AI extends to the current court case.
9 https://web.archive.org/web/20240318180541/https://personal.utdallas.edu/~ivor/ecsfasttrackprogram.htm
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8.
Based on their technological, commercial, and scientific expertise, Inventors have long
worked to identify, quantify, and mitigate factual mistakes, logical fallacies, and lack of
awareness by AI. Inventors investigate measures to avoid, identify, and correct, if present, AI
errors, including misrepresentations, logical fallacies, undue verboseness, irrational confidence,
and extraneousness. The measures are active topics of scientific inquiry and engineering
experiments bearing significant commercial promise. Inventors disclosed some of the measures,
e.g., in published and unpublished patent applications. Some others are proprietary intellectual
property.
9.
Inventors work at the leading edge of AI as an evolving technology. Inventors experiment
with rapidly changing variations of AI, including openly available AI, research related AI,
commercially provided AI, Inventors’ own AI, and combinations thereof.
10.
With appreciation of the Court’s concern regarding generative AI usage, Inventors in
good faith disclose:
1.
All of Inventors’ exhibits are copies of existing records. No AI, generative or
otherwise, was used in organizing or annotating the exhibits.
2.
Inventors vetted all of Inventors’ documents drafted for this court case for
truthfulness, logical soundness, and relevance.
3.
Inventors’ citations of statutes, regulations, and other authorities are excerpts of
the official language of the statutes, regulations, and other authorities.
4.
Inventors, in good faith, comply with L.R. CV-11(g).
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Date: April 29, 2025
Respectfully submitted,
Inventors and Plaintiffs
____________________
____________________
____________________
Ashlesha A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
asedt0425@icloud.com
Anika A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
anedt0425@icloud.com
Abhijit R. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
edt0425@nesarikar.com
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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
ASHLESHA A. NESARIKAR,
ANIKA A. NESARIKAR, and
ABHIJIT R. NESARIKAR,
Plaintiffs,
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
Case No. 4:25-cv-00423-JCB-JDL
-v-
THE UNITED STATES PATENT AND
TRADEMARK OFFICE and
COKE MORGAN STEWART, in her
official capacity as the Acting Director of
the United States Patent and Trademark
Office,
Defendants.
Notice of Defendants’ Failure to Respond and
Motion for Grant of Preliminary Injunction
Inventors (Plaintiffs) respectfully request that the Court grant the Motion for Preliminary
Injunction filed April 24, 2025 (Docket # 2). The Complaint, Motion for Preliminary Injunction,
and Exhibits A-F were filed and served on the U.S. Attorney for the Eastern District of Texas on
April 24, 2025.
Defendants failed to file a response to the Motion for Preliminary Injunction within the time to
file a response under LOCAL RULE CV-7(e). As Defendants did not respond, Inventors request
that the Court grant the relief requested in the Motion for Preliminary Injunction filed April 24,
2025.
Defendants’ failure to oppose the motion created a presumption that Defendants do not
controvert the facts set out by Inventors and have no evidence to offer in opposition to the
Case 4:25-cv-00423-JCB-JDL Document 10 Filed 05/09/25 Page 1 of 2 PageID #:
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2
motion. Thus, Inventors believe that the arguments and evidence filed with the motion are
sufficient to grant the injunction without an oral hearing.
Certificate of Generative Artificial Intelligence Usage: Inventors use generative AI in the
ordinary course of work as described in the certification filed on April 29, 2025. Inventors, in
good faith, comply with L.R. CV-11(g).
Date: May 09, 2025
Respectfully submitted,
Inventors and Plaintiffs
____________________
____________________
____________________
Ashlesha A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
asedt0425@icloud.com
Anika A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
anedt0425@icloud.com
Abhijit R. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
edt0425@nesarikar.com
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Appx0144
IN THE UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
ASHLESHA A. NESARIKAR,
§
ANIKA A. NESARIKAR,
§
ABHIJIT R. NESARIKAR,
§
§
Plaintiffs,
§
§
v.
§
Case No. 4:25-cv-423
§
THE UNITED STATES PATENT AND
§
TRADEMARK OFFICE and
§
COKE MORGAN STEWART, in her
§
official capacity as the Acting Director of §
the United States Patent and Trademark
§
Office,
§
§
Defendants.
§
DEFENDANTS’ MOTION FOR EXTENSION OF TIME TO FILE RESPONSE TO
MOTION FOR A PRELIMINARY INJUNCTION
Defendants file this motion for extension of time for twenty-eight (28) days within which
to file a response to Plaintiffs’ Motion for a Preliminary Injunction, EFC No. 2 (the “Motion”),
and respectfully show the Court as follows:
Plaintiffs filed this case on April 24, 2025. ECF No. 1. On the same day, Plaintiffs filed the
Motion, ECF No. 2, and summons were issued, ECF No. 5. Plaintiff mailed a copy of the complaint
and summons to the United States Patent and Trademark Office (USPTO), c/o Pamela Bondi on
April 29, 2025. ECF No. 9, at 3. The summons and complaint were delivered on May 5, 2025. See
ECF No. 9, at 3 (tracking number shows delivery on May 5, 2025). Plaintiffs also mailed a copy
of the complaint and the Motion to the USPTO c/o General Counsel on April 29, 2025. ECF No.
9-1, at 3. This mailing was also delivered on May 5, 2025. See id. (tracking number shows delivery
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DEFENDANTS’ MOTION FOR EXTENSION OF TIME
2
on May 5, 2025). Finally, Plaintiffs served the complaint and the Motion on the United States
Attorney’s Office for the Eastern District of Texas on April 24, 2025. ECF No. 9-2, at 1–2.
To serve a United States agency or a United States officer sued only in an official capacity,
a party must serve the United States and also send a copy of the summons and complaint by
registered or certified mail to the agency, officer, or employee. Fed.R.Civ.P. 4(i)(3).
Arguably, according to Local Rule CV-7(e), this made the Government’s response to
motion for preliminary injunction due on May 13, 2025. To serve the United States, a party must
deliver a copy of the summons and the complaint to the United States Attorney for the district
where the action is brought and send a copy by registered or certified mail to the Attorney General
of the United States. Fed.R.Civ.P. 4(i)(1). Thus, to properly serve a United States agency or official
sued only in an official capacity requires three levels of service – service on the agency, service
on the United States via the Attorney General of the United States, and service on the United States
Attorney’s Office.
Here, the Plaintiffs completed service, at the earliest on April 29, 2025, when they mailed
copies of the summons and the Motion to the Attorney General and to the agency. Arguably,
service was not completed until May 5, 2025 when the tracking information shows that the
Attorney General and agency received that mailing. Therefore, the Defendants’ response to the
Motion is due at the earliest on May 13, 2025 and arguably as late as May 19, 2025. See Local
Rule CV-7(e) (providing for 14 days to respond to non-dispositive motions).
The government respectfully requests the Court to provide a twenty-eight (28) day
extension of time, to June 10, 2025, to respond to Plaintiffs’ motion for preliminary injunction. As
of this filing, counsel has not received a litigation report from the agency. Additional time will
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DEFENDANTS’ MOTION FOR EXTENSION OF TIME
3
allow Defendants to prepare a more thoughtful response, which will better aid the Court in
resolving issues presented in the Motion.
WHEREFORE, PREMISES CONSIDERED, the United States respectfully requests that
Court grant this Motion for Extension of Time to File Response to Motion for a Preliminary
Injunction and order that the response shall not be due until June 10, 2025.
Respectfully submitted,
ABE MCGLOTHIN, JR.
ACTING UNITED STATES ATTORNEY
/s James Garland Gillingham
JAMES GARLAND GILLINGHAM
Assistant United States Attorney
Texas State Bar No. 24065295
james.gillingham@usdoj.gov
110 N. College, Suite 700
Tyler, TX 75702
(903) 590-1400
Fax: (903) 590-1436
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DEFENDANTS’ MOTION FOR EXTENSION OF TIME
4
CERTIFICATE OF CONFERENCE
The “meet and confer” and “certificate of conference” requirements are not applicable to
pro se litigants. Local Rule CV-7(i). Therefore, no conference was required because Plaintiffs are
proceeding pro se.
/s James Garland Gillingham
JAMES GARLAND GILLINGHAM
Assistant United States Attorney
Case 4:25-cv-00423-JCB-JDL Document 11 Filed 05/09/25 Page 4 of 5 PageID #:
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DEFENDANTS’ MOTION FOR EXTENSION OF TIME
5
CERTIFICATE OF SERVICE
I hereby certify that on May 9, 2025, I electronically filed the foregoing document with the
Clerk of the Court using the ECF system which will send notification of such filing to those persons
on the Court’s electronic filing system. Additionally, a true and correct copy of this motion will
be sent to Plaintiffs as follows:
Via Email
Ashlesha A. Nesarikar
asedt0425@icloud.com
Via Email
Anika A. Nesarikar
anedt0425@icloud.com
Via Email
Abhijit R. Nesarikar
edt0425@nesarikar.com
/s James Garland Gillingham
JAMES GARLAND GILLINGHAM
Assistant United States Attorney
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1
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
ASHLESHA A. NESARIKAR,
ANIKA A. NESARIKAR, and
ABHIJIT R. NESARIKAR,
Plaintiffs,
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
Case No. 4:25-cv-00423-JCB-JDL
-v-
THE UNITED STATES PATENT AND
TRADEMARK OFFICE and
COKE MORGAN STEWART, in her
official capacity as the Acting Director of
the United States Patent and Trademark
Office,
Defendants.
Plaintiffs’ Response in Opposition to Defendants’ Motion for Extension of Time to File
Response to Motion for a Preliminary Injunction
Inventors (Plaintiffs) respectfully oppose Defendants’ Motion for Extension of Time (Docket
#11). The Motion for Extension of Time is untimely under Federal Rule of Civil Procedure 6(b)
(1)(A). Further, if an extension were granted to Defendants, it would delay injunctive relief and
pose disproportionate burden and loss to Inventors.
Inventors respectfully submit that Defendants erred in determining the time for response to the
Motion for Injunction (Docket #2) because Defendants misapplied Federal Rules of Civil
Procedure (FRCP). Defendants refer to FRCP 4(i), which addresses service of “a copy of the
summons and of the complaint” on the United States. However, by Inventors’ understanding,
FRCP 5, not FRCP 4, governs service of written motions (see FRCP 5(a)(1)). FRCP 5(b)
requires service on a party’s attorney and specifies a paper is served by hand delivery or by the
court’s electronic-filing system, among others.
Case 4:25-cv-00423-JCB-JDL Document 12 Filed 05/11/25 Page 1 of 5 PageID #:
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2
Local Rule CV-7(e) states that the time for response to a motion is “fourteen days (twenty-one
days for summary judgment motions) from the date the motion was served…after which the
court will consider the submitted motion for decision”. Inventors maintain that the time for
response to the Motion for Injunction is calculated from the day of service of the Motion for
Injunction, which was completed on April 24, 2025. As acknowledged in Defendants’ Motion
for Extension of Time (Docket 11, pg. 2), the Motion for Injunction was served on the United
States Attorney’s Office for the Eastern District of Texas (the U.S. Attorney) on April 24, 2025.
On the same day, the Motion for Injunction was also electronically docketed in the court’s
CM/ECF system.
The U.S. Attorney, in filing the Motion for Extension of Time, have acknowledged themselves
as attorneys representing Defendants (see, e.g., “counsel has not received a litigation report from
the agency”, Docket 11, pg. 2). Therefore, Defendants were properly served with the Motion for
Injunction under FRCP 5 on April 24, 2025, both because it was electronically docketed in the
court’s CM/ECF system (Local Rule CV-5(e)) and because it was hand delivered to the U.S.
Attorney.
Further, courts have indicated that the U.S. Attorney in the relevant district serves the role of
attorney to U.S. government defendants. For example, in Pattila v. Noem, 4:25-cv-00416, (E.D.
Tex.), injunctive relief was requested against government officials sued in their official
capacities, and the court found that contacting “the Acting U.S. Attorney for the relevant district”
satisfies the requirement for efforts made to give notice to the “adverse party or its attorney”
under FRCP 65(b) (see Pattila v. Noem, Docket #11, pg. 1 and 2).
Even if, arguendo, Defendants were permitted to apply the rules regarding service of the
Complaint (e.g., FRCP 4 as applied by Defendants) to service of a motion, the 14 day time
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3
period for response to the motion would begin after service on the U.S. Attorney (see FRCP
12(a)(2): “The United States, a United States agency, or a United States officer or employee sued
only in an official capacity must serve an answer to a complaint… within 60 days after service
on the United States attorney”), in which case Defendants still failed to respond or request
extension in a timely manner.
Further, Defendants disregarded Local Rule CV-5(e): the Attorney General and the agency were
served with the Motion for Injunction on April 24, 2025, the date it was electronically docketed
in the court’s CM/ECF system.
Further, USPTO’s Patent Center transaction history for application 18/069,288 shows:
Defendants attribute their need for extension to inaction by the agency (see, e.g, “counsel has not
received a litigation report from the agency”, Docket 11, pg. 2). Inventors respectfully submit
Case 4:25-cv-00423-JCB-JDL Document 12 Filed 05/11/25 Page 3 of 5 PageID #:
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4
that the USPTO’s inaction is not indicative of a lack of knowledge of the Motion for Injunction.
The USPTO appears to have accessed the court’s CM/ECF system for the current case as early as
04/24/2025.
Therefore, as explained in the Notice of May 9, 2025 (Docket # 10), Defendants failed to file a
response to the Motion for Injunction within the time to file a response under Local Rule
CV-7(e). Defendants’ Motion for Extension of Time was made after the time for response
elapsed. Inventors respectfully request that the Court deny Defendants’ request for extension.
Finally, an extension in these circumstances would not be equitable. Inventors believe the
extension would reward the USPTO’s actions at least by delaying accountability. As described in
the Motion for Injunction, Inventors face disproportionate burden and loss in the absence of
speedy injunctive relief.
Certificate of Service: Ashlesha A. Nesarikar is filing this document with the court’s CM/ECF
system on May 11, 2025.
Certificate of Generative Artificial Intelligence Usage: Inventors use generative AI in the
ordinary course of work as described in the certification filed on April 29, 2025. Inventors, in
good faith, comply with L.R. CV-11(g).
Case 4:25-cv-00423-JCB-JDL Document 12 Filed 05/11/25 Page 4 of 5 PageID #:
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5
Date: May 11, 2025
Respectfully submitted,
Inventors and Plaintiffs
____________________
____________________
____________________
Ashlesha A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
asedt0425@icloud.com
Anika A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
anedt0425@icloud.com
Abhijit R. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
edt0425@nesarikar.com
Case 4:25-cv-00423-JCB-JDL Document 12 Filed 05/11/25 Page 5 of 5 PageID #:
188
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1
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
ASHLESHA A. NESARIKAR, ANIKA A.
NESARIKAR, ABHIJIT R. NESARIKAR,
Plaintiffs,
v.
THE UNITED STATES PATENT AND
TRADEMARK
OFFICE,
ACTING
DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Defendants.
§
§
§
§
§
§
§
§
§
§
§
§
§
§
CIVIL ACTION NO. 4:25-CV-00423-JCB-
JDL
ORDER
Before the court is Defendants the United States Patent and Trademark Office and the
Acting Director of the United States Patent and Trademark Office’s (“USPTO”) (collectively, the
“Defendants”) motion for extension of time to file a response to Plaintiffs’ motion for a preliminary
injunction. (Doc. No. 11.) Plaintiffs filed a response opposing Defendants’ request for extension.
(Doc. No. 12.) For the reasons explained below, the court GRANTS Defendants’ motion.
Defendants primarily request an extension based on the timing of Plaintiffs’ service of their
motion for a preliminary injunction. Defendants first explain that Plaintiffs completed service on
April 29, 2025 when they mailed copies of the summons and their motion for a preliminary
injunction to the United States Attorney General and to the USPTO. (Doc. No. 11, at 2.)
Alternatively, Defendants state that Plaintiffs arguably completed service on May 5, 2025 when
tracking information confirms the Attorney General and USPTO received the mailing of the
summons and motion for preliminary injunction. Id. As a result, Defendants’ response to Plaintiffs’
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2
motion is either May 13, 2025 or May 19, 2025. Id. (citing L.R. CV-7(e) (providing for fourteen
days to respond to non-dispositive motions)). Moreover, Defendants’ counsel explains that as of
May 9, 2025, he has not yet received a litigation report from the agency, which he requires to fully
address the issues before the court. Id. at 2–3. Defendants request an extension of time to June 10,
2025. Id. at 3.
Plaintiffs respond that Defendants apply the incorrect Federal Rules of Civil Procedure.
(Doc. No. 12, at 1.) Specifically, Plaintiffs claim that the date they served their motion for a
preliminary injunction—April 24, 2025—is when the court’s fourteen-day response window
triggered, not the day service of their complaint and summons was executed. Id. at 2 (citing
Fed.R.Civ.P. 5). Plaintiffs argue they properly served their motion for a preliminary injunction on
April 24, 2025 when they served their motion on Defendants’ counsel, making Defendants’
deadline to respond May 8, 2025. Id. at 2; see L.R. CV-7(e) (“A party opposing a motion has
fourteen days . . . from the date the motion was served in which to file a response . . . .”). Plaintiffs
also contend that their motion was electronically docketed in the court’s CM/ECF system on that
same day giving Defendants adequate notice of the basis for Plaintiffs’ motion for a preliminary
injunction. Id. Plaintiffs lastly contend that an extension would not be equitable because it would
reward Defendants’ actions by delaying accountability and Plaintiffs face disproportionate burdens
and loss in the absence of “speedy injunctive relief.” Id.
Here, the court need not consider the parties’ disagreement on how the Federal Rules of
Civil Procedure intertwine with the court’s local rules for the service of motions because the court
would nonetheless grant an extension even if Defendants’ response was untimely. Federal Rule of
Civil Procedure 6(b)(1) grants the court discretion to allow untimely responses where “the party
failed to act because of excusable neglect.” Fed.R.Civ.P. 6(b)(1). “Excusable neglect” is
Case 4:25-cv-00423-JCB-JDL Document 13 Filed 05/13/25 Page 2 of 4 PageID #:
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3
determined by “(1) the possibility of prejudice to the other parties, (2) the length of the applicant's
delay and its impact on the proceeding, (3) the reason for the delay and whether it was within the
control of the movant, and (4) whether the movant has acted in good faith.” Salts v. Epps, 676 F.3d
468, 474 (5th Cir. 2012).
Several considerations warrant an extension. First, this is Defendants’ first request for
extension with respect to Plaintiffs’ motion for a preliminary injunction. See RE/MAX Intern., Inc.
v. Trendsetter Realty, LLC, 655 F. Supp.2d 679, 693 (S.D. Tex. 2009) (finding that a first request
for an extension to respond favors granting a motion for extension). Defendants provide an
adequate reason for the delay: because the agency only received notice of the Plaintiffs’ complaint,
summons, and motion on May 5, 2025, Defendants’ counsel has not yet received a litigation report
necessary to defend against this action. (Doc. No. 11, at 2.) Although Plaintiffs served the
complaint and motion on the United States Attorney’s Office for the Eastern District of Texas on
April 24, 2025 (Doc. No. 12, at 2), the Defendants in interest—the USPTO and Coke Morgan
Stewart, acting Director of the USPTO—did not receive sufficient notice of Plaintiffs’ motion until
three days prior to Defendants’ deadline to respond. See L.R. CV-7(e) (giving parties opposing a
motion fourteen days to respond from the date the motion is served). Lastly, the parties’ filings do
not show that Defendants are acting in bad faith in requesting an extension.
Defendants’ requested extension also would not prejudice Plaintiffs or further proceedings
on this matter. Plaintiffs contend that an extension would not be equitable because (1) an extension
would reward Defendants’ actions by delaying accountability and (2) Plaintiffs face
disproportionate burden and loss in the absence of injunctive relief. (Doc. No. 12, at 4.) But
“delaying accountability” is not a credible reason to deny Defendants’ extension. Further, Plaintiffs
do not provide any reasons as to why an extension would prejudice them outside their general
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192
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4
allegations that the “loss . . . of injunctive relief . . . threat[ens] . . . the culmination of over eight
years of [Plaintiffs’] efforts on application processes.” (Doc. No. 2, at 7.) Defendants’ counsel
needing a litigation report does not rise to the level of prejudice to the Plaintiffs where the court
could better weigh the parties’ contentions with the assistance of a short extension.
Having considered Defendants’ motion and Plaintiffs’ response, there is good cause to
extend the time for Defendants to respond to Plaintiffs’ motion for a preliminary injunction. Thus,
Defendants’ motion (Doc. No. 11) is GRANTED. Defendants shall file their response to Plaintiffs’
motion for a preliminary injunction no later than June 10, 2025. No further extensions will be
granted.
So ORDERED and SIGNED this 13th day of May, 2025.
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193
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IN THE UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
ASHLESHA A. NESARIKAR,
§
ANIKA A. NESARIKAR,
§
ABHIJIT R. NESARIKAR,
§
§
Plaintiffs,
§
§
v.
§
Case No. 4:25-cv-423
§
THE UNITED STATES PATENT AND
§
TRADEMARK OFFICE and
§
COKE MORGAN STEWART, in her
§
official capacity as the Acting Director of
§
the United States Patent and Trademark
§
Office,
§
§
Defendants.
§
DEFENDANTS’ OPPOSITION TO MOTION FOR A PRELIMINARY INJUNCTION
Case 4:25-cv-00423-JCB-JDL Document 16 Filed 06/10/25 Page 1 of 37 PageID #:
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DEFENDANTS’ OPPOSITION TO PRELIMINARY INJUNCTION MOTION
i
TABLE OF CONTENTS
INTRODUCTION ......................................................................................................................1
BACKGROUND ........................................................................................................................4
I.
Micro Entity Status ..........................................................................................................4
II.
Plaintiffs’ Applications ....................................................................................................7
A.
Prosecution of the ’288 Application .............................................................................9
B.
Prosecution of the ’382, ’669, and ’555 Applications ................................................. 16
LEGAL STANDARD ............................................................................................................... 17
ARGUMENT ............................................................................................................................ 18
II.
Plaintiffs Seek a Mandatory Preliminary Injunction That Would Include Relief Beyond
the Scope of Plaintiffs’ Complaint and the APA ..................................................................... 20
III.
Plaintiffs Cannot Show a Likelihood of Success on the Merits ................................... 22
A.
Plaintiffs Do Not Challenge a Final Agency Action .................................................... 22
B.
Plaintiffs Cannot Succeed on a Claim of Arbitrary and Capricious Treatment ............ 23
C.
Plaintiffs Cannot Show Irreparable Harm ................................................................... 27
D.
Balance of the Equities and the Public Interest ........................................................... 29
CONCLUSION ......................................................................................................................... 30
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TABLE OF AUTHORITIES
Cases
Adams v. Cantwell, Case No. 6:20-cv-11,
2022 WL 453544 (E.D. Tex. Jan. 10, 2022) ....................................................................... 26
Allied Mktg. Grp., Inc. v. CDL Mktg., Inc.,
878 F.2d 806 (5th Cir. 1989) .............................................................................................. 17
Anderson v. Jackson,
556 F.3d 351 (5th Cir. 2009) .............................................................................................. 17
Arrow Int'l v. Spire Biomedical, Inc.,
443 F. Supp. 2d 182 (D. Mass. 2006) ................................................................................. 21
Ass'n of Am. Physicians & Surgs. v. United States HHS,
224 F. Supp. 2d 1115–29 (S.D. Tex. 2002) ......................................................................... 25
Bd. of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc.,
563 U.S. 776, 785–86 (2011) ............................................................................................. 18
Canal Auth. of Fla. v. Callaway,
489 F.2d 567 (5th Cir. 1974) .............................................................................................. 18
Daniels Health Sci., L.L.C. v. Vascular Health Sci., L.L.C.,
710 F.3d 579 (5th Cir. 2013) ................................................................................... 25-26, 28
Dennis Melancon, Inc. v. City of New Orleans,
703 F.3d 262 (5th Cir. 2012) .............................................................................................. 26
Dep’t of Com. v. New York,
139 S. Ct. 2551 (2019) ....................................................................................................... 22
Emerald City Mgmt., L.L.C. v. Kahn,
624 F. App'x 223 (5th Cir. 2015) ........................................................................................ 28
Enzo APA & Son, Inc. v. Geapag A.G.,
134 F.3d 1090, 1093 (Fed. Cir. 1998) ................................................................................. 18
Fleming v. Coward,
534 F. App’x 947 (Fed. Cir. 2013) ..................................................................................... 20
Gilead Scis., Inc. v. Lee,
778 F.3d 1341 (Fed. Cir. 2015) .......................................................................................... 20
Hyatt v. OMB,
998 F.3d 423 (9th Cir. 2021) .............................................................................................. 25
Justin Indus., Inc. v. Choctaw Secs., L.P.,
920 F.2d 262 (5th Cir. 1990) .............................................................................................. 17
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Larson v. Correct Craft, Inc.,
569 F.3d 1319, 1327 (Fed. Cir. 2009) ................................................................................. 18
Maririo v. Dickinson,
56 F. Supp. 2d 74 (D.D.C. 1999) ........................................................................................ 20
Martinez v. Mathews,
544 F.2d 1233 (5th Cir. 1976) ........................................................................... 17-18, 18, 19
Mazurek v. Armstrong,
520 U.S. 968 (1997) ........................................................................................................... 17
Miss. Power & Light Co. v. United Gas Pipe Line Co.,
760 F.2d 618 (5th Cir. 1985) .............................................................................................. 17
Nken v. Holder,
556 U.S. 418 (2009) ........................................................................................................... 28
Norton v. S. Utah Wilderness Alliance,
542 U.S. 55 (2004) ............................................................................................................. 20
Sackett v. EPA,
566 U.S. 120 (2012) ........................................................................................................... 20
Shukh v. Seagate Tech., LLC,
803 F.3d 659, 663 (Fed. Cir. 2015) ) .................................................................................. 18
Tex. Clinical Labs, Inc. v. Sebelius,
612 F.3d 771 (5th Cir. 2010) .............................................................................................. 22
Texas v. Ysleta del Sur Pueblo, EP-17-CV-179-PRM,
2018 U.S. Dist. LEXIS 54042, 2018 WL 1566866 (W.D. Tex. Mar. 29, 2018) ................... 17
Tozzi v. E.P.A.,
148 F. Supp. 2d 35 (D.D.C. 2001) ...................................................................................... 25
United States v. Emerson,
270 F.3d 203 (5th Cir. 2001) .............................................................................................. 26
Univ. of Tex. v. Camenisch,
451 U.S. 390 (1981) ........................................................................................................... 18
Warth v. Seldin,
422 U.S. 490, 498 (1975) ................................................................................................... 18
Wenner v. Tex. Lottery Comm'n,
123 F.3d 321 (5th Cir. 1997) .............................................................................................. 17
Winfrey v. United States DOC, PTO, No. 2024-1260,
2024 U.S. App. LEXIS 24311 (Fed. Cir. 2024) ............................................................. 20-21
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Winter v. Nat. Res. Def. Council, Inc.,
555 U.S. 7 (2008) ......................................................................................................... 17, 26
Statutes
5 U.S.C. § 702 .......................................................................................................................... 21
5 U.S.C. § 704……………………………………………………………………………………21
5 U.S.C. § 706 ......................................................................................................................... 20
35 U.S.C. § 123 ............................................................................................................... 4, 6, 24
44 U.S.C. § 3512 ..................................................................................................................... 24
44 U.S.C. § 3502 ..................................................................................................................... 25
5 C.F.R. § 1320.3 .................................................................................................................... 25
37 C.F.R. § 1.29 ................................................................................................... 4, 5, 19, 24, 28
37 C.F.R. § 1.42 ....................................................................................................................... 24
37 C.F.R. § 1.104 .............................................................................................................. 15, 25
37 C.F.R. § 1.135 .................................................................................................................... 21
37 C.F.R. § 1.137 .................................................................................................................... 21
37 C.F.R. § 1.181 .................................................................................................................... 21
37 C.F.R. § 1.136 .............................................................................................................. 15, 16
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INTRODUCTION
Plaintiffs’ Complaint alleges that the United States Patent and Trademark Office and its
Acting Director (collectively, “USPTO”) improperly issued a Notice of Payment Deficiency in the
prosecution of nonprovisional US Patent Application No. 18/069,288 (the “’288 application”) that
ultimately led to the abandonment of the ’288 application and to this action seeking review under
the Administrative Procedures Act (APA). Plaintiffs’ Motion goes further, alleging a malicious
conspiracy against Plaintiffs by USPTO employees and officials and demanding that the Court
substitute its judgment for the USPTO’s in designating a special fee status of not only the ’288
application but all—current and future—applications naming Plaintiffs as inventors. Mot. for
Prelim. Inj. (“Motion”), ECF 2. Plaintiffs are wrong as both a matter of fact and law and the Court
should deny Plaintiffs’ Motion as failing to establish any of the required elements for injunctive
relief.
Plaintiffs’ focus on a claimed entitlement to “micro entity” status—which, if established,
results in substantially reduced prosecution and maintenance fees. And Plaintiffs allege that the
USPTO’s requests for additional information to support Plaintiffs’ claims were extortionate,
irrational and unlawful, and arbitrary and capricious. These claims are unfounded.
While an applicant’s certification that it meets certain requirements—such as an inventor’s
number of prior applications and gross income not exceeding certain thresholds—may be
sufficient, the USPTO retains broad authority to request additional information to protect against
fraud and abuse and to ensure micro entity discounts are conferred in a manner consistent with
Congressional intent. When presented with reasonable inquiries into facial deficiencies in their
certifications, Plaintiffs opted neither to address the agency’s concerns nor follow stated procedure
to extend deadlines. At best, Plaintiffs are in search of a loophole that does not exist. Regardless,
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it is Plaintiffs’ deliberate withholding of information that precipitated the abandonment of
Plaintiffs’ applications.
As an initial matter, Plaintiffs’ standing to maintain either their Motion or Complaint is
contradicted by representations made to the USPTO. In their Motion, Plaintiffs assert irreparable
harm to their rights in the ’288 and other applications, including deprivation of property and loss
of patent term. See, e.g., ECF 2 at 1–2, 6–7. And in their Complaint, Plaintiffs allege a harm to
Plaintiffs’ rights and interests in the ‘’288 application and any resulting patent. See, e.g., ECF 1
at 14–15. But the claim for micro entity status rests on the premise that Plaintiffs have assigned—
or are obligated to assign—all rights in ten of their applications to former employers, including
the ’288 application. ECF 1-1 at 47. If Plaintiffs are correct that their former employers have been
contractually obligated all rights in the subject applications, then Plaintiffs have not established
they have rights or any concrete potential injury to be vindicated here.
Plaintiffs’ claim for relief in their Motion also well-exceeds the scope of the Complaint
and the APA. Rather than an effort to maintain initial conditions pending a full hearing on the
merits, Plaintiffs’ Motion demands that this Court reverse USPTO determinations across an
undefined number of applications, dictate the outcome, and return fees voluntarily and
appropriately paid to the USPTO. None of this relief would result even if Plaintiffs were to succeed
on the merits of their Complaint relating to the ’288 application and there is no support in the
record that any of this relief is warranted—let alone in the form of injunctive relief.
Nor can Plaintiffs succeed on the merits. Dispositively, Plaintiffs have failed to exhaust
all available administrative remedies. Plaintiffs’ failure to challenge the Notice of Abandonment
precludes relief either through this Motion or the Complaint. And while Plaintiffs selectively quote
from the prosecution history to portray the USPTO as unreasonable, arbitrary, and capricious, even
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the limited record attached to Plaintiffs’ Complaint demonstrates no error in process. The USPTO
identified reasonable concerns with respect to Plaintiffs’ certification of entitlement to micro entity
status and presented two options for the examination to move forward: (i) substantively respond
to the agency’s questions and substantiate your claims; or (ii) change the status of your application
and pay the appropriate fee.
Plaintiffs’ responses were effectively an obfuscation and a failure to engage substantively
with the USPTO’s questions. Eventually, and after the deadline for any response had expired, the
USPTO issued a notice of abandonment. No rule or regulation was violated in seeking additional
information nor was the resulting abandonment improper.
Nor can Plaintiffs demonstrate irreparable harm that must be prevented while Plaintiffs’
claims are adjudicated. For Plaintiffs’ applications that were abandoned prior to filing suit, the
status quo is that those applications remain abandoned. No cognizable harm flows from those
applications remaining in their current status and Plaintiffs’ demands for relief—including the
withdrawal of USPTO notices—demonstrate that no claimed harm is irreparable. To the extent
Plaintiffs disagree with those determinations, Plaintiffs may administratively petition that the
notices be withdrawn. For those applications in which Plaintiffs paid additional fees, such alleged
overpayment cannot constitute irreparable harm. And Plaintiffs’ claims of undue burden and
reputational harm are not only speculative but unrecognized bases for preliminary injunctive relief.
Finally, the balance of equities and the public interest favor the USPTO, as it would
unfairly advantage the Plaintiffs to not be held to the requirements for claiming micro entity status.
The Court should deny Plaintiffs’ requested preliminary injunction
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BACKGROUND
I.
Micro Entity Status
Plaintiffs’ Motion and Complaint omit critical background and context relating to the
establishment and maintenance of micro entity status in presenting their claims. When applying
for, prosecuting, and maintaining an application and resulting patents, applicants and owners are
responsible for the payment of fees associated with certain events and milestones. As the USPTO
has recognized, “[s]ome applicants and patent owners can benefit from an 80% reduction on most
fees charged by the [USPTO] if they qualify and file the appropriate papers in their application or
patent.” 1 This benefit is only “available if you have limited income and have never or have rarely
filed a patent application.” Id. The legislative history of the America Invents Act, which defines
“micro entity” status (see 35 U.S.C. § 123), confirms that “micro entity” status was intended to be
conferred on “only truly independent inventors” who have “very little capital, and just a few
inventions, as they are starting out.” H.R. Rep. No. 112-98 at 50.
The qualifications for establishing micro entity status are set forth in 37 C.F.R. §1.29 and
require four separate criteria be met:2
1. The applicant must qualify as a “small entity,” which places certain size restrictions
on the applicant and any entity that has an ownership interest in the application,
§1.29(a)(1);
2. Neither the applicant nor the inventor nor a joint inventor has been named as the
inventor or a joint inventor on more than four previously filed patent applications,
§1.29(a)(2);
3. Neither the applicant nor the inventor nor a joint inventor, in the calendar year
preceding the calendar year in which the applicable fee is being paid, had a gross
1 https://www.uspto.gov/patents/laws/micro-entity-status
2 Certain aspects of 37 C.F.R. §1.29 are not relevant to Plaintiffs’ claims here, including
regulations relating to institutions of higher learning and the specifics of calculating gross income,
and have been omitted from discussion.
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income exceeding three times the median household income for that preceding
calendar year, §1.29(a)(3); and
4. Neither the applicant nor the inventor nor a joint inventor has assigned, granted, or
conveyed, nor is under an obligation by contract or law to assign, grant, or convey,
a license or other ownership interest in the application concerned to an entity that
does not meet the requirements of subsection (3), §1.29(a)(4).
The number of previously filed applications that count towards an applicant’s or inventor’s limit
may be impacted by §1.29(b). Specifically, an application does not count for the purposes of
§1.29(a) “if the applicant, inventor, or joint inventor has assigned, or is under an obligation by
contract or law to assign, all ownership rights in the application as the result of the applicant’s,
inventor’s, or joint inventor’s previous employment.” Id.
To establish micro entity status, an applicant must file a micro entity certification in
writing, attesting to compliance with all aspects of §1.29(a). 37 C.F.R. §1.29(e). While the
establishment of micro entity status will generally remain in effect until changed, §1.29(g), two
important caveats are important to the Court’s understanding of the process. First, micro entity
status is established on an application-by-application basis; an inventor or applicant is not
necessarily entitled to micro entity status across multiple applications. See §1.29(e) (“Status as a
micro entity must be specifically established in each related, continuing and reissue application in
which status is appropriate and desired. Status as a micro entity in one application or patent does
not affect the status of any other application or patent, regardless of the relationship of the
applications or patents…”). Second, micro entity status must be re-evaluated—i.e., whether or not
the application or patent still qualifies for micro entity status—each and every time a fee is paid
to the USPTO in that application or patent. See §1.29(g) (“a fee may be paid in the micro entity
amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is
appropriate on the date the fee is being paid.”).
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Thus, micro entity status is not a static classification to be conferred on an applicant, but
rather something that must be constantly reevaluated—with respect to each application—and can
be lost due to circumstances such as a change in gross income of any applicant, inventor, or other
person with an ownership interest. And each inventor and non-inventor applicant (e.g., an
assignee-applicant) must individually meet the gross income limit. As set forth in §1.29(a)(4), the
gross income limit applies to an assignee regardless of whether the assignee is identified as the
applicant and applies to each party with an ownership interest in the application including any
party to whom an ownership interest obligation is owed.
Of particular note, “[b]ecause the four application limit is a limit on previously filed U.S.
nonprovisional applications, reissues applications, and national stage applications, the maximum
number of applications in which fees can be paid at the micro entity discount rate can vary from 0
to 5 for any given inventor.” See Manual of Patent Examination Procedure3 (MPEP) 509.04(a) at
R-07.2022 (“Gross Income Basis for Micro Entity Status”). And, as explained in the MPEP, “[i]n
order for [§1.29(b)] to apply, not only must all ownership rights have been assigned, or be under
an existing obligation by contract or law to be assigned, the assignment or obligation to assign
must have resulted from employment with a previous employer.” Id. Thus, §1.29(b) requires that
the inventor be a “former employee of the previous employer, and that the assignment or obligation
to assign was the result of such previous employment as opposed to the applicant’s, inventor’s, or
joint inventor’s own enterprise.” Id.
3 The MPEP “is published to provide U.S. Patent and Trademark Office (USPTO) patent
examiners, inventors, applicants, attorneys, and agents with a reference work on the practices and
procedures relative to the prosecution of patent applications and other proceedings before the
USPTO.” MPEP Foreword (at https://www.uspto.gov/web/offices/pac/mpep/index.html). “The
guidance in the [MPEP] does not have the force and effect of law or the force of the rules in Title
37 of the Code of Federal Regulation, and are not meant to bind the public in any way.” Id.
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Finally, the USPTO has a regulatory interest in maintaining the integrity of the micro entity
status designation and has broad authority to ensure that micro entity status is not improperly
claimed or certified. Pursuant to §1.29(j), “[a]ny attempt to fraudulently establish status as a micro
entity, or pay fees as a micro entity, shall be considered as a fraud practiced or attempted on the
Office.” Id. And “[i]mproperly, and with intent to deceive, establishing status as a micro entity,
or paying fees as a micro entity, shall be considered as a fraud practiced or attempted on the
Office.” Id.; see also 35 U.S.C. § 123(f) (providing for penalties for entities that are found to have
falsely made a certification of micro entity status of “not less than 3 times the amount that the
entity failed to pay as a result of the false certification”). Moreover, 37 CFR §1.105(a) permits the
USPTO to require the submission, from any inventor, applicant, or assignee, “such information as
may be reasonably necessary to properly examine or treat the matter,” including interrogatories
for factual information known to the applicant.
II.
Plaintiffs’ Applications
Though Plaintiffs’ Complaint is limited to the ’288 application, an understanding of
Plaintiffs’ other applications is informative to the present Motion. To the best of the USPTO’s
knowledge, Plaintiffs are listed as inventors, either individually or collectively, on 15 applications:
1. Application 10/165,455 (“’455 application”), filed June 7, 2002;
2. Application 15/940,792 (“’792 application”), filed March 29, 2018;
3. Application 16/591,555 (“’555 application”), filed October 2, 2019;
4. Application 17/303,497 (“’497 application”), filed May 31, 2021;
5. Application 17/906,844 (“’844 application”), filed September 20, 2022;
6. Application 18/069,263 (“’263 application”), filed December 21, 2022;
7. Application 18/069,288 (“’288 application”), filed December 21, 2022;
8. Application 18/069,382 (“’382 application”), filed December 21, 2022;
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9. Application 18/069,474 (“’474 application”), filed December 21, 2022;
10. Application 18/069,596 (“’596 application”), filed December 21, 2022;
11. Application 18/069,721 (“’721 application”), filed December 21, 2022;
12. Application 18/069,819 (“’819 application”), filed December 21, 2022;
13. Application 18/069,883 (“’883 application”), filed December 21, 2022;
14. Application 18/611,669 (“’669 application”), filed March 20, 2024;
15. Application 18/920,954 (“’954 application”), filed October 20, 2024.
Because §1.29(a)(2) specifies a limit with respect to previously filed applications, the ordering of
Plaintiffs’ applications is important to understanding their claims. The USPTO treats Plaintiffs’
applications as having been filed in the order of their numerical application numbers as shown in
the above list. Thus, even though applications 6–13 were all filed on the same date, the ’263
application is considered to precede the ’288 application, and so forth.
Similarly, §1.29(b) limits exclusion to situations where “the applicant, inventor, or joint
inventor has assigned, or is under an obligation by contract or law to assign, all ownership rights
in the application as the result of the applicant’s, inventor’s, or joint inventor’s previous
employment,” thus requiring an understanding of what, if any, assignments or ownership interests
are applicable to one or more Plaintiffs’ 15 applications. Plaintiffs have claimed that the parent
applications to applications 4–5 and 6–13, respectively, are under an obligation to be assigned to
alleged prior employers My Dentist, PLLC, and Advantech Consulting, Inc. See, e.g., ECF 1-1 at
47. But Plaintiffs have not put forward any evidence—such as a recorded assignment or other
agreement—that would corroborate a claim of an assignment or obligation to assign.
The only assignment of record that Plaintiffs have put before the Court—or that the USPTO
is aware of—relates to the ’844 application. ECF 1-2 at 7–8. This assignment agreement specifies,
however, an assignment not to My Dentist, PLLC, or Advantech Consulting, Inc. but rather to an
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individual—Shalaka Nesarikar—who shares the same last name and resides at the same address
as all Plaintiffs. Id. Simply, there is no corroborating documentation in the record that would
support a claim that any of applications 4–13 are under an obligation to be assigned to a former
employer, or that the obligation arose as a result of prior employment.4 And the USPTO does not
understand there to be any claim that applications 1–3 were assigned to a former employer.
A.
Prosecution of the ’288 Application
While absent from Plaintiffs’ Motion, the USPTO submits that a chronological review of
the prosecution of the ’288 application would aid the Court’s resolution of this matter.5
On December 21, 2022, concurrent with the filing of the ’288 application, all three
Plaintiffs submitted a Certification of Micro Entity Status (Gross Income Basis), affirming that
each met the requirements to pay only micro entity fees. ECF 1 at 2.
On April 22, 2024, a Notice of Payment Deficiency was entered, identifying for Plaintiffs
that when the ’288 application was filed “the applicant, the inventor, or a joint inventor was named
on more than four previously filed patent applications” and that the USPTO considered this to be
prima facie evidence that the micro entity status certification was made in error. ECF 1-1 at 3.
The Notice of Payment Deficiency identified two paths that Plaintiffs could take in response. Id.
One, if Plaintiffs agreed that the certification was in error, they could complete an identified form
and pay any difference in the fees that would be due under the appropriate classification. Two, if
Plaintiffs were to assert that “the certification of micro entity status was not made in error,
4 If Plaintiffs are correct that all rights to applications 4–13 are under an obligation to be assigned
to a former employer, ECF 1-1 at 47, it is unclear how and under what theory Plaintiffs have
standing to bring this action.
5 The Government is not resubmitting exhibits where Plaintiffs have previously attached
documents from the USPTO but notes that Plaintiffs have made annotations that are not present in
the original documents.
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applicant must reply with an explanation and any necessary evidence that is sufficient to rebut the
prima facie evidence of an erroneous certification.” Id. at 4. Plaintiffs were cautioned that they
were given two months to file a response to the Notice in accordance with the options outlined,
else the application would be abandoned. Id. And as a result of the fee deficiency status, the
application was removed from the examination queue pending resolution of the issue. Id.
From April 23 through May 21, 2024, Plaintiffs engaged in email correspondence with
USPTO employees with procedural questions about how to respond.6 For example, on April 23,
in response to a request for an interview by Plaintiffs, a USPTO quality assurance specialist re-
identified the issue precipitating the Notice of Payment Deficiency—that one or more of the
inventors had been named on more than four previously filed applications—and directed Plaintiffs
to the section of that Notice explaining the called-for substantive response. Id.at 26–28.
After a call on April 26, 2024, the USPTO provided additional detail of what had been
identified by the USPTO and what was being requested to corroborate entitlement to micro entity
status. Id. at 31–32. Plaintiffs were informed—in accordance with §1.29(a)—that the “prior
employment exception is narrow” and that, to claim the exception, Plaintiffs would “need to
provide evidence that a sufficient number of the previously filed patent applications were obliged
to be (or actually) assigned to a previous employer such that the application filing limit” was not
exceeded. Id. at 32. Plaintiffs were also informed that the exemption only applies to actual
employees, not independent contractors or collaborators. Id. And Plaintiffs would need to
“provide sufficient explanation and evidence regarding the inventors’ employment history” that
6 Plaintiffs’ email correspondence was in relation to a Notice of Payment Deficiency entered in
the prosecution of the ’263 application. See, e.g., ECF 1-1 at 26. At certain points in that
correspondence, however, Plaintiffs made reference to Notices of Payment Deficiency entered in
connection with other applications, including the ’288 application.
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could include identifying information about the claimed employment and/or evidence of actual
assignment or contractual agreements to assign with those former employers. Id. Plaintiffs
engaged in further communications with the USPTO from April 30 to May 21, 2024, relating to
the mechanics of submitting a response to the Notice of Payment Deficiency. Id. at 35–39.
On May 23, 2024, Plaintiffs asserted that “the certifications of micro entity status are valid”
and that their “arguments in support of [Plaintiffs’] certifications of micro entity status accompany
this paper.” Id. at 40–41. Included as exhibits were a response to a similar Notice of Payment
Deficiency entered with respect to the ’263 application and the correspondence with USPTO
employees described above. Id. at 25–39. Plaintiffs’ paper in the ’263 application prosecution
claimed that each of them were “obligated to assign the rights in the provisional parent application
No. 63265932 and its child applications as a result of each of the inventors’ previous employment
in the state of Texas” and identified applications 6–13 as the referenced child applications. Id. at
25. Plaintiffs also asserted that “no further arguments are required at this time.” Id. at 25.
On August 8, 2024, the USPTO responded to Plaintiffs’ submission with a detailed
rationale for why it appeared that Plaintiffs were not entitled to micro entity status and an
explanation of why Plaintiffs’ prior response was insufficient, as well as an identification of
information that was needed to proceed with a micro entity certification. Id. at 6–9. The USPTO
first explained that its identification of 12 applications listing Abhijit Nesarikar as an inventor, and
11 applications listing Anika and Ashlesha Nesarikar as inventors, were prima facie evidence that
the limit of §1.29(a)(2) had been exceeded. Id. at 6–7. The USPTO acknowledged Plaintiffs’
attempt to invoke the §1.29(b) exemption in connection with the eight applications filed on
December 21, 2022. Id. But it articulated that the exemption was only available where an inventor
“was a former employee of the previous employer, and that the assignment or obligation to assign
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was the result of such previous employment” and noted that Plaintiffs’ paper “fails to provide an
explanation and the necessary evidence to demonstrate its entitlement to this exception.” Id. at 7
The USPTO then proceeded to identify several issues unaddressed by Plaintiffs’ May 23
paper that—on the record before the USPTO—appeared to preclude micro entity status for the
’288 application. Id. at 8. Specifically, the USPTO noted that the May 23 paper failed to address
applications 1–5 in the list above, which alone would prevent applicants from obtaining micro
entity status on the ’288 application. Id. It also noted that “a review of [applications 6–13] and
Office assignment records does not reveal any evidence that the inventors have assigned or are
under an obligation to assign all ownership rights in the applications to another entity/party.” Id.
The USPTO explained that merely claiming previous employment “in Texas” was insufficient to
identify a previous employer. Id. And the USPTO directed Plaintiffs to the requirement that
§1.29(b) is only applicable to former employees—a requirement that appeared to be at odds with
Ashlesha Nesarikar’s publicly listed employment at Plano Intelligence, Inc. since 2016. Id.
Finally, the USPTO reminded Plaintiffs that their time to reply to the Notice of Payment
Deficiency was not extended by their deficient response and that “[u]nless applicant submits a
persuasive explanation and the necessary evidence to rebut the prima facie evidence of an
erroneous certification, or itemizes and pays the payment deficiency” then the application will go
abandoned. The USPTO also reiterated the type of documentation that would be acceptable as
corroboration for their claim of micro entity status. Id. at 9.
On September 9, 2024, Plaintiffs submitted a response accusing the USPTO of material
misrepresentations and contending that their prior submission was sufficient to demonstrate
entitlement to micro entity status. Id. at 46. Plaintiffs also provided limited information that they
asserted rebutted the issues identified by the USPTO, alleging that Ashlesha and Anika Nesarikar
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“have been obligated to assign the rights” in the parents to applications 4–13 “as a result of each
of their prior employment with My Dentist, PLLC” and that Abhijit Nesarikar has been obligated
to assign the same “as a result of his prior employment with Advantech Consulting, Inc.” Id. at
47. They additionally claimed that “from before the filing date of the current application through
today,” none of the inventors have been employed by these companies.7 Id. And Plaintiffs attached
an email they sent to the USPTO’s Patent Ombudsman in which they claimed that they did not
recognize or recall the ’455 application and that an assignment had been recorded with respect to
the ’844 application.8 Id. at 49. Notably, Plaintiffs did not identify any time period during which
they were allegedly employed by the relevant companies, let alone any documentation
corroborating either employment or an employment-based assignment.
On October 23, 2024, the USPTO responded, first noting that Plaintiffs’ September
submission was untimely and failed to include an application for an extension of time to respond
or the appropriate fees. Id. at 11. The period for Plaintiffs to respond continued to run from April
22, 2024, and could not be extended for more than five months—to November 22, 2024. Id. The
USPTO included a listing of the applicable fees to be paid if Plaintiffs were to request an extension
to November 22, 2024. Id. And the USPTO stated explicitly that any response to this
communication would require submission of an appropriate extension of time fee. Id. at 15.
7 Plaintiffs did not explain how or why they were prosecuting applications that were allegedly
owned by entities they no longer had any relationship with.
8 While the USPTO maintains that a prima facie burden has been met that the inventor on the
’455 application is the Dr. Nesarikar who is a plaintiff here, that Dr. Nesarikar is in possession of
sufficient information to respond, and that the record supports counting the ’455 application
towards his limit, the inclusion or exclusion of the ’455 application would not—on its own—
impact micro entity status with respect to the ’288 application as the ’288 application was the
seventh application filed by one or more Plaintiffs.
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The USPTO also responded that Plaintiffs had failed to demonstrate both the assignment
and prior employer component of §1.29(b). With respect to the assignment component, a review
of the Office assignment database revealed no assignment has been recorded for the parents to
applications 4–13 and that no assignment has been recorded for any applications 1–4 and 6–13.
Id. at 13. For application 5—the ’844 application—the USPTO noted that assignment “gives rights
to Shalaka A. Nesarikar” not “My Dentist, PLLC and Advantech Consulting, Inc., the [alleged]
prior employers of the three joint inventors.” Id. Thus, Plaintiffs’ response was “insufficient
because applicants have not provided adequate evidence that all ownership rights in a sufficient
number of the prior filed applications have been assigned or are under an obligation by contract or
law to be assigned to a previous employer.” Id. at 14. The USPTO again identified types of
evidence that would support an obligation to assign their applications to a prior employer:
“Applicants must provide evidence of employment-related contractual or legal obligations to
assign rights in the previously filed applications to a prior employer. A copy of an assignment
or a copy of contract showing an obligation to assign would suffice.” Id. (emphasis in original).
And the USPTO again reminded Plaintiffs that the assignment or obligation must have
been the result of previous employment, as opposed to an inventors’ own enterprise. Id.
Specifically, the USPTO identified publicly available information suggesting that Abhijit
Nesarikar was not an employee of Advantech Consulting but rather held some ownership interest.
Id. After identifying factors to consider when evaluating whether an inventor was an employee,
including whether paychecks were received, taxes were withheld, or W2s were received, the
USPTO requested the Abhijit Nesarikar “state for the record” whether he was an employee or
owner of Advantech Consulting. Id.
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On November 19, 2024, Plaintiffs responded with an assertion that no extension or fee was
required, that their prior responses should have been considered sufficient to demonstrate micro
entity status, and that the Notice of Payment Deficiency and following USPTO communications
should be withdrawn. Id. at 16–20. And Plaintiffs reiterated their claim that the USPTO had
materially misrepresented facts, now with the additional accusation that the USPTO acted
arbitrarily and capriciously in requesting additional information. Plaintiffs also contended that the
USPTO’s “failure” to address certain remarks constituted “concession to Inventors’ arguments”
and demanded that the USPTO “provide an affidavit or declaration setting forth specific factual
statements and explanations to support the personal knowledge in compliance with 37 C.F.R.
§1.104(d)(2).”9 Plaintiffs, however, offered no additional information to support their claims of
either employment or employment-based assignment of any relevant applications.
On February 11, 2025, the USPTO issued a Notice of Abandonment. Id. at 24. In a March
6, 2025, letter, the USPTO explained that Plaintiffs’ “November 19, 2024 reply was not
accompanied by an appropriate extension of time under 37 C.F.R. 1.136(a), and the maximum
extendable period for timely reply to the April 22, 2024 Notice has expired.” Id. The USPTO
thus considered the reply “untimely filed” and stated that it would not be addressed on the merits.
No further petition was made challenging the Notice of Abandonment or the decision to
reject the untimely November 2024 submission.
9 37 C.F.R. §1.104(d)(2) relates to the citation of prior art references with respect to the
examination of claims, requiring that “[w]hen a rejection in an application is based on facts within
the personal knowledge of an employee of the Office, the data shall be as specific as possible, and
the reference must be supported, when called for by the applicant, by the affidavit of such
employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of
the applicant and other persons.”
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B.
Prosecution of the ’382, ’669, and ’555 Applications
In their Motion and Complaint, Plaintiffs reference three additional applications that
warrant discussion.
The ’382 application was filed on the same day as the ’288 application, listing the same
inventors and claiming priority to the same provisional application as the ’288 application. ECF
2-2. While Plaintiffs claim that a November 19, 2024, “payment met the requirements set by the
Director to cure the alleged fee deficiency,” Plaintiffs have failed to provide the Court with any
substantive portion of the unpublished prosecution history. In particular, Plaintiffs have not
disclosed any Notice of Payment Deficiency, any subsequent correspondence between Plaintiffs
and the USPTO, or information about the specific fees alleged to have been paid.
With respect to the unpublished ’669 application, filed March 20, 2024, Plaintiffs have
similarly failed to include sufficient documentation with which the Court could fully evaluate their
claims. From the limited information that has been provided, however, the record reflects that
Plaintiffs elected to proceed as a small entity with respect to the ’669 application in December
2024. ECF 2-3 at 3. And as reflected in a February 6, 2025, communication to Plaintiffs, a January
17, 2025, Notice of Payment Deficiency was sent in error as it failed to account for Plaintiffs’ prior
change from claiming micro entity status to claiming small entity status. Id. at 11.
With respect to the ’555 application, filed October 2, 2019, the fee deficient status—as set
forth in Plaintiffs’ exhibit—relates to Plaintiffs’ failure to pay an extension fee. On October 29,
2024, Plaintiffs notified the USPTO that they were no longer claiming micro entity status for the
’555 application and submitted additional fees and an accompanying fee worksheet. ECF 2-4.
Though a fee was paid on September 20, 2024, under the prior claimed micro entity status,
Plaintiffs’ fee worksheet and additional fee payment only reflected fees paid through August 2024.
Id. On December 5, 2024, the USPTO accepted the change from micro entity to small entity status.
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On April 10, 2025, the USPTO notified Plaintiffs that their fee deficiency submission was not
accepted, because “all the fees that were erroneously paid as a micro entity along with the current
fee amount were not provided” and specifically identified the missing extension of time fee.
Rather than submit a corrected fee worksheet or pay the additional fee, Plaintiffs petitioned the
USPTO on May 8, 2025, alleging that the fee deficiency notification was erroneous. Id.
LEGAL STANDARD
“A preliminary injunction is an extraordinary remedy never awarded as of right.” Winter
v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 24 (2008); Anderson v. Jackson, 556 F.3d 351, 360 (5th
Cir. 2009) (“Injunctive relief is an extraordinary and drastic remedy[ ] and should only be granted
when the movant has clearly carried the burden of persuasion.”). Plaintiffs must “by a clear
showing” establish that (1) they have a substantial likelihood of success on the merits; (2) they
will suffer irreparable harm without an injunction; (3) the balance of equities tips in their favor;
and (4) preliminary relief serves the public interest. Mazurek v. Armstrong, 520 U.S. 968, 972
(1997). Plaintiffs’ failure to demonstrate any of the factors is sufficient to deny injunctive relief,
Allied Mktg. Grp., Inc. v. CDL Mktg., Inc., 878 F.2d 806, 809 (5th Cir. 1989), and “[t]he decision
to grant a preliminary injunction is to be treated as the exception rather than the rule[,]” Miss.
Power & Light Co. v. United Gas Pipe Line Co., 760 F.2d 618, 621 (5th Cir. 1985).
This Circuit recognizes a distinction between prohibitory preliminary injunctions and
mandatory preliminary injunctions. “[T]he issuance of a prohibitory injunction freezes the status
quo, and is intended ‘to preserve the relative positions of the parties until a trial on the merits can
be held.’ Preliminary injunctions commonly favor the status quo and seek to maintain things in
their initial condition so far as possible until after a full hearing permits final relief to be fashioned.”
Wenner v. Tex. Lottery Comm’n, 123 F.3d 321, 326 (5th Cir. 1997) (citations omitted). In contrast,
a mandatory preliminary injunction “mandates that defendants take some action inconsistent with
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the status quo rather than prohibiting them from altering the status quo.” Texas v. Ysleta del Sur
Pueblo, EP-17-CV-179-PRM, 2018 U.S. Dist. LEXIS 54042, 2018 WL 1566866, at *9 (W.D. Tex.
Mar. 29, 2018). Where a mandatory preliminary injunction is sought, a plaintiff “bears the burden
of showing a clear entitlement to the relief under the facts and the law.” Justin Indus., Inc. v.
Choctaw Secs., L.P., 920 F.2d 262, 268 n.7 (5th Cir. 1990); accord Martinez v. Mathews, 544 F.2d
1233, 1243 (5th Cir. 1976) (“Mandatory preliminary relief, which goes well beyond simply
maintaining the status quo pendente lite, is particularly disfavored, and should not be issued unless
the facts and law clearly favor the moving party.”).
Regardless of any distinction between the type of injunction sought, “[t]he purpose of a
preliminary injunction is always to prevent irreparable injury so as to preserve the court’s ability
to render a meaningful decision on the merits.” Canal Auth. of Fla. v. Callaway, 489 F.2d 567,
576 (5th Cir. 1974) (citations omitted); see also Univ. of Tex. v. Camenisch, 451 U.S. 390, 395
(1981) (“The purpose of a preliminary injunction is merely to preserve the relative positions of the
parties until a trial on the merits can be held.”).
ARGUMENT
I.
Plaintiffs Have Not Established Standing to Maintain this Action
Whether the plaintiff has Article III standing “is the threshold question in every federal
case, determining the power of the court to entertain the suit.” Warth v. Seldin, 422 U.S. 490, 498
(1975). Under patent law, “the general rule [is] that rights in an invention belong to the inventor.”
Bd. of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776, 785–
86 (2011) (citations omitted). “It is equally well established that an inventor can assign his rights
in an invention to a third party.” Id. at 786. “As a general matter, parties should possess rights
before seeking to have them vindicated in court.” Enzo APA & Son, Inc. v. Geapag A.G., 134 F.3d
1090, 1093 (Fed. Cir. 1998). While a “concrete and particularized reputational injury” can give a
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plaintiff standing to sue to be added as an inventor, see Shukh v. Seagate Tech., LLC, 803 F.3d
659, 663 (Fed. Cir. 2015), an inventor—who has assigned away all rights—does not have standing
to sue where the harm is financial. See Larson v. Correct Craft, Inc., 569 F.3d 1319, 1327 (Fed.
Cir. 2009) (“Just as Larson would lack standing to sue for infringement unless and until he regains
title to the patents, so, too, he has no non-contingent interest in the patents on which to support his
standing to correct inventorship under § 256.”)
Here, Plaintiffs assert harms to the value of prospective patents that would flow to the
ultimate owner of the applications—increased fees, loss of patent rights and term, etc.—not to the
inventors themselves. And Plaintiffs’ own representations to the USPTO establish that they cannot
be the ultimate owner of the applications. Plaintiffs have represented that they have assigned—or
are obligated to assign—all rights in ten of the applications at issue to former employers, including
the ’288 application. ECF 1-1 at 47. Plaintiffs therefore lack the requisite standing to sue. This
is no mere technicality as Plaintiffs’ purported entitlement to micro entity status, errors alleged
with respect to the Notices of Payment Deficiency, and ultimate abandonment all flow from the
claim that Plaintiffs must assign all their rights to former employers.
Without evidence that Plaintiffs have retained rights in the relevant applications—which
would defeat their claims for micro entity status—Plaintiffs have failed to establish whose rights
are being vindicated here and, consequently, failed to establish standing. 10
10 To be clear, Plaintiffs have put forward no evidence of any assignment to a former employer.
The lone assignment—for the ’844 application—assigns rights to an apparent family member who
resides at the same address. ECF 1-2 at 8.
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II.
Plaintiffs Seek a Mandatory Preliminary Injunction That Would Include Relief
Beyond the Scope of Plaintiffs’ Complaint and the APA
Though Plaintiffs’ request for an injunction fails under any standard, their attempt to alter
the status quo and obtain the ultimate relief sought in their Complaint should be met with
heightened scrutiny. Martinez v. Mathews, 544 F.2d 1233, 1243 (5th Cir. 1976). And where the
relief sought exceeds the scope of the Complaint itself or the APA, this Court should reject
Plaintiffs’ request as inconsistent with the purpose of a preliminary injunction.
Plaintiffs’ motion seeks to alter the relationship between the parties. For example, in their
second request for relief, Plaintiffs demand a “reversal of papers sent by Defendants arising out of
allegations of erroneous micro entity status in Inventors applications, including Notices of
Payment Deficiency sent on 04/22/2024.” ECF 2 at 8. Even assuming this demand is limited to
the prosecution of the ’288 Application, it does not “preserve the relative positions of the parties.”
Rather it would purport to require the USPTO to substantively alter determinations made prior to
the filing of this suit and, presumably, the status of the ’288 Application itself.11 And Plaintiffs’
fourth request, the “return excess payments made by Inventors arising out of Notices of Payment
Deficiency sent on 04/22/2024,” again even limited to the ’288 Application, is far from
maintaining the initial conditions of the parties or freezing the status quo. Id.
To the extent Plaintiffs’ Motion seeks relief in applications other than the ’288
application—whether through the reversal of papers, the return of fees, or the declaration that an
undefined universe of applications qualify for micro entity status—Plaintiffs would further upend
the status quo beyond the scope of the present litigation. In their Complaint, Plaintiffs allege error
11 As discussed infra, any relief sought by Plaintiffs requiring the reversal of the micro entity
status determination, or “ratifying Inventors’ micro entity status”, as opposed to re-opening the
process by which one or more of Plaintiffs’ applications could be examined, exceeds the bounds
of the APA.
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in final agency action specific to the ’288 application. And the preceding interactions that are
alleged to be improper—beginning with the Notice of Payment Deficiency sent on April 22,
2024—occurred within the prosecution of the ’288 Application. Yet Plaintiffs’ motion would have
the Court take affirmative actions that alter the prosecution status of other applications.
Critically, even if Plaintiffs were successful in obtaining some relief related to alleged
impropriety with respect to the ’288 application, no such relief would necessarily extend to other
applications. Pursuant to 37 C.F.R. § 1.29, micro entity status is determined on an application
specific basis—it is not an immutable designation. As “[n]either the applicant nor the inventor nor
a joint inventor [can be] named as the inventor or a joint inventor on more than four previously
filed patent applications,” the relative timing of each application would have to be considered. It
simply does not follow that prevailing in the present litigation with respect to the ’288 application
would necessarily result in a change in status for any other applications.
Nor does it follow from Plaintiffs’ Complaint that micro entity status could be conferred
on any of their applications, including the ’288 application. Under 5 U.S.C. § 706, a court may
set aside a USPTO action as “arbitrary, capricious, an abuse of discretion, or otherwise not in
accordance with law.” Gilead Scis., Inc. v. Lee, 778 F.3d 1341, 1346 (Fed. Cir. 2015) (quoting 5
U.S.C. § 706(2)(A)). But “the only agency action that can be compelled under the APA is action
legally required. This limitation appears in § 706(1)’s authorization for courts to ‘compel agency
action unlawfully withheld.’” Norton v. S. Utah Wilderness Alliance, 542 U.S. 55, 63 (2004). For
example, “when an agency is compelled by law to act within a certain time period, but the manner
of its action is left to the agency’s discretion, a court can compel the agency to act, but has no
power to specify what the action must be.” Id. at 65.
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III.
Plaintiffs Cannot Show a Likelihood of Success on the Merits
A.
Plaintiffs Do Not Challenge a Final Agency Action
A plaintiff invoking the APA generally must challenge “final agency action for which there
is no other adequate remedy in a court.” Sackett v. EPA, 566 U.S. 120, 125 (2012) (quoting 5
U.S.C. § 704). “[E]xhaustion of administrative remedies is a jurisdictional prerequisite to filing a
civil lawsuit arising from the denial of a patent.” Fleming v. Coward, 534 F. App’x 947, 950 (Fed.
Cir. 2013) (citing Leighton v. Coe, 130 F.2d 841, 842, 76 U.S. App. D.C. 212, 1942 Dec. Comm’r
Pat. 101 (D.C. Cir. 1942)) (affirming a dismissal under Rule 12(b)(1) for failure to exhaust
administrative remedies); Maririo v. Dickinson, 56 F. Supp. 2d 74, 75-76 (D.D.C. 1999) (same).
And “exhaustion” encompasses the filing a petition to revive an abandoned patent application.
Winfrey v. United States DOC, PTO, No. 2024-1260, 2024 U.S. App. LEXIS 24311, at *7 (Fed.
Cir. 2024) (unpublished) (affirming dismissal for failure to exhaust administrative remedies where
plaintiff “failed to present any evidence that she filed a petition with the USPTO to revive her
application or challenge its abandonment determination”); see also .Arrow Int'l v. Spire
Biomedical, Inc., 443 F. Supp. 2d 182, 185 (D. Mass. 2006) (“[j]udicial review must await the
completion of [the] administrative process” to petition to revive an abandoned patent).
If at any time during the examination process a patent applicant fails to timely or properly
respond to an Office action, the applicant will be deemed to have abandoned his or her application.
See 37 C.F.R. § 1.135. An applicant seeking withdrawal of the holding of abandonment must file
a petition under must file a petition under 37 C.F.R. § 1.181. And an applicant seeking to revive
an abandoned application must file a petition under 37 C.F.R. § 1.137. If the petition decision
confirms the original abandonment or refuses to revive the application, that is the USPTO’s final
agency action that can be challenged in the courts under the APA, 5 U.S.C. §§ 702, 704.
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Plaintiffs’ Complaint, whether construed as directed to only the ’288 application or
additional applications that have been noticed as abandoned, fails to demonstrate an exhaustion of
all available administrative remedies. While Plaintiffs filed multiple petitions across their
applications challenging the USPTO’s requests for additional information, there is no claim or
indication that Plaintiffs have filed any petition under 37 C.F.R. §1.137 (or 37 C.F.R. §1.181) in
any of their applications. Plaintiffs admit and recognize that petitioning for revival of an
abandoned application is a remedy available to them. ECF 2 at 2. Yet Plaintiffs have declined to
do so because, in their view, it would “represent[] undue uncertainty and expense.” Id. That is an
insufficient basis to invoke this Court’s jurisdiction.
And in connection with the ’288 and ’382 applications specifically, Plaintiffs’
dissatisfaction with the USPTO’s treatment of filings deemed to be untimely demonstrates that all
administrative remedies have not been exhausted. For the ’288 application, Plaintiffs claim that
the USPTO improperly declined to consider their November 19, 2024, reply, instead noticing the
application as abandoned. ECF 1 at 7–8. But Plaintiffs made no attempt to directly petition the
notice of abandonment or challenge the determination not to accept the late filing. Similarly,
Plaintiffs’ Motion makes clear that Plaintiffs have not attempted to revive the ’382 application or
withdraw the holding of abandonment and that a petition relating to fee deficiencies remains
outstanding. ECF 2 at 2–3.
B.
Plaintiffs Cannot Succeed on a Claim of Arbitrary and Capricious Treatment
Arbitrary and capricious review of agency action is highly deferential. “In reviewing an
agency’s decision under the arbitrary and capricious standard, there is a presumption that the
agency’s decision is valid, and the plaintiff has the burden to overcome that presumption by
showing that the decision was erroneous.” Tex. Clinical Labs, Inc. v. Sebelius, 612 F.3d 771, 775
(5th Cir. 2010). Judicial review under this standard is “narrow” and limited to “whether the
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[agency] examined ‘the relevant data’ and articulated ‘a satisfactory explanation’ for [its] decision,
‘including a rational connection between the facts found and the choice made.’” Dep’t of Com. v.
New York, 139 S. Ct. 2551, 2569 (2019) (quoting Motor Vehicle Mfrs. Ass’n of U.S., Inc. v. State
Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983)). A court “may not substitute [its] judgment for
that of the [agency], but instead must confine [itself] to ensuring that [the agency] remained ‘within
the bounds of reasoned decisionmaking.’” Id. (quoting Balt. Gas & Elec. Co. v. Nat. Res. Def.
Council, Inc., 462 U.S. 87, 105 (1983)).
Plaintiffs have not—and cannot—show any likelihood of success on a claim that the
USPTO’s examination of the ’288 application was arbitrary and capricious or otherwise not in
accordance with the law. As detailed above, the USPTO identified valid concerns relating to
Plaintiffs’ claims of micro entity status, including the number of applications that the inventors
had filed and the lack of recorded assignment documents. The original Notice of Payment
Deficiency, as well as the subsequent responses to Plaintiffs’ submissions, identified the
information sought, explained why it was being sought, and provided examples of ways in which
Plaintiffs could provide that information. ECF 1-1 at 3–4. Contrary to Plaintiffs’ claims, no threats
were leveraged to force Plaintiffs into choosing between abandonment and withdrawal of their
micro entity certification. Plaintiffs were instead given multiple opportunities to provide
information supporting their claims and were offered multiple avenues of support, such as the
Patent Ombudsman, to assist them with responding. The USPTO also clearly and repeatedly
informed Plaintiffs about the limitations on time to reply, the costs associated with seeking any
extensions, and the potential result of abandonment if Plaintiffs failed to comply.12
12 Plaintiffs reference an unrelated application—18/120,998—apparently to suggest that the
USPTO deviated from its “normal course of business” and “discriminated” against Plaintiffs. ECF
2 at 3–4. But, if anything, the USPTO’s treatment of that application demonstrates consistency,
propriety, and the lack of any likelihood of success by Plaintiffs here. The USPTO inquired into
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Rather than provide the requested information, however, Plaintiffs responded with
obfuscation and refusal that merely raised additional concerns. Plaintiffs refused to provide any
documentation supporting their claims of prior employment, and the information they did provide
was sufficiently inconsistent with publicly available information as to prompt additional questions
relating to whether Plaintiffs’ claims were truthful. And Plaintiffs’ submission of a lone
assignment agreement—to an apparent family member without any identification of an
employment relationship—was both insufficient to support entitlement to micro entity status and
failed to alleviate the USPTO’s valid concerns. Simply, Plaintiffs are not likely to succeed on a
claim that the USPTO improperly considered or responded to any of Plaintiffs’ arguments, let
alone their assertion that the Court should simply award the ’288 application micro entity status.13
Nor are Plaintiffs likely to succeed on the apparent argument that the USPTO has no right
or ability to request employment and assignment information for the purposes of determining
whether micro entity status was properly claimed. USPTO regulations state that “[t]he Office will
generally not question certification of entitlement to micro entity status that is made in accordance
with the requirements of this section.” 37 C.F.R. §l.29(h). But the USPTO need not turn a blind
eye to towards facially questionable claims. The regulation expressly contemplates that
certifications may be questioned. Id. The USPTO is permitted, under 37 CFR §1.105(a), to require
entitlement to micro entity status in the ’998 application and, when a response was not received
within the set time or with an appropriate extension request, noticed the application for
abandonment. ECF 2-5 at 6–6; Ex. A (Notice of Abandonment for failure to respond to an office
action).
13 Even taking Plaintiffs’ assertions as correct that all applicants assigned or are obligated to
assign all rights to applications 4–13 to My Dentist, PLLC, and Advantech Consulting, Inc.,
respectively, these applications would not necessarily qualify for micro entity status. For example,
My Dentist, PLLC, and Advantech Consulting, Inc., would also each need to qualify for micro
entity status, 37 C.F.R. §1.29(a)(4), and no submission has been made regarding whether each of
those entities meets the gross income requirements for micro entity status. Nor is it clear why
Plaintiffs are prosecuting applications they contend they have no rights in.
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the submission, from any inventor, applicant, or assignee, “such information as may be reasonably
necessary to properly examine or treat the matter,” including interrogatories for factual information
known to the applicant. And the USPTO has both the right and obligation to investigate “questions
concerning ownership or interest in an application” as well as any concerns relating to
“[i]mproperly, and with intent to deceive, establishing status as a micro entity.” See, e.g., 37 C.F.R.
§§ 1.42, 1.29(j); see also 35 U.S.C. 123(f) (penalty for false certifications).
Finally, Plaintiffs’ claims that the USPTO violated the Paperwork Reduction Act (44
U.S.C. §3512) and 37 C.F.R. § l.104(d)(2) in connection with requesting that information are
similarly unavailing. The Paperwork Reduction Act is only a defense and does not provide an
affirmative cause of action for alleged violations. See, e.g., Ass'n of Am. Physicians & Surgs. v.
United States HHS, 224 F. Supp. 2d 1115, 1128–29 (S.D. Tex. 2002) (Plaintiff is barred from
making a PRA claim when there is no government administrative or judicial action against them);
Tozzi v. E.P.A., 148 F. Supp. 2d 35, 43 (D.D.C. 2001) (no private right under PRA). But more
importantly, the Act defines a “collection of information” as when a federal agency obtains,
solicits, or requires the disclosure of “facts or opinions” from members of the public through
“answers to identical questions posed to, or identical reporting and recordkeeping requirements
imposed on, ten or more persons.” 44 U.S.C. § 3502(3); see also 5 C.F.R. §§ 1320.3(c) (further
defining “collection of information”), 1320.3(h) (further defining “information”). And the Act
and associated regulations “expressly exclude from coverage individualized communications” like
the Notice of Payment Deficiency, which is specific to the ’288 application and specifically
directed to the named inventors those between the USPTO and a patent applicant. See Hyatt v.
OMB, 998 F.3d 423, 426 (9th Cir. 2021). Thus, neither the Notice of Payment Deficiency nor any
of the subsequent responses fall within the scope of the Act.
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27
Similarly, 37 C.F.R. §1.104(d)(2) is not applicable to Plaintiffs’ assertions, as it relates to
the citation of prior art references with respect to the examination of claims, requiring that “[w]hen
a rejection in an application is based on facts within the personal knowledge of an employee of the
Office, the data shall be as specific as possible, and the reference must be supported, when called
for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to
contradiction or explanation by the affidavits of the applicant and other persons.” The USPTO
was not relying on personal knowledge to reject any claim or as a substitute for citing to prior art.
C.
Plaintiffs Cannot Show Irreparable Harm
Plaintiffs “must show that [they are] likely to suffer irreparable harm, that is, harm for
which there is no adequate remedy at law.” Daniels Health Sci., L.L.C. v. Vascular Health Sci.,
L.L.C., 710 F.3d 579, 585 (5th Cir. 2013) (internal quotation marks omitted). “Speculative harm”
or the mere “possibility of irreparable harm” is not enough. Winter, 555 U.S. at 22; United States
v. Emerson, 270 F.3d 203, 262 (5th Cir. 2001) (“Speculative injury is not sufficient; there must be
more than an unfounded fear on the part of the applicant . . . A presently existing actual threat
must be shown.”) (emphasis in original); see also Adams v. Cantwell, Case No. 6:20-cv-11, 2022
WL 453544, at *2 (E.D. Tex. Jan. 10, 2022), report and recommendation adopted, Case No. 6:20-
cv-11, 2022 WL 446756 (Feb. 12, 2022) (Kernodle, J.) (“To the extent that Plaintiff is expressing
fear of future harm, the speculative nature of such claim does not satisfy the heightened burden
necessary for the extraordinary relief of a preliminary injunction.”). And “[m]ere injuries,
however substantial, in terms of money, time and energy necessarily expended in the absence of
[an injunction], are not enough.” Dennis Melancon, Inc. v. City of New Orleans, 703 F.3d 262,
275, 279 (5th Cir. 2012) (citations and internal quotation marks omitted).
Plaintiffs’ Motion claims “[i]rreparable loss including: disrupting examinations already
underway in other applications, financial harm, reputational harm, and loss of patent rights is
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imminent.” ECF 2 at 1. None of the alleged harms justify injunctive relief, let alone the relief
sought by Plaintiffs. And all alleged harms are specifically considered non-irreparable under
binding precedent, conceded by Plaintiffs to be capable of remedy, and/or wholly speculative in
nature. Plaintiffs’ failure to identify irreparable harm is dispositive as to their motion.
Fifth Circuit precedent is clear that injuries to “money, time and energy necessarily
expended” are “not enough” when considering whether an alleged harm is irreparable. Dennis
Melancon, Inc., 703 F.3d at 279. Thus, any alleged “financial harm,” as well as any allegations
related to the “time invested by Inventors,” is legally insufficient to support a request for a
preliminary injunction. And all of Plaintiffs’ allegations with respect to fees paid or requested,
any financial consequence alleged to have occurred, and any purported burden placed on Plaintiffs
in connection with responding to communications from the USPTO must be rejected the Court as
failing to constitute irreparable harm.
With respect to the claimed “disrupting examinations already underway in other
applications” and “loss of patent rights,” Plaintiffs’ allegations of irreparable harm similarly fail.
Plaintiffs identify three applications in which harm is alleged, but Plaintiffs have failed to show an
“existing actual threat,” let alone harm connected to the claims set forth in their Complaint or
irreparable harm. The ’382 and ’288 applications, as well as the other six applications filed on
December 21, 2022, stand abandoned for failure to adequately respond to a Notice of Payment
Deficiency since before the filing of Plaintiffs’ Complaint. Even assuming Plaintiffs would
ultimately succeed on their claims relating to the ’288 application—and that their success would
have some impact on the other abandoned applications—Plaintiffs are not irreparably harmed by
the current status of those applications. Nor is there any identified threat that the further action in
those applications would or could be taken that would harm Plaintiffs. Moreover, Plaintiffs
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DEFENDANTS’ OPPOSITION TO PRELIMINARY INJUNCTION MOTION
29
recognize that abandoned applications may be revived and patent terms adjusted under certain
circumstances. ECF 2 at 6. Thus, even were Plaintiffs able to demonstrate some delay in patent
issuance—which is not possible for them to do at this early stage of prosecution and presumes
without basis that any of their applications will issue—it would be neither harm nor irreparable.
For the ’555 and ’669 applications, Plaintiffs have failed to identify any actual or
prospective harm. Rather, the record reflects that neither application is subject to any disruption
related to Plaintiffs’ claims. The erroneous notice in the ’669 application was quickly corrected
and that application—due to a voluntary election of small entity status—cannot be impacted by
any determination here. ECF 2 at 4. And the fee deficiency in the ’555 application is neither
related nor impacted by any claim set forth in Plaintiffs’ Complaint ECF 2-5 at 4–6. There is
simply no harm, or threat of harm, that needs to be protected against.
Finally, while reputational injury may, in limited circumstances, be used to support a claim
of irreparable harm, Emerald City Mgmt., L.L.C. v. Kahn, 624 F. App’x 223, 224 (5th Cir. 2015),
the showing of injury must be more than speculative. See Daniels Health Scis., L.L.C. v. Vascular
Health Scis., L.L.C., 710 F.3d 579, 585 (5th Cir. 2013). Plaintiffs present no evidence that any
reputational harm will—or even could—occur as a result of their applications remaining
abandoned for the pendency of the litigation. Without such evidence, the Plaintiffs’ assertions are
merely conclusory, speculative, and insufficient to justify the extraordinary remedy they seek.
D.
Balance of the Equities and the Public Interest
Because Plaintiffs here seek to enjoin the action of a government agency, the third factor
in assessing whether injunctive relief is appropriate, the balance of equities, and the fourth factor,
the public interest, merge. Nken v. Holder, 556 U.S. 418, 435 (2009). Both factors weigh in favor
of denying injunctive relief. Injunctive relief would prevent the USPTO from complying with its
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DEFENDANTS’ OPPOSITION TO PRELIMINARY INJUNCTION MOTION
30
own regulations regarding examination of patent applications and the determination of micro entity
status, unfairly advantaging Plaintiffs over all other applicants.
Plaintiffs’ speculative and conclusory invocation of a disproportionate burden and
discouragement of development in new technologies is insufficient to justify relief. Far from
merely requiring compliance with 37 C.F.R. §1.29, Plaintiffs’ requested relief would require the
USPTO to ignore and abdicate its responsibilities under §1.29(j) to investigate fraud and improper
certification. And awarding micro entity status to applicants who have not demonstrated
entitlement would harm the very community Plaintiffs attempt to invoke.
CONCLUSION
For the foregoing reasons, the court should deny Plaintiffs’ preliminary injunction.
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DEFENDANTS’ OPPOSITION TO PRELIMINARY INJUNCTION MOTION
31
June 10, 2025
Of Counsel:
WILLIAM LAMARCA
Special Counsel for Intellectual Property
Litigation
OMAR AMIN
Associate Solicitor
United States Patent and Trademark Office
Respectfully submitted,
JAY R. COMBS
Acting United States Attorney
JAMES GARLAND GILLINGHAM
Assistant United States Attorney
YAAKOV M. ROTH
Acting Assistant Attorney General
SCOTT BOLDEN
Director
s/ Philip Charles Sternhell
PHILIP CHARLES STERNHELL (DC Bar)
Assistant Director
Commercial Litigation Branch
Civil Division
Department of Justice
Washington, D.C. 20530
Telephone:
(202) 353-0522
Facsimile:
(202) 307-0345
Email:
philip.c.sternhell@usdoj.gov
Case 4:25-cv-00423-JCB-JDL Document 16 Filed 06/10/25 Page 36 of 37 PageID #:
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Appx0194
CERTIFICATE OF SERVICE
I hereby certify that on June 10, 2025, I electronically filed the foregoing document with
the Clerk of the Court using the ECF system which will send notification of such filing to those
persons on the Court’s electronic filing system. Additionally, a true and correct copy of this motion
will be sent to Plaintiffs as follows:
Via Email
Ashlesha A. Nesarikar
asedt0425@icloud.com
Via Email
Anika A. Nesarikar
anedt0425@icloud.com
Via Email
Abhijit R. Nesarikar
edt0425@nesarikar.com
/s/ Philip Charles Sternhell
PHILIP CHARLES STERNHELL
Assistant Director
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Appx0195
Exhibit A
Exhibit A
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239
Appx0196
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
|
APPLICATION NO.
|
FILING DATE
FIRST NAMED INVENTOR
| ATTORNEY DOCKET NO.
|
CONFIRMATION NO.
18/120,998
03/13/2023
Feipeng Liu
8984
165337
_ 7590
05/21/2025
EXAMINER
Genesis Materials Innovations, LLC
24602 Community Center Dr.
PULLIAM, CHRISTYANN R
Spring, TX 77389
|
ART UNIT
|
PAPER
NUMBER
2178
|
MAIL DATE
|
DELIVERY MODE
05/21/2025
PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
Case 4:25-cv-00423-JCB-JDL Document 16-1 Filed 06/10/25 Page 2 of 3 PageID #:
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Appx0197
Application No.
Applicant(s)
.
18/120,998
Liu et al.
Notice of Abandonment
Examiner
Art Unit
Christyann R Pulliam
2178
-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address--
This application is abandoned in view of:
1.
YJ Applicant's failure to timely file a proper reply to the Office letter mailed on 19 April 2024.
aya reply was received on
(with a Certificate of Mailing or Transmission dated
), which is after the expiration of the
period for reply (including a total extension of time of
month(s)) which expired on
(b) CJ A proposed reply was received on
, but it does not constitute a proper reply under 37 CFR 1.113 to the final rejection.
(A proper reply under 37 CFR 1.113 to a final rejection consists only of:(1) a timely filed amendment which places the
application in condition for allowance; (2) a timely filed Notice of Appeal (with appeal fee); or (3) if this is utility or plant
application, a timely filed Request for Continued Examination (RCE) in compliance with 37 CFR 1.114. Note that RCEs are not
permitted in design applications.)
(c) C) A
reply was received on
but it does not constitute a proper reply, or
a bona foe attempt at a proper reply, to the non-final
rejection. See 37 CFR 1.85(a) and 1.111. (See explanation in box 8 below).
(d}
¥J No reply has been received.
2. LJ Applicant's failure to timely pay the required issue fee and publication fee,
if applicable, within the statutory period of three months
from the mailing date of the Notice of Allowance (PTOL-85).
(a) The issue fee and publication fee, if applicable, was received on
(with a Certificate of Mailing or Transmission dated
), which is after the expiration of the statutory period for payment of the issue fee (and publication fee) set in the Notice of
Allowance (PTOL-85).
(b) CO) The submitted fee of $
is insufficient. A balance of $
is due.
The issue fee required by 37CFR 1.18 is $
. The publication fee,
if required by 37 CFR 1.18(d), is $
.
(c) (J The issue fee and publication fee, if applicable, has not been received.
3. C Applicant's failure to timely file corrected drawings as required by, and within the three-month period set in, the Notice of
Allowability (PTO-37).
(a) i: Proposed corrected drawings were received on
(with a Certificate of Mailing or Transmission dated
), which is
after the expiration of the period for reply.
(b) [) No corrected drawings have been received.
4. (J The letter of express abandonment which is signed by the attorney or agent of record or other party authorized under 37 CFR 1.33
(b). See 37 CFR 1.138(b).
5. (J The letter of express abandonment which is signed by an attorney or agent (acting in a representative capacity under 37 CFR
1.34) upon the filing of a continuing application.
6. () The decision by the Patent Trial and Appeal Board rendered on
and because the period for seeking court review of the
decision has expired and there are no allowed claims.
7.
©
The dismissal of the appeal in an application having no allowed claims. (When an appeal is dismissed in an application having no
allowed claims the application stands abandoned. See MPEP 1215.04 subsections I-V for an explanation of the reasons why an
appeal is dismissed.)
8. (¥} The reason(s) below:
The responses to the Fee Notice mailed April 19, 2024 were not accepted and the period for reply has expired. See also the
Petition decision mailed March 7, 2025,
/CHRISTYANN R PULLIAM/
Quality Assurance Specialist, Art Unit 2100
Petitions to revive under 37 CFR 1.137, or requests to withdraw the holding of abandonment under 37 CFR 1.181, should be promptly filed to minimize
any negative effects on patent term.
U.S. Patent and Trademark Office
.
PTOL-1432 (Rev. 04-19)
Notice of Abandonment
Part of Paper No. 20250520
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Appx0198
IN THE UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
ASHLESHA A. NESARIKAR,
§
ANIKA A. NESARIKAR,
§
ABHIJIT R. NESARIKAR,
§
§
Plaintiffs,
§
§
v.
§
Case No. 4:25-cv-423
§
THE UNITED STATES PATENT AND
§
TRADEMARK OFFICE and
§
COKE MORGAN STEWART, in her
§
official capacity as the Acting Director of
§
the United States Patent and Trademark
§
Office,
§
§
Defendants.
§
DEFENDANTS’ MOTION TO DISMISS AND SUPPORTING MEMORANDUM
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Appx0199
DEFENDANTS’ MOTION TO DISMISS
i
TABLE OF CONTENTS
INTRODUCTION ......................................................................................................................1
BACKGROUND ........................................................................................................................2
I.
Patent Prosecution Overview ...........................................................................................2
II.
Plaintiffs’ Applications ....................................................................................................4
A.
Prosecution of the ’288 Application .............................................................................4
STATEMENT OF ISSUES .........................................................................................................8
LEGAL STANDARDS ...............................................................................................................9
ARGUMENT ............................................................................................................................ 10
I.
Plaintiffs Have Not Established Standing to Maintain this Action .................................. 10
II.
Plaintiffs Have Not Exhausted All Administrative Remedies Related to the ’288
Application ............................................................................................................................ 11
III.
Plaintiffs Cannot Show Exhaustion of Administrative Remedies With Respect to Any
Other Applications................................................................................................................. 15
CONCLUSION ......................................................................................................................... 16
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DEFENDANTS’ MOTION TO DISMISS
ii
TABLE OF AUTHORITIES
Cases
Arrow Int'l v. Spire Biomedical,
Inc., 443 F. Supp. 2d 182 (D. Mass. 2006) ......................................................................... 10
Enzo APA & Son, Inc. v. Geapag A.G.,
134 F.3d 1090 (Fed. Cir. 1998) .......................................................................................... 10
Erickson v. Pardus,
551 U.S. 89 (2007) ............................................................................................................... 9
Fleming v. Coward,
534 F. App’x 947 (Fed. Cir. 2013) ......................................................................... 10, 13, 15
Home Builders Ass'n of Miss., Inc. v. City of Madison,
143 F.3d 1006 (5th Cir. 1998) .............................................................................................. 9
Hyatt v. OMB,
998 F.3d 423 (9th Cir. 2021) .............................................................................................. 14
Larson v. Correct Craft, Inc.,
569 F.3d 1319 (Fed. Cir. 2009) .................................................................................... 11, 12
McCarthy v. Madigan,
503 U.S. 140 (1992) ............................................................................................................. 9
McDaniel v. United States,
899 F. Supp. 305 (E.D. Tex. 1995) ....................................................................................... 9
McKart v. United States,
395 U.S. 185 (1969) ............................................................................................................. 9
Menchaca v. Chrysler Credit Corp.,
613 F.2d 507 (5th Cir. 1980) ................................................................................................ 9
Modica v. Alford,
No. 1:10-CV-515, 2011 U.S. Dist. LEXIS 52812 (E.D. Tex. 2011) ...................................... 9
Ramming v. United States,
281 F.3d 158 (5th Cir. 2001) ................................................................................................ 9
Shukh v. Seagate Tech., LLC,
803 F.3d 659 (Fed. Cir. 2015) ....................................................................................... 10-11
Tozzi v. E.P.A.,
148 F. Supp. 2d 35 (D.D.C. 2001) ...................................................................................... 14
Warth v. Seldin,
422 U.S. 490 (1975) ........................................................................................................... 10
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DEFENDANTS’ MOTION TO DISMISS
iii
Winfrey v. United States DOC, PTO,
No. 2024-1260, 2024 U.S. App. LEXIS 24311 (Fed. Cir. 2024) ......................................... 10
Statutes
5 C.F.R. § 1320.3(c) ................................................................................................................ 14
5 C.F.R. § 1320.3(h) ................................................................................................................ 14
5 U.S.C. § 702 ....................................................................................................................... 4, 9
5 U.S.C. § 704 ........................................................................................................................ 4, 9
35 U.S.C. § 101 ..................................................................................................................... 3, 6
35 U.S.C. § 141 ......................................................................................................................... 3
35 U.S.C. § 145 ......................................................................................................................... 3
37 C.F.R. § 1.51 ........................................................................................................................ 3
37 C.F.R. § 1.104 ...................................................................................................................... 3
37 C.F.R. § 1.113 ...................................................................................................................... 3
37 C.F.R. § 1.135 ...................................................................................................................... 3
37 C.F.R. § 1.136 ................................................................................................................ 7, 12
37 C.F.R. § 1.137 ............................................................................................... 2, 3, 7, 8, 13, 14
37 C.F.R. § 1.181 ...................................................................................................................... 3
37 C.F.R. § 1.311 ...................................................................................................................... 3
37 C.F.R. § 41.31 ...................................................................................................................... 3
44 U.S.C. § 3502 ..................................................................................................................... 14
Rules
Fed. R. Civ. P. 12 ...................................................................................................................... 1
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Appx0202
DEFENDANTS’ MOTION TO DISMISS
1
Defendants the United States Patent and Trademark Office and its Acting Director
(collectively, “USPTO”), respectfully move this Court to dismiss Plaintiffs’ April 24, 2025,
complaint (“Complaint”) pursuant to Fed. R. Civ. P. 12(b)(1) for lack of jurisdiction. Plaintiffs
lack standing to bring their claims and, in any event, have failed to exhaust all administrative
remedies before seeking relief from the Court.
INTRODUCTION
Plaintiffs’ Complaint alleges that the USPTO improperly issued a Notice of Payment
Deficiency in the prosecution of nonprovisional US Patent Application No. 18/069,288 (the “’288
application”) that ultimately led to the abandonment of the ’288 application and to this action
seeking review under the Administrative Procedure Act (APA). The crux of Plaintiffs’ Complaint
is a claimed entitlement to “micro entity” status—which, if established, results in substantially
reduced prosecution and maintenance fees—and allegations that USPTO arbitrarily, capriciously,
and otherwise not in accordance with the law, denied the ’288 application micro entity status.
While evaluating an application’s entitlement to micro entity status may—at times—be
complex, resolution of Plaintiffs’ Complaint is not. Plaintiffs’ allegations and attachments to the
Complaint contradict any assertion of standing. While Plaintiffs claim to be injured by USPTO
actions in connection with the prosecution of certain applications, Plaintiffs have simultaneously
claimed that all rights in those same applications have been assigned—or are under an obligation
to assign—to former employers.
Moreover, the waiver of sovereign immunity under the APA is limited and this Court lacks
jurisdiction to review claims where a Plaintiff has failed to exhaust all administrative remedies.
Here, Plaintiffs’ Complaint and exhibits confirm that additional—and required—administrative
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DEFENDANTS’ MOTION TO DISMISS
2
remedies remained available to Plaintiffs in all applications noticed for abandonment by the
USPTO. That alone is fatal to Plaintiffs’ claims.
To the extent the Court properly limits Plaintiffs’ Complaint to the ’288 application, the
flaw in Plaintiffs’ claims is clear.1 Plaintiffs claim a multitude of alleged final determinations that
constitute an exhaustion of administrative remedies—from statements in the initial deficiency
notice to responses to Plaintiffs’ arguments in support of their claim to micro entity status. But
the Notice of Abandonment that issued in the ’288 application was for a failure to timely file a
proper reply to the USPTO letter mailed on April 22, 2024. ECF 1-1 at 59 (“The responses to the
fee notice were not accepted (see petition decision mailed Oct 23, 2024 for details) and the period
for reply has expired.”). And the USPTO clarified shortly thereafter that it considered Plaintiffs’
November 19, 2024, reply to be untimely filed due to a failure to request an appropriate extension.
Id. at 24. If Plaintiffs wanted to challenge the rejection of their November 2024 reply, or the
resulting issuance of the Notice of Abandonment, the Notice itself explains the administrative
process that was available: “Petitions to revive under 37 CFR 1.137, or requests to withdraw the
holding of abandonment under 37 CFR 1.181, should be promptly filed to minimize any negative
effects on patent term.” Id. at 59. Plaintiffs did neither.
BACKGROUND
I.
Patent Prosecution Overview
An inventor seeking to patent an invention must file an application with the USPTO. Once
filed, a patent application is examined by a patent examiner to determine whether the application
1 Plaintiffs also include reference to Notices of Payment Deficiency in connection with their
claims for relief but do not identify those other applications or attach any adverse decisions from
which they seek relief.
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DEFENDANTS’ MOTION TO DISMISS
3
meets various regulatory requirements set out in 37 C.F.R. § 1.51 et seq. as well as the statutory
requirements for patenting set forth in 35 U.S.C. § 101 et seq. If an application is objected to or
rejected for failing to satisfy any of these requirements, the patent examiner will issue an “Office
action” informing the applicant of the grounds of objection or rejection and set a time period for
the applicant to respond. See 37 C.F.R. § 1.104. If, after considering the applicant’s response, the
patent examiner determines that the application is in allowable form, the patent examiner will issue
a notice of allowance. See 37 C.F.R. § 1.311. If the application is not in allowable condition, the
patent examiner may issue a final rejection.2 See 37 C.F.R. § 1.113.
Importantly, if at any time during the examination process a patent applicant fails to timely
or properly respond to an Office action, the applicant will be deemed to have abandoned his or her
application. See 37 C.F.R. § 1.135. If the applicant wishes to challenge a finding of abandonment
as improper, the applicant must file a petition under 37 C.F.R. § 1.181. See also Manual of Patent
Examining Procedure § 711.03(c). 3 Section 1.181 provides for a two-month time period for filing
petitions otherwise the petition “may be dismissed as untimely.” See 37 C.F.R. § 1.181(f).
If the applicant wishes to revive an abandoned application, the applicant must file a petition
under 37 C.F.R. § 1.137. If the petition decision confirms the original abandonment or refuses to
2 Rejections may be appealed to the USPTO’s Patent Trial and Appeal Board (“the Board”). See
37 C.F.R. § 41.31. If the Board affirms a final rejection, the Board’s decision may then receive
judicial review. See 35 U.S.C. § 141 (appellate review), § 145 (district court review).
3 The MPEP “is published to provide U.S. Patent and Trademark Office (USPTO) patent
examiners, inventors, applicants, attorneys, and agents with a reference work on the practices and
procedures relative to the prosecution of patent applications and other proceedings before the
USPTO.” MPEP Foreword (at https://www.uspto.gov/web/offices/pac/mpep/index.html). “The
guidance in the [MPEP] does not have the force and effect of law or the force of the rules in Title
37 of the Code of Federal Regulation, and are not meant to bind the public in any way.” Id.
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revive the application, it is this decision that is the USPTO’s final decision and it can be challenged
in the courts under the Administrative Procedure Act, 5 U.S.C. §§ 702, 704.
II.
Plaintiffs’ Applications
To the best of the USPTO’s knowledge, Plaintiffs are listed as inventors, either individually
or collectively, on 15 applications. Plaintiffs’ Complaint, however, is directed only at the ’288
application and their Motion for Preliminary Injunction additionally references Plaintiffs’
Application 16/591,555 (“’555 application”), Application 18/069,382 (“’382 application”), and
Application 18/611,669 (“’669 application”).
A.
Prosecution of the ’288 Application
On December 21, 2022, Plaintiffs filed the ’288 application with the USPTO. ECF 1 at 2.4
On April 22, 2024, a Notice of Payment Deficiency was entered, identifying for Plaintiffs that
when the ’288 application was filed “the applicant, the inventor, or a joint inventor was named on
more than four previously filed patent applications” and that the USPTO considered this to be
prima facie evidence that the micro entity status certification was made in error. ECF 1-1 at 3.
The Notice of Payment Deficiency identified two paths that Plaintiffs could take in
response. Id. One, if Plaintiffs agreed that the certification was in error, they could complete an
identified form and pay any difference in the fees that would be due under the appropriate
classification. Two, if Plaintiffs were to assert that “the certification of micro entity status was not
made in error, applicant must reply with an explanation and any necessary evidence that is
sufficient to rebut the prima facie evidence of an erroneous certification.” Id. at 4. Plaintiffs were
cautioned that they were given two months to file a response to the Notice in accordance with the
4 The Government is not resubmitting exhibits where Plaintiffs have previously attached
documents from the USPTO but notes that, throughout all exhibits, Plaintiffs have made
annotations that are not present in the original documents.
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options outlined, else the application would be abandoned. Id. And as a result of the fee deficiency
status, the application was removed from the examination queue pending resolution of the issue.
Id.
From April 23 through May 21, 2024, Plaintiffs engaged in email correspondence with
USPTO employees in which those employees answered procedural questions raised by Plaintiffs.5
Id.at 26–39. On May 23, 2024, Plaintiffs filed a paper asserting that “the certifications of micro
entity status are valid” and that their “arguments in support of [Plaintiffs’] certifications of micro
entity status accompany this paper.” Id. at 40–41.
On August 8, 2024, the USPTO responded to Plaintiffs’ submission with a detailed
rationale for why it appeared that Plaintiffs were not entitled to micro entity status and an
explanation of why Plaintiffs’ prior response was insufficient, as well as an identification of
information that would need to be provided to proceed with a micro entity certification. Id. at 6–
9. The USPTO also reminded Plaintiffs that their time to reply to the Notice of Payment
Deficiency was not extended by their deficient response and that “[u]nless applicant submits a
persuasive explanation and the necessary evidence to rebut the prima facie evidence of an
erroneous certification, or itemizes and pays the payment deficiency” then the application will be
abandoned. And the USPTO also reiterated the type of documentation that would be acceptable
as corroboration for their claim of micro entity status. Id. at 9.
5 Plaintiffs’ email correspondence was in relation to a Notice of Deficiency entered in the
prosecution of a different but related application. See, e.g., ECF 1-1 at 26. At certain points in
that correspondence, however, Plaintiffs made reference to Notices of Payment Deficiency entered
in connection with other applications, including the ’288 application.
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6
On September 9, 2024, Plaintiffs submitted a response accusing the USPTO of material
misrepresentations and contending that their prior submission was sufficient to demonstrate
entitlement to micro entity status. Id. at 46.
On October 23, 2024, the USPTO responded, first noting that Plaintiffs’ September
submission was both untimely and failed to include an application for an extension of time or the
appropriate fees. Id. at 11. As reflected in the response, the period for Plaintiffs to respond
continued to run from April 22, 2024, and could not be extended for more than five months—to
November 22, 2024. Id. The USPTO included a listing of the applicable fees to be paid if Plaintiffs
were to request an extension to November 22, 2024. Id. And the USPTO stated explicitly that
any response to this communication would require submission of an appropriate extension of time
fee. Id. at 15. The USPTO also responded that Plaintiffs had failed to demonstrate entitlement to
micro entity status under §1.29. Id. at 13–14
On November 19, 2024, Plaintiffs responded with an assertion that no extension or fee was
required, that their prior responses should have been considered sufficient to demonstrate micro
entity status, and that the Notice of Payment Deficiency and following USPTO communications
should be withdrawn. Id. at 16–20. And Plaintiffs reiterated their claim that the USPTO had
materially misrepresented facts, now with the additional accusation that the USPTO acted
arbitrarily and capriciously in requesting additional information. Plaintiffs also contended that the
USPTO’s “failure” to address certain remarks constituted “concession to Inventors’ arguments”
and demanded that the USPTO “provide an affidavit or declaration setting forth specific factual
statements and explanations to support the personal knowledge in compliance with 37 CFR
§1.104(d)(2).”6
6 37 CFR §1.104(d)(2) relates to the citation of prior art references with respect to the substantive
examination of claims, requiring that “[w]hen a rejection in an application is based on facts within
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On February 11, 2025, the USPTO issued a Notice of Abandonment. Id. at 24. The Notice
set forth the process for any challenge: “Petitions to revive under 37 CFR 1.137, or requests to
withdraw the holding of abandonment under 37 CFR 1.181, should be promptly filed to minimize
any negative effects on patent term.” Id.
In a March 6, 2025, letter, the USPTO explained that Plaintiffs’ “November 19, 2024 reply
was not accompanied by an appropriate extension of time under 37 CFR 1.136(a), and the
maximum extendable period for timely reply to the April 22, 2024 Notice has expired.” Id. The
USPTO thus considered the reply “untimely filed” and stated that it would not be addressed on the
merits.
No further petition was made challenging the Notice of Abandonment or the decision to
reject the untimely November 2024 submission.
B.
Prosecution of the ’382, ’669, and ’555 Applications
The ’382 application was filed on the same day as the ’288 application, listing the same
inventors and claiming priority to the same provisional application as the ’288 application. ECF
2-2. On February 6, 2025, the USPTO issued a notice of abandonment for failure to respond to an
office action. Id. at 4. Plaintiffs claim that they notified the USPTO that the abandonment was in
error and requested a “corrected filing receipt” on February 26, 2025. ECF 2 at 2. Like with the
’288 application, there is no indication in the record that Plaintiffs submitted a petition to revive
under 37 CFR 1.137 or a request to withdraw the holding of abandonment under 37 CFR 1.181.
By Plaintiffs’ concession, their February 26, 2025, request remains outstanding.
the personal knowledge of an employee of the Office, the data shall be as specific as possible, and
the reference must be supported, when called for by the applicant, by the affidavit of such
employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of
the applicant and other persons..”
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With respect to the unpublished ’669 application, the record reflects that Plaintiffs elected
to proceed as a small entity with respect to the ’669 application in December 2024. ECF 2-3 at 3.
And as reflected in a February 6, 2025, communication to Plaintiffs, a January 17, 2025, Notice of
Deficiency was sent in error as it failed to account for Plaintiffs’ prior change from claiming micro
entity status to claiming small entity status. Id. at 11. Plaintiffs do not allege that any final agency
determination has been made nor does the record reflect any such final determination.
And with respect to the ’555 application, prosecution similarly remains underway. On
October 29, 2024, Plaintiffs notified the USPTO that they were no longer claiming micro entity
status for the ’555 application and submitted additional fees and an accompanying fee worksheet.
ECF 2-4. On December 5, 2024, the USPTO accepted the change from micro entity to small entity
status. On April 10, 2025, the USPTO notified Plaintiffs that their fee deficiency submission was
not accepted, because “all the fees that were erroneously paid as a micro entity along with the
current fee amount were not provided” and specifically identified the missing extension of time
fee. Rather than submit a corrected fee worksheet or pay the additional fee, Plaintiffs petitioned
the USPTO on May 8, 2025, alleging that the fee deficiency notification was erroneous. Id. That
petition is still pending awaiting a decision by the agency.
STATEMENT OF ISSUES
(1) Do Plaintiffs have standing to bring the present action, having asserted that all rights
in the subject application(s) have been assigned, or are under an obligation to be assigned, to a
third party? Answer: No.
(2) Have Plaintiffs identified a final agency action and exhausted all administrative
remedies, as required by the Administrative Procedures Act? Answer: No.
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LEGAL STANDARDS
Pleadings made by pro se litigants are “held to less stringent standards than formal
pleadings drafted by lawyers.” Erickson v. Pardus, 551 U.S. 89, 94 (2007). But even pro se
litigants must comply with the Federal Rules of Civil Procedure. See, e.g., Modica v. Alford, No.
1:10-CV-515, 2011 U.S. Dist. LEXIS 52812, at *11 (E.D. Tex. 2011) (citing Washington v.
Greene, 675 F. Supp. 2d 26, 36 (D.D.C. 2009)).
A motion under Rule 12(b)(1) of the Federal Rules of Civil Procedure moves the court to
dismiss a case for lack of subject matter jurisdiction “when the court lacks the statutory or
constitutional power to adjudicate the case.” Home Builders Ass'n of Miss., Inc. v. City of Madison,
143 F.3d 1006, 1010 (5th Cir. 1998). In analyzing a motion to dismiss under Rule 12(b)(1), a
court may consider: (1) the complaint alone; (2) the complaint supplemented by undisputed facts
or evidence in the record; or (3) the complaint supplemented by undisputed facts plus the court's
resolution of disputed facts. Ramming v. United States, 281 F.3d 158, 161 (5th Cir. 2001). The
burden of proof for a Rule 12(b)(1) motion to dismiss is on the party asserting jurisdiction.
McDaniel v. United States, 899 F. Supp. 305, 307 (E.D. Tex. 1995); Menchaca v. Chrysler Credit
Corp., 613 F.2d 507, 511 (5th Cir. 1980).
The APA affords a right of judicial review of agency action. See 5 U.S.C. § 702. In the
absence of a statute specifying the prerequisites for judicial review, the APA limits judicial review
to final agency action. Id. § 704. Courts generally will not review an agency decision unless the
plaintiff has exhausted the available administrative remedies. McKart v. United States, 395 U.S.
185 (1969). “Exhaustion is required because it serves the twin purposes of protecting
administrative agency authority and promoting judicial efficiency.” McCarthy v. Madigan, 503
U.S. 140, 145 (1992).
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“[E]xhaustion of administrative remedies is a jurisdictional prerequisite to filing a civil
lawsuit arising from the denial of a patent.” Fleming v. Coward, 534 F. App’x 947, 950 (Fed. Cir.
2013) (citing Leighton v. Coe, 130 F.2d 841, 842, 76 U.S. App. D.C. 212, 1942 Dec. Comm’r Pat.
101 (D.C. Cir. 1942)) (affirming a dismissal under Rule 12(b)(1) for failure to exhaust
administrative remedies); Maririo v. Dickinson, 56 F. Supp. 2d 74, 75–76 (D.D.C. 1999) (same).
And “exhaustion” encompasses filing a petition to revive an abandoned patent application.
Winfrey v. United States DOC, PTO, No. 2024-1260, 2024 U.S. App. LEXIS 24311, at *7 (Fed.
Cir. 2024) (unpublished) (affirming dismissal for failure to exhaust administrative remedies where
plaintiff “failed to present any evidence that she filed a petition with the USPTO to revive her
application or challenge its abandonment determination”); see also Arrow Int'l v. Spire
Biomedical, Inc., 443 F. Supp. 2d 182, 185 (D. Mass. 2006) (“[j]udicial review must await the
completion of [the] administrative process” to petition to revive an abandoned patent).
ARGUMENT
I.
Plaintiffs Have Not Established Standing to Maintain this Action
Whether the plaintiff has Article III standing “is the threshold question in every federal
case, determining the power of the court to entertain the suit.” Warth v. Seldin, 422 U.S. 490, 498
(1975). Under patent law, “the general rule [is] that rights in an invention belong to the inventor.”
Bd. of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776, 785–
86 (2011) (citations omitted). “It is equally well established that an inventor can assign his rights
in an invention to a third party.” Id. at 786. “As a general matter, parties should possess rights
before seeking to have them vindicated in court.” Enzo APA & Son, Inc. v. Geapag A.G., 134 F.3d
1090, 1093 (Fed. Cir. 1998). While a “concrete and particularized reputational injury” can give a
plaintiff standing to sue to be added as an inventor, see Shukh v. Seagate Tech., LLC, 803 F.3d
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659, 663 (Fed. Cir. 2015), an inventor—who has assigned away all rights—does not have standing
to sue where the harm is financial. See Larson v. Correct Craft, Inc., 569 F.3d 1319, 1327 (Fed.
Cir. 2009) (“Just as Larson would lack standing to sue for infringement unless and until he regains
title to the patents, so, too, he has no non-contingent interest in the patents on which to support his
standing to correct inventorship under § 256.”)
Here, Plaintiffs assert harms to the value of prospective patents that would flow to the
ultimate owner of the applications—increased fees, loss of patent rights and term, etc.—not to the
inventors themselves. And Plaintiffs’ own representations to the USPTO establish that they cannot
be the ultimate owner of the applications. Plaintiffs have represented that they have assigned—or
are obligated to assign—all rights in ten of the applications at issue to former employers, including
the ’288 application. ECF 1-1 at 47. Plaintiffs therefore lack the requisite standing to sue. This
is no mere technicality as Plaintiffs’ purported entitlement to micro entity status, errors alleged
with respect to the Notices of Payment Deficiency, and ultimate abandonment all flow from the
claim that Plaintiffs must assign all their rights to former employers.
Without evidence that Plaintiffs have retained rights in the relevant applications—which
would defeat their claims for micro entity status—Plaintiffs have failed to establish whose rights
are being vindicated here and, consequently, failed to establish standing.7
II.
Plaintiffs Have Not Exhausted All Administrative Remedies Related to the ’288
Application
In any event, even assuming Plaintiffs hold any rights to sustain a suit in federal court,
Plaintiffs’ failure to exhaust all administrative remedies is evident from their Complaint. Plaintiffs
7 To be clear, Plaintiffs have put forward no evidence of any assignment to a former employer.
The lone assignment for the ’844 application assigns rights to an apparent family member who
resides at the same address. ECF 1-2 at 8.
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complain that the USPTO did not confer micro entity status on the ’288 application and argue that
the Notice of Abandonment was improper. ECF 1 at 7–8. But in the Notice of Payment Deficiency
and each of the subsequent letters, the USPTO provided Plaintiffs with two options: (i) withdraw
their claim of micro entity status and pay the appropriate fee or (ii) provide sufficient information
to support entitlement to micro entity status. See, e.g., ECF 1-1 at 3–4, 8–9, and 14–15. Each of
those communications provided Plaintiffs the opportunity to submit additional information in
support of their micro entity certification. Id. And each explained the process by which Plaintiffs
could make additional argument and present evidence. Id. To the extent Plaintiffs contend that
either the Notice of Payment Deficiency or the subsequent letters were final agency actions, that
is contradicted by the contents of the notices themselves.
Nor can Plaintiffs succeed on a claim that the March 6, 2025, letter or the Notice of
Abandonment were final agency actions.8 In the October 23, 2024, Office action—the last USPTO
communication prior to the Notice of Abandonment—the USPTO explained that Plaintiffs prior
submissions had not been accepted both substantively and for failure to include an application for
an extension or the appropriate fees. Id. at 11. And the USPTO stated explicitly that any further
response would require submission of an appropriate extension of time fee and that no extension
could extend beyond November 22, 2024. Id. at 15. While Plaintiffs attempted to respond on
November 19, 2024, they unilaterally decided that they need not comply with USPTO procedure
and declined to request an extension. Id. at 20 (“for at least the foregoing reasons, no extension of
time is required.”). The March 6, 2025, letter explained Plaintiffs’ error and the USPTO’s reason
for rejecting the submission: “The November 19, 2024 reply was not accompanied by an
8 See, e.g., ECF 1 at 8 (“Brantley’s ruling that ‘[t]he November 19, 2024 reply has been entered
into the application, but will not be addressed on merits’…indicates exhaustion of administrative
remedies available to Inventors at the USPTO.”).
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13
appropriate extension of time under 37 CFR 1.136(a), and the maximum extendable period for
timely reply to the April 22, 2024 Notice has expired. Therefore, the November 19, 2024 reply
was untimely filed.” Id. at 24. The letter further directed Plaintiffs to the Office of Patents
Stakeholder Experience, Stakeholder Support Division, Patents Ombudsman. Id.
To the extent Plaintiffs believed that their November 19, 2024, submission was improperly
rejected, or that the March 2025 letter explaining that rejection was not in accordance with law,
Plaintiffs’ appropriate course of action was to administratively petition for review and/or follow
the instructions set forth in the letter. Plaintiffs filed no such petition, however, and therefore
failed to exhaust all administrative remedies. Their refusal to follow procedure, either in declining
to pay the appropriate extension fees or opting not to present the alleged error to the USPTO in the
first instance precludes jurisdiction under the APA. See, e.g., Fleming v. Coward, 534 F. App’x
at 950.
Similarly, if Plaintiffs believed that there was some error or impropriety in connection with
the issuance of the Notice of Abandonment, the Notice itself set forth available administrative
remedies. ECF 1-1 at 24 (“Petitions to revive under 37 CFR 1.137, or requests to withdraw the
holding of abandonment under 37 CFR 1.181, should be promptly filed to minimize any negative
effects on patent term.”). Plaintiffs chose neither, instead filing the present suit. Plaintiffs claim
that, after a discontinuation of examination, “further petition to the Director, represent[s] undue
uncertainty and expense.” ECF 2 at 6. But uncertainty and expense are not valid reasons to avoid
exhausting all administrative remedies nor do they invoke this Court’s jurisdiction.
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Plaintiffs also claim that several aspects of the October 23, 2024, letter “indicate exhaustion
of administrative remedies.”9 But again, that Office action explained how Plaintiffs could
provide—and invited—further response. ECF 1-1 at 11–15. And Plaintiffs in fact attempted to
respond—through the November 19, 2024, submission—purporting to address the alleged errors
and requesting reconsideration. Id. at 16–20. That Plaintiffs failed to comply with USPTO
procedure, such that their response was not accepted does not transform the October letter into a
final determination nor does demonstrate exhaustion of administrative remedies.
Finally, Plaintiffs claim that the Notice of Payment Deficiency “violated The Paperwork
Reduction Act, including 44 U.S.C. §3512 - Public protection” for failing “to display a valid OMB
control number while requiring a collection of information” and that the “violation of 44 U.S.C.
§3512 indicates exhaustion of administrative remedies available at the USPTO for Inventors.”10
ECF 1 at 6. Any deficiency in the USPTO’s notice would still need to be first addressed via a
petition for withdrawal or revival. But Plaintiffs are incorrect, in any event, that the Act applies
to the Notice of Payment Deficiency. The Act defines a “collection of information” as when a
federal agency obtains, solicits, or requires the disclosure of “facts or opinions” from members of
the public through “answers to identical questions posed to, or identical reporting and
recordkeeping requirements imposed on, ten or more persons.” 44 U.S.C. § 3502(3); see also 5
9 See, e.g., ECF 1 at 10 (the USPTO’s “failure to provide an affidavit or declaration”); id.
(reference to the ’455 application); id. at 11 (reference to the lack of recorded assignments); id. at
12 (request for evidence of an employment-based assignment agreement).
10 To the extent Plaintiffs are attempting to raise this as a separate claim, they misunderstand the
Paperwork Reduction Act and any such attempt must be dismissed for failure to state a claim. The
Paperwork Reduction Act is only a defense and does not provide an affirmative cause of action for
alleged violations. See, e.g., Ass'n of Am. Physicians & Surgs. v. United States HHS, 224 F. Supp.
2d 1115, 1128–29 (S.D. Tex. 2002) (Plaintiff is barred from making a PRA claim when there is no
government administrative or judicial action against them); Tozzi v. E.P.A., 148 F. Supp. 2d 35, 43
(D.D.C. 2001) (no private right under PRA).
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15
C.F.R. §§ 1320.3(c) (further defining “collection of information”), 1320.3(h) (further defining
“information”). And the Act and associated regulations “expressly exclude from coverage
individualized communications” like the Notice of Payment Deficiency, which is specific to the
’288 application and specifically directed to the named inventors those between the USPTO and a
patent applicant. See Hyatt v. OMB, 998 F.3d 423, 426 (9th Cir. 2021). Thus, neither the Notice
of Payment Deficiency nor any of the subsequent responses fall within the scope of the Act.
Simply, there is no reading of Plaintiffs’ claims that supports an exhaustion of all available
administrative remedies. Absent a petition to revive the ’288 application, there can be no
exhaustion. And Plaintiffs are not entitled to a judicial shortcut.
III.
Plaintiffs Cannot Show Exhaustion of Administrative Remedies With Respect to Any
Other Applications
Despite Plaintiffs’ actual claims being limited to actions taken during prosecution of the
’288 application, their “Relief Requested” purports to be far broader, seeking sweeping relief
across an undefined number of “Inventors’ applications.” ECF 15–16. Such claims for relief are
foreclosed, however, for at least the reason that Plaintiffs have failed to show an exhaustion of all
administrative remedies. See, e.g., Fleming v. Coward, 534 F. App’x at 950. Plaintiffs have not
alleged that they have petitioned to withdraw any Notice of Abandonment across any application,
nor have they alleged that they have petitioned to revive any application. And even were the Court
to consider any part of the prosecution of the ’288 application a final agency determination,
exhaustion with respect to the ’288 application would have no bearing on exhaustion in any other
application.11
11 Micro entity status is established on an application-by-application basis; an inventor or
applicant is not necessarily entitled to micro entity status across multiple applications. See
§1.29(e) (“Status as a micro entity must be specifically established in each related, continuing and
reissue application in which status is appropriate and desired. Status as a micro entity in one
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CONCLUSION
For the foregoing reasons, the court should dismiss Plaintiffs’ claims in their entirety for
lack of jurisdiction.
application or patent does not affect the status of any other application or patent, regardless of the
relationship of the applications or patents…”).
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17
June 10, 2025
Of Counsel:
WILLIAM LAMARCA
Special Counsel for Intellectual Property
Litigation
OMAR AMIN
Associate Solicitor
United States Patent and Trademark Office
Respectfully submitted,
JAY R. COMBS
Acting United States Attorney
JAMES GARLAND GILLINGHAM
Assistant United States Attorney
YAAKOV M. ROTH
Acting Assistant Attorney General
SCOTT BOLDEN
Director
s/ Philip Charles Sternhell
PHILIP CHARLES STERNHELL (DC Bar)
Assistant Director
Commercial Litigation Branch
Civil Division
Department of Justice
Washington, D.C. 20530
Telephone:
(202) 353-0522
Facsimile:
(202) 307-0345
Email:
philip.c.sternhell@usdoj.gov
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CERTIFICATE OF SERVICE
I hereby certify that on June 10, 2025, I electronically filed the foregoing document with
the Clerk of the Court using the ECF system which will send notification of such filing to those
persons on the Court’s electronic filing system. Additionally, a true and correct copy of this motion
will be sent to Plaintiffs as follows:
Via Email
Ashlesha A. Nesarikar
asedt0425@icloud.com
Via Email
Anika A. Nesarikar
anedt0425@icloud.com
Via Email
Abhijit R. Nesarikar
edt0425@nesarikar.com
/s/ Philip Charles Sternhell
PHILIP CHARLES STERNHELL
Assistant Director
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CERTIFICATE OF CONFERENCE
The “meet and confer” and “certificate of conference” requirements are not applicable to
either this motion to dismiss or pro se litigants. Local Rule CV-7(i). Therefore, no conference was
required.
/s/ Philip Charles Sternhell
PHILIP CHARLES STERNHELL
Assistant Director
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1
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
ASHLESHA A. NESARIKAR,
ANIKA A. NESARIKAR, and
ABHIJIT R. NESARIKAR,
Plaintiffs,
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
Case No. 4:25-cv-00423-JCB-JDL
-v-
THE UNITED STATES PATENT AND
TRADEMARK OFFICE and
COKE MORGAN STEWART, in her
official capacity as the Acting Director of
the United States Patent and Trademark
Office,
Defendants.
PLAINTIFFS’ REPLY TO DEFENDANTS’ OPPOSITION TO MOTION FOR A
PRELIMINARY INJUNCTION
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274
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2
Defendants do not respond to the substance of the Complaint (Doc. 1) and the Motion for
Injunction (Doc. 2). Defendants state “Plaintiffs’ Motion and Complaint omit critical background
and context relating to the establishment and maintenance of micro entity status in presenting
their claims” (Doc. 16, pg. 9) allegedly as a basis for educating Inventors (Plaintiffs) and the
Court with information that is at best peripheral to the Complaint, the Motion for Injunction, and
the accompanying evidence. The Complaint and the Motion for Injunction state violations of law
by the USPTO. Defendants, instead, attempt to supplement the administrative record.
Justification after the fact is inadequate to oppose the facts of the record. Altering the existing
record is not a substantive response to statements supported by facts. Inventors add Ex. G, Ex.
H, and Ex. I at least to oppose Doc. 16.
Updates: Inventors attended a settlement conference on 05/29/2025, proposed by Defendants. On
06/15/2025, Inventors discovered that Defendants changed, without a notice to Inventors, the
status of Application No. 15/940,792 (hereinafter ‘792) to “Application Involved in Court
Proceedings 06/10/2025” (Ex. I, pg. 2) and added a transaction record (“04/24/2025 Appellant's
Complaint”) with a retroactive date of 04/24/2025 (Ex. I, pg. 3). There is no obligation to assign
‘792 as a result of Inventors’ prior employment. Accordingly, ‘792 does not come under 35 USC
123(b).
Inventors Believe Inventors W
i ll Prevail on the Merits
Defendants adopt contradictory positions throughout Doc. 16. For example, Defendants
challenge Inventors’ ownership of “ ‘288 and other applications” (Doc. 16, pg. 7) for standing
purposes though they already admitted to having no evidence of an alternate owner. With the
exception of Application No.17/906,844 (in which all rights are assigned as a result of prior
employment), all applications which Inventors identified as obligated to assign rights in are
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currently owned by Inventors. Inventors’ obligation to assign in the future does not alter current
ownership or Inventors’ Article III standing.
Defendants’ argument of lack of finality and jurisdiction contradicts 5 U.S.C 704: "Except as
otherwise expressly required by statute, agency action otherwise final is final for the purposes of
this section whether or not there has been presented or determined an application for a
declaratory order, for any form of reconsideration, or, unless the agency otherwise requires by
rule and provides that the action meanwhile is inoperative, for an appeal to superior agency
authority” [emphasis added]. A petition for revival or reconsideration of abandonment is not
required (Hyatt v. U.S. Pat. & Trademark Off., 551 F. Supp. 3d (E.D. Va. 2021)). Even if it were
required, it would fail to render the agency action meanwhile “inoperative”.
Contrary to the USPTO’s argument, violating statute (e.g., 44 USC 3512(a)) exhausts
administrative remedies. The USPTO’s demand that Inventors petition after abandonment
amounts to mandating that pro se inventors request that a U.S. agency follow law it has already
broken; due and lawful process are not a matter of the Director’s discretion—they are rights.
Agency actions that are a consummation of the agency’s decision-making process, and from
which legal consequences flow, are final (Bennett v. Spear, 520 U.S. 154 (1997)). Thus,
violations of law, the Notice of Payment Deficiency, petition decisions, and abandonment are,
separately and together, final. Further, Defendants fail to address the exhaustion of
administrative remedies already presented (e.g. # 26, 38, 44, 45, 47, 48, 50, and 51 in the
Complaint). As shown in the record and from Defendants’ admission (e.g., Doc. 16, pg. 28),
these matters and more have been petitioned. Not only is petitioning further not required for
finality, Defendants’ irrational actions (e.g., Doc. 2, pg. 2-5) regarding ‘382 indicate petitioning
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further would result in indefinitely suspended action at the agency and simultaneous argument of
lack of finality in court.
Further, Defendants attempt to obscure the finality of agency action by characterizing the Notice
of Payment Deficiency and subsequent office communications as either office actions, petition
decisions, or responses, depending on which serves their argument at the time. For example,
Brantley refused in a petition decision to address the merits of a petition (filed within the 2-
month petition time limit) based on an allegedly missing extension of time fee, which is not
applicable to petitions (Doc. 1-1, pg. 24). Inventors must not be arbitrarily held to Defendants’
cherry-picked procedural requirements (Doc. 1, pg. 8), particularly when Defendants themselves
still do not commit to a consistent characterization of their actions. Further, Defendants err in
asserting “Plaintiffs admit and recognize that petitioning for revival of an abandoned application
is a remedy available to them. ECF 2 at 2” (Doc. 16, pg. 28). “ECF 2 at 2” contains no such
admission. The USPTO enforces a 2 month deadline for petitions (Doc. 2, pg. 2), and 11/22/24
was the last possible response date before abandonment (Doc. 1-1, pg. 15). A petition decision
was not sent until 03/06/25, well after the notice of abandonment on 02/11/25. At least
Defendants’ delay and obfuscation and the constraints of 37 CFR 1.137 made post-abandonment
petitioning unavailable.
Defendants make post hoc arguments about “reasonable inquiries” and investigative
responsibility but fail to deny violating Inventors’ due process rights in the inquiry. Defendants
failed to provide evidence that due process existed to evaluate (II) in the Notice of Payment
Deficiency before it was sent. Defendants claim that they “provided examples of ways in which
Plaintiffs could provide… information” (Doc. 16, pg. 29). However, the record shows that once
Inventors answered one demand for information (Doc. 1-1, pg. 9), Defendants newly demanded
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5
additional information with expanded scope (Doc. 1-1, pg. 14). Defendants fail to deny that
Brantley required “reply with an explanation and any necessary evidence that is sufficient” (Doc.
1-1, pg. 4) without offering a published and vetted process to determine the sufficiency of
evidence on the record. The threat of endless inquiry contributes to the extortionate activities.
Further, Defendants falsify the record regarding information that Inventors did provide
(Defendants state in Doc. 16, pg. 13: “Plaintiffs have claimed … an obligation to be assigned to
alleged prior employers. See, e.g., ECF 1-1 at 47”) in an attempt to alter the record (which states
in Doc. 1-1 pg. 47: “obligated to assign the rights… as a result of each of their prior
employment” and “obligated to assign the rights… as a result of his prior employment”).
Defendants argue they are exempt from evidentiary rules. Contrary to Defendants’ post hoc
justification (Doc. 16, pg. 20), 37 CFR 1.104(d)(2) comes broadly under “[c]itation of
references” (37 CFR 1.104(d)). Defendants’ failure to provide evidence (e.g., regarding alleged
application 10165455) is also unlawful (35 USC 132(a) states in part “... Director shall notify the
applicant… stating the reasons for such rejection, or objection or requirement, together with such
information and references as may be useful…”). Further, Defendants fail to provide evidence
for their assertion that Inventors were “inconsistent with publicly available information” (Doc.
16, pg. 30). Allegations of “publicly available information” were traversed in the record (Doc. 1-
1, pg. 19-20), and Defendants failed to address the traversals.
Defendants erroneously invoke 37 CFR 1.105, which regulates requests for information pertinent
to the merits of patent claims (e.g., “search of the prior art”, “identification of what is being
improved”, “technical information”, etc.); however, even if the regulation were applicable,
Defendants themselves are precluded from the post hoc justification as they failed to both:
identify the regulation as a basis for their actions (MPEP 704.14(a): “The requirement must
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clearly indicate that a requirement under 37 CFR 1.105 is being made”) and abide by the
regulation themselves (37 CFR 1.105(a)(3)). In any case, the CFR cannot exempt Defendants
from statute.
Defendants falsely assert an “interest in maintaining… integrity” (Doc. 16, pg. 12). As
custodians of all patent records, Defendants possess records of communications similar to the
Notice of Payment Deficiency in ‘288 with the same demands for information sent to more than
10 persons (see a sample in Ex. G; Doc 1-1, pg. 3; and Doc. 2-5, pg. 3). Defendants falsify their
actions, stating “the Act and associated regulations “expressly exclude from coverage
individualized communications” like the Notice of Payment Deficiency, which is specific to
the ’288 application and specifically directed to the named inventors those between the USPTO
and a patent applicant” [emphasis added] (Doc. 16, pg. 31). The Notices of Payment Deficiency
(e.g., Ex. G) are subject to the Paperwork Reduction Act (PRA).
Further, Defendants obfuscate their duty under PRA with peripheral case law citations.
Defendants erroneously rely on Ass'n of Am. Physicians & Surgs. (S.D. Tex. 2002), in which the
plaintiffs were denied invalidation of a noticed and promulgated regulation (which was not yet
enforced) as no governmental body had “commenced any administrative or judicial action
against them”. Defendants assert that a PRA claim requires government administrative action
(Doc.16, pg. 31), and Defendants did take administrative action against at least Inventors,
beginning with the Notice of Payment Deficiency (Doc.1-1, pg. 3). Further, Defendants misapply
Tozzi v. E.P.A. (D.D.C. 2001), which hinged on a “statutory bar prohibiting judicial review of
OMB's ICR [Information Collection Request] approval decisions”; however, the Notices of
Payment Deficiency are an ad hoc and unilaterally imposed demand for information, for which
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7
Inventors did not find any indication that the USPTO applied for or received OMB ICR
approval.
Regarding 18/120,998 (see Doc. 2, pg. 3), Defendants’ post hoc actions, including abandonment
of the application on 05/21/2025 after the Complaint and after the original deadline for response
to Doc. 2, contradict Defendants’ self-proclaimed assertion of “consistency, propriety, and the
lack of any likelihood of success by Plaintiffs” (Doc. 16 pg. 29). The post hoc actions do not
cure the violation of Inventors’ due process rights or the discrimination based on the violation.
Inventors Face Irreparable Harm
Defendants’ extortionate activities prevent Inventors from exercising property rights in patent
applications including, e.g., ‘555, which is in an advanced stage of prosecution. Future
expenditure of resources to defend against the extortionate activities would further violate due
process rights of Inventors. Only the injunctive relief may grant relief from and prevention of
extortionate activities.
There is no obligation to assign ‘555 and ‘669 as a result of Inventors’ prior employment.
Accordingly, ‘555 and ‘669 do not come under 35 USC 123(b). Since 2024, Inventors have been
confidentially prospecting large industrial conglomerates, nationally and internationally,
regarding implementing ‘555. Defendants’ extortionate activities are an imminent threat to these
efforts. Defendants trivialize the role of AI inventions and patents in the U.S. national priority. In
trivializing Inventors’ rights in ‘555 and the economic and reputational harm to Inventors and
their efforts, Defendants undermine U.S. national interests and our country’s reputation as an AI
leader.
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8
Regarding ‘382, Defendants err in stating “Plaintiffs have failed to provide the Court with any
substantive portion of the unpublished prosecution history” (Doc. 16, pg. 21). Defendants failed
to address the previously provided fee history (Doc. 2-2, pg.2), showing Defendants’
misappropriation of fees. Further, as custodians of the record, Defendants possess the complete
‘382 record.
All of Brantley’s demands for fees allegedly due, including extension fees, were met in ‘382 on
11/19/2024 (though misappropriated on 11/20/2024 in the fee history). Defendants concede that
the 11/19/2024 petition in ‘382 is unanswered, that an answer is required, and that ‘382 was
abandoned (Doc.16, pg. 28). Notice of abandonment was sent on 02/06/2025. In good faith, on
02/26/2025, Inventors notified the Director of the misappropriated payment in ‘382 in a Request
for Corrected Filing Receipt. To the best of Inventors’ knowledge, the Director’s practice is to
respond to a request for corrected filing receipt within days, but it has gone unanswered.
Meanwhile, Defendants continue to threaten other applications of Inventors to extort a false
concession of erroneous micro entity certification. Defendants can use just one such false
concession against all applications, and to evade accountability. The USPTO’s irrational and
extortionate activities, Defendants claim, are the normal course of business (Doc. 16, pg. 29).
18 U.S.C. 1951 defines extortion as “the obtaining of property from another, with his consent,
induced by wrongful use of actual or threatened force, violence, or fear, or under color of official
right”. Defendants argue that fees were “voluntarily and appropriately paid to the USPTO”
(Doc. 16, pg. 7). This does not exculpate Defendants. Due in part to the irrational response in the
10/23/2024 petition decision, and to mitigate any allegation of fee deficiency in ‘555 and ‘669,
Inventors paid excess fees. However, the extortionate activities continue to taint ‘555 and ‘669.
Defendants falsely alleged in a petition decision that Inventors made a payment (“fee deficiency
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9
submission”) indicative of erroneous micro entity status (MES) in ‘555 (Doc. 2-4, pg. 4).
Defendants, in a post hoc justification, falsely allege a “specifically identified … missing
extension of time fee” (Doc. 16, pg. 22) in ‘555. Though the record of ‘555 is public and the
USPTO is its custodian, Defendants elected not to provide evidence of the alleged extension fee.
As of 06/12/2025, the fee history (Ex. H, pg. 2) shows no such fee. The same petition decision
also states “The Office no longer investigates...applications under 37 CFR 1.56...nothing in this
Notice is intended to imply that an investigation was done”, without addressing how the alleged
missing fee or the alleged erroneous MES certification was determined in the absence of an
investigation, and in contradiction to Defendants’ post hoc claim of a “right and obligation to
investigate” MES (Doc. 16, pg. 31).
These unlawful, arbitrary, capricious, and irrational actions are hallmarks of extortion and
indicate an escalating trend towards additional future irreparable harm. While Defendants argue
current and future harms stated in the Complaint and in the Motion for Injunction do not justify
relief in the normal course of business, the injunctive relief is necessary against extortion under
18 U.S.C. 1951.
The Balance of Equities and Hardship, and the Public Interest, Favor Injunctive Relief
MPEP 704.14 states: “A requirement for information under 37 CFR 1.105 should be narrowly
specified and limited in scope. It is a significant burden on both the applicant and the Office
since the applicant must collect and submit the required information and the examiner must
consider all the information that is submitted”. In alleging they acted under 37 CFR 1.105,
Defendants concede that the demands are “a significant burden on both the applicant and the
Office”. Congress intended the PRA to control and reduce such burdens (44 USC 3506).
Defendants’ lack of process, pattern of expanding scope of information requirements, and
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insistence that the law is not applicable to them subverts Congress’ intent to the detriment of
inventors, small businesses, applicants, and the USPTO itself.
Defendants admit that under the APA, a court may set aside an agency action (Doc. 16, pg. 26).
The relief requested reflects necessary actions which are inherent in “setting aside” the Notice of
Payment Deficiency and which move in the direction of returning to the “status quo” before the
USPTO sent the Notice of Payment Deficiency by mitigating several ongoing and future harms
arising therefrom. Defendants’ idea of “status quo” (Doc. 16 pg. 8) would have Inventors remain
subject to allegations of erroneous MES and demands, in the time and manner of Defendants’
choosing, for concession, information, and payment (e.g. Doc. 2-4, pg. 4).
Defendants err in reading into the relief that Inventors seek exemption from the MES
requirements of 35 U.S.C. 123. Inventors do not seek special treatment. Inventors seek relief
from and prevention of arbitrary, capricious, unlawful, or extortionate actions alleging erroneous
MES.
The USPTO’s assertion (Doc. 16, pg. 11) that no more than 5 applications naming an inventor
can qualify for MES contradicts the USPTO’s public position already presented to Defendants as
shown in the record (Doc.1-1, pg. 25 and 43: “There is no limit on the number of previously-
filed patent applications that may be excluded from the "four previously filed application" limit
contained in the "gross income" definition for micro entity status on the basis of prior
employment”) and currently displayed on the USPTO’s website1. The alleged limit would also
deprive an application of MES (despite proper certification) when the application names an
inventor who is obligated to assign 5 previously-filed pending patents, each with MES, as a
1https://web.archive.org/web/20250615145009/https://www.uspto.gov/patents/laws/america-invents-act-aia/america-
invents-act-aia-frequently-asked#type-browse-faqs_2940
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result of prior employment, to a small business with income under the MES threshold. In other
words, the USPTO considers patent ownership exclusive to the realm of large businesses. The
USPTO summarily labels MES status claimed under 35 U.S.C. 123 and the MES certification
form—but not under the ad hoc and conclusory 5 application limit—as a “loophole”. The
allegation of a “loophole” is not a substantive response by Defendants to Doc. 1-1 pg. 25 and
43.
Further, the USPTO’s objection to assignment “to an individual” and to one “who shares the
same last name and resides at the same address” (Doc. 16, pg. 13 and 14) indicates the USPTO’s
disregard for small business ownership, small business employment, and the operations of small
businesses. Congress understands that small businesses and individual inventors lack recourse
against an abuse of “broad authority” (Doc. 16 pg. 6 and 12) by the USPTO. Defendants’
conclusory assertion of “broad authority to request additional information” in the form of a
requirement on an applicant who certified MES (Doc. 16 pg. 6) is false. Instead, Congress
required in 35 USC 123(e), regarding additional limits on who may qualify as a micro entity, that
“[a]t least 3 months before any limits proposed to be imposed pursuant to this subsection take
effect, the Director shall inform the Committee on the Judiciary of the House of Representatives
and the Committee on the Judiciary of the Senate of any such proposed limits”.
Conclusion
Inventors disagree with Defendants’ characterizations of various case laws. As pro se plaintiffs,
Inventors respectfully request that rather than accept Defendants’ characterizations at face value,
to the extent that the Court relies on Defendants’ citations in determinations, that the Court
independently interpret the case law.
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Doc. 16 largely repeats or supplements the USPTO’s errors but fails to substantively respond to
the Complaint and the Motion for Injunction. Inventors respectfully request that the Court reject
the supplementation and hold Defendants accountable for the failure to substantively respond.
Defendants show bad faith in: stating “the maximum number of applications in which fees can
be paid at the micro entity discount rate can vary from 0 to 5 for any given inventor” (Doc. 16,
pg. 11), while citing 35 USC 123 without regard to 35 USC 123(e); falsely stating “Plaintiffs’
Motion...alleg[es] a malicious conspiracy” (Doc. 16, pg. 6); and stating “individualized
communications...like the Notice of Payment Deficiency, which is specific to the ’288
application and specifically directed to the named inventors” (Doc. 16, pg. 31) in the face of
contrary evidence in ‘998 (Doc. 2-5, pg. 3 and 4); among others.
Inventors believe that the arguments and evidence filed with the Court are sufficient to grant the
motion on the briefs, and Inventors respectfully request that the Court grant the Motion for
Injunction without an oral hearing.
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Certificate of Service: Ashlesha A. Nesarikar is filing this document with the court’s CM/ECF
system on June 17, 2025.
Certificate of Generative Artificial Intelligence Usage: Inventors use generative AI in the
ordinary course of work as described in the certification filed on April 29, 2025. Inventors, in
good faith, comply with L.R. CV-11(g).
Date: June 17, 2025
Respectfully submitted,
Inventors and Plaintiffs
____________________
____________________
____________________
Ashlesha A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
asedt0425@icloud.com
Anika A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
anedt0425@icloud.com
Abhijit R. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
edt0425@nesarikar.com
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Appx0234
notice 17901347 1 of 2
2
notice 17901347 2 of 2
3
notice 17916058 1 of 2
5
notice 17916058 2 of 2
6
notice 17944185 1 of 2
8
notice 17944185 2 of 2
9
notice 17945641 1 of 2
11
notice 17945641 2 of 2
12
notice 17954710 1 of 2
14
notice 17954710 2 of 2
15
notice 17958526 1 of 2
17
notice 17958526 2 of 2
18
notice 17961518 1 of 2
20
notice 17961518 2 of 2
21
notice 17968501 1 of 2
23
notice 17968501 2 of 2
24
notice 17990673 1 of 2
26
notice 17990673 2 of 2
27
notice 18071427 1 of 2
29
notice 18071427 2 of 2
30
notice 18091551 1 of 2
32
notice 18091551 2 of 2
33
notice 18148480 1 of 2
35
notice 18148480 2 of 2
36
notice 17803855 1 of 2
38
notice 17803855 2 of 2
39
notice 17958323
41
notice 17803644
44
Exhibit G
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 1 of 46 PageID
#: 287
Appx0235
notice 17901347 1 of 2
2
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 2 of 46 PageID
#: 288
Appx0236
notice 17901347 2 of 2
3
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 3 of 46 PageID
#: 289
Appx0237
notice 17901347 2 of 2
4
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 4 of 46 PageID
#: 290
Appx0238
notice 17916058 1 of 2
5
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 5 of 46 PageID
#: 291
Appx0239
notice 17916058 2 of 2
6
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 6 of 46 PageID
#: 292
Appx0240
notice 17916058 2 of 2
7
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 7 of 46 PageID
#: 293
Appx0241
notice 17944185 1 of 2
8
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 8 of 46 PageID
#: 294
Appx0242
notice 17944185 2 of 2
9
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 9 of 46 PageID
#: 295
Appx0243
notice 17944185 2 of 2
10
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 10 of 46 PageID
#: 296
Appx0244
notice 17945641 1 of 2
11
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 11 of 46 PageID
#: 297
Appx0245
notice 17945641 2 of 2
12
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 12 of 46 PageID
#: 298
Appx0246
notice 17945641 2 of 2
13
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 13 of 46 PageID
#: 299
Appx0247
notice 17954710 1 of 2
14
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 14 of 46 PageID
#: 300
Appx0248
notice 17954710 2 of 2
15
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 15 of 46 PageID
#: 301
Appx0249
notice 17954710 2 of 2
16
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 16 of 46 PageID
#: 302
Appx0250
notice 17958526 1 of 2
17
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 17 of 46 PageID
#: 303
Appx0251
notice 17958526 2 of 2
18
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 18 of 46 PageID
#: 304
Appx0252
notice 17958526 2 of 2
19
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 19 of 46 PageID
#: 305
Appx0253
notice 17961518 1 of 2
20
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 20 of 46 PageID
#: 306
Appx0254
notice 17961518 2 of 2
21
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 21 of 46 PageID
#: 307
Appx0255
notice 17961518 2 of 2
22
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 22 of 46 PageID
#: 308
Appx0256
notice 17968501 1 of 2
23
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 23 of 46 PageID
#: 309
Appx0257
notice 17968501 2 of 2
24
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 24 of 46 PageID
#: 310
Appx0258
notice 17968501 2 of 2
25
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 25 of 46 PageID
#: 311
Appx0259
notice 17990673 1 of 2
26
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 26 of 46 PageID
#: 312
Appx0260
notice 17990673 2 of 2
27
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 27 of 46 PageID
#: 313
Appx0261
notice 17990673 2 of 2
28
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 28 of 46 PageID
#: 314
Appx0262
notice 18071427 1 of 2
29
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 29 of 46 PageID
#: 315
Appx0263
notice 18071427 2 of 2
30
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 30 of 46 PageID
#: 316
Appx0264
notice 18071427 2 of 2
31
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 31 of 46 PageID
#: 317
Appx0265
notice 18091551 1 of 2
32
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 32 of 46 PageID
#: 318
Appx0266
notice 18091551 2 of 2
33
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 33 of 46 PageID
#: 319
Appx0267
notice 18091551 2 of 2
34
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 34 of 46 PageID
#: 320
Appx0268
notice 18148480 1 of 2
35
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 35 of 46 PageID
#: 321
Appx0269
notice 18148480 2 of 2
36
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 36 of 46 PageID
#: 322
Appx0270
notice 18148480 2 of 2
37
Case 4:25-cv-00423-JCB-JDL Document 21-1 Filed 06/17/25 Page 37 of 46 PageID
#: 323
Appx0271
notice 17803855 1 of 2
38
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#: 324
Appx0272
notice 17803855 2 of 2
39
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#: 325
Appx0273
notice 17803855 2 of 2
40
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#: 326
Appx0274
notice 17958323
41
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#: 327
Appx0275
notice 17958323
42
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#: 328
Appx0276
notice 17958323
43
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#: 329
Appx0277
notice 17803644
44
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#: 330
Appx0278
notice 17803644
45
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#: 331
Appx0279
notice 17803644
46
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#: 332
Appx0280
Fee History 16591555 USPTO June 12 2025
2
Exhibit H
16/591,555
Case 4:25-cv-00423-JCB-JDL Document 21-2 Filed 06/17/25 Page 1 of 3 PageID #:
333
Appx0281
An official website of the United States government
Here’s how you know
16/591,555 | 2a-riskeval:
Risk Evaluation and Threat Mitigation Using Artificial Intelligence
PRIVATE VIEW
Application #
16/591,555
Confirmation #
1418
Attorney Docket #
2a-riskeval Edit
Patent #
-
Filing or 371 (c) date
10/02/2019
Status
Application Involved in
Court Proceedings
06/10/2025
Show/hide menu
View maintenance fee schedule
10/30/2024
10/29/2024
CC
1599 -
MAINTENANCE/PETITION
INTERNAL FEE CODE
$3,473.00
1
$3,473.00
08/14/2024
08/14/2024
CC
3401 - NOTICE OF APPEAL
$168.00
1
$168.00
07/01/2024
06/29/2024
CC
3806 - SUBMISSION-
INFORMATION DISCLOSURE
STMT
$52.00
1
$52.00
06/17/2024
06/16/2024
CC
3806 - SUBMISSION-
INFORMATION DISCLOSURE
STMT
$52.00
1
$52.00
01/17/2024
01/16/2024
CC
3202 - CLAIMS IN EXCESS OF
20
$20.00
100
$2,000.00
01/16/2024
01/15/2024
CC
3806 - SUBMISSION-
INFORMATION DISCLOSURE
STMT
$52.00
1
$52.00
06/07/2023
06/07/2023
CC
3202 - CLAIMS IN EXCESS OF
20
$20.00
19
$380.00
02/28/2023
02/28/2023
CC
3202 - CLAIMS IN EXCESS OF
20
$20.00
7
$140.00
01/04/2023
01/04/2023
CC
3202 - CLAIMS IN EXCESS OF
20
$20.00
14
$280.00
11/07/2019
11/07/2019
CC
3830 - PROCESSING FEE,
EXCEPT PROV. APPLS.
$35.00
1
$35.00
10/02/2019
10/02/2019
CC
3011 - BASIC FILING FEE-
UTILITY
$75.00
1
$75.00
Fee payment history
Accounting
Date
Mailroom
Date
Payment
Method
Fee Code
Amount
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Total
6/12/25, 6:13 PM
Fee History - Application - Patent Center - USPTO
https://patentcenter.uspto.gov/applications/16591555/fee-history?application=%2Fworkbench%2Fapplications
1/2
Fee History 16591555 USPTO June 12 2025
2
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334
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10/02/2019
10/02/2019
CC
3311 - UTILITY EXAMINATION
FEE
$190.00
1
$190.00
10/02/2019
10/02/2019
CC
3202 - CLAIMS IN EXCESS OF
20
$25.00
2
$50.00
10/02/2019
10/02/2019
CC
3111 - UTILITY SEARCH FEE
$165.00
1
$165.00
Accounting
Date
Mailroom
Date
Payment
Method
Fee Code
Amount
Quantity
Total
6/12/25, 6:13 PM
Fee History - Application - Patent Center - USPTO
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2/2
Fee History 16591555 USPTO June 12 2025
3
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335
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Application Data 15940792 June 15 2025
2
Transaction History 15940792 June 15 2025
3
Exhibit I
15/940,792
Case 4:25-cv-00423-JCB-JDL Document 21-3 Filed 06/17/25 Page 1 of 3 PageID #:
336
Appx0284
An official website of the United States government
Here’s how you know
15/940,792 | BONO.P0029US: INTELLIGENT AWARENESS MACHINES
PRIVATE VIEW
Application #
15/940,792
Confirmation #
3509
Attorney Docket #
BONO.P0029US Edit
Patent #
-
Filing or 371 (c) date
03/29/2018
Status
Application Involved in
Court Proceedings
06/10/2025
Show/hide menu
Application data
Application type
Utility
Examiner
AHAMED I NAZAR
(571) 270-3174
Group art unit
2178
Class/subclass
706/025.000
AIA (first inventor to file)
Yes
Entity status
Small Edit
Earliest publication #
-
Earliest publication date
-
Assignee for publication
-
Confirmation #
3509
Intl. registration # (Hague)
-
Intl. registration publication date
-
Correspondence address
146553 - Abhijit R. Nesarikar, Ashlesha A.
Nesarikar,
Anika A. Nesarikar
8025 Ambiance Way
Plano, TX
UNITED STATES
Abhijit R. Nesarikar
Plano, TEXAS (US)
Ashlesha A. Nesarikar
Plano, TEXAS (US)
Anika A. Nesarikar
Plano, TEXAS (US)
Inventors
Applicants
6/15/25, 12:13 PM
Bibliographic Data - Application - Patent Center - USPTO
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Application Data 15940792 June 15 2025
2
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Appx0285
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15/940,792
Confirmation #
3509
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BONO.P0029US Edit
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-
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03/29/2018
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3
Case 4:25-cv-00423-JCB-JDL Document 21-3 Filed 06/17/25 Page 3 of 3 PageID #:
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IN THE UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
ASHLESHA A. NESARIKAR,
§
ANIKA A. NESARIKAR,
§
ABHIJIT R. NESARIKAR,
§
§
Plaintiffs,
§
§
v.
§
Case No. 4:25-cv-423
§
THE UNITED STATES PATENT AND
§
TRADEMARK OFFICE and
§
COKE MORGAN STEWART, in her
§
official capacity as the Acting Director of
§
the United States Patent and Trademark
§
Office,
§
§
Defendants.
§
DEFENDANTS’ SUR-REPLY IN OPPOSITION TO PLAINTIFFS’ MOTION FOR A
PRELIMINARY INJUNCTION
Case 4:25-cv-00423-JCB-JDL Document 26 Filed 06/23/25 Page 1 of 8 PageID #:
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DEFENDANTS’ SUR-REPLY TO PRELIMINARY INJUNCTION MOTION
1
The United States Patent and Trademark Office and its Acting Director (collectively,
“USPTO”) respectfully submit the following sur-reply pursuant to Local Rule CV-7(a)(2).
Plaintiffs’ accusations of bad faith are unfounded and demonstrate Plaintiffs’ misapprehension of
the available facts and controlling law. Plaintiffs have shown no violation of law or procedure—
nor discrimination—in the USPTO’s request that Plaintiffs provide information to substantiate its
claim of micro entity status in any of its applications. Nor have they shown any potential harm—
to either Plaintiffs or the ultimate assignee of the applications—that would justify injunctive relief.
Plaintiffs Have No Likelihood of Success on the Merits. The USPTO respectfully
disagrees that it failed to “respond to the substance of the Complaint and the Motion for
Injunction.” ECF 21 at 2. There has been no breach of any applicable statute, regulation, or duty
of due process with respect to Plaintiffs’ applications—let alone one so clear as to justify injunctive
relief.1 See ECF 16 at 23-27. Rather, the record is clear that Plaintiffs refused to respond to basic
inquiries regarding assignment of their applications and failed to follow stated USPTO procedures
and regulations. Id. at 9-15.
The alleged “contradictory position” taken by the USPTO—that Plaintiffs may not have
any rights to be vindicated and that Plaintiffs have proffered no evidence that any obligation to
assign exists—is precisely why Plaintiffs have not met their burden to demonstrate standing. Even
assuming that any rights in Plaintiffs’ applications have been harmed—or are threatened with
harm—it remains unclear who owns those rights or would be harmed by any USPTO action. That
failure to show standing is dispositive to Plaintiffs’ claims and Motion for Preliminary Injunction.
1 Contrary to Plaintiffs’ claims, the USPTO is not making a “post hac” invocation of 37 C.F.R. §
1.105, and rather submits that it exemplifies the breadth of information that can be requested when
the USPTO fulfills its duties under 37 C.F.R. §§ 1.42, 1.29(j) and 35 U.S.C. § 123(f).
Case 4:25-cv-00423-JCB-JDL Document 26 Filed 06/23/25 Page 2 of 8 PageID #:
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DEFENDANTS’ SUR-REPLY TO PRELIMINARY INJUNCTION MOTION
2
Nor do any of Plaintiffs’ arguments regarding finality demonstrate that they have exhausted
administrative remedies. Plaintiffs claim that “violations of law, the Notice of Payment
Deficiency, petition decisions, and abandonment are, separately and together, final.” ECF 21 at 3.
But even assuming any violation or impropriety occurred, Plaintiffs had administrative processes
available to them to respond at each stage. Nothing prevented Plaintiffs from responding to, or
administratively challenging, the March 6, 2025, letter and the February 11, 2025, notice of
abandonment. Their failure to do so precludes judicial review. Plaintiffs’ broad claim that “[a]
petition for revival or reconsideration of abandonment is not required (Hyatt v. U.S. Pat. &
Trademark Off., 551 F. Supp. 3d (E.D. Va. 2021)),” does not follow from the facts of that case.
There, the court did not rule on exhaustion of administrative remedies—it rejected the plaintiff’s
argument that his requests for reconsideration on holdings of abandonment should have tolled
certain deadlines. See Hyatt v. United States PTO, 551 F. Supp. 3d 600, 604-05 (E.D. Va. 2021).
And Plaintiffs’ reading of Hyatt would not align with recent Federal Circuit guidance regarding
the exhaustion of remedies before the USPTO. See Winfrey v. United States DOC, PTO, No. 2024-
1260, 2024 U.S. App. LEXIS 24311, at *7 (Fed. Cir. 2024) (unpublished).
Plaintiffs also misapprehend the scope of the Paperwork Reduction Act and the types of
requests that fall within the PRA’s purview.2 The USPTO’s requirement that all applicants adhere
to its rules—here, responding to requests for information specific to a particular application—does
not mean such requirements are covered by the PRA. As the Ninth Circuit has recognized, “[a]fter
the initial submission, though, every patent application takes a unique path.” Hyatt v. OMB, 998
2 The USPTO maintains that its citations, ECF 16 at 26, are relevant with respect to the scope of
the PRA and the lack of a private right of action. To the extent Plaintiffs’ claim is limited to the
assertion that the Notice of Payment Deficiency and subsequent communications fall within the
PRA, Plaintiff is incorrect for the reasons stated below and in the USPTO’s Opposition.
Case 4:25-cv-00423-JCB-JDL Document 26 Filed 06/23/25 Page 3 of 8 PageID #:
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DEFENDANTS’ SUR-REPLY TO PRELIMINARY INJUNCTION MOTION
3
F.3d 423, 426 (9th Cir. 2021). “It would be illogical and antithetical to the purposes of the PRA to
require USPTO submit every such office action for OMB approval.” Id. at 430. And the USPTO’s
requirement that claims of entitlement to micro entity status be substantiated with corroborating
evidence, does not alter the individualized nature of the requests for information. If anything,
similar Notices of Payment Deficiency disproves any claim of disparate treatment.3
Simply, Plaintiffs have no likelihood of success on the merits. The cause of the ’288
application’s notice of abandonment was Plaintiffs’ failure to respond timely or adequately to valid
requests for information regarding their application or to pay the requisite fees. Plaintiffs have not
put forward evidence—either during prosecution or this action—to justify entitlement to micro
entity status for any of the abandoned applications. And Plaintiffs’ arguments would effectively
bar the USPTO from obtaining information necessary to execute its regulatory duties in
investigating and preventing fraudulent certifications of micro entity status. See 35 U.S.C. §123(f).
Plaintiffs Have Not Shown Irreparable Harm. Plaintiffs’ focus on the alleged
“extortionate” activities by the USPTO demonstrates the inappropriateness of injunctive relief
here. Any fee-related harm is by definition financial and capable of redress through monetary
damages—assuming Plaintiffs could prove in an appropriate proceeding that any such harm
occurred. Dennis Melancon, Inc. v. City of New Orleans, 703 F.3d 262, 275, 279 (5th Cir. 2012).
And Plaintiffs have made no showing of any prospect of future harm relating to the ’555, ’669,
3 Consistent with its goal of maintaining integrity with respect to micro entity status, the USPTO
also notes that, as of July 6, 2025, the USPTO “will begin issuing a combined notice of payment
deficiency and order to show cause as to why a fine should not be assessed” in connection with a
preliminary determination an application is not entitled to micro entity status. See Ex. A
(“Statutory Penalties for False Assertions or Certifications of Small and Micro Entity Status”) at
https://www.uspto.gov/patents/laws/patent-related-notices/patent-related-notices-2025.
Case 4:25-cv-00423-JCB-JDL Document 26 Filed 06/23/25 Page 4 of 8 PageID #:
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DEFENDANTS’ SUR-REPLY TO PRELIMINARY INJUNCTION MOTION
4
and ’382 applications.
The ’555 and ’669 applications were—at Plaintiffs’ election—converted from a claim of
micro entity status to small entity status. Plaintiffs do not contest that an error with respect to the
’669 application was quickly corrected. And Plaintiffs’ bare allegation that the status of the ’555
application is somehow interfering with their “confidentially prospecting large industrial
conglomerates” is insufficient to justify injunctive relief. See United States v. Emerson, 270 F.3d
203, 262 (5th Cir. 2001) (“Speculative injury is not sufficient; there must be more than an
unfounded fear on the part of the applicant . . . A presently existing actual threat must be shown.”).
This is particularly true where the current status of the ’555 application is the result of Plaintiffs’
failure to pay the difference in an extension fee that they authorized, Ex. B, and is reflected in the
prosecution history, Ex. C. Similarly, there is no basis to conclude that any alleged harm with
respect to the ’382 application is irreparable, especially where Plaintiffs’ request for a corrected
filing receipt remains outstanding.
There is no “escalating trend towards additional future irreparable harm.” ECF 21 at 9.
There is only Plaintiffs’ own failures to comply with USPTO regulations and procedures.
Balance of Equities and Public Interest. Plaintiffs’ claim that “Inventors do not seek
special treatment” is belied by their requests for relief. And they do not challenge the USPTO’s
interest and need to comply with applicable statutes and regulations in connection with combating
fraudulent micro entity certifications. See 35 U.S.C. §123(f); 37 C.F.R. §1.29(j). Rather, Plaintiffs
engage in unfounded and unwarranted mischaracterizations of the USPTO’s motivations and
priorities. See, e.g., ECF 21 at 7 (“Defendants trivialize the role of AI inventions and patents in
the U.S. national priority.”); id. at 9 (“USPTO considers patent ownership exclusive to the realm
of large businesses”); id. (“USPTO’s disregard for small business ownership, small business
Case 4:25-cv-00423-JCB-JDL Document 26 Filed 06/23/25 Page 5 of 8 PageID #:
352
Appx0291
DEFENDANTS’ SUR-REPLY TO PRELIMINARY INJUNCTION MOTION
5
employment, and the operations of small businesses”). None are correct, and none demonstrate a
balance of equities and public interest that would weigh in favor of granting injunctive relief.4
Fundamentally, Plaintiffs face no hardship in being held to the same standards as other
applicants claiming micro entity status. And the USPTO—and the public—have a strong interest
in both effectuating its regulations and maintaining consistency in claims for reduced fees.5
Arguments Regarding the ’792 Application. It is unclear what contention Plaintiffs are
making with respect to the ’792 application, and what—if any—connection is alleged between the
status of the ’792 application and any attempt at resolution without further Court involvement was
possible. The USPTO disagrees that Plaintiffs’ Complaint alleges any wrongdoing outside the
scope of the ’288 application or that Plaintiffs are entitled to any relief beyond that application.
But it is Plaintiffs’ requests for relief—broadly implicating any and all applications listing
Plaintiffs as inventors—that caused the ’792 application’s “involvement” in this Court proceeding.
***
Plaintiffs have not demonstrated entitlement to any relief—let alone the sweeping
injunctive relief requested—and the Court should deny Plaintiffs’ Motion in full. The USPTO
does not believe oral argument is necessary to resolve Plaintiffs’ Motion but respectfully requests
the opportunity to be heard to the extent the Court is contemplating any injunctive relief.
4 The USPTO has, at all times, acknowledged that applications under an obligation to be assigned
as a result of prior employment may be excluded from the “previously filed” counting. And the
USPTO recognizes that family members may employ one another in small businesses. But neither
justifies Plaintiffs’ apparent attempts to avoid having their applications count against any
applicant’s limit.
5 Plaintiffs are wrong to suggest that any Notice of Payment Deficiency or subsequent
communication represents an “additional limit” requiring notice under 35 U.S.C. §123(e).
Case 4:25-cv-00423-JCB-JDL Document 26 Filed 06/23/25 Page 6 of 8 PageID #:
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Appx0292
DEFENDANTS’ SUR-REPLY TO PRELIMINARY INJUNCTION MOTION
6
June 23, 2025
Of Counsel:
WILLIAM LA MARCA
Special Counsel for Intellectual Property
Litigation
OMAR AMIN
Associate Solicitor
United States Patent and Trademark Office
Respectfully submitted,
JAY R. COMBS
Acting United States Attorney
JAMES GARLAND GILLINGHAM
Assistant United States Attorney
BRETT A. SHUMATE
Assistant Attorney General
SCOTT BOLDEN
Director
s/ Philip Charles Sternhell
PHILIP CHARLES STERNHELL (DC Bar)
Assistant Director
Commercial Litigation Branch
Civil Division
Department of Justice
Washington, D.C. 20530
Telephone:
(202) 353-0522
Facsimile:
(202) 307-0345
Email:
philip.c.sternhell@usdoj.gov
Case 4:25-cv-00423-JCB-JDL Document 26 Filed 06/23/25 Page 7 of 8 PageID #:
354
Appx0293
CERTIFICATE OF SERVICE
I hereby certify that on June 23, 2025, I electronically filed the foregoing document with
the Clerk of the Court using the ECF system which will send notification of such filing to those
persons on the Court’s electronic filing system. Additionally, a true and correct copy of this
document will be sent to Plaintiffs as follows:
Via Email
Ashlesha A. Nesarikar
asedt0425@icloud.com
Via Email
Anika A. Nesarikar
anedt0425@icloud.com
Via Email
Abhijit R. Nesarikar
edt0425@nesarikar.com
/s/ Philip Charles Sternhell
PHILIP CHARLES STERNHELL
Assistant Director
Case 4:25-cv-00423-JCB-JDL Document 26 Filed 06/23/25 Page 8 of 8 PageID #:
355
Appx0294
Ex. A
Case 4:25-cv-00423-JCB-JDL Document 26-1 Filed 06/23/25 Page 1 of 5 PageID #:
356
Appx0295
Statutory Penalties for False Assertions or Certifications
ofSmall and Micro Entity Status
Summary
35 U.S.C. 41(j) and 123(£) require the United States Patent and Trademark Office (USPTO) to
assess a fine of not less than tlu-ee times the amount an entity failed to appropriately pay the
USPTO, when the entity is found by the USPTO to have falsely made an assertion or
certification of small or micro entity status, unless the entity shows that the assertion or
certification was made in good faith. The USPTO will begin issuing a combined notice of
payment deficiency and order to show cause as to why a fine should not be assessed ("combined
notice and order"), when the USPTO makes a prelimina1y determination that a pending patent
application ("application") or patent contains a false assertion or certification that resulted in the
payment ofat least one fee in an unentitled reduced amount. The USPTO will issue a subsequent
notice to provide a final determination ofwhether a fine is being assessed, and the fine amount,
based on any timely response to the combined notice and order and the record as a whole.
The statutory penalty system of35 U.S.C. 41(j) and 123(£) promotes the submission of compliant
assertions and certifications ofsmall and micro entity status, reduces the revenue loss from false
assertions and ce1tifications that would otherwise be borne by all entities, and discourages
inappropriate conduct related to making false assertions and certifications.
Background
An entity may qualify for small entity status if the entity is a person, a small business concern, or
a nonprofit organization, including an institution ofhigher education. See 3 7 CFR 1.27. Sections
509.02-03 ofthe Manual ofPatent Examining Procedure (MPEP) (9th Edition, Rev. 01.2024,
November 2024) provide guidance on when small entity status may be appropriately asserted.
The MPEP is available at www.uspto.gov/MPEP.
Some entities that qualify for small entity status can benefit from an additional reduction ofmost
fees charged by the US PTO ifthey also qualify for micro entity status. The entity may be entitled
to certify micro entity status under either a gross income basis or a United States institution of
higher education basis. Section 509.04 ofthe MPEP and www.uspto.gov/PatentMicroentity
provide guidance on when micro entity status may be appropriately certified. Ifan applicant,
inventor, or joint inventor has been named as the inventor or a joint inventor on more than five
prior nonprovisional applications, the applicant may be required to establish that a certification
under the gross income basis as a micro entity is appropriate, e.g., establishing that the
exceptions in 3 7 CFR 1.29(b) apply to a sufficient number ofprior applications that the
certification was not falsely made. See MPEP section 509.04(a), subsection I.
An entity is required to conduct an inquiry reasonable under the circumstances prior to making
the assertion or certification. See 37 CFR 1l.18(b )(2).
The USPTO is a fully fee-funded agency. When entities ineligible for the small or micro entity
status fee reductions pay fees in an unentitled reduced amount, they take improper advantage of
the fees paid by other entities. Fee payments made in an unentitled reduced amount result in
Case 4:25-cv-00423-JCB-JDL Document 26-1 Filed 06/23/25 Page 2 of 5 PageID #:
357
Appx0296
revenue loss for the USPTO, which is required to set fees to recover aggregate costs. Entities
paying fees in unentitled reduced amounts result in the fees for all applicants being reset higher
to offset this revenue loss.
Division W ofthe Consolidated Appropriations Act of2023 enacted the Unleashing American
l!movators Act of2022 and amended Title 35 ofthe United States Code to provide for penalties
for false assertions and certifications under 35 U.S.C. 41G) and 123(t), respectively. See Public
Law 117-328. In December 2024, Public Law 118-151 further amended Title 35 to provide good
faith exceptions to the statuto1y penalty system of35 U.S.C. 41G) and 123(t). Consequently,
35 U.S.C. 41G) and 123(t) require the USPTO to assess a fine ofnot less than tlu·ee times the
amount an entity failed to appropriately pay the USPTO, when the entity is found by the USPTO
to have falsely made an assertion or certification of small or micro entity status that resulted in
the payment ofa fee in an unentitled reduced amount, unless the entity establishes that the
assertion or certification was made in good faith.
Combined Notice and Order
, At USPTO's discretion, a review may be undertaken of an entity status claim for compliance
with all relevant USPTO rules. For example, the USPTO may review a micro entity status
certification claim to determine whether the entity is compliant with the limit offiling no more
than five nonprovisional applications. If the review leads to a preliminary determination that an
application contains a false assertion or certification that resulted in the payment ofat least one
fee in an unentitled reduced amount, the USPTO will issue to the correspondence address of
record a combined notice and order. The combined notice and order will set forth the USPTO's
basis for its preliminary determination and provide a response period oftwo months, extendible
under 37 CFR l.136(a), to give the entity notice and an opportunity to respond.
Response to Combined Notice and Order
The combined notice and order will provide the following tlu-ee options for response:
I.
If the assertion or certification was not falsely made, a reply must be submitted that
includes an explanation supported by sufficient evidence to rebut the preliminary
determination that the application contains a false assertion or certification. Relying
upon the previously submitted assertion or certification or providing a reassertion or
recertification are not satisfacto1y responses.
II.
If the assertion or certification was falsely made, but in good faith, an itemization of
the total deficiency owed must be provided under 37 CFR l.28(c)(2) or l.29(k)(l), as
appropriate, along with payment for the total deficiency under 37 CFR l.28(c)(2) or
1.29(k)(2), as appropriate, and include an explanation supported by sufficient
evidence that the assertion or certification was made in good faith.
III.
If the assertion or certification was falsely made and a good faith explanation is not
submitted, an itemization of the total deficiency owed and payment for the total
deficiency must be provided, along with, as appropriate, an offer to pay any fine once
assessed.
2
Case 4:25-cv-00423-JCB-JDL Document 26-1 Filed 06/23/25 Page 3 of 5 PageID #:
358
Appx0297
The USPTO will evaluate any response to the combined notice and order on a case-by-case basis
before issuing a final determination. For example, if the response includes an explanation
supported by evidence that the false assertion or certification was made in good faith, the
USPTO will take into consideration the reasonableness ofany steps taken to avoid the false
assertion or certification (i.e., an inquiry reasonable under 37 C.F.R. 11.18(b )(2)) and whether
the entity, e.g., applicant or practitioner, has exhibited a pattern ofmaking false assertions or
certifications.
Subsequent Notice from the USPTO
Following a response to the combined notice and order, or after the expiration of the time period
for response, the USPTO will generally issue a subsequent notice that will contain a final
determination, based on the record as a whole, of whether the application contains a false
assertion or certification that resulted in the payment ofat least one fee in an unentitled reduced
amount. The subsequent notice will also set forth the fine amount, if any, being assessed. In
certain situations, where the facts warrant, the USPTO may require additional information prior
to the final determination.
In addition, the USPTO may issue sanctions under 37 CFR 1 l.18(c) for an entity's conduct
before the USPTO regarding a false assertion or certification. Practitioners remain subject to the
USPTO Rules ofProfessional Conduct and sanctions under 37 CFR 11.15, 11.19, and 11.20 for
violations thereof. See 37 CFR 11.101 et seq.
Impact on Prosecution Status and Patent Term Adjustment
When the USPTO issues a combined notice and order, the USPTO will remove the application
from examination pending resolution ofthe preliminary determination that the application
contains a false assertion or certification. The USPTO will not return the application to
examination until both the fee deficiency and fine are resolved.
In the event that the USPTO makes a final determination that the application contains a false
assertion or certification that resulted in the payment ofat least one fee in an unentitled reduced
amount, there will be a patent term adjustment (PTA) impact for the application.
Under 37 CFR l.704(c), circumstances that constitute a failure of the applicant to engage in
reasonable efforts to conclude processing or examination ofan application may result in the
reduction ofthe period of adjustment set forth in 37 CFR 1.703. There will be a delay in
prosecution corresponding to the USPTO removing an application from examination, pending
the resolution ofthe false assertion or certification in the application. Because the delay is the
result ofa false assertion or certification, the delay is a failure to engage in reasonable efforts to
conclude processing or examination ofthe application, sta1ting on the date the US PTO issues the
combined notice and order and ending on the date all appropriate fee deficiencies and any
assessed fine are paid in full.
3
Case 4:25-cv-00423-JCB-JDL Document 26-1 Filed 06/23/25 Page 4 of 5 PageID #:
359
Appx0298
Additional Information
An entity is subject to the penalty provisions of35 U.S.C. 410) and 123(f) only when
inappropriately discounted fees were paid on or after December 29, 2022. The filing date of the
application is not relevant to whether the fee payment could result in a penalty.
Once a fine has been assessed, the fine is a debt owed to the United States Govenm1ent, unless
the USPTO determines that the assessment was in error in response to a request for further
review. Payment ofonly the fee deficiency amount after the penalty has been assessed does not
obviate the fine owed to the United States Government, and a collection process will be initiated
to collect the fine owed. The fine must be paid even ifthe application is abandoned or if the
patent has expired. Additionally, failure to pay the fine amount within the time period for its
payment may result in sanctions under 37 CFR 11.18, including termination ofthe proceedings.
Payment ofonly the fine amount and not the fee deficiency will, after expiration ofthe time
period to pay the fee deficiency, result in abandonment ofthe application.
Contact information
Inquiries concerning the statutory penalty system of35 U.S.C. 410) and 123(f) may be directed
to Joseph F. Weiss Jr., Senior Legal Advisor, Office ofPatent Legal Administration, at 571-270-
0629. Inquiries concerning patent term adjustment may be directed to Kery Fries, Senior Legal
Advisor, Office ofPatent Legal Administration, at 571-272-7757.
Coke Morgan Stewart
Acting Under Secretary of Commerce for Intellectual Property and
Acting Director ofthe United States Patent and Trademark Office
4
Case 4:25-cv-00423-JCB-JDL Document 26-1 Filed 06/23/25 Page 5 of 5 PageID #:
360
Appx0299
Ex. B
Case 4:25-cv-00423-JCB-JDL Document 26-2 Filed 06/23/25 Page 1 of 2 PageID #:
361
Appx0300
Case 4:25-cv-00423-JCB-JDL Document 26-2 Filed 06/23/25 Page 2 of 2 PageID #:
362
Appx0301
Ex. C
Case 4:25-cv-00423-JCB-JDL Document 26-3 Filed 06/23/25 Page 1 of 2 PageID #:
363
Appx0302
Case 4:25-cv-00423-JCB-JDL Document 26-3 Filed 06/23/25 Page 2 of 2 PageID #:
364
Appx0303
1
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
ASHLESHA A. NESARIKAR,
ANIKA A. NESARIKAR, and
ABHIJIT R. NESARIKAR,
Plaintiffs,
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
Case No. 4:25-cv-00423-JCB-JDL
-v-
THE UNITED STATES PATENT AND
TRADEMARK OFFICE and
COKE MORGAN STEWART, in her
official capacity as the Acting Director of
the United States Patent and Trademark
Office,
Defendants.
Plaintiffs’ Response to Defendants’ New Evidence in Sur-Reply on Motion for a
Preliminary Injunction
Case 4:25-cv-00423-JCB-JDL Document 28 Filed 06/24/25 Page 1 of 4 PageID #:
368
Appx0304
2
Defendants’ statement, “the USPTO... specifically identified the missing extension of time fee”
(Doc. 16, pg. 22 and Doc. 17, pg. 12; also see Doc. 2-4, pg. 3-5), and newly submitted evidence
(Doc. 26-2 and Doc. 26-3) constitute an admission of the bad faith (see Doc. 22, pg. 2) by
Defendants. In addition, the newly submitted evidence (Doc. 26-2 and Doc. 26-3) indicates
continued bad faith with increased scope.
Defendants state: “the current status of the ’555 application is the result of Plaintiffs’ failure to
pay the difference in an extension fee that they authorized, Ex. B, and is reflected in the
prosecution history, Ex. C” (Doc. 26, pg. 5). Defendants’ newly presented exhibits, Doc. 26-2
and Doc. 26-3, are a new allegation of a one month extension fee requirement for the Notice of
Appeal in ‘555. Any extension of time fee for the Notice of Appeal filed 8/14/2024 is
erroneously charged, because, as shown by Ex. J and explained below, the Notice of Appeal was
filed before the deadline of 08/21/2024.
In application ‘555:
On 08/21/2024, the examiners in ‘555 sent a correction to a previous erroneous advisory action,
stating “[t]he advisory action mailed 08/16/2024 has an error and should have box 1b checked. A
corrected PTOL-303 form has been included” (Ex. J, pgs. 3 and 4) in response to Inventors’
email of 08/19/2024 (Ex. J, pg. 7) requesting correction of the PTOL-303 form sent by the
examiners on 08/16/2025 (Ex. J, pg. 10). The corrected PTOL-303 indicated “b) The period for
reply expires on: (1) the mailing date of this Advisory Action [08/21/2024]; or (2) the date set
forth in the final rejection, whichever is later”. No extension was required as Inventors had
already replied by filing a Notice of Appeal on 08/14/2024. On 08/23/2024 and 08/28/2024,
Inventors requested that the Transaction History of the USPTO’s Patent Center be updated to
Case 4:25-cv-00423-JCB-JDL Document 28 Filed 06/24/25 Page 2 of 4 PageID #:
369
Appx0305
3
include the filing of the Notice of Appeal (Ex. J, pg. 8). At that time, no extension of time fee
had been charged. The Transaction History was updated to include the Notice of Appeal.
Defendants fail to address the missing entry of the alleged extension fee in ‘555 (Doc. 21-2, pg.
2). Defendants’ failure to reconcile the USPTO’s charge of the alleged extension fee with the
‘555 “Fee payment history” and prosecution history indicates a severe breakdown of USPTO
processes. Instead of investigating the breakdown of USPTO processes, Defendants continue to
justify the extortionate activities based on the breakdown.
The extortion for a false concession of erroneous micro entity certification (at least, e.g., in ‘555)
is an immediate threat to Inventors’ intellectual property and an excessive financial burden. The
increased scope of bad faith indicates that Inventors’ good faith efforts are futile against
Defendants’ extortionate activities. An injunction by the Court would grant relief from ongoing
and future irreparable harm to Inventors.
Defendants’ newly presented exhibit, Doc. 26-1, contains post hoc statements, which cannot
constitute evidence in rebuttal to the Complaint (Doc. 1) or Motion for Injunction (Doc. 2).
Rather, the document appears to support Inventors’ statement that Defendants lacked at least due
process regarding the Notice of Payment Deficiency (Doc. 1). Nor does the document excuse
Defendants’ unlawful actions.
Case 4:25-cv-00423-JCB-JDL Document 28 Filed 06/24/25 Page 3 of 4 PageID #:
370
Appx0306
4
Certificate of Service: Ashlesha A. Nesarikar is filing this document with the court’s CM/ECF
system on June 24, 2025.
Certificate of Generative Artificial Intelligence Usage: Inventors use generative AI in the
ordinary course of work as described in the certification filed on April 29, 2025. Inventors, in
good faith, comply with L.R. CV-11(g).
Date: June 24, 2025
Respectfully submitted,
Inventors and Plaintiffs
____________________
____________________
____________________
Ashlesha A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
asedt0425@icloud.com
Anika A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
anedt0425@icloud.com
Abhijit R. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
edt0425@nesarikar.com
Case 4:25-cv-00423-JCB-JDL Document 28 Filed 06/24/25 Page 4 of 4 PageID #:
371
Appx0307
146553_16591555_08-21-2024_M327
2
146553_16591555_08-21-2024_CTAV
4
Please correct PTOL-303 in advisory action of 08_16_2024 (application #
16_591,555)
7
Re_ Notice of Appeal (application #16_591,555) filed on Aug 14, 2024, but
not entered yet
8
146553_16591555_08-16-2024_CTAV
9
Exhibit J
16/591,555
Case 4:25-cv-00423-JCB-JDL Document 28-1 Filed 06/24/25 Page 1 of 12 PageID
#: 372
Appx0308
146553_16591555_08-21-2024_M327
2
Case 4:25-cv-00423-JCB-JDL Document 28-1 Filed 06/24/25 Page 2 of 12 PageID
#: 373
Appx0309
146553_16591555_08-21-2024_M327
3
Case 4:25-cv-00423-JCB-JDL Document 28-1 Filed 06/24/25 Page 3 of 12 PageID
#: 374
Appx0310
146553_16591555_08-21-2024_CTAV
4
Case 4:25-cv-00423-JCB-JDL Document 28-1 Filed 06/24/25 Page 4 of 12 PageID
#: 375
Appx0311
146553_16591555_08-21-2024_CTAV
5
Case 4:25-cv-00423-JCB-JDL Document 28-1 Filed 06/24/25 Page 5 of 12 PageID
#: 376
Appx0312
146553_16591555_08-21-2024_CTAV
6
Case 4:25-cv-00423-JCB-JDL Document 28-1 Filed 06/24/25 Page 6 of 12 PageID
#: 377
Appx0313
Subject: Please correct PTOL-303 in advisory acon of 08/16/2024 (applicaon #16/591,555)
From: Ashlesha Nesarikar <epctas@nesarikar.com>
Date: 8/19/2024, 5:52 PM
To: "Hoang, Michael (AU2122)" <Michael.Hoang1@uspto.gov>, "Chaki, Kakali"
<kakali.chaki@uspto.gov>
CC: epctas@nesarikar.com, "uspto@nesarikar.com" <uspto@nesarikar.com>
Examiner Hoang,
The selecon of check box 1.a) in the PTOL-303 form for the advisory acon of 08/16/2024
(applicaon #16/591,555) is in error. Opon 1.b) applies based on the date of our aer-final reply and
not opon 1.a). Please see the highlighted poron of the image below. The final acon also included
instrucons that would require checking box 1.b) rather than box 1.a).
Please send a corrected PTOL-303 form.
Thank you,
/Ashlesha A Nesarikar/
Ashlesha A. Nesarikar
469-371-4983
Please correct PTOL-303 in advisory action of 08/16/2024 (application #16/591,555)
1 of 1
10/9/2024, 3:09 PM
Please correct PTOL-303 in advisory action of 08_16_2024 (application #16_591,555)
7
Case 4:25-cv-00423-JCB-JDL Document 28-1 Filed 06/24/25 Page 7 of 12 PageID
#: 378
Appx0314
Subject: Re: Noce of Appeal (applicaon #16/591,555) filed on Aug 14, 2024, but not entered yet
From: epctas@nesarikar.com
Date: 8/28/2024, 2:53 PM
To: "Chaki, Kakali" <kakali.chaki@uspto.gov>, "Hoang, Michael (AU2122)"
<Michael.Hoang1@uspto.gov>
CC: "uspto@nesarikar.com" <uspto@nesarikar.com>, epctas@nesarikar.com
SPE Chaki,
I'm following up on my email to Examiner Hoang on 8/23/2024. I filed Noce of Appeal (NoA) for
applicaon # 16/591,555 on Aug 14, 2024; however, the filing is not shown in the transaction history
of the Patent Center. Please enter the NoA in the "Transactions" section of "Documents &
transaction history" of Patent Center.
Thank you,
Ashlesha Nesarikar
On 8/23/2024 3:45 PM, Ashlesha Nesarikar wrote:
Examiner Hoang,
I filed Noce of Appeal (NoA) for applicaon # 16/591,555 on Aug 14, 2024; however, the filing is
not shown in the transaction history of the Patent Center. Please enter the NoA in the
"Transactions" section of "Documents & transaction history" of Patent Center.
Thank you,
Ashlesha Nesarikar
Re: Notice of Appeal (application #16/591,555) iled on Aug 14, 2024, but not entered yet
1 of 1
10/9/2024, 3:11 PM
Re_ Notice of Appeal (application #16_591,555) filed on Aug 14, 2024, but not entered yet
8
Case 4:25-cv-00423-JCB-JDL Document 28-1 Filed 06/24/25 Page 8 of 12 PageID
#: 379
Appx0315
146553_16591555_08-16-2024_CTAV
9
Case 4:25-cv-00423-JCB-JDL Document 28-1 Filed 06/24/25 Page 9 of 12 PageID
#: 380
Appx0316
146553_16591555_08-16-2024_CTAV
10
Case 4:25-cv-00423-JCB-JDL Document 28-1 Filed 06/24/25 Page 10 of 12 PageID
#: 381
Appx0317
146553_16591555_08-16-2024_CTAV
11
Case 4:25-cv-00423-JCB-JDL Document 28-1 Filed 06/24/25 Page 11 of 12 PageID
#: 382
Appx0318
146553_16591555_08-16-2024_CTAV
12
Case 4:25-cv-00423-JCB-JDL Document 28-1 Filed 06/24/25 Page 12 of 12 PageID
#: 383
Appx0319
1
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
ASHLESHA A. NESARIKAR,
ANIKA A. NESARIKAR, and
ABHIJIT R. NESARIKAR,
Plaintiffs,
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
Case No. 4:25-cv-00423-JCB-JDL
-v-
THE UNITED STATES PATENT AND
TRADEMARK OFFICE and
COKE MORGAN STEWART, in her
official capacity as the Acting Director of
the United States Patent and Trademark
Office,
Defendants.
Plaintiffs’ Notice and Request for Speedy Consideration of the Motion for a Preliminary
Injunction
Inventors filed a Motion for a Preliminary Injunction (Doc. 2) on 04/24/2025, “respectfully
urg[ing] the Court to grant speedy relief…” (Doc. 2, pg. 7). Inventors believe that all
submissions on the Motion for a Preliminary Injunction permitted under L.R. CV-7 have been
served and filed with the Court. These include Defendants’ response (Doc. 16), Plaintiffs’ reply
(Doc. 21), Defendants’ sur-reply (Doc. 26), and Plaintiffs’ response to Defendants’ new evidence
(Doc. 28).
Inventors respectfully request speedy consideration of the Motion for a Preliminary Injunction.
Case 4:25-cv-00423-JCB-JDL Document 29 Filed 07/09/25 Page 1 of 2 PageID #:
384
Appx0320
2
Certificate of Service: Ashlesha A. Nesarikar is filing this document with the court’s CM/ECF
system on July 9, 2025.
Certificate of Generative Artificial Intelligence Usage: Inventors use generative AI in the
ordinary course of work as described in the certification filed on April 29, 2025. Inventors, in
good faith, comply with L.R. CV-11(g).
Date: July 9, 2025
Respectfully submitted,
Inventors and Plaintiffs
____________________
____________________
____________________
Ashlesha A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
asedt0425@icloud.com
Anika A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
anedt0425@icloud.com
Abhijit R. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
edt0425@nesarikar.com
Case 4:25-cv-00423-JCB-JDL Document 29 Filed 07/09/25 Page 2 of 2 PageID #:
385
Appx0321
1
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
ASHLESHA A. NESARIKAR,
ANIKA A. NESARIKAR, and
ABHIJIT R. NESARIKAR,
Plaintiffs,
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
Case No. 4:25-cv-00423-JCB-JDL
-v-
THE UNITED STATES PATENT AND
TRADEMARK OFFICE and
COKE MORGAN STEWART, in her
official capacity as the Acting Director of
the United States Patent and Trademark
Office,
Defendants.
Plaintiffs’ Opposition to Motion to Dismiss
Case 4:25-cv-00423-JCB-JDL Document 30 Filed 07/18/25 Page 1 of 26 PageID #:
386
Appx0322
2
Response to Statement of Issues
(1) Inventors have standing to bring the present action.
(2) Inventors have identified final agency actions and exhausted administrative remedies.
Inventors Oppose the Motion to Dismiss
The Notice of Payment Deficiency violated Inventors’ due process rights, the Paperwork
Reduction Act (PRA), 35 USC 132, and 35 USC 123(e), harming Inventors’ intellectual
property. Defendants attempt to obfuscate the violations without addressing the substance of the
Complaint (Doc. 1), erroneously stating “[t]he crux of Plaintiffs’ Complaint is a claimed
entitlement to “micro entity” status…” (Doc. 17, pg. 5). After the USPTO’s irrational petition
decisions in October 2024 (e.g., Doc. 1-1, pg. 10-15), Inventors paid excess fees—the difference
between “micro entity” fees and “small entity” fees (e.g., Doc. 2, pg. 2)—for example, in ‘382,
‘669, and ‘555. However, Defendants’ irrational actions continued. For example, in ‘382 on
11/19/2024, excess fees were paid that met the requirements set by Defendants to cure the
alleged fee deficiency (Ex. L, pg. 6). Defendants misappropriated the excess fees, disregarded
the petition of 11/19/2024 (Doc. 2-2, pg. 4), and abandoned the application on 02/06/2025 (Doc.
2-2, pg. 2, 3, and 4). Inventors notified Defendants of the misappropriated payments in ‘382 on
02/26/2025 in a Request for Corrected Filing Receipt (Ex. L, pg. 2; Doc. 2-2, pg. 3), which
Defendants disregarded1.
1Defendants appear to object to Doc. 2-2 as inadequate evidence (Doc. 16, pg. 21). However,
Defendants do not deny the facts based on Doc. 2-2, and Defendants are the custodians of the
record. Inventors presented evidence (Doc. 2-2) that a 11/19/2024 payment was misappropriated
by Defendants. In the interest of speedy resolution, Inventors have attached additional evidence
(see Ex. K and Ex. L).
Case 4:25-cv-00423-JCB-JDL Document 30 Filed 07/18/25 Page 2 of 26 PageID #:
387
Appx0323
3
Defendants’ statements are indicative of bad faith. In their sur-reply (Doc. 26), Defendants admit
that in ‘382: “Plaintiffs’ request for a corrected filing receipt [regarding the 11/19/2024 petition
and misappropriation of the excess fees paid] remains outstanding” (Doc. 26, pg. 5). Defendants
also maintain in Doc. 17, pg. 11 that
Plaintiffs claim that they notified the USPTO that the abandonment [of ‘382] was in error
and requested a “corrected filing receipt” on February 26, 2025. ECF 2 at 2. Like with the
’288 application, there is no indication in the record that Plaintiffs submitted a petition to
revive under 37 CFR 1.137
and in Doc 16, pg. 28 that
Similarly, Plaintiffs’ Motion makes clear that Plaintiffs have not attempted to revive the
’382 application or withdraw the holding of abandonment and that a petition relating to
fee deficiencies remains outstanding. ECF 2 at 2–3.
While Defendants admit that the 11/19/2024 petition (including accounting for excess fees paid)
in ‘382 has remained outstanding for over six months, Defendants assert that Inventors must file
another petition (e.g., under 37 CFR 1.137 or 37 CFR 1.181). However, Inventors already filed
petitions (e,g., see Doc 2, pg. 2 and 3; Doc 2-2) after extensive communications with the Patents
Ombuds Office (POO), the examiner (see Doc. 1-1, pg. 2 for ‘288; Ex. L, pg. 5 for ‘382), the
Office of Patent Legal Administration, the Technology Center Group Director (see Doc. 1-1, pg.
4 for ‘288; Ex. L, pg. 7 for ‘382), and the Office of Petitions (Doc 1, pg. 4-7) in good faith to
reply under “(II)” in the Notice of Payment Deficiency despite Defendants’ lack of published and
vetted provisions to duly and consistently evaluate responses under (II). Defendants failed to
duly address the petitions.
Case 4:25-cv-00423-JCB-JDL Document 30 Filed 07/18/25 Page 3 of 26 PageID #:
388
Appx0324
4
Further, Defendants evade substantial issues in the Complaint by summarily characterizing the
extensive communications as merely “correspondence with USPTO employees with procedural
questions about how to respond” (Doc. 16, pg. 15) and “email correspondence with USPTO
employees in which those employees answered procedural questions raised by Plaintiffs.” (Doc.
17, pg. 9). The need for extensive communications arose due to a lack of published and vetted
provisions to duly and consistently evaluate responses under (II) in the Notice of Payment
Deficiency. Further, the communications were not merely “procedural” (e.g., the Patents
Ombuds Office asserted “[t]his application and any other application any of these inventors are
on submitted after this application does not qualify for micro entity status” while disregarding
Inventors’ reference to 37 CFR 1.29(b) (Doc. 1-2, pg. 5) and directed Inventors to act under (I)
in the Notice of Payment Deficiency (Doc, 1-2, pg. 4)). In effect, the allegedly “procedural”
communications indicated that the response required by the USPTO was a false concession of
erroneous micro entity status.
Inventors emailed the Technology Center Group Director (Doc. 1-2, pg. 2; also see Doc. 1-1, pg.
4 for ‘288; Ex. L, pg. 7 for ‘382) on 05/03/2024 stating “[Inventors are] reaching out to you as
you have signed the notice dated 04/22/2024” and “Could you expedite the provision of the
requested information below? Please see below my email to Patent Legal Administration on May
01, 2024”. The Technology Center Group Director did not reply. In a 05/06/2024 email, the
Office of Patent Legal Administration, by directing Inventors to the Patents Ombuds Office
(Doc. 1-2, pg. 2), endorsed the Patents Ombuds Office’s 05/07/2024 statement: “[t]his
application and any other application any of these inventors are on submitted after this
Case 4:25-cv-00423-JCB-JDL Document 30 Filed 07/18/25 Page 4 of 26 PageID #:
389
Appx0325
5
application does not qualify for micro entity status”2. Defendants falsely state that “those
employees answered procedural questions raised by Plaintiffs” (Doc. 17, pg. 9), while the
decision regarding qualification for micro entity status was preemptively made by the Office of
Patent Legal Administration before Inventors had an opportunity to respond under (II) in the
Notice of Payment Deficiency.
Defendants’ admission that the 11/19/2024 petition and Request for Corrected Filing Receipt
regarding the excess fees paid remain “outstanding” and Defendants’ concurrent allegation of a
requirement on Inventors to file a new petition (e.g., under 37 CFR 1.137 or 37 CFR 1.181)
indicate bad faith. Requiring Inventors to file petitions as a precondition for Defendants to
respond to previously-filed outstanding petitions is irrational. Predicating exhaustion of
administrative remedies on this irrationality is unlawful. In Doc. 17, pg. 5-6, Defendants’
statement, “additional—and required—administrative remedies remained available... ”, is false.
Defendants also falsely allege that “Plaintiffs’ Complaint and exhibits confirm” the false
statement (Doc. 17, pg. 5).
Further regarding ‘382, Defendants state in a show of bad faith (in Doc. 17, pg. 7 and 8):
If the applicant wishes to revive an abandoned application, the applicant must file a
petition under 37 C.F.R. § 1.137. If the petition decision confirms the original
abandonment or refuses to revive the application, it is this decision that is the USPTO’s
final decision and it can be challenged in the courts...
2The Office of Patent Legal Administration has not withdrawn or provided explanation for the
endorsement.
Case 4:25-cv-00423-JCB-JDL Document 30 Filed 07/18/25 Page 5 of 26 PageID #:
390
Appx0326
6
Defendants’ allegation that a petition decision under 37 CFR 1.137 is required for exhaustion of
administrative remedies constitutes extortion for a concession under 37 CFR 1.137(b). The
alleged requirement would allow Defendants to unduly evade judicial review. In conjunction
with their refusal to address the petition of 11/19/2024 and misappropriation of payment,
Defendants’ actions constitute extortion for a false concession of erroneous micro entity
certification from Inventors. Defendants also allege Inventors must petition on an issue of
Defendants’ choosing, rather than on, e.g., Defendants’ violations of law, which Inventors raised
and Defendants ignored. If allowed to evade judicial review on the basis of absence of a petition
on the extortionate terms of Defendants’ choosing, Defendants would evade accountability for
violating Inventors’ due process rights, the PRA, 35 USC 132, and 35 USC 123(e), and for
harming Inventors’ intellectual property.
Further, in Doc 16, pg. 28, Defendants show bad faith by falsely stating:
Plaintiffs admit and recognize that petitioning for revival of an abandoned application is a
remedy available to them. ECF 2 at 2. Yet Plaintiffs have declined to do so because, in
their view, it would “represent[] undue uncertainty and expense.” Id. That is an
insufficient basis to invoke this Court’s jurisdiction.
“ECF 2 at 2” contains no such admission. Defendants falsely represent Inventors’ statement of
“undue uncertainty and expense”. While the verbiage “undue uncertainty and expense” does
appear (Doc. 2, pg. 6), the full quotation (reproduced below) does not discuss “petitioning for
revival of an abandoned application”, instead referring to the need to petition to mitigate loss of
patent term after examination has been restarted:
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20.
Discontinuation of examination reduces the length of patent term. Restarting
examination after it is discontinued would not cure the loss of patent term. Any attempt to
mitigate the loss after the fact would require further petition to the Director, representing
undue uncertainty and expense. Discontinuing examination incurs at least undue loss of
patent value.
Defendants reiterate the false representation in Doc. 17, pg. 17: “Plaintiffs claim that, after a
discontinuation of examination, “further petition to the Director, represent[s] undue uncertainty
and expense.” ECF 2 at 6. But uncertainty and expense are not valid reasons to avoid exhausting
all administrative remedies nor do they invoke this Court’s jurisdiction”.
Further, in Doc. 26 (pg. 5), Defendants’ statement: “Plaintiffs do not contest that an error with
respect to the ’669 application was quickly corrected” indicates Defendants’ at least arbitrary and
capricious actions, e.g., at least as compared to ‘382. In ‘669, the correction of 02/06/2025 (Doc.
2-3, pg. 11) withdrawing the Notice of Payment Deficiency was in response to Inventors’
Request for Corrected Filing Receipt of 02/02/2025 (Doc. 2-3. pg. 9). In ‘382, Inventors filed a
Request for Corrected Filing Receipt on 02/26/2025 making a request similar to that of ‘669 (Ex.
L, pg. 2). In both ‘669 and ‘382, excess fees were paid (resulting in payments at small entity
rates) (see Doc. 21, pg. 8). However, Defendants have failed to correct ‘382 for over four months
as compared to the “quickly corrected” error in ‘669.
Defendants attempt to obfuscate Defendants’ bad faith and the facts in asserting “Plaintiffs’
misapprehension of the available facts...” (Doc. 26, pg. 2). For example, Defendants cherry pick
and obfuscate evidence (Doc. 28 and Doc. 28-1; also see Doc 21, pg. 12 and Doc. 21-1).
Inventors respectfully request that the Court reject the obfuscation in light of the facts.
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Regarding ‘555, Defendants show bad faith in falsely stating “the USPTO... specifically
identified the missing extension of time fee” (Doc. 16, pg. 22 and Doc. 17, pg. 12; also see Doc.
2-4, pg. 3-5). Defendants’ newly submitted evidence (Doc. 26-2 and Doc. 26-3) constitutes an
admission of the bad faith (see Doc. 22, pg. 2) by Defendants. In addition, the newly submitted
evidence (Doc. 26-2 and Doc. 26-3) indicates continued bad faith with increased scope (Doc. 28,
pg. 2 and 3; Doc. 28-1). Defendants fail to address the missing entry of the alleged extension fee
in ‘555 (Doc. 21-2, pg. 2). Defendants’ failure to reconcile the USPTO’s charge of the alleged
extension fee with the ‘555 “Fee payment history” and prosecution history indicates a severe
breakdown of USPTO processes (see Doc. 28, pg. 2 and 3 and Doc. 28-1). Instead of
investigating the breakdown of USPTO processes, Defendants continue to justify extortionate
activities based on the breakdown.
There is no obligation to assign ‘555 as a result of Inventors’ prior employment. Accordingly,
‘555 does not come under 35 USC 123(b). Defendants’ actions (at least, e.g., the 10/23/2024
petition decision in ‘288) caused harm in at least ‘555, supporting Inventors’ standing in the
current case (e.g., see Doc. 21, pg. 8).
Defendants’ Standing Arguments are Erroneous
Defendants adopt contradictory positions throughout Doc. 16 and Doc. 17. For example,
Defendants challenge Inventors’ ownership of “ ‘288 and other applications” (Doc. 16, pg. 7) for
standing purposes though they already admitted to having no evidence of an alternate owner.
With the exception of Application No.17/906,844 (in which all rights were assigned on
07/13/2023 as a result of prior employment; see Doc. 1-2, pg. 7 and 8), all applications which
Inventors identified as obligated to assign rights in are currently owned by Inventors. Inventors’
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obligation to assign in the future does not alter current ownership or Inventors’ Article III
standing.
Until an assignment, the rights in an invention belong to the inventors. See Board of Trustees of
the Leland Stanford Junior Univ. v. Roche Molecular Systems, Inc., 563 U.S. 776 (2011), stating:
“Since 1790, the patent law has operated on the premise that rights in an invention belong to the
inventor” and “It is equally well established that an inventor can assign his rights in an invention
to a third party. See Dubilier Condenser Corp., supra, at 187 (“A patent is property and title to it
can pass only by assignment”)”. The USPTO’s own regulation, 37 CFR 3.73(a), states: “The
original applicant is presumed to be the owner of an application for an original patent, and any
patent that may issue therefrom, unless there is an assignment”. Defendants fail to overcome this
presumption. Instead, Defendants forward a contradictory argument that “Without evidence that
Plaintiffs have retained rights in the relevant applications … Plaintiffs have failed to establish
whose rights are being vindicated here and, consequently, failed to establish standing” (Doc. 17,
pg. 15), thereby proposing an irrationality: that no one currently “retains rights”, that no one has
been harmed by the USPTO’s unlawful actions, and that no one has standing to bring the
USPTO’s actions for review before a court.
Defendants erroneously assert that “This is no mere technicality as ... errors alleged with respect
to the Notices of Payment Deficiency, and ultimate abandonment all flow from the claim that
Plaintiffs must assign all their rights to former employers” (Doc. 17, pg. 15). The Notice of
Payment Deficiency violated Inventors’ due process rights, the PRA, 35 USC 132, and 35 USC
123(e), regardless of an obligation to assign in the future. Inventors, as the current applicants,
were and are harmed by the violations of law and denial of due process. Further, Defendants’
allegation of a “claim that Plaintiffs must assign all their rights to former employers” falsely
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represents: Inventors’ statements (regarding obligation to assign “as a result of … prior
employment”) (Doc. 1-1, pg. 47), or 35 USC 123(b) (regarding obligation to assign “all
ownership rights in the application as the result of the applicant’s previous employment”), or the
USPTO’s micro entity certification (regarding obligation to assign “all ownership rights, as a
result of the applicant’s previous employment ”) (Doc. 1, pg. 12), or all three.
Defendants’ Arguments Regarding Exhaustion of Administrative Remedies are Erroneous
Defendants state “Once filed, a patent application is examined…” (Doc. 17, pg. 6). The patent
examination alleged by Defendants is subject to 35 USC 132(a), which states: “Whenever, on
examination, any claim for a patent is rejected, or any objection or requirement made, the
Director shall notify the applicant thereof, stating 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; and if after receiving such notice, the
applicant persists in his claim for a patent, with or without amendment, the application shall be
reexamined.” Inventors were sent a notice (dated 01/13/2023), indicating that ‘288 had
undergone an examination under 35 USC 132(a), specifying a two-month period to respond with
corrections regarding “Drawing Items” (Ex. K, pg. 3-5). The examination resulted in a receipt
accepting Inventors’ micro entity certifications (Ex. K, pg. 8). Inventors responded to the
examination’s notice3. Inventors received a receipt (dated 02/08/2023) indicating that ‘288 had
3The notice of 01/13/2023 also rejected Inventors’ power of attorney forms (Ex. K, pg. 2). On
01/20/2023, per the notice’s instructions and contact information (Ex. K pg. 2 and 7), Anika
Nesarikar called the USPTO Office of Data Management, Application Assistance Unit and
learned that the forms had been rejected because, allegedly, the same person signed all three
forms. Anika explained that the allegation was in error, requesting the filed forms be reviewed.
The forms were reviewed and Anika gained verbal agreement that each form was properly
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undergone a reexamination. The reexamination’s receipt also accepted Inventors’ micro entity
certifications (Ex. K, pg. 13). The examination, the response, and the reexamination followed the
provisions of 35 USC 132(a). However, Inventors were sent a Notice of Payment Deficiency
(dated 04/22/2024), indicating that ‘288 had undergone an additional examination. The Notice of
Payment Deficiency violated at least 35 USC 132(a), at least by preemptively denying
reexamination under 35 USC 132(a).
Inventors respectfully request that the Court juxtapose the Notice of Payment Deficiency with
the notice of 01/13/2023 and juxtapose the Defendants’ responses regarding the Notice of
Payment Deficiency with the responses of 01/24/2023 (Ex. K, pg. 11) and 02/08/2023 (Ex. K,
pg. 12). The juxtapositions indicate that violations of Inventors’ rights, including due process,
flowed from Defendants’ lack of published and vetted provisions to examine responses to the
Notice of Payment Deficiency. The juxtapositions further show that Defendants err by
summarily characterizing Inventors’ extensive communications with the Patents Ombuds Office,
the examiner (see Doc. 1-1, pg. 2), the Office of Patent Legal Administration, the Technology
Center Group Director (see Doc. 1-1, pg. 4), and the Office of Petitions (see Doc 1, pg. 4-7) as
merely “correspondence with USPTO employees with procedural questions about how to
respond” (Doc. 16, pg. 15) and “email correspondence with USPTO employees in which those
employees answered procedural questions raised by Plaintiffs.” (Doc. 17, pg. 9).
signed by a different inventor and that the USPTO would send a correction to their error. The
USPTO sent a correction withdrawing the rejection on 01/24/2023 (Ex. K, pg. 11). Inventors also
electronically filed a response to the “Drawing Items” notice on 02/05/2023 (Ex. K, pg. 27).
Thereafter, the USPTO determined ‘288 to be ready for examination (Doc. 1, pg. 2).
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After receiving the Notice of Payment Deficiency, despite the lack of published and vetted
provisions, Inventors persisted in their claim by responding (including a response on 05/23/2024
filed according to Defendants’ alleged time limit) in good faith based on guidance from
Defendants (Doc. 1, pg 6-7). Defendants unlawfully denied reexamination under 35 USC 132(a).
Defendants failed to duly address Inventors’ responses, including the response on 05/23/2024.
Defendants’ decisions on Inventors’ responses show that Defendants imposed new requirements
of expanded scope and presented new allegations, which requires a new opportunity to respond
with a new time period for reply. Defendants’ allegations that without “extension of time under
37 CFR 1.136(a)” responses “would not be addressed on the merits” (e.g., Doc. 17, pg. 11) and
Defendants’ refusal to restart Inventors’ period for reply (Doc. 1, pg. 13) are unlawful.
Defendants falsely state: “Plaintiffs complain that the USPTO did not confer micro entity status
on the ’288 application...” (Doc. 17 pg. 15-16). The USPTO granted micro entity status to ‘288
on 01/13/2023 (Ex. K, pg. 8 and 32) and affirmed it on 02/08/2023 (Ex. K, pg. 13). As of July
2025, the USPTO has not revoked the micro entity status of ‘288, and the USPTO’s Patent
Center continues to display the ‘288 application entity status as “Micro” (Ex. K, pg. 16).
The Notice of Payment Deficiency violated Inventors’ due process rights, the PRA, 35 USC 132,
and 35 USC 123(e), harming Inventors’ intellectual property. The Complaint and exhibits show
that Inventors repeatedly traversed the Notice of Payment Deficiency before the USPTO with
arguments and evidence. The USPTO, in multiple communications (Doc. 1-1), including 3
decisions, disregarded Inventors’ traversals and reiterated false statements without evidence. The
USPTO had multiple opportunities to recognize and stop their unlawful actions. Instead, each of
the USPTO’s decisions affirms: the Notice of Payment Deficiency; its unlawful, arbitrary, and
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capricious enforcement; and the unlawful “additional limits” imposed on who may qualify as a
micro entity (see 35 USC 123(e)). The Complaint evidences violations of due process and
statute. The Complaint, the record, and Defendants’ evasion of the factual evidence show that
Inventors have no recourse available at the USPTO and that the administrative remedies at the
USPTO have been exhausted. Defendants’ assertion of entitlement to “highly deferential” (Doc.
16, pg. 28) review does not excuse Defendants from judicial review, nor does it excuse violations
of due process or unlawful actions.
Defendants’ argument of lack of finality and jurisdiction contradicts 5 U.S.C 704: "Except as
otherwise expressly required by statute, agency action otherwise final is final for the purposes of
this section whether or not there has been presented or determined an application for a
declaratory order, for any form of reconsideration, or, unless the agency otherwise requires by
rule and provides that the action meanwhile is inoperative, for an appeal to superior agency
authority” [emphasis added]. A petition for revival or reconsideration of abandonment is not
required, and even if it were required (e.g., by a rule), it would fail to render the agency action
meanwhile “inoperative”.
Though Defendants assert that exhaustion of administrative remedies “encompasses” (Doc. 17,
pg. 14) further petitioning to the USPTO, further petitioning is not required to exhaust
administrative remedies as “[t]he mere possibility that an agency might reconsider [an agency
action]... and invited contentions of inaccuracy does not suffice to make an otherwise final
agency action nonfinal” (Sackett v. EPA, 566 U.S. 120 (2012)). Defendants evade the question of
the legality of the Notice of Payment Deficiency and associated penalties imposed on Inventors
for alleged noncompliance. The Supreme Court in Sackett v. EPA (2012) rejected “agency
argument that would “enable the strong-arming of regulated parties into ‘voluntary compliance’
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without the opportunity for judicial review”” (see dissent in City of Arlington v. Federal
Communications Commission, 569 U.S. 290 (2013), quoting Sackett v. EPA (2012), by Chief
Justice Roberts joined by Justice Kennedy and Justice Alito, objecting to excessive application of
the now-overturned Chevron deference4). To impose petitioning under 37 CFR 1.137 as a
prerequisite to judicial review would constitute at least “strong-arming” Inventors into
“voluntary compliance” with the USPTO’s ad hoc requirements without opportunity for judicial
review of those requirements.
The USPTO-designated examiner (Doc. 1-1, pg. 2, 5, 10, 23, 58, and 59; and Ex. K, pg. 16)
stated “I am not examining the application” (Doc. 1, pg. 4 and Doc. 1-1, pg. 26) on 04/23/2024,
and the examiner’s supervisor, the Technology Center Group Director of the examiner’s art unit,
signed the Notice of Payment Deficiency (Doc. 1, pg. 5; Doc. 1-2, pg. 2; and Doc. 1-1, pg. 4).
Even if, arguendo, the further petitioning requirement argued by Defendants (e.g., under 37
CFR 1.181) (Doc. 17, pg. 7) or Defendants’ statement on 03/06/2025 that “[t]he November 19,
2024 reply … will not be addressed on the merits” (Doc. 1-1, pg. 24) were lawful, it would
indicate that the Office of Petitions’ ad hoc guidance on 05/08/2024 to file a response with
“Attn: Office of Petitions, Mail Stop Petitions, …” (Doc. 1, pg. 6 and 7) was at least misleading
and that Defendants lacked published and vetted provisions to examine responses to the Notice
of Payment Deficiency.
Further, contrary to Defendants’ argument, violating statute (e.g., the PRA and 35 USC 132(a))
exhausts administrative remedies. The USPTO’s demand that Inventors petition after
abandonment amounts to mandating that pro se inventors request that a U.S. agency follow law
4Chevron deference was overturned by Loper Bright Enterprises v. Raimondo, 603 U.S. 369
(2024).
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it has already broken; due and lawful process are not a matter of the Director’s discretion—they
are rights.
The Supreme Court stated in Bennett v. Spear, 520 U.S. 154 (1997): “As a general matter, two
conditions must be satisfied for agency action to be "final": First, the action must mark the
"consummation" of the agency's decisionmaking process… it must not be of a merely tentative
or interlocutory nature. And second, the action must be one by which "rights or obligations have
been determined," or from which "legal consequences will flow,"”. Unilaterally and retroactively
deciding a fee deficiency, deciding an application was “not in condition for examination” (Doc.
1-1, pg. 3), issuing the Notice of Payment Deficiency, and removing an application from the
examination queue mark the consummation of the USPTO’s decision-making process. The
USPTO decided a new and unlawful policy under which Inventors were required to comply with
a demand for an unlawful collection of information (in violation of the PRA) and under which
Inventors were held to new and retroactive unlawful limitations on who may qualify for micro
entity status (in violation of 35 USC 123(e))—both under the stated threat of losing patent rights
(Doc. 1-1, pg. 3, 4, 9, 15, and 59) and resulting in: deprivation of Inventors’ right to examination
of their patent claims, unlawful reduction of patent term, and unlawful reduction of the property
value of Inventors’ patent applications. Further, Defendants’ action of issuing the Notice of
Payment Deficiency is final because it is the “consummation of the agency's decisionmaking
process” in unilaterally deciding that a bare allegation of “more than four previously filed patent
applications” (Doc. 1-1, pg. 3) is sufficient to deprive inventors and applicants of a right to
examination of patent applications that were previously found to be compliant with statute and
USPTO policy. The Notice of Payment Deficiency, in alleging “prima facie evidence” (Doc. 1-1,
pg. 3) of erroneous micro entity certification, without addressing 37 CFR 1.29(b) and without
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disclosing the “information and references” (35 USC 132(a)) regarding the patent applications
underlying the allegations of “prima facie evidence”, violated 35 USC 132(a). Inventors
repeatedly petitioned and provided evidence opposing the allegations of “prima facie evidence”
and more. Defendants’ petition decisions, based on material misrepresentations and irrational
arguments, reiterated the allegations and demands of the Notice of Payment Deficiency, further
showing “consummation of the agency's decisionmaking process” and that rights or obligations
have been determined and legal consequences have flowed from the “decisionmaking process”.
Defendants evade addressing the finality of their actions (e.g., issuing the Notice of Payment
Deficiency as a “consummation of the agency's decisionmaking process”) by debating the
finality of the consequences. Thus, violations of law, the Notice of Payment Deficiency, the
petition decisions, and abandonment are, separately and together, final.
Further, Defendants admit Inventors filed multiple petitions (e.g., Doc. 16, pg. 28) and “Plaintiffs
claim a multitude of alleged final determinations that constitute an exhaustion of administrative
remedies” (Doc. 17, pg. 6). Defendants fail to duly address the exhaustion of administrative
remedies already presented. Rather than addressing the substance of the Complaint and
individual actions constituting finality set forth by Inventors, Defendants evade by raising
misleading and inapplicable background (e.g., Doc. 17, pg. 7: “if … a patent applicant fails to
timely or properly respond to an Office action, the applicant will be deemed to have abandoned
his or her application. See 37 C.F.R. § 1.135. If the applicant wishes to challenge a finding of
abandonment…”). Defendants’ “Background” (in Doc. 17), rather than addressing Defendants’
actions in Inventors’ applications, relies on assertions inconsistent with or inapplicable to the
facts of the current case, which illustrates that Inventors were denied due process and Defendants
lacked published and vetted provisions to duly and consistently evaluate responses under (II) in
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the Notice of Payment Deficiency. For example, Defendants state “a patent application is
examined by a patent examiner” (Doc. 17, pg. 6) while the individual whom the USPTO
identified as the “examiner” (Doc. 1-1, pg. 2, 5, 10, 23, 58, and 59; and Ex. K, pg. 16) stated “I
am not examining the application” (Doc. 1, pg. 4 and Doc. 1-1, pg. 26). Contrary to the
“Background”, not only is petitioning further not required for finality, Defendants’ irrational
actions (e.g., Doc. 2, pg. 2-5 regarding ‘382) indicate petitioning further would result in
indefinitely suspended action at the agency.
Further regarding ‘288, Defendants state in a show of bad faith (in Doc. 17, pg. 7 and 8)
If the applicant wishes to revive an abandoned application, the applicant must file a
petition under 37 C.F.R. § 1.137. If the petition decision confirms the original
abandonment or refuses to revive the application, it is this decision that is the USPTO’s
final decision and it can be challenged in the courts...
and (in Doc. 17, pg. 19)
Absent a petition to revive the ’288 application, there can be no exhaustion.
Defendants’ allegation that a petition decision under 37 CFR 1.137 is required for exhaustion of
administrative remedies constitutes extortion for a concession under 37 CFR 1.137(b). The
alleged requirement would allow Defendants to unduly evade judicial review. In conjunction
with their refusal to duly address the petition of 11/19/2024, Defendants’ actions constitute
extortion for a false concession of erroneous micro entity certification from Inventors.
Defendants also allege Inventors must petition on an issue of Defendants’ choosing, rather than
on, e.g., Defendants’ violations of law, which Inventors raised and Defendants ignored. If
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allowed to evade judicial review on the basis of absence of a petition on the extortionate terms of
Defendants’ choosing, Defendants would evade accountability for violating Inventors’ due
process rights, the PRA, 35 USC 132, and 35 USC 123(e), and for harming Inventors’
intellectual property.
The USPTO made numerous procedural errors, and Inventors, in good faith, worked to correct
the procedural errors (e.g., see Doc. 28; Doc 28-1, pg. 7; Ex. K, pg. 11). However, since the
Notice of Payment Deficiency (e.g., in ‘288 and ‘382), Defendants have made inexplicable
allegations relying on cascading errors and bad-faith arguments. To allege that Inventors “failed
to exhaust all administrative remedies” (Doc. 17, pg. 5), Defendants assert an allegedly
mandatory USPTO procedure to revive ‘288: “Absent a petition to revive the ’288 application,
there can be no exhaustion.” (Doc. 17, pg. 19) and “If the applicant wishes to revive an
abandoned application, the applicant must file a petition under 37 C.F.R. § 1.137.” (Doc. 17, pg.
7). Regardless of whether Defendants respond to the petition, the mere filing of a petition under
37 CFR 1.137, in light of 37 CFR 1.137(b), would undermine judicial review of the inexplicable
allegations, the cascading errors, and the bad-faith arguments, depriving Inventors of
constitutional rights. The allegedly mandatory USPTO procedure as a condition of judicial
review is unconstitutional.
Further, 37 CFR 1.137(b) states in part: “A grantable petition pursuant to this section must be
accompanied by: (1) The reply required to the outstanding Office action or notice…”.
Defendants’ actions (e.g., in ‘382) show that the “reply required” by the USPTO is a false
concession of erroneous micro entity status. Inventors already challenged, before the USPTO,
the USPTO’s actions, including statutory violations, lack of due process, and material
misrepresentations. Defendants disregarded the challenges.
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Further, Defendants attempt to obscure the finality of agency action by ad hoc characterization
of the Notice of Payment Deficiency and subsequent office communications as notices, office
actions, petition decisions, or responses. For example, Brantley refused in a petition decision to
address the merits of a petition (the petition of 11/19/2024 filed within the 2-month petition time
limit, traversing the petition decision of 10/23/2024) based on an allegedly missing extension of
time fee, which is not applicable to petitions (Doc. 1-1, pg. 24; also see MPEP 1002: Petitions to
the Director of the USPTO, stating “The 2-month period is not extendible under 37 CFR
1.136(a)…”). Defendants’ invocation of 37 CFR 1.135 in Doc. 17 does not justify Defendants’
disregard of a timely-filed petition. Defendants’ erroneous assertion that finality requires
following revival procedures related to office actions (Doc 17, pg. 7) disregards that the USPTO
itself did not follow office action procedures, for example: failing to provide contact information
for the signers of the Notice of Payment Deficiency and the decisions (see MPEP 707.08);
preemptively directing Inventors to “Patents Ombudsman” (Doc. 1, pg. 4); directing Inventors to
file a response with “Attn: Office of Petitions, Mail Stop Petitions, …” (Doc. 1, pg. 6 and 7);
recording communications as petitions (e.g., “Petition Decision” in Ex. K, pg. 17 and 21; Ex. K,
pg. 30-31; and Doc. 17, pg. 6); and disregarding a request to restart the period for reply (Doc. 1,
pg. 13). Inventors must not be arbitrarily held to Defendants’ cherry-picked procedural
requirements (Doc. 1, pg. 8), particularly when Defendants do not commit to a consistent
characterization of the agency actions.
Defendants’ argument (Doc. 26, pg. 3) regarding Hyatt v. U.S. Pat. & Trademark Off., 551 F.
Supp. 3d (E.D. Va. 2021) disregards that the court found “The permissive language of [USPTO]
guidance creates no requirement for an applicant to seek reconsideration” of abandonment.
Defendants’ misapplication of Winfrey v. United States DOC, PTO (Fed. Cir. 2024) stands on
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Defendants’ disregard for the evidence showing the USPTO’s denial of due process and
unlawful actions regarding the Notice of Payment Deficiency. Unlike Inventors, Winfrey did not
respond, did not file any petitions, and did not have any unanswered petitions. Similarly,
Defendants erroneously invoke Arrow Int'l v. Spire Biomedical, Inc. (D. Mass. 2006), in which
the court noted that an already-pending petition to revive under 37 CFR 1.137 was yet to be
decided.
Defendants further cherry pick procedure in alleging that the Notice of Payment Deficiency and
subsequent petition decisions are under 37 CFR 1.104 (Doc. 17, pg. 7), while concurrently
indicating that Defendants are exempt from the evidentiary rules of 37 CFR 1.104(d)(2),
alleging: “37 CFR §1.104(d)(2) relates to the citation of prior art references with respect to the
substantive examination of claims” (Doc. 17, pg. 10). Contrary to Defendants’ post hoc
justification, 37 CFR 1.104(d)(2) comes broadly under “[c]itation of references” (37 CFR
1.104(d)). Further, in arguing they are exempt from evidentiary rules, Defendants violate 35
USC 132 (requiring presentation of “references as may be useful in judging of the propriety of
continuing the prosecution”).
Defendants falsely assert an “interest in maintaining… integrity” (Doc. 16, pg. 12). As
custodians of all patent records, Defendants possess records of communications similar to the
Notice of Payment Deficiency in ‘288 with the same demands for information sent to more than
10 persons (see a sample in Doc. 21-1; Doc 1-1, pg. 3; Doc. 2-5, pg. 3; and Ex. L, pg. 6).
Defendants falsify their actions, stating “the Act and associated regulations “expressly exclude
from coverage individualized communications” like the Notice of Payment Deficiency, which
is specific to the ’288 application and specifically directed to the named inventors those
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between the USPTO and a patent applicant” [emphasis added] (Doc. 17, pg. 19 and Doc. 16, pg.
31). The Notice of Payment Deficiency (e.g., Doc. 21-1) is subject to the PRA.
Further, Defendants obfuscate their duty under the PRA with peripheral case law citations.
Defendants erroneously rely on Ass'n of Am. Physicians & Surgs. (S.D. Tex. 2002), in which the
plaintiffs were denied invalidation of a noticed and promulgated regulation (which was not yet
enforced) as no governmental body had “commenced any administrative or judicial action
against them”. Defendants assert that a PRA claim requires government administrative action
(Doc. 17, pg. 18 and Doc. 16, pg. 31), and Defendants did take administrative action against at
least 10 persons at least, e.g., by issuing the Notice of Payment Deficiency (e.g., Doc. 1-1, pg. 3
and Ex. L, pg. 6). Defendants’ allegation that the PRA “is only a defense” (Doc. 17, pg. 18)
disregards 44 USC 3512 - Public protection (“The protection provided by this section may be
raised in the form of a complete defense, bar, or otherwise at any time during the agency
administrative process or judicial action applicable thereto.”). Further, Defendants misapply
Tozzi v. E.P.A. (D.D.C. 2001), which hinged on a “statutory bar prohibiting judicial review of
OMB's ICR [Information Collection Request] approval decisions”; however, the Notice of
Payment Deficiency is an ad hoc and unilaterally imposed demand for information, for which
Inventors did not find any indication that the USPTO applied for or received ICR approval from
the Office of Management and Budget (OMB).
Defendants claim that Inventors “misunderstand the Paperwork Reduction Act ” (Doc. 17, pg.
18), indicating Defendants at least disregard the congressional intent of the PRA as stated in 44
USC 3501, e.g.: “ minimize the paperwork burden for individuals, small businesses … and other
persons resulting from the collection of information by or for the Federal Government”,
“improve the quality and use of Federal information to strengthen decisionmaking,
Case 4:25-cv-00423-JCB-JDL Document 30 Filed 07/18/25 Page 21 of 26 PageID #:
406
Appx0342
22
accountability, and openness in Government and society”, “ensure that the creation, collection,
maintenance, use, dissemination, and disposition of information by or for the Federal
Government is consistent with applicable laws, including laws relating to— (A) privacy and
confidentiality, including section 552a of title 5… ”, and “improve the responsibility and
accountability of the Office of Management and Budget and all other Federal agencies to
Congress and to the public for implementing the information collection review process,
information resources management, and related policies and guidelines established under this
subchapter”. The display of an OMB Control Number indicates OMB approval of a collection of
information by an agency and an assurance to those affected by the collection of information that
the agency fulfilled its Congressionally mandated responsibilities (e.g. 44 USC 3506 and 3507).
Defendants’ arguments regarding the PRA are erroneous and an attempt to evade accountability
and judicial review as intended by Congress. For example, the PRA (44 USC 3506) states in
part: “(g) With respect to privacy and security, each agency shall… (2) assume responsibility and
accountability for compliance with and coordinated management of sections 552 and 552a of
title 5, subchapter II of this chapter, and related information management laws”. Defendants’
actions (see, e.g., Doc. 1) violated the PRA and Inventors’ due process rights at least by violating
5 USC 552a, which also provides the Court with jurisdiction in this case.
Defendants’ arguments regarding applications other than ‘288 reiterate arguments made
regarding ‘288. Defendants’ argument that “exhaustion with respect to the ’288 application
would have no bearing on exhaustion in any other application” (Doc. 17, pg. 19) evades evidence
of Defendants’ systemic unlawful actions. Defendants claim “Plaintiffs also include reference to
Notices of Payment Deficiency in connection with their claims for relief but do not identify those
other applications or attach any adverse decisions from which they seek relief” (Doc. 17. pg. 6)
Case 4:25-cv-00423-JCB-JDL Document 30 Filed 07/18/25 Page 22 of 26 PageID #:
407
Appx0343
23
while concurrently conceding that evidence submitted by Inventors shows “Plaintiffs made
reference to Notices of Payment Deficiency entered in connection with other applications,
including the ’288 application.” (Doc. 17, pg. 9). Defendants selectively disregard Inventors’
evidence identifying “those other applications” with a Notice of Payment Deficiency (Doc. 1-1,
pg. 35, 38, and 39). Further, Defendants do not deny that “those other applications” were subject
to “adverse decisions”. As custodian of patent records, the USPTO possesses evidence of “those
other applications [and] ... adverse decisions from which [Inventors] seek relief”. To persist in
arguing, despite evidence presented by Inventors (e.g., Doc. 1-1, Doc. 2), that “other
applications” are not subject to relief on the basis of allegedly missing evidence that is in fact in
the USPTO’s possession unduly expends the Court’s time and undermines the Court’s authority.
Further, Defendants themselves have already changed the status of all of Inventors’ applications
to “Application Involved in Court Proceedings... ” (e.g., Doc. 21-2, pg. 2 and Doc. 21-3, pg. 2 )
and subjected processing of the applications to effects flowing from the status change. To
characterize the status change as caused by “Plaintiffs’ requests for relief...” (Doc. 26, pg. 6)
while concurrently arguing “claims for relief [in applications other than ‘288] are foreclosed... ”
(Doc. 17, pg. 19) is contrary to the interests of justice.
Defendants admit that under the APA, a court may set aside an agency action (Doc. 16, pg. 26).
The relief requested reflects necessary actions inherent in “setting aside” the agency action of
issuing the Notice of Payment Deficiency in Inventors’ applications and granting relief from
harm arising out of the agency action.
Inventors disagree with Defendants’ characterizations of various case laws. As pro se plaintiffs,
Inventors respectfully request that rather than accept Defendants’ characterizations at face value,
Case 4:25-cv-00423-JCB-JDL Document 30 Filed 07/18/25 Page 23 of 26 PageID #:
408
Appx0344
24
to the extent that the Court relies on Defendants’ citations in determinations, that the Court
independently interpret the case law.
Defendants’ statement “the USPTO recognizes that family members may employ one another in
small businesses” (Doc. 26, pg. 6) constitutes a concession that Defendants erroneously rely on
the objections: “...assigns rights to an apparent family member who resides at the same address”
(Doc. 17, pg. 15 and Doc. 16, pg. 24) and “... who shares the same last name and resides at the
same address as all Plaintiffs” (Doc. 16, pg. 14). Defendants err in stating “Plaintiffs are wrong
to suggest that any Notice of Payment Deficiency or subsequent communication represents an
“additional limit” requiring notice under 35 U.S.C. §123(e)” (Doc. 26, pg. 6). For example,
limits imposed by Defendants based on the objections are in violation of 35 USC 123(e).
Instead of withdrawing the objections, Defendants allege a new requirement that individuals
certifying micro entity status cannot “avoid having their applications count against any
applicant’s limit” (Doc. 26, pg. 6), an additional violation of 35 USC 123(e). Defendants
continue to show their actions were and are out of touch with independent inventors and small
businesses, a deficiency that would have been cured had Defendants exercised the statutorily-
mandated practice of notice, comment, and promulgation of rule-making (e.g., regarding 35 USC
123(f)5).
Instead, Defendants violated the rights of independent inventors and small businesses by strong-
arming them for quick concessions that “the [micro entity] certification was erroneous” (Doc 1-
1. pg. 3) using ad hoc procedures and newly-alleged limitations on certifying micro entity status
that violate statute. In forcing newly-alleged rules by asserting older regulations, Defendants
535 USC 123(f) was signed into law on December 29, 2022.
Case 4:25-cv-00423-JCB-JDL Document 30 Filed 07/18/25 Page 24 of 26 PageID #:
409
Appx0345
25
attempt to force a square peg through a round hole in the name of the USPTO’s alleged “broad
authority” (Doc. 16, pg. 6 and 12).
Case 4:25-cv-00423-JCB-JDL Document 30 Filed 07/18/25 Page 25 of 26 PageID #:
410
Appx0346
26
Certificate of Service: Ashlesha A. Nesarikar is filing this document with the court’s CM/ECF
system on July 18, 2025.
Certificate of Generative Artificial Intelligence Usage: Inventors use generative AI in the
ordinary course of work as described in the certification filed on April 29, 2025. Inventors, in
good faith, comply with L.R. CV-11(g).
Date: July 18, 2025
Respectfully submitted,
Inventors and Plaintiffs
____________________
____________________
____________________
Ashlesha A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
asedt0425@icloud.com
Anika A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
anedt0425@icloud.com
Abhijit R. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
edt0425@nesarikar.com
Case 4:25-cv-00423-JCB-JDL Document 30 Filed 07/18/25 Page 26 of 26 PageID #:
411
Appx0347
146553_18069288_2023-01-13_N572
2
146553_18069288_2023-01-13_NT.CR.APP.PA
3
146553_18069288_2023-01-13_APP.FILE.REC
7
146553_18069288_2023-01-24_PEFN
11
146553_18069288_2023-02-08_APP.FILE.REC
12
Bibliographic Data - Application - Patent Center - USPTO
16
Documents - Application - Patent Center - USPTO
17
Transactions - Application - Patent Center - USPTO
30
Exhibit K
18/069,288
Case 4:25-cv-00423-JCB-JDL Document 30-2 Filed 07/18/25 Page 1 of 32 PageID
#: 413
Appx0348
146553_18069288_2023-01-13_N572
2
Case 4:25-cv-00423-JCB-JDL Document 30-2 Filed 07/18/25 Page 2 of 32 PageID
#: 414
Appx0349
146553_18069288_2023-01-13_NT.CR.APP.PA
3
Case 4:25-cv-00423-JCB-JDL Document 30-2 Filed 07/18/25 Page 3 of 32 PageID
#: 415
Appx0350
146553_18069288_2023-01-13_NT.CR.APP.PA
4
Case 4:25-cv-00423-JCB-JDL Document 30-2 Filed 07/18/25 Page 4 of 32 PageID
#: 416
Appx0351
146553_18069288_2023-01-13_NT.CR.APP.PA
5
Case 4:25-cv-00423-JCB-JDL Document 30-2 Filed 07/18/25 Page 5 of 32 PageID
#: 417
Appx0352
146553_18069288_2023-01-13_NT.CR.APP.PA
6
Case 4:25-cv-00423-JCB-JDL Document 30-2 Filed 07/18/25 Page 6 of 32 PageID
#: 418
Appx0353
146553_18069288_2023-01-13_APP.FILE.REC
7
Case 4:25-cv-00423-JCB-JDL Document 30-2 Filed 07/18/25 Page 7 of 32 PageID
#: 419
Appx0354
146553_18069288_2023-01-13_APP.FILE.REC
8
Case 4:25-cv-00423-JCB-JDL Document 30-2 Filed 07/18/25 Page 8 of 32 PageID
#: 420
Appx0355
146553_18069288_2023-01-13_APP.FILE.REC
9
Case 4:25-cv-00423-JCB-JDL Document 30-2 Filed 07/18/25 Page 9 of 32 PageID
#: 421
Appx0356
146553_18069288_2023-01-13_APP.FILE.REC
10
Case 4:25-cv-00423-JCB-JDL Document 30-2 Filed 07/18/25 Page 10 of 32 PageID
#: 422
Appx0357
146553_18069288_2023-01-24_PEFN
11
Case 4:25-cv-00423-JCB-JDL Document 30-2 Filed 07/18/25 Page 11 of 32 PageID
#: 423
Appx0358
146553_18069288_2023-02-08_APP.FILE.REC
12
Case 4:25-cv-00423-JCB-JDL Document 30-2 Filed 07/18/25 Page 12 of 32 PageID
#: 424
Appx0359
146553_18069288_2023-02-08_APP.FILE.REC
13
Case 4:25-cv-00423-JCB-JDL Document 30-2 Filed 07/18/25 Page 13 of 32 PageID
#: 425
Appx0360
146553_18069288_2023-02-08_APP.FILE.REC
14
Case 4:25-cv-00423-JCB-JDL Document 30-2 Filed 07/18/25 Page 14 of 32 PageID
#: 426
Appx0361
146553_18069288_2023-02-08_APP.FILE.REC
15
Case 4:25-cv-00423-JCB-JDL Document 30-2 Filed 07/18/25 Page 15 of 32 PageID
#: 427
Appx0362
An official website of the United States government
Here’s how you know
18/069,288 | 4as-morphism:
Systems and Methods for Intelligent Awareness and Intent for Autonomous Vehicles
PUBLIC VIEW
Application #
18/069,288
Confirmation #
3954
Attorney Docket #
4as-morphism
Patent #
-
Filing or 371 (c) date
12/21/2022
Status
Application Involved in
Court Proceedings
04/25/2025
Show/hide menu
Application data
Application type
Utility
Examiner
CHRISTYANN R PULLIAM
Group art unit
2178
Class/subclass
701/023.000
AIA (first inventor to file)
Yes
Entity status
Micro
Earliest publication #
US 2025-0033672 A1
Download PDF Text
Earliest publication date
01/30/2025
Assignee for publication
-
Confirmation #
3954
Intl. registration # (Hague)
-
Intl. registration publication date
-
Correspondence address
146553 - Abhijit R. Nesarikar, Ashlesha A.
Nesarikar,
Anika A. Nesarikar
8025 Ambiance Way
Plano, TX
UNITED STATES
Abhijit R. Nesarikar
Plano, TEXAS (US)
Ashlesha A. Nesarikar
Plano, TEXAS (US)
Anika A. Nesarikar
Plano, TEXAS (US)
Inventors
Applicants
7/14/25, 1:27 PM
Bibliographic Data - Application - Patent Center - USPTO
https://patentcenter.uspto.gov/applications/18069288?application=
1/1
Bibliographic Data - Application - Patent Center - USPTO
16
Case 4:25-cv-00423-JCB-JDL Document 30-2 Filed 07/18/25 Page 16 of 32 PageID
#: 428
Appx0363
An official website of the United States government
Here’s how you know
18/069,288 | 4as-morphism:
Systems and Methods for Intelligent Awareness and Intent for Autonomous Vehicles
PUBLIC VIEW
Application #
18/069,288
Confirmation #
3954
Attorney Docket #
4as-morphism
Patent #
-
Filing or 371 (c) date
12/21/2022
Status
Application Involved in
Court Proceedings
04/25/2025
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Transactions
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date
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DC.COMPLAINT
Plaintiff's Complaint (de novo
appeal)
16
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Petition Decision
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Request for Corrected Filing Receipt
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60
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18/069,288 | 4as-morphism:
Systems and Methods for Intelligent Awareness and Intent for Autonomous Vehicles
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Date
Transaction Description
Show 1,000
entries
1
7/14/25, 1:27 PM
Transactions - Application - Patent Center - USPTO
https://patentcenter.uspto.gov/applications/18069288/ifw/transactions?application=
3/3
Transactions - Application - Patent Center - USPTO
32
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#: 444
Appx0379
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146553_18069382_2025-02-26_N417
3
146553_18069382_2024-04-22_NFEE_001
5
146553_18069382_2024-04-22_NFEE_002
6
Exhibit L
18/069,382
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IN THE UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
ASHLESHA A. NESARIKAR,
§
ANIKA A. NESARIKAR,
§
ABHIJIT R. NESARIKAR,
§
§
Plaintiffs,
§
§
v.
§
Case No. 4:25-cv-423-JCB-JDL
§
THE UNITED STATES PATENT AND
§
TRADEMARK OFFICE and
§
COKE MORGAN STEWART, in her
§
official capacity as the Acting Director of
§
the United States Patent and Trademark
§
Office,
§
§
Defendants.
§
DEFENDANTS’ REPLY IN SUPPORT OF ITS MOTION TO DISMISS
Case 4:25-cv-00423-JCB-JDL Document 31 Filed 07/25/25 Page 1 of 13 PageID #:
452
Appx0387
DEFENDANTS’ REPLY ISO MOTION TO DISMISS
1
The United States Patent and Trademark Office and its Acting Director (collectively,
“USPTO”) respectfully submit the following reply pursuant to Local Rule CV-7(f) in support of
the USPTO’s Motion to Dismiss (“Motion”), ECF 17. As with Plaintiffs’ reply in support of their
motion for preliminary injunction, ECF 21, Plaintiffs level baseless accusations of bad faith, false
representations, irrationality, and obfuscation throughout their opposition, ECF 40. This
unfounded rhetoric, however, does not alter analysis of the fundamental questions presented by
the USPTO’s Motion: whether Plaintiffs have demonstrated standing or exhaustion of
administrative remedies sufficient to maintain this action. They have not.
As set forth in the USPTO’s Motion, Plaintiffs have not met their burden to establish that
it is their rights or injury at issue in this litigation in view of agreements obligating them to assign
their ownership rights to another party. Nor, even accepting Plaintiffs’ recitation of the procedural
history as true, have Plaintiffs established that they have exhausted all administrative remedies
with respect to the ’288 application. Plaintiffs’ Complaint should be dismissed.
I.
Plaintiffs Conflate Allegations Made in Their Preliminary Injunction Motion with
the Allegations of Their Complaint and Offer Improper Sur-Sur-Reply
Though Plaintiffs reference actions and activities that took place during the prosecution of
the ’382, ’669, and ’555 applications in connection with their motion for preliminary injunction,
the only allegations actually set forth in the Complaint relate to the ’288 application. Plaintiffs
effectively concede as much, identifying their only reference as occurring within documents
submitted to the USPTO in connection with the ’288 application and attached as an exhibit to the
Complaint. But rather than supporting its claims relating to the ’288 application, Plaintiffs devote
much of their opposition to discussion of these other applications and response to arguments made
in connection with the pending motion for preliminary injunction. This is effectively an improper
sur-sur-reply that should be disregarded by the Court.
Case 4:25-cv-00423-JCB-JDL Document 31 Filed 07/25/25 Page 2 of 13 PageID #:
453
Appx0388
DEFENDANTS’ REPLY ISO MOTION TO DISMISS
2
It is the Complaint itself, and the allegations contained therein, that must be tested for
sufficiency in connection with a motion to dismiss. Blue Star Sports Holdings, Inc. v. Federal
Insurance Co., 658 F.Supp.3d 3511, 356 (E.D. Tex. 2023) (quoting Iqbal, 556 U.S. at 664)
(“Second, the court ‘considers the factual allegations [in the complaint] to determine if they
plausibly suggest entitlement to relief.”). And none of Plaintiffs’ discussion about applications
other than the ’288 is relevant to the Court’s consideration of the USPTO’s Motion to Dismiss.
To be clear, the USPTO contests both the legal and factual allegations present in Plaintiffs’
opposition with respect to applications other than the ’288 application. And the USPTO submits
that any amendment to the Complaint would be futile with respect to those other applications for
at least the reasons that this Motion should be granted. Specifically, Plaintiffs have not pled
ownership rights sufficient to establish standing and, moreover, the differing procedural histories
and individualized actions in each of those other applications tends to refute, rather than show, that
administrative remedies have been exhausted. No such amendment has been attempted, however,
and Plaintiffs’ improper sur-sur-reply via opposition should be disregarded.
II.
Plaintiffs Bear the Burden of Establishing Standing and They Have Failed
Plaintiffs again complain of alleged “contradictory positions” taken by the USPTO with
respect to standing. ECF 8-9. But it is indisputably their burden to establish standing, and it is
thus their burden to clear any inconsistency or uncertainty through their pleading. This is
especially true where it is Plaintiffs’ actions—and inaction—that has created the uncertainty
surrounding the ownership rights in the ’288 application and resulting lack of standing here.
Plaintiffs’ unwillingness to be forthcoming—before the USPTO—about who actually has
ownership rights, what obligations there are on the ownership rights, and to whom and how they
arose, is what led to much of Plaintiffs’ issues with respect to their questioned certification of
Case 4:25-cv-00423-JCB-JDL Document 31 Filed 07/25/25 Page 3 of 13 PageID #:
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DEFENDANTS’ REPLY ISO MOTION TO DISMISS
3
entitlement to micro entity status. And their unwillingness to be forthcoming in their pleading here
is what prevents them from establishing standing to proceed with their claims.
Plaintiffs are correct that they, as inventors and applicants, are generally presumed to be
the owner of an application. But that presumption doesn’t survive the allegations or subject matter
of Plaintiffs’ Complaint. Specifically, the language of an alleged obligation to assign matters, as
does any conditionality, for the purpose of establishing ownership and thus standing. See, e.g.,
Omni MedSci, Inc. v. Apple Inc., 7 F.4th 1148, 1152 (Fed. Cir. 2021) (“A patent assignment clause
may presently assign a to-be-issued patent automatically—in which case no further acts to
effectuate the assignment are necessary—or may merely promise to assign the patent in the future.
Which type of assignment is intended depends on the contractual language.”) (internal citations
omitted). Having asserted to the USPTO—and pled here—that ‘288 application is under an
obligation to be assigned, Plaintiffs must affirmatively plead sufficient facts to demonstrate that
they retained sufficient ownership to maintain this action. Though the plaintiff in Omni MedSci
was able to avoid dismissal, it did so by reference to and analysis of the specific terms and language
of the obligation to assign in question. Id. Merely averring that they have retained ownership—
particularly where the dispute before the USPTO relating to entitlement to micro entity status
centered on the details of such an alleged obligation—does not meet Plaintiffs’ burden here.
Plaintiffs’ mischaracterization of the USPTO’s position as no one retaining rights in the
’288 application signals Plaintiffs’ misunderstanding of the problem they have created for
themselves with respect to standing. The ultimate harm alleged here—purportedly resulting from
the Notice of Payment Deficiency—is fundamentally financial, whether looked at from the
perspective of fees or activities in connection with the prosecution, or with respect to any alleged
harms relating to deprivation of prospective property rights in a speculative patent. The question
Case 4:25-cv-00423-JCB-JDL Document 31 Filed 07/25/25 Page 4 of 13 PageID #:
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DEFENDANTS’ REPLY ISO MOTION TO DISMISS
4
is thus, whose rights were harmed, assuming any cognizable harm resulted from the Notice of
Payment Deficiency. If Plaintiffs are correct in their assertion that they are entitled to micro entity
status because certain of their applications—including the ’288 application—should not be
counted towards their respective limits due to obligations to assign, then it is not clear Plaintiffs
possess the necessary rights to proceed here. Plaintiffs have certainly not established they do.
Depending on the language and terms of any obligation to assign, ownership of rights in the
application would rest with the assignee and any harm would be to the assignee. And conversely,
if Plaintiffs possess the necessary rights to proceed, it is not clear that any obligation or assignment
exists that would allow them to validly claim micro entity status before the USPTO. Plaintiffs
have effectively created a Schrödinger’s box of ownership rights in the ’288 application that must
be resolved before any action proceeds.
Plaintiffs assert error in the USPTO’s claim that the issue of ownership is “no mere
technicality.” ECF 30 at 9. But accepting Plaintiffs’ allegations that harm flowed from the Notice
of Payment Deficiency in the ’288 application, the beginning of the chain—including their claim
to micro entity status—begins with Plaintiffs’ assertion that all ownership rights have been or will
be assigned to another party. Id. As explained in the MPEP, “[i]n order for [§1.29(b)] to apply,
not only must all ownership rights have been assigned, or be under an existing obligation by
contract or law to be assigned, the assignment or obligation to assign must have resulted from
employment with a previous employer.” MPEP 509.04(a) at R-07.2022 (“Gross Income Basis for
Micro Entity Status”). Thus, §1.29(b) requires that the inventor be a “former employee of the
previous employer, and that the assignment or obligation to assign was the result of such previous
employment as opposed to the applicant’s, inventor’s, or joint inventor’s own enterprise.” Id.
Case 4:25-cv-00423-JCB-JDL Document 31 Filed 07/25/25 Page 5 of 13 PageID #:
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DEFENDANTS’ REPLY ISO MOTION TO DISMISS
5
Plaintiffs’ claim of standing here is inconsistent with the idea that sufficient rights have or will be
transferred through an existing obligation.
In response, Plaintiffs appear to be drawing a distinction in whether the obligation to assign
sufficient to satisfy §1.29(b) must be to the former employer itself or simply as a result of their
former employment. ECF 30 at 9-10. To the extent Plaintiffs are taking the position that they
could, for the purposes of §1.29(b), claim an obligation to assign an application to some entity
other than their former employer—such as an assignment back to themselves or an entity
controlled by the inventors—but as a “result” of their former employment, that position is clearly
at odds with the purpose and requirements of §1.29(b). And it merely evidences Plaintiffs’
gamesmanship, further clouding ownership such that Plaintiffs have not—on the record set forth
in the Complaint—established that they have standing to proceed.
Plaintiffs’ Complaint should be dismissed for lack of standing.
III.
Plaintiffs Have Not Exhausted All Administrative Remedies Related to the ’288
Application
Plaintiffs’ scattershot response regarding exhaustion of administrative remedies introduces
new theories—not present in the Complaint—relating to the alleged final determination and
obscures the ultimate reason for the abandonment of the ’288 application. None, however,
demonstrate the requisite final agency action necessary for Plaintiffs to maintain this action.
Plaintiffs reiterate their contention that the Notice of Payment Deficiency is a final agency
action subject to judicial review, with the added and unpled contention that the Notice violated 35
U.S.C. 132(a) and constituted a rejection under that provision. ECF 30 at 9-10. Plaintiffs are
incorrect. But under any theory, the Notice is not a final agency action nor does it—or any of the
communications that followed—indicate an exhaustion of administrative remedies by Plaintiffs.
Case 4:25-cv-00423-JCB-JDL Document 31 Filed 07/25/25 Page 6 of 13 PageID #:
457
Appx0392
DEFENDANTS’ REPLY ISO MOTION TO DISMISS
6
As set forth in the USPTO’s Motion to Dismiss, the Notice of Payment Deficiency provided
Plaintiffs with two options: (i) withdraw their claim of micro entity status and pay the appropriate
fee or (ii) provide sufficient information to support entitlement to micro entity status. See, e.g.,
ECF 1-1 at 3–4, 8–9, and 14–15. And each subsequent communication provided Plaintiffs the
opportunity to submit additional information in support of their micro entity certification,
explaining the process for submitting such information. Id. No final determination was made in
the Notice as to the status of either the ’288 application or the claimed entitlement to micro entity
status. And though Plaintiffs’ communications in response to the Notice were deficient—both
procedurally and substantively due to their unwillingness to disclose the basis for their claimed
entitlement—their very submission is an acknowledgement of the lack of finality and availability
of administrative remedies with respect to the Notice.
While consequences ultimately flowed from Plaintiffs failure to respond to the Notice—
as opposed to the Notice itself—the Notice was not the consummation of the agency’s decision-
making process. To accept Plaintiffs’ argument that a request for additional information or
notification that fees were due, any of which would have the effect of pausing examination of an
application until the request was responded to, constitute a “consummation” of the USPTO’s
decision-making process would subject virtually every step of patent examination and prosecution
to immediate judicial review. This view is unsupported by 5 U.S.C. 704, and Plaintiffs’ citation to
Sackett v. EPA, 566 U.S. 120, 129 (2012), is entirely inapposite for Plaintiffs’ position.
Environmental Protection Agency Compliance Orders are not analogous to a Notice of Fee
Deficiency, and the identification of a fee owed with the opportunity to respond as whether it was
properly calculated, is not “strong-arming” compliance as in Sackett. And finding so would be an
untenable circumvention of the administrative process and patent prosecution procedure.
Case 4:25-cv-00423-JCB-JDL Document 31 Filed 07/25/25 Page 7 of 13 PageID #:
458
Appx0393
DEFENDANTS’ REPLY ISO MOTION TO DISMISS
7
Plaintiffs’ assertion that Notices of Fee Deficiency in their entirety are illegal fares no better
and would still not serve to justify the avoidance of available administrative remedies. Plaintiffs
continue to propound an inappropriately broad view of the Paperwork Reduction Act, but
Plaintiffs’ claims in this regard fail for at least the reason that the Act and associated regulations
“expressly exclude from coverage individualized communications” like the Notice of Payment
Deficiency. See Hyatt v. OMB, 998 F.3d 423, 426 (9th Cir. 2021). Despite Plaintiffs’ assertion
that this is a “false” statement, the fact that more than 10 applicants in addition to Plaintiffs were
found to have submitted questionable certifications for micro entity status does not place these
individual communications, specific to the applications in which they were entered based on
information specific to those applicants, within the purview of the PRA.
Nor does the Notice of Fee Deficiency or any of the following communications constitute
an expansion, improperly or otherwise, of the micro entity requirements that would obviate the
need for Plaintiffs to exhaust available administrative remedies. What the Notice called for—to
the extent Plaintiffs wanted to maintain micro entity status and specific to Plaintiffs’ claims of
entitlement—was information supporting compliance with the relevance statutes and regulations.
And Plaintiffs’ consistently responded that they need not provide any information regarding
compliance with the regulations. Despite Plaintiffs’ ill-founded claims of prejudice against
“independent inventors and small businesses,” ECF 30 at 24, there is no evidence that Plaintiffs’
assertion of entitlement to micro entity status was challenged because of employment by or
assignment to an apparent family member. But rather the Notice of Fee Deficiency identifies
Plaintiffs as being listed on numerous applications, in excess of the micro entity limit, with no
recorded assignments. And when offered the opportunity to respond, Plaintiffs provided no
coherent explanation for why the ’288 application should be afforded micro entity status and no
Case 4:25-cv-00423-JCB-JDL Document 31 Filed 07/25/25 Page 8 of 13 PageID #:
459
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DEFENDANTS’ REPLY ISO MOTION TO DISMISS
8
evidence whatsoever that they were either former employees of the purported future assignees or
that they were under any such obligation as a result of their former employment. Simply put, it is
not a “new requirement” to require compliance with an existing regulation.
Fundamentally, Plaintiffs ignore that the actual reason for abandonment was Plaintiffs’
failure to timely respond to the Notice of Deficiency. While Plaintiffs now apparently characterize
their November 19, 2024, Letter as a petition to the Director under 1.181 (ECF 30 at 19,
referencing MPEP provisions relating to Petitions to the Director), that is not how Plaintiffs
characterized their response at the time. ECF 1-1 at 24. Rather, Plaintiffs were purporting to
respond to the Notice of Payment Deficiency, offering untimely but substantive and procedural
responses to the Notice. Id. Presumably Plaintiffs believed that to be a satisfactory response to
the Notice when they submitted it.
As noted in the letter following the Notice of Abandonment, that November 19, 2024,
Letter was rejected as failing to be accompanied by the requisite extension fee and that the time
for permissible extensions had expired. Id. at 24. To the extent Plaintiffs disagreed with the
rejection of their response, believing it timely, they could have requested that the holding of
abandonment be withdrawn identifying the purported error in rejecting the submission. Id. at 59.
Or Plaintiffs could have petitioned to revive the application pursuant to 37 C.F.R. § 1.137. Id.
Plaintiffs did neither.
And neither of Plaintiffs’ arguments for their failure to attempt to revive their application
have any merit. Plaintiffs are incorrect that a petition under 37 C.F.R. § 1.137 demands a “false
concession.” ECF 30 at 18. The paper called for in connection with such a petition is a response
to the Notice of Payment Deficiency, which—if Plaintiffs believe themselves to meet the
requirements for micro entity status—need not be any “concession” related to that status. Plaintiffs
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DEFENDANTS’ REPLY ISO MOTION TO DISMISS
9
are also incorrect that their cited case law, id. at 20, supports a finding that such a petition was not
required here. With respect to Hyatt v. United States PTO, Plaintiffs ignore both the context of the
court’s statement and the immediately next sentence stating that “an applicant who has received a
notice of abandonment may request the examiner to reconsider the holding of abandonment, may
file a petition for the USPTO to review its holding of abandonment, or both.…” 551 F. Supp. 3d
600, 604 (E.D. Va. 2021). And Plaintiffs’ attempt at distinguishing Winfrey does not serve to
exempt Plaintiffs’ from the Federal Circuit’s guidance. Winfrey v. United States DOC, PTO, No.
2024-1260, 2024 U.S. App. LEXIS 24311 (Fed. Cir. 2024). Like Ms. Winfrey, Plaintiffs’ “fail to
present any evidence that [they] filed a petition with the USPTO to revive [their] application or
challenge its abandonment determination.” Id. at *7.
Finally, while each of the foregoing arguments apply with equal force to Plaintiffs’ other
applications (beyond the ’288 application), the Court need not consider those applications with
respect to the present Motion. Plaintiffs’ arguments for those applications being within the scope
of the Complaint rest on mere reference to those applications within an exhibit to the Complaint
and the availability of those applications to the USPTO. Neither meets the pleading requirements
of this Court. That the USPTO, in an abundance of caution and in response to Plaintiffs’ overbroad
requests for relief in the Complaint and Motion for Preliminary Injunction, internally designated
Plaintiffs’ applications as being involved in a court proceeding is not a concession or an admission
with respect to the scope of Plaintiffs’ claims.
IV.
Conclusion
Plaintiffs’ steadfast refusal to provide any information regarding who ultimately possesses
ownership rights in the ’288 application—and how those rights were or are to be assigned—is as
fatal to its claims here as it was before the USPTO. And in any event, Plaintiffs failed to exhaust
Case 4:25-cv-00423-JCB-JDL Document 31 Filed 07/25/25 Page 10 of 13 PageID #:
461
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DEFENDANTS’ REPLY ISO MOTION TO DISMISS
10
all administrative remedies with respect to their prosecution of the ’288 application before seeking
judicial intervention. For the foregoing reasons, Plaintiffs’ Complaint should be dismissed.
Case 4:25-cv-00423-JCB-JDL Document 31 Filed 07/25/25 Page 11 of 13 PageID #:
462
Appx0397
DEFENDANTS’ REPLY ISO MOTION TO DISMISS
11
July 25, 2025
Of Counsel:
WILLIAM LA MARCA
Special Counsel for Intellectual Property
Litigation
OMAR AMIN
Associate Solicitor
United States Patent and Trademark Office
Respectfully submitted,
JAY R. COMBS
Acting United States Attorney
JAMES GARLAND GILLINGHAM
Assistant United States Attorney
BRETT A. SHUMATE
Assistant Attorney General
SCOTT BOLDEN
Director
s/ Philip Charles Sternhell
PHILIP CHARLES STERNHELL (DC Bar)
Assistant Director
Commercial Litigation Branch
Civil Division
Department of Justice
Washington, D.C. 20530
Telephone:
(202) 353-0522
Facsimile:
(202) 307-0345
Email:
philip.c.sternhell@usdoj.gov
Case 4:25-cv-00423-JCB-JDL Document 31 Filed 07/25/25 Page 12 of 13 PageID #:
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Appx0398
12
CERTIFICATE OF SERVICE
I hereby certify that on July 25, 2025, I electronically filed the foregoing document with
the Clerk of the Court using the ECF system which will send notification of such filing to those
persons on the Court’s electronic filing system.
/s/ Philip Charles Sternhell
PHILIP CHARLES STERNHELL
Assistant Director
Case 4:25-cv-00423-JCB-JDL Document 31 Filed 07/25/25 Page 13 of 13 PageID #:
464
Appx0399
1
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
ASHLESHA A. NESARIKAR,
ANIKA A. NESARIKAR, and
ABHIJIT R. NESARIKAR,
Plaintiffs,
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
Case No. 4:25-cv-00423-JCB-JDL
-v-
THE UNITED STATES PATENT AND
TRADEMARK OFFICE and
COKE MORGAN STEWART, in her
official capacity as the Acting Director of
the United States Patent and Trademark
Office,
Defendants.
Plaintiffs’ Sur-reply in Opposition to Defendants’ Motion to Dismiss
Case 4:25-cv-00423-JCB-JDL Document 32 Filed 08/01/25 Page 1 of 12 PageID #:
465
Appx0400
2
Defendants misrepresent Inventors’ arguments regarding 35 USC 132(a). Further, Defendants err
in alleging that violations of 35 USC 132(a) are “unpled” (Doc. 31, pg. 6) as 35 USC 132 grants
authority to 37 CFR 1.104, which Defendants cite in the “Background” (of Doc. 17) as a process
under which “a patent application is examined” (Doc. 17, pg. 6) (Defendants further cite 37
CFR 1.105 reciting, “to properly examine or treat the matter” (e.g., Doc. 16, pg. 12)). The
Complaint (Doc. 1) relies on 35 USC 132(a), e.g., at least by citing 37 CFR 1.104(d)(2) (Doc. 1,
pg. 10-12) to indicate violation of due process. The Code of Federal Regulations (e.g., in “A
point in time eCFR system”) states “Authority: Secs. 1.101 to 1.108 also issued under 35 U.S.C.
131, 132.”1). Defendants violated 35 USC 132(a).
Defendants fail to deny that: the juxtapositions (of examinations under 35 USC 132(a)) (Doc. 30,
pg. 11) indicate violations of Inventors’ rights; at the time of the Notice of Payment Deficiency,
Defendants lacked published and vetted processes to duly and consistently evaluate responses
under (II) (e.g., Doc. 30, pg. 11 and 14); requiring Inventors to file petitions as a precondition for
Defendants to respond to previously-filed outstanding petitions is irrational (e.g., Doc. 30, pg. 3
and 5); Brantley materially misrepresented the alleged publication of alleged application
10165455 (Doc. 1, pg. 10); and Brantley violated 37 CFR 1.104(d)(2) (Doc. 1, pg. 10-12). The
failures indicate at least violation of due process resulting in harm to Inventors’ intellectual
property.
Defendants’ allegation of “improper sur-sur-reply” (Doc. 31, pg. 2) is erroneous and an attempt
to evade relevant context and the breadth of harm regarding Defendants’ actions and alleged
decision-making in ‘288. While Defendants hope to avoid addressing “discussion of these other
1https://www.ecfr.gov/current/title-37/chapter-I/subchapter-A/part-1/subpart-B/subject-group-
ECFR4f6faa3f96af06d
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3
applications and response to arguments made in connection with the pending motion for
preliminary injunction” (Doc. 31, pg. 2), doing so disregards both evidence of exhaustion of
administrative remedies in ‘288 (e.g., see Doc. 30, pg. 18) and evidence of harm to multiple
applications arising out of Defendants’ actions challenged in the Complaint. Further, Defendants
already alleged facts of other applications in arriving at actions now under review. For example,
in their 08/08/2024 and 10/23/2024 petition decisions, Defendants introduced other applications,
including ‘555, as part of their alleged decision-making process in ‘288 (see Doc. 1-1, pg. 5-15).
Further, Defendants argued regarding “Prosecution of the ’382, ’669, and ’555 Applications” in
the Motion to Dismiss (Doc. 17, pg. 11), and Defendants related the Motion for Injunction (Doc.
2) and the Motion to Dismiss by arguing for dismissal of the Complaint in the course of
opposing the Motion for Injunction (Doc. 16, pg. 23-24 and 27-28). Inventors maintain the prior
arguments and evidence. Inventors respectfully request that the Court consider Inventors’ prior
arguments and evidence as they show harm to Inventors by Defendants.
Standing
Until an assignment, the rights in an invention belong to the inventors (see Doc. 30, pg. 9). While
Defendants concede that “Plaintiffs are correct that they, as inventors and applicants, are
generally presumed to be the owner of an application” (Doc. 31, pg. 4), Defendants’ arguments
evade that presumption. Defendants erroneously invoke Omni MedSci, Inc. v. Apple Inc., 7 F.4th
1148, 1152 (Fed. Cir. 2021); while Omni’s patent ownership and resultant standing were
challenged, Omni was not the inventor. Further, Omni supports Inventors’ standing, with the
Federal Circuit noting: ““In most circumstances, an inventor must expressly grant his rights in an
invention to his employer if the employer is to obtain those rights.” Bd. Of Trustees of Leland
Stanford Jr. Univ. v. Roche Mol. Sys., Inc., 563 U.S. 776, 786 (2011) (“Roche”). Further, we note
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4
that the general rule is that rights in an invention belong to the inventor. Id. At 785”. In addition
to evading the presumption, Defendants’ argument that “[m]erely averring that they have
retained ownership—particularly where the dispute before the USPTO relating to entitlement to
micro entity status centered on the details of such an alleged obligation—does not meet
Plaintiffs’ burden” (Doc. 31, pg. 4) shows that Defendants attempt to evade judicial review. As
current owners, Inventors have standing. Defendants’ reference to “the dispute before the
USPTO”, in which Defendants asserted that “no assignment has been recorded” for ‘288 (Doc.
1-1, pg. 13), validates the presumption. The presumption has been upheld by the Supreme Court
in Board of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems, Inc., 563
U.S. 776 (2011) and adopted in 37 CFR 3.73(a).
Defendants’ arguments regarding “a distinction in whether the obligation to assign sufficient to
satisfy §1.29(b) must be to the former employer itself or simply as a result of their former
employment” (Doc. 31, pg. 6) further show Defendants’ misrepresentations, unlawful actions,
and uninformed stance out of touch with small businesses. The Complaint (Doc. 1, pg. 11-12)
shows Defendants’ ad hoc and “newly introduc[ed] alleged requirements” including “to assign
rights in the previously filed applications to a prior employer”. The Complaint further shows
Defendants’ failure to comply with 37 CFR 1.104(d)(2) and Defendants’ material
misrepresentations, including that of the micro entity certification regarding obligation to assign
“all ownership rights, as a result of the applicant’s previous employment” (Doc. 1, pg. 11-12).
These actions denied Inventors due process and are unlawful under at least 35 USC 123(b), 35
USC 123(e), and 35 USC 132(a), yet Defendants evade the substance of the Complaint and
continue the material misrepresentations (e.g., Doc. 17, pg. 15). Instead, Defendants rely on
conjecture to evade the facts of the current case already presented before the USPTO. Inventors
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evidenced an assignment (Doc. 1-2, pg. 7-8; Doc. 1-1, pg. 49, 52, and 54) resulting from
Inventors’ prior employment and recorded with the USPTO well before the issuance of the
Notice of Payment Deficiency; however, Defendants objected in the 10/23/2024 petition decision
that the “recorded assignment [in] Application No. 17/906,844 [shows] the assignee is Shalaka
A. Nesarikar, not the prior employers of the joint inventors, My Dentist, PLLC and Advantech
Consulting, Inc” (Doc. 1-1, pg. 14), violating at least 35 USC 123(b) and 35 USC 123(e).
Further, Defendants’ unilateral and repeated insistence on assignment to a prior employer (see
Doc. 1-1, e.g., in the 10/23/2024 petition decision alone: “assign ownership rights… to a former
employer in order to demonstrate entitlement to the section 1.29(b) exception”, “assigned to a
previous employer”, “assign rights in a sufficient number of prior-filed applications to a prior
employer”, “actually assigned to a previous/former employer”, and “assign rights in a sufficient
number of the previously filed applications to a prior employer”) shows that Defendants are out
of touch with not only small business, but also business operations generally, despite recognition
of those business operations by the Federal Circuit and Congress (e.g., 35 USC 123(b)). Chou v.
Univ. of Chicago, 254 F.3d 1347 (Fed. Cir. 2001) acknowledged employment terms for a
university that included that an employee’s inventions “shall be assigned, as determined by the
University, to the University, to an organization sponsoring the activities, or to an outside
organization deemed capable of administering patents”. Defendants erroneously rely on the
objections: “...assigns rights to an apparent family member who resides at the same address”
(Doc. 17, pg. 15 and Doc. 16, pg. 24) and “... who shares the same last name and resides at the
same address as all Plaintiffs” (Doc. 16, pg. 14), further confirming the extent to which
Defendants are out of touch with small businesses.
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Exhaustion of Administrative Remedies
Defendants misrepresent the Notice of Payment Deficiency to obscure exhaustion of
administrative remedies. Defendants state “No final determination was made in the Notice as to
the status of either the ’288 application or the claimed entitlement to micro entity status” (Doc.
31, pg. 7). Defendants’ actions of deciding an application was “not in condition for examination”
(Doc. 1-1, pg. 3) and removing an application from the examination queue show final decisions
on application status, particularly as they reverse the previous determination of application status
“Ready for Examination” (see Doc. 30-2, pg. 32). Further, Defendants justified the actions by
deciding a payment deficiency that could only have existed if Defendants conclusively decided,
at the time of the Notice of Payment Deficiency, that micro entity certifications were erroneous.
Further, Defendants’ objection to subjecting “virtually every step of patent examination and
prosecution to immediate judicial review” (Doc. 31, pg. 7) addresses neither Inventors’
arguments nor the facts of this case. The Notice of Payment Deficiency is not any “request for
additional information or notification that fees were due” (Doc. 31, pg. 7). Inventors’ Complaint
and responses show that with the Notice of Payment Deficiency specifically, the USPTO decided
new and unlawful policy (e.g., Doc. 30, pg. 15 and 16) and lacked published and vetted
processes to duly and consistently evaluate responses under (II), which is further highlighted in
juxtaposition to previous communications in ‘288 (e.g., see Doc. 30, pg. 10-12). On the other
hand, for example, a first office action on claim patentability is part of the published and vetted
processes for examination. Further, Defendants falsely assert that the Notice of Payment
Deficiency had “identification of a fee owed with the opportunity to respond as whether it was
properly calculated” (Doc. 31, pg. 7). The Notice of Payment Deficiency represented otherwise,
including “Because [of] the deficient payments… this application is not in condition for
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examination” (Doc. 1-1, pg. 3) and “The application has been removed from the examiner’s
docket” (Doc. 1-1 pg. 4), indicating consummation of the decision-making process. Regardless,
Defendants fail to address that “[t]he mere possibility that an agency might reconsider [an
agency action]... and invited contentions of inaccuracy does not suffice to make an otherwise
final agency action nonfinal” (Sackett v. EPA, 566 U.S. 120 (2012) (see Doc. 30, pg. 13).
Defendants misrepresent that the “Notice of Fee Deficiency identifies Plaintiffs as being listed
on numerous applications, in excess of the micro entity limit, with no recorded assignments”
(Doc. 31, pg. 8). The Notice of Payment Deficiency does not mention assignments. Further,
Defendants repeatedly disregarded Inventors’ citations to the USPTO’s own website: “There is
no limit on the number of previously-filed patent applications that may be excluded from the
"four previously filed application" limit…” (Doc. 1-1, pg. 25 and 43; and Doc. 21, pg. 10).
Defendants assert “there is no evidence that … micro entity status was challenged because of
employment by or assignment to an apparent family member” (Doc. 31, pg. 8); however,
Defendants object: “...assigns rights to an apparent family member who resides at the same
address” (Doc. 17, pg. 15 and Doc. 16, pg. 24) and “...who shares the same last name and resides
at the same address as all Plaintiffs” (Doc. 16, pg. 14).
Further, Defendants argue “Plaintiffs now apparently characterize their November 19, 2024,
Letter as a petition…” (Doc. 31, pg. 9) while disregarding that: the USPTO called Inventors and
provided ad hoc guidance on 05/08/2024 to file a response with “Attn: Office of Petitions, Mail
Stop Petitions, …” (Doc. 1, pg. 6-7) and the USPTO recorded communications as petitions (e.g.,
Doc. 30-2, pg. 17 and 21, stating “Petition Decision”; Doc. 30-2, pg. 30-31; and Doc. 17, pg. 6).
Regardless, Defendants’ post hoc characterizations of responses, the ad hoc guidance on
05/08/2024, and the Notice of Payment Deficiency’s lack of guidance on responses under (II)
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(particularly in light of the juxtapositions against Doc. 30-2, pg. 3-5; see Doc. 30, pg. 4, 5, 10,
and 11) indicate not only that there was no published and vetted process, but also that the
USPTO provisioned only for concessions under (I) in the Notice of Payment Deficiency.
Defendants falsely assert that “Plaintiffs’ consistently responded that they need not provide any
information regarding compliance with the regulations” (Doc. 31, pg. 8). Defendants appear to
erroneously assert newly alleged requirements in order “to maintain micro entity status” as
“regulations” (Doc. 31, pg 8). Defendants, “under the guise of interpreting a regulation…create
de facto a new regulation” (Christensen v. Harris County, 529 U.S. 576 (2000)). Defendants’
alleged “regulations” are unlawful at least under 35 USC 123(e). Further, Doc. 26-1 is improper,
including Defendants’ choice for time and place of consideration.
Defendants falsely assert that Inventors “[assert] that Notices of Fee Deficiency in their entirety
are illegal…” (Doc. 31, pg. 8). Defendants misrepresent that Inventors challenge all USPTO fee
deficiency notices. Inventors challenge the legality of the Notice of Payment Deficiency that is
the subject of the Complaint. The Notice of Payment Deficiency, at least as identical information
requests sent to many people, is illegal (Doc. 21-1; Doc. 2-5, pg. 3-4; Doc. 30-3, pg. 6-7).
Defendants misrepresent in asserting “[t]he paper called for in connection with …. a [37 CFR
1.137] petition … need not be any “concession”” (Doc. 31. pg. 9). Inventors timely responded to
the Notice of Payment Deficiency on May 23, 2024. As Defendants lacked published and vetted
processes, Defendants failed to duly evaluate the May 23, 2024 response under (II) (Doc. 1, pg.
4-14). Defendants violated Inventors’ rights, including due process rights. Petitioning for
“Revival on the basis of unintentional delay” under 37 CFR 1.137, while Defendants violated
Inventors’ rights, would allow Defendants to evade judicial review of the violations. Defendants’
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arguments regarding Hyatt v. United States PTO and Winfrey v. United States DOC, PTO do not
overcome Inventors’ showing of Defendants’ errors.
Inventors’ Standing Due at Least to Harm in ‘555 Flowing from Defendants’ Actions in ‘288
Defendants argue (Doc. 17, pg. 11) about at least ‘382, ‘669, and ‘555 in the Motion to Dismiss.
Defendants err in asserting “none of Plaintiffs’ discussion about applications other than the ’288
is relevant to the Court’s consideration of the USPTO’s Motion to Dismiss” (Doc. 31, pg. 3).
Defendants evade that Inventors have shown irrational actions at least in ‘288, from which arise
harm in all of Inventors’ applications. The Federal Circuit in Chou v. Univ. of Chicago, 254 F.3d
1347 (Fed. Cir. 2001) considered reputational harm related to patents as an indicator for Article
III standing, stating: “Chou argues that a reputational interest alone is enough to satisfy the
requirements of Article III standing. That assertion is not implausible. After all, being considered
an inventor of important subject matter is a mark of success in one's field, comparable to being
an author of an important scientific paper. Pecuniary consequences may well flow from being
designated as an inventor”. Inventors have been confidentially prospecting large industrial
conglomerates, nationally and internationally, regarding implementing ‘555. Inventors
respectfully submit a letter of interest from a German company in Ex. M, pg. 2 (in which
required redactions have been made to protect proprietary and personal information). Due in part
to the irrational response in the 10/23/2024 petition decision in ‘288, and to mitigate any
allegation of payment deficiency in ‘555, Inventors paid excess fees. Defendants falsely alleged
in a petition decision that Inventors made a payment (“fee deficiency submission”) indicative of
erroneous micro entity status in ‘555 (Doc. 2-4, pg. 4). Since the Notice of Payment Deficiency
(e.g., in ‘288), Defendants have made inexplicable allegations regarding ‘555 relying on
cascading errors and bad-faith arguments (e.g., see Doc. 28). Defendants’ actions in ‘288 caused
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harm in at least ‘555. Harm in ‘555 is financial at least due to harm to Inventors’ reputation.
Further, unlike ‘288, there is no obligation to assign ‘555 as a result of Inventors’ prior
employment. Defendants do not challenge that Inventors own ‘555.
Defendants Disregarded Known Errors
To evade accountability for the cascading errors and bad-faith arguments (e.g., see Doc. 28),
Defendants on the one hand allege “the Court need not consider [other] applications with respect
to the present Motion. Plaintiffs’ arguments for those applications being within the scope of the
Complaint [does not meet] the pleading requirements of this Court” (Doc. 31, pg. 10) and on the
other hand add the Complaint into the prosecution history of ‘555 (and Inventors’ other
applications) to justify changing the status of ‘555 to “Application Involved in Court
Proceedings 06/10/2025” (Ex. M, pg. 3 and 4) from “Appeal Brief (or Supplemental Brief)
Entered and Forwarded to Examiner 10/19/2024” (Doc. 2-4, pg. 2). The effects flowing from the
status change affects the processing of ‘555, which is in an advanced stage of prosecution.
Defendants’ alleged “abundance of caution” (Doc. 31, pg. 10) appears not to extend to
Defendants’ self-serving errors including: material misrepresentations, bad-faith arguments,
failure to answer petitions, violations of 37 CFR 1.104(d)(2), decision-making out of touch with
small businesses, and overt disregard for evidence in Defendants’ custody. Though Defendants
allege they provided “opportunity to respond” (Doc. 31, pg. 7 and 8), the self-serving errors and
lack of reasoned analysis contravenes due process—an attempt at “strong-arming” Inventors into
“voluntary compliance” (Doc. 30, pg.13; also see Doc. 28)—leaving Inventors with no option
but to seek judicial review.
Defendants disregard arguments regarding the Paperwork Reduction Act (PRA) and 5 USC 552a
in Doc. 30, pg. 21-22, which provide the Court with jurisdiction in this case. Further, Defendants
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do not deny that Defendants took administrative action against at least 10 persons by sending the
Notice of Payment Deficiency with the same demands for information to the at least 10 persons
(see a sample in Doc. 21-1; Doc 1-1, pg. 3; Doc. 2-5, pg. 3; and 30-3, pg. 6). Characterizing the
Notice of Payment Deficiency as “individual communications, specific to the applications in
which they were entered based on information specific to those applicants” (Doc. 31, pg. 8)
harms the public interest. Defendants’ assertions of “individualized communications” and
“individual communications” (Doc. 31, pg. 8) citing Hyatt v. OMB, 998 F.3d 423, 426 (9th Cir.
2021), contradicts Hyatt v. OMB itself which states “… preclusion of individualized
communications from the PRA accords with the statute’s emphasis on identical requests sent
to many people” [emphasis added]. If a generative AI (artificial intelligence) model were to
make such an assertion (e.g., to falsely assert that a source supports a statement2), Inventors
would identify and treat the model’s assertion as a hallucination.
Inventors respectfully request that the Court deny Defendants’ Motion to Dismiss. Inventors
respectfully request that the Court demand transparency from the USPTO and hold Defendants
accountable for statutory violations, including violations of due process rights, the Paperwork
Reduction Act, 35 USC 132, and 35 USC 123(e) as anything less would undermine public trust,
confidence, and understanding.
2Magesh, Varun, et al. "Hallucination‐Free? Assessing the Reliability of Leading AI Legal
Research Tools." Journal of Empirical Legal Studies 22.2 (2025): 216-242,
(https://onlinelibrary.wiley.com/doi/full/10.1111/jels.12413) states “In other words, if a model
makes a false statement or falsely asserts that a source supports a statement, that constitutes a
hallucination”. Similarly, if a generative AI model were to make the material misrepresentations
identified in the Complaint, Inventors would identify and treat the misrepresentations as
hallucinations.
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Certificate of Service: Ashlesha A. Nesarikar is filing this document with the court’s CM/ECF
system on August 01, 2025.
Certificate of Generative Artificial Intelligence Usage: Inventors use generative AI in the
ordinary course of work as described in the certification filed on April 29, 2025. Inventors, in
good faith, comply with L.R. CV-11(g).
Date: August 01, 2025
Respectfully submitted,
Inventors and Plaintiffs
____________________
____________________
____________________
Ashlesha A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
asedt0425@icloud.com
Anika A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
anedt0425@icloud.com
Abhijit R. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
edt0425@nesarikar.com
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1
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
ASHLESHA A. NESARIKAR, ANIKA A.
NESARIKAR, ABHIJIT R. NESARIKAR,
Plaintiffs,
v.
THE UNITED STATES PATENT AND
TRADEMARK
OFFICE,
ACTING
DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Defendants.
§
§
§
§
§
§
§
§
§
§
§
§
§
§
CIVIL ACTION NO. 4:25-CV-00423-JCB-
JDL
REPORT AND RECOMMENDATION OF
UNITED STATES MAGISTRATE JUDGE
Before the court is Defendants the United States Patent and Trademark Office (“USPTO”)
and Coke Morgan Stewart, Acting Director of the USPTO’s (collectively, “Defendants”) motion
to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(1). (Doc. No. 17.) Plaintiffs Ashlesha
A. Nesarikar, Anika A. Nesarikar, and Abhijit R. Nesarikar (collectively, “Plaintiffs”) filed a
response. (Doc. No. 30.) For the reasons explained herein, Defendants’ motion should be
GRANTED.
BACKGROUND
According to Plaintiffs’ complaint, Plaintiffs filed nonprovisional patent application No.
18/069,2881 (“’288 application”) with the USPTO on December 21, 2022. (Doc. No. 1, at 2.)
1 Plaintiffs’ response to Defendants’ motion to dismiss also includes allegations and arguments regarding three other
patent applications—16/591,555, 18/069,382, and 18/611,669. (Doc. No. 30.) But after liberally construing Plaintiffs’
complaint, Plaintiffs’ allegations only relate to the ’288 application. (Doc. No. 1.) Thus, the court disregards any
allegations related to patent applications other than the ’288 application.
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Shortly thereafter, Plaintiffs received a receipt of acceptance of their micro-entity certifications in
the ’288 application and receipt that their application was ready for examination. Id.
In April, Plaintiffs received a “Notice of Payment Deficiency” that stated their application
was not in a condition for examination and that the ’288 application had been removed from the
examiner’s docket. Id. Specifically, the notice referenced 37 C.F.R. § 1.29(a), which outlines the
certification requirements an applicant must establish to qualify for “micro entity status.” See 37
C.F.R. § 1.29(a). The notice informed Plaintiffs that because “the applicant, the inventor, or a joint
inventor was named on more than four previously filed patent applications” when the ’288
application was filed, Defendants considered such information “prima facie evidence” that
Plaintiffs’ micro-entity status certification was made in error. (Doc. No. 1-1, at 3.) As a result, the
notice left Plaintiffs a choice—they could admit that their certification was made in error and pay
any difference in the fees that would be due under the appropriate entity classification or,
alternatively, if Plaintiffs believed that their certification was correct, they could file evidence
sufficient to rebut the USPTO’s notice. Id. The notice gave Plaintiffs two months to comply. Id.
In May 2024, Plaintiffs called Joanne Burke—a paralegal specialist with the USPTO—to
discuss the notice. Id. at 6. Burke informed Plaintiffs that they needed to file responses to the notice
as miscellaneous letters in the USPTO’s patent center. Id. at 7. Plaintiffs filed the letters two weeks
later. Id. In August, Defendants sent Plaintiffs its first decision on petition, which Plaintiffs filed a
petition requesting review. Id. Defendants then sent a second decision on petition, which Plaintiffs
responded with another petition requesting review. Id.
Six months later, Shirene W. Brantley—an attorney advisor for the Office of Petitions—
sent Plaintiffs a “notice of abandonment,” due to Plaintiffs’ failure to timely file a reply to the
notice. (Doc. No. 1, at 7; Doc. No. 1-1, at 59).
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Then, Plaintiffs filed the instant lawsuit on April 24, 2025. Id. Although somewhat unclear,
Plaintiffs seem to allege claims under the due process clause of the Fifth Amendment, the
Paperwork Reduction Act (“PRA”), 35 U.S.C. § 132, and 35 U.S.C. § 123(e). Id. They request the
court to (1) reverse notices of payment deficiency in their patent applications; (2) order Defendants
to issue a written statement ratifying Plaintiffs’ micro-entity status; (3) order the reversal of adverse
consequences arising out of the notices of payment deficiency; (4) prohibit Defendants from
“aiding others in effectuating adverse consequences” arising out of the notices; (5) order that any
of Plaintiffs’ petitions to Defendants reversing adverse consequences be granted within thirty days
without charge or fee; and (6) prohibit Defendants from any future actions in Plaintiffs’
applications regarding Plaintiffs’ micro-entity status. Id. at 15–16.2
Defendants filed their motion to dismiss Plaintiffs’ complaint on June 10, 2025. (Doc. No.
17.) Plaintiffs filed a response (Doc. No. 30), to which Defendants filed a reply (Doc. No. 31).
LEGAL STANDARD
Before any federal court reaches a case’s merits, the court must address the “threshold
issue” of jurisdiction. Perez v. United States, 312, F.3d 191, 194 (5th Cir. 2002). One component
of this court’s jurisdiction, Article III standing, is so essential that the court can address its
sufficiency either by motion or the court can raise it sua sponte. See Ford v. NYLCare Health Plans
of Gulf Coast, Inc., 301 F.2d 329, 331–32 (5th Cir. 2002) (“Although Article III constitutional
standing was not raised by the parties . . . we must—where necessary—raise it sua sponte.”). To
satisfy Article III’s standing requirements, a plaintiff must satisfy three elements: (1) an “injury in
fact” that is “(a) concrete and particularized and (b) actual or imminent, not conjectural or
2 Plaintiffs have also filed a motion for a preliminary injunction on their claims. (Doc. No. 2.) Defendants filed a
response in opposition (Doc. No. 16), Plaintiffs filed a reply (Doc. No. 21), and Defendants filed a sur-reply (Doc.
No. 26).
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4
hypothetical”; (2) the injury is fairly traceable to the challenged action of the defendant; and (3)
“it is likely, as opposed to merely speculative,” that the injury will be redressed by a favorable
decision. Friends of the Earth, Ind. v. Laidlaw Env’t Servs. (TOC), Inc., 528 U.S. 167, 180–81
(2000).
DISCUSSION
I.
Standing
Defendants argue that Plaintiffs lack standing to pursue their claims because they have
either assigned, or are obligated to assign, all of their rights to the ’288 application to former
employers. (Doc. No. 17, at 15.) As a result, Defendants assert that Plaintiffs only assert harms to
prospective patents that flow to the owners of the ’288 application and not Plaintiffs themselves.
Id. Plaintiffs respond that they currently own all rights to the ’288 application. (Doc. No. 30, at 8.)
While Plaintiffs acknowledge that they currently maintain an “obligation to assign” their rights in
the ’288 application to former employers, this fact does not detract from Plaintiffs’ standing to
bring the instant lawsuit. Id. at 8–9. Defendants reply that even if Plaintiffs assert that the ’288
application is under an “obligation to be assigned,” Plaintiffs have nonetheless failed to allege
sufficient facts indicating that they have retained ownership of the rights to the application. (Doc.
No. 31, at 4).
As mentioned above, whether a plaintiff has standing is a threshold question in every case.
Warth v. Seldin, 422 U.S. 490, 498 (1975). To establish standing, the plaintiff must show “(1) an
injury in fact; (2) traceability; and (3) redressability.” Intellectual Tech LLC v. Zebra Technologies
Corp., 101 F.4th 807, 813 (Fed. Cir. 2024) (citing Lujan v. Defs. of Wildlife, 504 U.S. 555, 560–61
(1992)). The injury-in-fact element requires a plaintiff to show that their injury in fact is “actual or
imminent,” “concrete and particularized” “invasion of a legally protected interest.” See Lujan, 504
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U.S. at 560. The plaintiff must prove standing “with the manner and degree of evidence required
at the successive stages of the litigation.” Id. at 561.
In the patent context, a plaintiff can satisfy Article III’s standing requirement by showing
that he has an ownership interest or a concrete financial interest in the patent itself. Larson v.
Correct Craft, Inc., 569 F.3d 1319, 1325–26 (Fed. Cir. 2009). “An ownership interest can be shown
through an employment agreement with a patent assignment clause.” Delmar Systems, Inc. v.
Bardex Corp., No. 4:23-cv-02570, 2025 WL 296341, at *4 (S.D. Tex. Jan. 24, 2025). Such a clause
can assign a prospective patent automatically—“in which no further acts to effectuate the
assignment are necessary”—or it can promise to assign the patent in the future. Omni MedSci, Inc.
v. Apple Inc., 7 F.4th 1148, 1152 (Fed. Cir. 2021). Otherwise, the court generally presumes that
“rights in an invention belong to the inventor” unless the inventor “expressly grant[s] the rights in
an invention to his employer if the employer is to obtain those rights.” See id. (citing Bd. of Trs. of
Leland Stan. Jr. Univ. v. Roche Mol. Sys., Inc., 563 U.S. 776, 785–86 (2011)). “In construing the
substance of [an alleged] assignment, a court must carefully consider the intention of the parties
and the language of the grant.” Israel Bio-Eng’g Project v. Amgen, Inc., 475 F.3d 1256, 1265 (Fed.
Cir. 2007) (citing Vaupel Textilmaschinen KG v. Meccanica Euro Italia SPA, 944 F.2d 870, 874
(Fed. Cir. 1991)).
Alternatively, a plaintiff can demonstrate standing through a “concrete financial” or
“reputational” interest in the patent. Delmar, 2025 WL 296341, at *4 (citing Larson, 569 F.3d at
1326). To do so, the plaintiff must allege concrete and specific financial entitlements or losses
based on the listed inventorship of the patent. Id. Contingent interests are insufficient. Id. at 1327.
As an initial matter, Plaintiffs lack standing to bring any claims for violations to the PRA
in this case because the PRA does not create a private right of action for alleged violations of the
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statute. Smith v. United States, No. 08-10288, 2008 WL 5069783, at *1 (5th Cir. 2008)
(unpublished) (citing 44 U.S.C. § 3512; Sutton v. Providence St. Joseph Med. Ctr., 192 F.3d 826,
844 (9th Cir. 1999)); Ohio Stands Up! v. U.S. Dep’t of Health & Human Servs., 564 F. Supp. 3d
605, 613–14 (N.D. Ohio 2021) (gathering cases). The court finds no reason to diverge from these
court’s conclusions regarding the PRA. Thus, Plaintiffs have no standing to bring any claim for
violations of the PRA’s provisions.
As to Plaintiffs’ other claims, Plaintiffs have failed to sufficiently allege that they either
currently maintain an ownership interest, a concrete financial, or reputational interest in the ’288
patent. See Larson, 569 F.3d at 1325. It is unclear from Plaintiffs’ complaint and the parties’
briefing whether Plaintiffs have any remaining ownership interest in the ’288 patent. While
Plaintiffs allegations show that they informed Defendants that the individual Plaintiffs each had a
current obligation to assign their rights in the ’288 patent as a result of their prior employment
(Doc. No. 1-1, at 47), Plaintiffs did not include any of their employment agreements or the
associated patent assignment clauses. The court, therefore, cannot readily determine whether the
assignment created an automatic assignment or “merely a promise to assign . . . .”3 Abraxis
Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359, 1364, (Fed. Cir. 2010) (“Whether an assignment
of patent rights in an agreement is automatic or merely a promise to assign depends on the
contractual language itself.”).
Plaintiffs, moreover, have failed to plausibly allege that they have any financial or
reputational interest to base their standing. Because it is unclear whether Plaintiffs have assigned
3 If an employment contract “expressly conveys rights in future inventions, no further act is required once an invention
comes into being, and the transfer of title occurs by operation of law.” Abraxis, 625 F.3d at 1364 (citing DDB Techs.,
L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284, 1290 (Fed. Cir. 2008)). In contrast, contracts that obligate the
owner to grant rights in the future, however, do not vest legal title to the patents in the assignee. Id. at 1364–65 (citing
Bd. of Trs. of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 583 F.3d 832, 841–42 (Fed. Cir. 2009)).
Case 4:25-cv-00423-JCB-JDL Document 33 Filed 08/01/25 Page 6 of 8 PageID #:
486
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7
all of their interests in the ’288 patent to their former employers, it is likewise unclear whether
they have retained any financial interest in the patent. See Larson, 569 F.3d at 1326 (finding that
plaintiff lacks standing for correction of inventorship because he “affirmatively transferred title to
the patents to [defendant], and he stands to reap no benefit from a preexisting licensing or royalties
arrangement”). Furthermore, Plaintiffs have not made any attempt to allege that they have standing
based on a reputational interest. Accordingly, based on Plaintiffs’ complaint, Plaintiffs lack Article
III standing.4
II.
Motion for Preliminary Injunction
Plaintiffs have also moved for a preliminary injunction. (Doc. No. 2.) The equitable
injunctive power of federal courts will not be exercised save in exceptional cases to prevent
irreparable injury which is clear and imminent. See Heath v. City of New Orleans, 320 F. Supp.
545, 546 (E.D. La. 1970), aff’d, 435 F.2d 1307 (5th Cir. 1971). A party seeking a preliminary
injunction must establish four elements: (1) that there is a substantial likelihood the party will
prevail on the merits; (2) that a substantial threat exists that irreparable harm will result if the
injunction is not granted; (3) that the threatened injury outweighs the threatened harm to the
defendants; and (4) that the granting of the preliminary injunction will not disserve the public
interest. See Opulent Life Church v. City of Holly Springs, Miss., 697 F.3d 279, 288 (5th Cir. 2012).
Relief should only be granted if the party seeking relief has clearly carried the burden of persuasion
as to all four elements. Karaha Bodas Co. v. Perusahaan Pertambangan Minyak Dan Gas Bumi
Negara, 335 F.3d 357, 363 (5th Cir. 2003).
4 Because the court recommends dismissal of Plaintiffs’ claims for lack of standing, the court does not reach
Defendants’ alternative argument that Plaintiffs failed to exhaust all administrative remedies related to the ’288
application under the APA. (Doc. No. 17, at 15).
Case 4:25-cv-00423-JCB-JDL Document 33 Filed 08/01/25 Page 7 of 8 PageID #:
487
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8
Here, because all of Plaintiffs’ claims are subject to dismissal for the reasons discussed
herein, Plaintiffs cannot show a likelihood of success on the merits. Thus, Plaintiffs’ motion for a
preliminary injunction (Doc. No. 2) should be denied.
CONCLUSION
For the reasons stated above, the court RECOMMENDS that Defendants’ motion to
dismiss Plaintiffs’ complaint (Doc. No. 17) should be GRANTED. Plaintiffs’ claims should be
DISMISSED without prejudice for lack of standing and Plaintiffs’ motion for a preliminary
injunction (Doc. No. 2) should be DENIED.
Within fourteen (14) days after receipt of the Magistrate Judge’s Report, any party may
serve and file written objections to the findings and recommendations contained in the Report. A
party’s failure to file written objections to the findings, conclusions, and recommendations
contained in this Report within fourteen days after service shall bar that party from de novo review
by the district judge of those findings, conclusions, and recommendations and, except upon
grounds of plain error, from attacking on appeal the unobjected-to proposed factual findings and
legal conclusions accepted and adopted by the district court. Douglass v. United Servs. Auto. Ass’n,
79 F.3d 1415, 1430 (5th Cir. 1996) (en banc), superseded on other grounds by statute, 28 U.S.C.
§ 636(b)(1) (extending the time to file objections from ten to fourteen days).
So ORDERED and SIGNED this 1st day of August, 2025.
Case 4:25-cv-00423-JCB-JDL Document 33 Filed 08/01/25 Page 8 of 8 PageID #:
488
Appx0423
1
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
ASHLESHA A. NESARIKAR,
ANIKA A. NESARIKAR, and
ABHIJIT R. NESARIKAR,
Plaintiffs,
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Case No. 4:25-cv-00423-JCB-JDL
-v-
THE UNITED STATES PATENT AND
TRADEMARK OFFICE and
COKE MORGAN STEWART, in her
official capacity as the Acting Director of
the United States Patent and Trademark
Office,
Defendants.
Plaintiffs’ Objections to Report and Recommendations of United States Magistrate Judge
Case 4:25-cv-00423-JCB-JDL Document 34 Filed 08/06/25 Page 1 of 10 PageID #:
489
Appx0424
2
The Report And Recommendation Of United States Magistrate Judge (hereinafter Report)
disregards Inventors’ sur-reply (Doc. 32), which was filed prior to the filing of Report. For at
least this reason, Inventors respectfully submit that de novo review is required on both the
motion for preliminary injunction (Doc. 2) and the motion to dismiss (Doc. 17). Further, Report
does not consider Doc. 21 (with the exception of a mention in a footnote) nor Doc. 28. Report
erred in disregarding the Court record as a whole.
Inventors respectfully disagree with the finding and recommendations that Inventors lack
standing, that Defendants’ motion to dismiss should be granted, and that Inventors’ motion for
preliminary injunction should be denied. The inventors of a patent application are its owners
under Board of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems, Inc.,
563 U.S. 776 (2011). This presumption is adopted in 37 CFR 3.73. If Defendants argue Inventors
are not owners, it is Defendants’ burden to rebut that presumption, e.g., with evidence of an
assignment. Report errs in disregarding the presumptive ownership of Inventors without
evidence and based solely on Defendants’ speculation.
Report refers to Omni MedSci, Inc. v. Apple Inc., 7 F.4th 1148, 1152 (Fed. Cir. 2021), but in
Omni, Apple did not speculate about assignment. Apple states: “Dr. Islam [the inventor] could
not have assigned any rights to Omni because he never owned the asserted patents—as the
record demonstrates... ” [emphasis added] (Omni Doc. 182, pg. 10); “the University of
Michigan [the employer] was and remains the sole owner of the patents through an automatic
assignment, and Dr. Islam thus never had any rights that he could assign to Omni” (Omni Doc.
182, pg. 11); and “Bylaw 3.10 provides that:… Patents … shall be the property of the
University” [emphasis in original] (Omni Doc. 182, pg. 11). The parties in Omni, the court in
Omni, Report, and Defendants do not dispute that Dr. Islam, as the inventor, was the presumptive
Case 4:25-cv-00423-JCB-JDL Document 34 Filed 08/06/25 Page 2 of 10 PageID #:
490
Appx0425
3
owner. In order to overcome the presumption, Apple alleged an automatic assignment by Dr.
Islam to his employer and supported that allegation with evidence. The Omni court did not
entertain a motion to dismiss solely based on speculation, let alone adopt speculation at the
expense of the premise under which “patent law has operated” since 1790 (Board of Trustees of
the Leland Stanford Junior Univ. v. Roche Molecular Systems, Inc.).
Unlike in Omni, in ‘288 (application no. 18069288) there is no controversy between Inventors
and the future assignee. Inventors are left wondering about Report’s speculation, particularly in
the absence of an allegation or evidence of a controversy between Inventors and the future
assignee, citation to any applicable law, and reasoned analysis based on evidence from the record
before the Court.
Further, Report erroneously disregards evidence, including at least, e.g., an assignment as a
result of employment in ‘844 (application no. 17906844). The assignment in ’844 and the
obligation to assign in ‘288 result from the same employment (Doc. 1-1, pg. 47, 49, and 13). The
assignment states “I hereby sell and assign unto Shalaka A. Nesarikar…” [emphasis added]
(Doc. 1-2, pg. 7-8). Speculation of “automatic assignment” (as alleged in Omni) in Report
constitutes an allegation that the ‘844 assignment is at least superfluous or invalid. Report
provides neither citation to authority nor reasoned analysis based on evidence for the allegation.
There was no “automatic assignment” (as alleged in Omni) in ‘844 before the assignment to
Shalaka A. Nesarikar, and there is no “automatic assignment” (as alleged in Omni or as
speculated in Report) in ‘288. Further, Report is not in accordance with Rule 301 of the Federal
Rules of Evidence in relying on speculation of an “automatic assignment” (as alleged in Omni)
and invalidating the presumption of ownership without evidence. Report erred in adopting the
speculation without citation to authority, evidence, or reasoned analysis based on evidence.
Case 4:25-cv-00423-JCB-JDL Document 34 Filed 08/06/25 Page 3 of 10 PageID #:
491
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4
Inventors established a right to the presumption (Doc. 30, pg. 8-9 and Doc. 32, pg 3-4).
Defendants concede that “Plaintiffs are correct that they, as inventors and applicants, are
generally presumed to be the owner of an application” (Doc. 31, pg. 4) and rely only on
speculation to argue against the presumption. According to Rule 301 of the Federal Rules of
Evidence, “...the party against whom a presumption is directed has the burden of producing
evidence to rebut the presumption”. As Defendants have “the burden of producing evidence”,
and provide no evidence to rebut Inventors’ right to the presumption, Defendants failed to rebut
the presumption.
By stating “the court generally presumes “rights in an invention belong to the inventor” unless
the inventor “expressly grant[s] the rights…” See id. (citing Bd. of Trs. Of Leland Stan. Jr. Univ.
v. Roche Mol. Sys., Inc., 563 U.S. 776, 785–86 (2011))” (Doc. 33, pg. 5), Report—in light of the
absence of an express grant of rights by Inventors—grants that Inventors are the owners of ‘288.
However, Report then turns the presumption on its head by denying that Inventors are the owners
of ‘288 based on Defendants’ speculation and not based on evidence or citation to authority.
Report errs in speculating controversy between Inventors for inventorship (at least, e.g., by citing
Larson v. Correct Craft, Inc., 569 F.3d 1319, 1325–26 (Fed. Cir. 2009)), speculating controversy
between Inventors and a future assignee for ownership (at least, e.g., by citing Omni), and
contradicting at least 37 CFR 3.73(a)—the USPTO’s own established regulation. Further, Report
errs in adopting Defendants’ speculation (e.g., of “automatic assignment” as alleged in Omni) in
stating “It is unclear from Plaintiffs’ complaint and the parties’ briefing whether Plaintiffs have
any remaining ownership interest in the ’288 patent” (Doc. 33, pg. 6). Report errs in disregarding
that Defendants are speculating to obfuscate that Defendants are out of touch with small
businesses. Defendants dismissed the assignment in ‘844, stating “...assigns rights to an apparent
Case 4:25-cv-00423-JCB-JDL Document 34 Filed 08/06/25 Page 4 of 10 PageID #:
492
Appx0427
5
family member who resides at the same address” (Doc. 17, pg. 15 and Doc. 16, pg. 24) and
“...who shares the same last name and resides at the same address as all Plaintiffs” (Doc. 16, pg.
14), as indicated at least in Doc. 32, pg. 5. The assignee in ‘844—Dr. Shalaka Nesarikar—is a
respected small business owner and a dentist who graduated from Baylor College of Dentistry
(now known as Texas A&M College of Dentistry) in Dallas, TX. Dr. Nesarikar and her
businesses have served her community for over 20 years. Defendants’ statements undermine, if
not disparage, small business owners. Inventors respectfully request that Defendants’ statements
must not be adopted by the Court, even implicitly.
Report cites Lujan v. Defs. of Wildlife, 504 U.S. 555, 560–61(1992), which states “When the suit
is one challenging the legality of government action ... standing depends considerably upon
whether the plaintiff is himself an object of the action (or forgone action) at issue. If he is, there
is ordinarily little question that the action or inaction has caused him injury, and that a judgment
preventing or requiring the action will redress it”. The Notice of Payment Deficiency is
addressed to Inventors (pro se inventors) as objects of an agency action, which denied Inventors
due process, denied Inventors the right to examination of a duly filed nonprovisional patent
application, and made a threat of abandonment, which was carried out. Lujan validates
Inventors’ standing as there is “little question” that Inventors are harmed as objects of the agency
action (see at least, e.g, Doc. 30, pg. 9). Report errs in selectively disregarding Lujan based on
Defendants’ speculation.
Report errs in finding “Plaintiffs lack standing...because the PRA does not create a private right
of action” (Doc. 33, pg. 5). The cases cited by Report, including Sutton v. Providence St. Joseph
Med. Ctr., 192 F.3d 826, 844 (9th Cir. 1999), confirm Inventors’ right to judicial review under
44 USC 3512 - Public protection. For example, Ohio Stands Up! v. U.S. Dep’t of Health &
Case 4:25-cv-00423-JCB-JDL Document 34 Filed 08/06/25 Page 5 of 10 PageID #:
493
Appx0428
6
Human Servs. supports Inventors’ argument, explaining that the plaintiffs in Ohio Stands Up!
had no standing under the PRA as “Plaintiffs are not the subject of any administrative or judicial
enforcement action, nor are they being required to report information; rather, they challenge
generally the Federal Government’s collection of COVID-19 related data”. Further, Report
disregards at least Doc. 32, pg. 10-11 and Doc. 30, pg. 21. Doc. 30, pg. 21 is reproduced below
for convenience:
Defendants assert that a PRA claim requires government administrative action (Doc. 17,
pg. 18 and Doc. 16, pg. 31), and Defendants did take administrative action against at least
10 persons at least, e.g., by issuing the Notice of Payment Deficiency (e.g., Doc. 1-1, pg.
3 and Ex. L, pg. 6). Defendants’ allegation that the PRA “is only a defense” (Doc. 17, pg.
18) disregards 44 USC 3512 - Public protection (“The protection provided by this section
may be raised in the form of a complete defense, bar, or otherwise at any time during the
agency administrative process or judicial action applicable thereto.”). Further, Defendants
misapply Tozzi v. E.P.A. (D.D.C. 2001), which hinged on a “statutory bar prohibiting
judicial review of OMB's ICR [Information Collection Request] approval decisions”;
however, the Notice of Payment Deficiency is an ad hoc and unilaterally imposed
demand for information, for which Inventors did not find any indication that the USPTO
applied for or received ICR approval from the Office of Management and Budget
(OMB).
Further, Report enables Defendants’ illegal (under the PRA) collection of information by
requiring Inventors to provide the same information to enable judicial review. Report disregards
that the collection of information includes disclosure of “sensitive, proprietary, or nonpublic
information regarding Inventors or Inventors’ prior employers” (Doc. 1-1, pg. 19) and that to
collect the information “Defendants, “under the guise of interpreting a regulation…create de
facto a new regulation” (Christensen v. Harris County, 529 U.S. 576 (2000))” (see Doc. 32, pg.
Case 4:25-cv-00423-JCB-JDL Document 34 Filed 08/06/25 Page 6 of 10 PageID #:
494
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7
8). Further, Defendants violated the Privacy Act, 5 USC 552a, which also provides the Court
with jurisdiction in this case (Doc. 30, pg. 21-22) and which Report disregards.
Report errs in stating “Plaintiffs have not made any attempt to allege that they have standing
based on a reputational interest” (Doc. 33, pg. 7). See for example, “The USPTO is aware that
discontinuing examination of an application (e.g., ‘288) is harmful to Inventor’s reputation as
pro se applicants. The USPTO publicly discredited the pro se applicants by unlawfully
abandoning patent applications (e.g., ‘288)” (Doc. 2, pg. 6). Further, Report disregards
arguments and evidence in Doc. 32. Report disregards evidence that Inventors’ patents, including
‘288, and reputation are intertwined, e.g., in Doc. 1, Doc. 8, Doc. 30-2 (e.g., pg. 16 indicating
‘288 is in the field of artificial intelligence), and Doc. 32-1 (with pg. 2 showing industry
interest).
Inventors respectfully disagree with Report regarding: “Plaintiffs’ allegations only relate to the
’288 application. (Doc. No. 1.) Thus, the court disregards any allegations related to patent
applications other than the ’288 application” (Doc. 33, pg. 1). Report disregards Inventors’
arguments regarding evidence of harm and exhaustion of remedies in ‘288 shown from events in
other applications and the inequitable results of considering Defendants’ use of other
applications while disregarding Inventors’ (Doc. 30, pg. 22-23 and Doc. 32, pg. 2-3, and 10).
The USPTO’s record of ‘288 itself analyzes other applications which Report disregards (e.g.,
Doc. 1-1, pg. 7-8 and 16).
Report (Doc. 33) further errs, e.g.,:
•
in stating “ Plaintiffs called Joanne Burke...to discuss the notice” (pg. 2), which is not
consistent with at least #27 in the Complaint. Joanne Burke initiated the phone call to
Inventors. Inventors were not expecting Joanne Burke’s call. Further, Report disregards
Inventors’ arguments, including at least, e.g., Doc. 32, pg. 7 and Doc. 30, pg. 14.
Case 4:25-cv-00423-JCB-JDL Document 34 Filed 08/06/25 Page 7 of 10 PageID #:
495
Appx0430
8
•
in stating “Plaintiffs acknowledge that they currently maintain an “obligation to assign”
their rights in the ’288 application to former employers…” on pg. 4. Report disregards
Inventors’ arguments, including at least, e.g., Doc. 30, pg. 9-10 and Doc. 32, pg. 4-5.
•
Report’s characterization deviates from Relief Requested in the Complaint. Inventors
maintain the Relief Requested in the Complaint and the motion for preliminary
injunction.
Further, Inventors—as pro se plaintiffs—respectfully request, if the Court grants Defendants’
motion to dismiss, denies Inventors’ motion for preliminary injection, or otherwise rules
adversely towards Inventors, that the Court provide reasoned analysis citing authorities and
explaining the consideration or lack of consideration of Inventors’ cited evidence. For example:
•
How was the assignment in ’844 analyzed in relation to the obligation to assign in ‘288?
•
How was the presumption that an inventor is the owner of a patent under Board of
Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems, Inc. analyzed,
and if exceptions were made, under which authority were the exceptions made? Under
which authority was the presumption of ownership invalidated without evidence?
•
Would a defendant in front of the Court in a patent case (e.g., a patent infringement case)
be granted dismissal on the basis of rebutting the presumptive ownership of an inventor
(the plaintiff) based on mere speculation of “automatic assignment” (as alleged in
Omni)?
•
Defendants cited Inventors’ other applications in agency actions in ‘288, relied on
Inventors’ other applications in their filings, and added (in June 2025) the Complaint in
the prosecution histories of Inventors’ other applications. The Complaint, Inventors’
filings, and evidence related and referenced other applications. Why was evidence
provided by Inventors regarding other applications disregarded?
Case 4:25-cv-00423-JCB-JDL Document 34 Filed 08/06/25 Page 8 of 10 PageID #:
496
Appx0431
9
•
Why were some of Inventors’ filings with the Court disregarded (e.g., in Report)?
•
Why were Defendants exempted from Federal Rule of Evidence 301?
Conclusion
Inventors respectfully submit that de novo review is required on both the motion for preliminary
injunction (Doc. 2) and the motion to dismiss (Doc. 17).
Case 4:25-cv-00423-JCB-JDL Document 34 Filed 08/06/25 Page 9 of 10 PageID #:
497
Appx0432
10
Certificate of Service: Ashlesha A. Nesarikar is filing this document with the court’s CM/ECF
system on August 06, 2025.
Certificate of Generative Artificial Intelligence Usage: Inventors use generative AI in the
ordinary course of work as described in the certification filed on April 29, 2025. Inventors, in
good faith, comply with L.R. CV-11(g).
Date: August 06, 2025
Respectfully submitted,
Inventors and Plaintiffs
____________________
____________________
____________________
Ashlesha A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
asedt0425@icloud.com
Anika A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
anedt0425@icloud.com
Abhijit R. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
edt0425@nesarikar.com
Case 4:25-cv-00423-JCB-JDL Document 34 Filed 08/06/25 Page 10 of 10 PageID #:
498
Appx0433
IN THE UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
ASHLESHA A. NESARIKAR,
§
ANIKA A. NESARIKAR,
§
ABHIJIT R. NESARIKAR,
§
§
Plaintiffs,
§
§
v.
§
Case No. 4:25-cv-423-JCB-JDL
§
THE UNITED STATES PATENT AND
§
TRADEMARK OFFICE and
§
COKE MORGAN STEWART, in her
§
official capacity as the Acting Director of
§
the United States Patent and Trademark
§
Office,
§
§
Defendants.
§
DEFENDANTS’ RESPONSE TO PLAINTIFFS’ OBJECTIONS TO THE REPORT AND
RECOMMENDATION OF UNITED STATES MAGISTRATE JUDGE
Case 4:25-cv-00423-JCB-JDL Document 35 Filed 08/12/25 Page 1 of 6 PageID #:
499
Appx0434
DEFENDANTS’ RESPONSE TO PLAINTIFFS’ OBJECTIONS
1
Pursuant to 28 U.S.C. § 636 and Rule 72 of the Federal Rules of Civil Procedure, the United
States Patent and Trademark Office and its Acting Director (collectively, “USPTO”) briefly
respond to Plaintiffs’ Objections to the Report and Recommendation of United States Magistrate
Judge (“Report”) to address certain of Plaintiffs’ statements and allegations with respect to
standing and ownership of the ’288 application. In whole, the USPTO submits that Magistrate
Judge Love appropriately considered the parties’ arguments and reached the correct conclusion
through reasoned analysis, and that Plaintiffs’ objections offer no basis for the Court to reject the
Report. The USPTO respectfully requests that the Court adopt the Report and dismiss Plaintiffs’
Complaint.
Plaintiffs attempt to identify fault in the Report by arguing that the Court—and the
USPTO—“disregard[s] the presumptive ownership of Inventors without evidence and based solely
on Defendants’ speculation.” ECF 34 at 2. As correctly appreciated by Magistrate Judge Love,
however, it is not “speculation” but Plaintiffs’ own pleadings that demonstrate a lack of standing
and rebut a presumption of ownership. ECF 33 at 6. Plaintiffs’ Complaint alleges that the ’288
application is subject to an obligation to assign, ECF 1 at ¶52 citing ECF 1-1 at 47, Plaintiffs
reiterated that obligation in opposition to the USPTO’s motion to dismiss, ECF 30 at 8-9, and
Plaintiffs again confirmed an obligation in connection with their objections to the Report, ECF 34
at 3-5. In fact, the entire premise of Plaintiffs’ dispute with the USPTO is that certain of their
applications, including the ’288 application, are legally obligated to be assigned as a result of
former employment—thus allegedly entitling Plaintiffs to reduced fees in connection with
prosecution of their applications. ECF 17 at 4-7. Yet, as the Report notes, Plaintiffs have failed to
plead or come forward with “any of their employment agreements or the associated patent
assignment clauses” that would permit the Court to find standing in the face of Plaintiffs’ asserted
Case 4:25-cv-00423-JCB-JDL Document 35 Filed 08/12/25 Page 2 of 6 PageID #:
500
Appx0435
DEFENDANTS’ RESPONSE TO PLAINTIFFS’ OBJECTIONS
2
obligations to assign. ECF 33 at 6. And contrary to Plaintiffs’ claim, there need be no
“controversy” between Plaintiffs and the assignee, or between Plaintiffs themselves, for any
interest to lie with the assignee rather than Plaintiffs as a result of that obligation.
Plaintiffs’ argument in their Objections related to the assignment of a different
application—the ’844 application—is new, irrelevant, and unhelpful to any attempt by Plaintiffs
to establish standing in this case with respect to the ’288 application. While Plaintiffs previously
referenced the ’844 application in opposition to Defendant’s Motion to Dismiss as an application
that had been assigned—to a non-party who is an apparent family member—Plaintiffs made no
argument that assignment somehow evidenced the terms and conditions of the obligation to assign
the ’288 application. Consequently, any such argument can be disregarded in evaluating Plaintiffs’
objections here. But in any event, the Report correctly concludes that the allegations in Plaintiffs’
Complaint are limited to the ’288 application—not any of Plaintiffs’ other applications. ECF 33
at 1. Plaintiffs’ Objections offer no basis to find otherwise. And it is telling that Plaintiffs’
attempted rebuttal on this point cites not to any actual allegation in the Complaint but rather to
arguments made in opposition to the USPTO’s motion to dismiss and the prosecution history of
the ’288 application. ECF 34 at 7.
Moreover, even considering this new argument, the assignment of another of Plaintiffs’
applications—from a different patent family—does not support the claim that the ’288 application
has not been assigned or that the ’844 application’s assignment was not automatic. One
assignment does not show the lack of another. While Plaintiffs aver that the respective parent
applications for the ’288 application and the ’844 application are under obligations to be assigned
as a result of the same employment, there has been no allegation that those obligations are the
identical, let alone any disclosure of the terms of employment or obligations that would allow the
Case 4:25-cv-00423-JCB-JDL Document 35 Filed 08/12/25 Page 3 of 6 PageID #:
501
Appx0436
DEFENDANTS’ RESPONSE TO PLAINTIFFS’ OBJECTIONS
3
Court to conclude that Plaintiffs have retained sufficient rights to establish standing here. Id. at 6.
And even were one to assume the obligations to be the same between the ’844 application family
and the ’288 application family—which, again, has not been pled—the fact that the ’844
application has been assigned would tend to support the conclusion that Plaintiffs have not retained
sufficient rights in the ’288 application to proceed with this litigation.
Simply, Plaintiffs have not established an interest in the ’288 application such that any
alleged injury is to them rather than the assignee. All their alleged harms relating to the prosecution
of the ’288 application are fundamentally financial in nature and flow to the ultimate owner of any
prospective patent. And as the Report accurately finds, any allegations of reputational harm are—
at best—merely conclusory and in any event are insufficient to support standing. The Report thus
correctly recommends dismissal for lack of Article III standing. Id. at 7.
Finally, Plaintiffs’ continued claim that the USPTO is “out of touch with small businesses”
is spurious and baseless. While small businesses may take different forms, Plaintiffs have
steadfastly refused—both here and before the USPTO—to provide any information regarding the
details of their alleged employment or the terms of the pled obligation to assign such that the Court
could find standing. Plaintiffs ask, on the one hand, to have it accepted that they are legally
obligated to assign the ’288 application and others such that they should pay reduced prosecution
fees and, on the other, have it accepted that they have retained sufficient rights to bring a claim
here. Such inconsistency is not a feature of small businesses but a defect in Plaintiffs’ claims.
The USPTO respectfully requests that the Court adopt the Report and dismiss Plaintiffs’
Complaint for lack of standing. And the USPTO respectfully submits that, in the alternative,
Plaintiffs’ Complaint should be dismissed for failure to exhaust all administrative remedies.
Case 4:25-cv-00423-JCB-JDL Document 35 Filed 08/12/25 Page 4 of 6 PageID #:
502
Appx0437
DEFENDANTS’ RESPONSE TO PLAINTIFFS’ OBJECTIONS
4
August 12, 2025
Of Counsel:
WILLIAM LA MARCA
Special Counsel for Intellectual Property
Litigation
OMAR AMIN
Associate Solicitor
United States Patent and Trademark Office
Respectfully submitted,
JAY R. COMBS
Acting United States Attorney
JAMES GARLAND GILLINGHAM
Assistant United States Attorney
BRETT A. SHUMATE
Assistant Attorney General
SCOTT BOLDEN
Director
s/ Philip Charles Sternhell
PHILIP CHARLES STERNHELL (DC Bar)
Assistant Director
Commercial Litigation Branch
Civil Division
Department of Justice
Washington, D.C. 20530
Telephone:
(202) 353-0522
Facsimile:
(202) 307-0345
Email:
philip.c.sternhell@usdoj.gov
Case 4:25-cv-00423-JCB-JDL Document 35 Filed 08/12/25 Page 5 of 6 PageID #:
503
Appx0438
CERTIFICATE OF SERVICE
I hereby certify that on August 12, 2025, I electronically filed the foregoing document with
the Clerk of the Court using the ECF system which will send notification of such filing to those
persons on the Court’s electronic filing system.
/s/ Philip Charles Sternhell
PHILIP CHARLES STERNHELL
Assistant Director
Case 4:25-cv-00423-JCB-JDL Document 35 Filed 08/12/25 Page 6 of 6 PageID #:
504
Appx0439
Case 4:25-cv-00423-JCB-JDL Document 38 Filed 11/09/25 Page 1 of 2 PageID #:
512
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
ASHLESHA A. NESARIKAR,
ANIKA A. NESARIKAR, and
ABHIJIT R. NESARIKAR,
Plaintiffs,
-v-
THE UNITED STATES PATENT AND
TRADEMARK OFFICE and
COKE MORGAN STEW ART, in her
official capacity as the Acting Director of
the United States Patent and Trademark
Office,
Defendants.
)
)
)
)
)
)
)
)
Case No. 4:25-cv-00423-JCB-JDL
)
)
)
)
)
)
)
NOTICE OF APPEAL
Notice is hereby given that the appellants listed below hereby appeal the below-noted case to the
United States Court of Appeals for the Federal Circuit.
Case number: 4:25-cv-00423-JCB-JDL
Case title: Nesarikar et al. v. The United States Patent and Trademark Office et al.
Date of final judgment or order being appealed: I 0/01/2025
Appellants: Ashlesha A. Nesarikar, Anika A. Nesarikar, and Abhijit R. Nesarikar
Inventors intend to file a motion to expedite this appeal in the Court of Appeals for the Federal
Circuit, requesting expedition oflnventors' principal brief deadline to 30 days and expedition of
Defendants' response brief deadline to 20 days. If Defendants oppose the motion to expedite,
Inventors request that Defendants send an email to asedt0425@icloud.com stating their
opposition to the motion.
Case: 26-1167 Document: 1-2 Page: 1 Filed: 11/18/2025
Appx0440
Case 4:25-cv-00423-JCB-JDL Document 38 Filed 11/09/25 Page 2 of 2 PageID #:
513
Certificate of Service: Ashlesha A. Nesarikar is filing this document with the court's CM/ECF
system on November 09, 2025.
Certificate of Generative Artificial Intelligence Usage: Inventors use generative Al in the
ordinary course of work as described in the certification filed on April 29, 2025. Inventors, in
good faith, comply with L.R. CV- I I (g).
Date: November 09, 2025
Respectfully submitted,
Ashlesha A. N esarikar
8025 Ambiance Way
Plano, Texas 75024
469-371-4983
asedt0425@icloud.com
Anika A. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-3 71-4983
anedt0425@icloud.com
2
Abhijit R. Nesarikar
8025 Ambiance Way
Plano, Texas 75024
469-3 71-4983
edt0425@nesarikar.com
Inventors and Plaintiffs
Case: 26-1167 Document: 1-2 Page: 2 Filed: 11/18/2025
Appx0441
Query Reports Utilities Help
APPEAL,CLOSED
U.S. District Court
Eastern District of TEXAS [LIVE] (Sherman)
CIVIL DOCKET FOR CASE #: 4:25-cv-00423-JCB-JDL
Nesarikar et al v. The United States Patent and Trademark Office et Date Filed: 04/24/2025
al
Assigned to: District Jud e J. Campbell Barker
Referred to: Magistrate Judge John D. Love
Cause: 28:1331 Fed. Question
Date Terminated: 10/01/2025
Jury Demand: None
Nature of Suit: 899 Other Statutes:
Administrative Procedures Act/Review or
Appeal of Agency Decision
Jurisdiction: U.S. Government Defendant
Plaintiff
Ashlesha A. Nesarikar
represented by Ashlesha A. Nesarikar
8025 Ambiance Way
Plano, TX 75024
469-371-4983
Email: asedt0425@icloud.com
PRO SE
Plaintiff
Anika A. Nesarikar
represented by Anika A. Nesarikar
8025 Ambiance Way
Plano, TX 75024
Email: anedt0425@icloud.com
PRO SE
Plaintiff
Abhijit R. Nesarikar
represented by Abhijit R. Nesarikar
8025 Ambiance Way
Plano, TX 75024
Email: edt0425@nesarikar.com
PROSE
V.
Defendant
The United States Patent and Trademark
Office
represented by James Garland Gillingham
United States Attorney's Office - Tyler
A TRUE COPY 1 CER IFY
DAVID A. O TOOLE, CLERK
11 S. DISTRICT COURT
east p>s %2 texa
110 North College, Suite 700
Tyler, TX 75702
903-510-9346
Email: james.gillingham@usdoj .gov
ATTORNEY TO BE NOTICED
Philip Charles Sternhell
DOJ-Civ
Query
Reports
Utilities
Help
APPEAL,CLOSED
U.S. District Court
Eastern District of TEXAS [LIVE] (Sherman)
CIVIL DOCKET FOR CASE #: 4:25-cv-00423-JCB-JDL
Nesarikar et al v. The United States Patent and Trademark Office et
al
Assigned to: District Judge J. Campbell Barker
Referred to: Magistrate Judge John D. Love
Cause: 28:1331 Fed. Question
Date Filed: 04/24/2025
Date Terminated: 10/01/2025
Jury Demand: None
Nature of Suit: 899 Other Statutes:
Administrative Procedures Act/Review or
Appeal of Agency Decision
Jurisdiction: U.S. Government Defendant
Plaintiff
Ashlesha A. N esarikar
Plaintiff
Anika A. N esarikar
Plaintiff
Abhijit R. Nesarikar
V.
Defendant
The United States Patent and Trademark
Office
A TRUE COPY I CERTIFY
DAVID A. OTOOLE, CLERK
U.S. DISTRICT COURT
rs.ygtse
By:. @
represented by Ashlesha A. N esarikar
8025 Ambiance Way
Plano, TX 75024
469-371-4983
Email: asedt0425@icloud.com
PROSE
represented by Anika A. N esarikar
8025 Ambiance Way
Plano, TX 75024
Email: anedt0425@icloud.com
PROSE
represented by Abhijit R. Nesarikar
8025 Ambiance Way
Plano, TX 75024
Email: edt0425@nesarikar.com
PROSE
represented by James Garland Gillingham
United States Attorney's Office - Tyler
110 North College, Suite 700
Tyler, TX 75702
903-510-9346
Email: james.gillingham@usdoj.gov
ATTORNEY TO BE NOTICED
Philip Charles Sternhell
DOJ-Civ
Case: 26-1167 Document: 1-2 Page: 3 Filed: 11/18/2025
Appx0442
Commercial Litigation Branch
Department of Justice
Civil Division, Commercial Litigation
Branch
1100 L Street NW, Ste 8500
Washington, DC 20005
202-353-0522
Email: philip.c.sternhell@usdoj.gov
ATTORNEY TO BE NOTICED
Defendant
Acting Director of the United States represented by James Garland Gillingham
Patent and Trademark Office (See above for address)
ATTORNEY TO BE NOTICED
Philip Charles Sternhell
(See above for address)
ATTORNEY TO BE NOTICED
Date Filed
#
Docket Text
04/24/2025
<31
COMPLAINT against Acting Director of the United States Patent and Trademark
Office, The United States Patent and Trademark Office, filed by Ashlesha A. Nesarikar,
Abhijit R. Nesarikar, Anika A. Nesarikar. (Attachments: # 1 Exhibit A, # 2 Exhibit B, #
3 Civil Cover Sheet)(CLC) (Entered: 04/24/2025)
04/24/2025
G
In accordance with the provisions of 28 USC Section 636(c), you are hereby notified
that a U.S. Magistrate Judge of this district court is available to conduct any or all
proceedings in this case including a jury or non-jury trial and to order the entry of a final
judgment. The form Consent to Proceed Before Magistrate Jud e is available on our
website. All signed consent forms, excluding pro se parties, should be filed
electronically using the event Notice Regarding Consent to Proceed Before Magistrate
Judge. (CLC) (Entered: 04/24/2025)
04/24/2025
G2
MOTION for Preliminary Injunction by Abhijit R. Nesarikar, Anika A. Nesarikar,
Ashlesha A. Nesarikar. (Attachments: # 1 Proposed Order, # 2 Exhibit C, # 3 Exhibit D,
# 4 Exhibit E, # 5 Exhibit F)(CLC) (Entered: 04/24/2025)
04/24/2025
G3
Non-prisoner pro se consent to receive electronic notice filed by Abhijit R. Nesarikar,
Anika A. Nesarikar, Ashlesha A. Nesarikar. (Attachments: # 1 Consent for ECF, # 2
Consent for ECF)(CLC) (Entered: 04/24/2025)
04/24/2025
G5
SUMMONS Issued as to Acting Director of the United States Patent and Trademark
Office, The United States Patent and Trademark Office., Summons Issued as to Acting
Director of the United States Patent and Trademark Office, The United States Patent and
Trademark Office, U.S. Attorney and U.S. Attorney General (Attachments: # 1
Summons - AG USPTO, # 2 Summons - USPTO Director, # 3 Summons - USAO
USPTO Director, # 4 Summons - USAO USPTO, # 5 Summons - USPTO)(CLC)
(Entered: 04/24/2025)
04/25/2025
<36
MOTION for Leave to File Electronically by Abhijit R. Nesarikar, Anika A. Nesarikar,
Ashlesha A. Nesarikar. (CLC) (Entered: 04/25/2025)
04/28/2025
G2
ORDER granting 6 Motion for Leave to File Electronically. Clerk to send the following
instruction along with this order to the pro se litigant: Pro se litigants approved to e-f e
ho are not already registered to do so in this district must use their PACER account to
Defendant
Acting Director of the United States
Patent and Trademark Office
Commercial Litigation Branch
Department of Justice
Civil Division, Commercial Litigation
Branch
1100 L Street NW, Ste 8500
Washington, DC 20005
202-353-0522
Email: philip.c.sternhell@usdoj.gov
ATTORNEY TO BE NOTICED
represented by James Garland Gillingham
(See above for address)
ATTORNEY TO BE NOTICED
Philip Charles Sternhell
(See above for address)
ATTORNEY TO BE NOTICED
Date Filed
#
Docket Text
04/24/2025
1 COMPLAINT against Acting Director of the United States Patent and Trademark
Office, The United States Patent and Trademark Office, filed by Ashlesha A. Nesarikar,
Abhijit R. Nesarikar, Anika A. Nesarikar. (Attachments: # 1Exhibit A, # 2 Exhibit B, #
3 Civil Cover Sheet)(CLC) (Entered: 04/24/2025)
04/24/2025
0 In accordance with the provisions of28 USC Section 636(c), you are hereby notified
that a U.S. Magistrate Judge of this district court is available to conduct any or all
proceedings in this case including a jury or non-jury trial and to order the entry of a final
judgment. The form Consent to Proceed Before Magistrate Judge is available on our
website. All signed consent forms, excluding pro se parties, should be filed
electronically using the event Notice Regarding Consent to Proceed Before Magistrate
Judge. (CLC) (Entered: 04/24/2025)
04/24/2025
02 MOTION for Preliminary Injunction by Abhijit R. Nesarikar, Anika A. Nesarikar,
Ashlesha A. Nesarikar. (Attachments: # l Proposed Order, # 2 Exhibit C, # 3 Exhibit D,
# 4 Exhibit E, # 5 Exhibit F)(CLC) (Entered: 04/24/2025)
04/24/2025
03 Non-prisoner prose consent to receive electronic notice filed by Abhijit R. Nesarikar,
Anika A. Nesarikar, Ashlesha A. Nesarikar. (Attachments: # 1 Consent for ECF, # 2
Consent for ECF)(CLC) (Entered: 04/24/2025)
04/24/2025
05 SUMMONS Issued as to Acting Director of the United States Patent and Trademark
Office, The United States Patent and Trademark Office., Summons Issued as to Acting
Director of the United States Patent and Trademark Office, The United States Patent and
Trademark Office, U.S. Attorney and U.S. Attorney General (Attachments:# l
Summons - AG USPTO, # 2 Summons - USPTO Director, # 3 Summons - USAO
USPTO Director, # 4 Summons - USAO USPTO, # 5 Summons - USPTO)(CLC)
(Entered: 04/24/2025)
04/25/2025
06 MOTION for Leave to File Electronically by Abhijit R. Nesarikar, Anika A. Nesarikar,
Ashlesha A. Nesarikar. (CLC) (Entered: 04/25/2025)
04/28/2025
07 ORDER granting 6 Motion for Leave to File Electronically. ( Clerk to send the following
instruction along with this order to the pro se litigant: Pro se litigants approved to e-jile
who are not already registered to do so in this district must use their PACER account to
Case: 26-1167 Document: 1-2 Page: 4 Filed: 11/18/2025
Appx0443
submit their registration request. If ecessary, first register for a PACER account at
PACER.gov. Then, log into PACER and choose Manage My Account, then Maintenance,
then Non-Attorney E-File Registration, and follow the prompts to submit the registration
request to the Eastern District of Texas.). Signed by Magistrate Judge John D. Love on
4/28/2025. (CLC) (Entered: 04/28/2025)
04/29/2025
08
NOTICE Plaintiffs Certification of Generative Artificial Intelligence Usage by Abhijit
R. Nesarikar, Anika A. Nesarikar, Ashlesha A. Nesarikar (Nesarikar, Ashlesha) (Entered:
04/29/2025)
05/06/2025
09
SUMMONS Returned Executed by Ashlesha A. Nesarikar, Abhijit R. Nesarikar, Anika
A. Nesarikar. All Defendants. (Attachments: # 1 Affidavit/Declaration USPTO served on
April 29, 2025, # 2 Affidavit/Declaration USPTO served on April 24, 2025, # 3
Affidavit/Declaration Coke Morgan Stewart served on April 29, 2025, # 4
Affidavit/Declaration Coke Morgan Stewart served on April 29, 2025, # 5
Affidavit/Declaration Coke Morgan Stewart served on April 24, 2025)(Nesarikar,
Ashlesha) (Entered: 05/06/2025)
05/09/2025
1Q
NOTICE Plaintiffs Notice of Defenda ts Failure to Respond and Motion for Grant of
Preliminary Injunction by Abhijit R. Nesarikar, Anika A. Nesarikar, Ashlesha A.
Nesarikar re 2 MOTION for Preliminary Injunction (Nesarikar, Ashlesha) (Entered:
05/09/2025)
05/09/2025
il
MOTION for Extension of Time to File Response/Reply as to 2 MOTION for
Preliminary Injunction by All Defendants. (Attachments: # 1 Proposed Order)
(Gillingham, James) (Entered: 05/09/2025)
05/11/2025
12
RESPONSE in Opposition re 11 MOTION for Extension of Time to File
Response/Reply as to 2 MOTION for Preliminary Injunction filed by Abhijit R.
Nesarikar, Anika A. Nesarikar, Ashlesha A. Nesarikar. (Attachments: # 1 Proposed Order
Denying Defendants Motion for Extension of Time)(Nesarikar, Ashlesha) (Entered:
05/11/2025)
05/13/2025
13
ORDER granting 11 Motion for Extension of Time to File Response to 2 MOTION for
Preliminary Injunction. Defendants shall file their response to Plaintiffs' motion for a
preliminary injunction no later than June 10, 2025. No further extensions will be
granted. Signed by Magistrate Judge John D. Love on 5/13/2025. (CLC) (Entered:
05/14/2025)
06/10/2025
014
NOTICE of Attorney Appearance by Philip Charles Sternhell on behalf of Acting
Director of the United States Patent and Trademark Office, The United States Patent and
Trademark Office (Sternhell, Philip) (Entered: 06/10/2025)
06/10/2025
015
MOTION for Leave to File Excess Pages by Acting Director of the United States Patent
and Trademark Office, The United States Patent and Trademark Office. (Attachments: #
1 Proposed Order)(Gillingham, James) (Entered: 06/10/2025)
06/10/2025
16
RESPONSE in Opposition re 2 MOTION for Preliminary Injunction filed by Acting
Director of the United States Patent and Trademark Office, The United States Patent
and Trademark Office. (Attachments: # 1 Exhibit A, # 2 Proposed Order)(Sternhell,
Philip) (Entered: 06/10/2025)
06/10/2025
017
MOTION to Dismiss and Supporting Memorandum by Acting Director of the United
States Patent and Trademark Office, The United States Patent and Trademark Office.
(Attachments: # 1 Proposed Order)(Sternhell, Philip) (Entered: 06/10/2025)
06/11/2025
18
ORDER granting 15 Motion for Leave to File Excess Pages. Signed by Magistrate
Judge John D. Love on 6/11/2025. (CLC) (Entered: 06/11/2025)
submit their registration request. If necessary, first register for a PACER account at
PACER.gov. Then, log into PACER and choose Manage My Account, then Maintenance,
then Non-Attorney E-File Registration, and follow the prompts to submit the registration
request to the Eastern District ofTexas.). Signed by Magistrate Judge John D. Love on
4/28/2025. (CLC) (Entered: 04/28/2025)
04/29/2025
08 NOTICE Plaintiffs Certification of Generative Artificial Intelligence Usage by Abhijit
R. Nesarikar, Anika A. Nesarikar, Ashlesha A. Nesarikar (Nesarikar, Ashlesha) (Entered:
04/29/2025)
05/06/2025
09 SUMMONS Returned Executed by Ashlesha A. Nesarikar, Abhijit R. Nesarikar, Anika
A. Nesarikar. All Defendants. (Attachments: # 1 Affidavit/Declaration USPTO served on
April 29, 2025, # 2 Affidavit/Declaration USPTO served on April 24, 2025, # .3.
Affidavit/Declaration Coke Morgan Stewart served on April 29, 2025, # 4
Affidavit/Declaration Coke Morgan Stewart served on April 29, 2025, #5
Affidavit/Declaration Coke Morgan Stewart served on April 24, 2025)(Nesarikar,
Ashlesha) (Entered: 05/06/2025)
05/09/2025
010 NOTICE Plaintiffs Notice of Defendants Failure to Respond and Motion for Grant of
Preliminary Injunction by Abhijit R. Nesarikar, Anika A. Nesarikar, Ashlesha A.
Nesarikar re 2 MOTION for Preliminary Injunction (Nesarikar, Ashlesha) (Entered:
05/09/2025)
05/09/2025
011 MOTION for Extension of Time to File Response/Reply as to 2 MOTION for
Preliminary Injunction by All Defendants. (Attachments: # ] Proposed Order)
(Gillingham, James) (Entered: 05/09/2025)
05/11/2025
012 RESPONSE in Opposition re 11 MOTION for Extension of Time to File
Response/Reply as to 2 MOTION for Preliminary Injunction.filed by Abhijit R.
Nesarikar, Anika A. Nesarikar, Ashlesha A. Nesarikar. (Attachments: # 1 Proposed Order
Denying Defendants Motion for Extension ofTime)(Nesarikar, Ashlesha) (Entered:
05/11/2025)
05/13/2025
013 ORDER granting 11 Motion for Extension of Time to File Response to 2 MOTION for
Preliminary Injunction. Defendants shall file their response to Plaintiffs' motion for a
preliminary injunction no later than June 10, 2025. No further extensions will be
granted. Signed by Magistrate Judge John D. Love on 5/13/2025. (CLC) (Entered:
05/14/2025)
06/10/2025
014 NOTICE of Attorney Appearance by Philip Charles Sternhell on behalf of Acting
Director of the United States Patent and Trademark Office, The United States Patent and
Trademark Office (Sternhell, Philip) (Entered: 06/10/2025)
06/10/2025
015 MOTION for Leave to File Excess Pages by Acting Director of the United States Patent
and Trademark Office, The United States Patent and Trademark Office. (Attachments:#
1Proposed Order)(Gillingham, James) (Entered: 06/10/2025)
06/10/2025
016 RESPONSE in Opposition re 2MOTION for Preliminary Injunction filed by Acting
Director of the United States Patent and Trademark Office, The United States Patent
and Trademark Office. (Attachments: # 1 Exhibit A, # 2 Proposed Order)(Sternhell,
Philip) (Entered: 06/10/2025)
06/10/2025
017 MOTION to Dismiss and Supporting Memorandum by Acting Director of the United
States Patent and Trademark Office, The United States Patent and Trademark Office.
(Attachments: # l Proposed Order)(Sternhell, Philip) (Entered: 06/10/2025)
06/11/2025
18 ORDER granting 15 Motion for Leave to File Excess Pages. Signed by Magistrate
Judge John D. Love on 6/11/2025. (CLC) (Entered: 06/11/2025)
Case: 26-1167 Document: 1-2 Page: 5 Filed: 11/18/2025
Appx0444
06/17/2025
019
MOTION Exemption from Local Rule CV-5(a)(9) by All Plaintiffs. (Attachments: # 1
Proposed Order granting Plaintiffs' motion for leave for exemption from Local Rule CV-
5(a)(9))(Nesarikar, Ashlesha) (Entered: 06/17/2025)
06/17/2025
<320
MOTION for Leave to File Excess Pages by All Plaintiffs. (Attachments: # 1 Proposed
Order )(Nesarikar, Ashlesha) Modified docket text on 6/18/2025 (jmb). (Entered:
06/17/2025)
06/17/2025
<321
REPLY to Response re 2 MOTION for Preliminary Injunction filed byAbhijit R.
Nesarikar, AnikaA. Nesarikar, Ashlesha A. Nesarikar. (Attachments: # 1 Exhibit G, # 2
Exhibit H, # 3 Exhibit I)(Nesarikar, Ashlesha) (Entered: 06/17/2025)
06/19/2025
022
MOTION for Extension of Time to File Response/Reply as to 17 MOTION to Dismiss
and Supporting Memorandum by All Plaintiffs. (Attachments: # 1 Proposed Order
Granting Plaintiffs Motion for Extension of Time)(Nesarikar, Ashlesha) (Entered:
06/19/2025)
06/20/2025
23
ORDER granting 20 Motion for Leave to File Excess Pages. Signed by Magistrate
Judge John D. Love on 6/20/2025. (xl) (Entered: 06/20/2025)
06/20/2025
024
ORDER. Plaintiffs' motion for an extension of time (Doc. No. 22 ) is GRANTED.
Plaintiffs shall file their response to Defendants' motion to dismiss (Doc. No. 17) by
July 24, 2025. No further extensions will be granted. Signed by Magistrate Judge John
D. Love on 6/20/2025. (xl) (Entered: 06/20/2025)
06/20/2025
025
ORDER. Plaintiffs' motion for an exemption from this courts Local Rule CV-5(a) (9)
(Doc. No. 19 ) is GRANTED. Signed by Magistrate Judge John D. Love on 6/20/2025.
(xl) (Entered: 06/20/2025)
06/23/2025
26
SUR-REPLY to Reply to Response re 2 MOTION for Preliminary Injunction filed by
Acting Director of the United States Patent and Trademark Office, The United States
Patent and Trademark Office. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C)
(Sternhell, Philip) (Entered: 06/23/2025)
06/24/2025
027
MOTION for Leave to File Respo se to Defendants New Evide ce by All Plaintiffs.
(Attachments: # 1 Proposed Order Granting Plaintiffs Motion for Leave to Respond to
Defendants New Evidence)(Nesarikar, Ashlesha) (Entered: 06/24/2025)
06/24/2025
028
RESPONSE in Support re 2 MOTION for Preliminary Injunction, 27 MOTION for
Leave to File Response to Defendants New Evidence filed byAbhijit R. Nesarikar, Anika
A. Nesarikar, Ashlesha A. Nesarikar. (Attachments: # 1 Exhibit J)(Nesarikar, Ashlesha)
(Entered: 06/24/2025)
07/09/2025
029
NOTICE and Request for Speedy Consideration by Abhijit R. Nesarikar, Anika A.
Nesarikar, Ashlesha A. Nesarikar re 2 MOTION for Preliminary Injunction (Nesarikar,
Ashlesha) (Entered: 07/09/2025)
07/18/2025
030
RESPONSE in Opposition re 17 MOTION to Dismiss and Supporting Memorandum
filed by Abhijit R. Nesarikar, AnikaA. Nesarikar, Ashlesha A. Nesarikar. (Attachments: #
1 Proposed Order Denying Defendants Motion to Dismiss, # 2 Exhibit K, # 3 Exhibit L)
(Nesarikar, Ashlesha) (Entered: 07/18/2025)
07/25/2025
31
REPLY to Response re 17 MOTION to Dismiss and Supporting Memorandum
Defendants' Reply in Support of its Motion to Dismiss filed by Acting Director of the
United States Patent and Trademark Office, The United States Patent and Trademark
Office. (Sternhell, Philip) (Entered: 07/25/2025)
08/01/2025
032
SUR-REPLY to Reply to Response re 17 MOTION to Dismiss and Supporti g
Memorandum filed by Abhijit R. Nesarikar, Anika A. Nesarikar, Ashlesha A. Nesarikar.
06/17/2025
019 MOTION Exemption from Local Rule CV-5(a)(9) by All Plaintiffs. (Attachments: #1
Proposed Order granting Plaintiffs' motion for leave for exemption from Local Rule CV-
5(a)(9))(Nesarikar, Ashlesha) (Entered: 06/17/2025)
06/17/2025
020 MOTION for Leave to File Excess Pages by All Plaintiffs. (Attachments: # 1 Proposed
Order )(Nesarikar, Ashlesha) Modified docket text on 6/18/2025 (mb). (Entered:
06/l 7 /2025)
06/17/2025
021 REPLY to Response re 2 MOTION for Preliminary Injunction.filed by Abhijit R.
Nesarikar, Anika A. Nesarikar, Ashlesha A. Nesarikar. (Attachments: # 1 Exhibit G, # 2.
Exhibit H, # 3 Exhibit l)(Nesarikar, Ashlesha) (Entered: 06/17/2025)
06/19/2025
022 MOTION for Extension of Time to File Response/Reply as to 17 MOTION to Dismiss
and Supporting Memorandum by All Plaintiffs. (Attachments: # l Proposed Order
Granting Plaintiffs Motion for Extension of Time)Nesarikar, Ashlesha) (Entered:
06/19/2025)
06/20/2025
023
ORDER granting 20 Motion for Leave to File Excess Pages. Signed by Magistrate
Judge John D. Love on 6/20/2025. (xl) (Entered: 06/20/2025)
06/20/2025
024
ORDER. Plaintiffs' motion for an extension of time (Doc. No. 22) is GRANTED.
Plaintiffs shall file their response to Defendants' motion to dismiss (Doc. No. 17) by
July 24, 2025. No further extensions will be granted. Signed by Magistrate Judge John
D. Love on 6/20/2025. (xl) (Entered: 06/20/2025)
06/20/2025
025
ORDER. Plaintiffs' motion for an exemption from this courts Local Rule CV-5(a) (9)
(Doc. No. 19 ) is GRANTED. Signed by Magistrate Judge John D. Love on 6/20/2025.
(xl) (Entered: 06/20/2025)
06/23/2025
026
SUR-REPLY to Reply to Response re 2MOTION for Preliminary Injunction filed by
Acting Director of the United States Patent and Trademark Office, The United States
Patent and Trademark Office. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C)
(Sternhell, Philip) (Entered: 06/23/2025)
06/24/2025
027 MOTION for Leave to File Response to Defendants New Evidence by All Plaintiffs.
(Attachments: # 1 Proposed Order Granting Plaintiffs Motion for Leave to Respond to
Defendants New Evidence)(Nesarikar, Ashlesha) (Entered: 06/24/2025)
06/24/2025
0 28
RESPONSE in Support re 2 MOTION for Preliminary Injunction, 27 MOTION for
Leave to File Response to Defendants New Evidence filed by Abhijit R. Nesarikar, Anika
A. Nesarikar, Ashlesha A. Nesarikar. (Attachments: # 1 Exhibit J)(Nesarikar, Ashlesha)
(Entered: 06/24/2025)
07/09/2025
029 NOTICE and Request for Speedy Consideration by Abhijit R. Nesarikar, Anika A.
Nesarikar, Ashlesha A. Nesarikar re 2MOTION for Preliminary Injunction (Nesarikar,
Ashlesha) (Entered: 07/09/2025)
07/18/2025
0 30 RESPONSE in Opposition re 17 MOTION to Dismiss and Supporting Memorandum
filed by Abhijit R. Nesarikar, Anika A. Nesarikar, Ashlesha A. Nesarikar. (Attachments: #
1 Proposed Order Denying Defendants Motion to Dismiss, # 2 Exhibit K, # 3 Exhibit L)
(Nesarikar, Ashlesha) (Entered: 07/18/2025)
07/25/2025
031 REPLY to Response re 17 MOTION to Dismiss and Supporting Memorandum
Defendants' Reply in Support of its Motion to Dismiss filed by Acting Director of the
United States Patent and Trademark Office, The United States Patent and Trademark
Office. (Sternhell, Philip) (Entered: 07/25/2025)
08/01/2025
032
SUR-REPLY to Reply to Response re 17 MOTION to Dismiss and Supporting
Memorandum filed by Abhijit R. Nesarikar, Anika A. Nesarikar, Ashlesha A. Nesarikar.
Case: 26-1167 Document: 1-2 Page: 6 Filed: 11/18/2025
Appx0445
(Attachments: # 1 Exhibit M)(Nesarikar, Ashlesha) (Entered: 08/01/2025)
08/01/2025
CJ33
REPORT AND RECOMMENDATION The court RECOMMENDS that Defendants'
motion to dismiss Plaintiffs' complaint (Doc. No. 17 ) should be GRANTED. Plaintiffs'
claims should be DISMISSED without prejudice for lack of standing and Plaintiffs'
motion for a preliminary injunction (Doc. No. 2 ) should be DENIED Objections due
within 14 days of receipt. Signed by Magistrate Judge John D. Love on 8/1/2025. (CLC)
(Entered: 08/01/2025)
08/06/2025
034
OBJECTION to 33 Report and Recommendations by Abhijit R. Nesarikar, Anika A.
Nesarikar, Ashlesha A. Nesarikar. (Nesarikar, Ashlesha) (Entered: 08/06/2025)
08/12/2025
035
RESPONSE to 34 Objection to Report and Recommendations by Acting Director of the
United States Patent and Trademark Office, The United States Patent and Trademark
Office. (Sternhell, Philip) (Entered: 08/12/2025)
10/01/2025
36
ORDER adopting Report and Recommendations. The court grants defendants' motion to
dismiss (Doc. 17 ), denies plaintiffs' motion for a preliminary injunction (Doc. 2 ) as
moot, and dismisses this action without prejudice. Any pending motions are denied as
moot. Signed by District Judge J. Campbell Barker on 10/1/2025. (CLC) (Entered:
10/01/2025)
10/01/2025
037
FINAL JUDGMENT. The court, having considered plaintiffs' case and rendered its
decision by separate opinion, enters judgment that plaintiffs' claims are dismissed
without prejudice. Signed by District Judge J. Campbell Barker on 10/1/2025. (CLC)
(Entered: 10/01/2025)
11/09/2025
038
NOTICE OF APPEAL - FEDERAL CIRCUIT as to 36 Order Adopting Report and
Recommendations, 37 Judgment, by Abhijit R. Nesarikar, Anika A. Nesarikar, Ashlesha
A. Nesarikar. Filing fee $ 605, receipt number ATXEDC-11195400. (Nesarikar,
Ashlesha) (Entered: 11/09/2025)
(Attachments: # 1 Exhibit M)(Nesarikar, Ashlesha) (Entered: 08/01/2025)
08/01/2025
033
REPORT AND RECOMMENDATION The court RECOMMENDS that Defendants'
motion to dismiss Plaintiffs' complaint (Doc. No. 17 ) should be GRANTED. Plaintiffs'
claims should be DISMISSED without prejudice for lack of standing and Plaintiffs'
motion for a preliminary injunction (Doc. No. 2) should be DENIED Objections due
within 14 days ofreceipt. Signed by Magistrate Judge John D. Love on 8/1/2025. (CLC)
(Entered: 08/01/2025)
08/06/2025
0 34 OBJECTION to 33 Report and Recommendations by Abhijit R. Nesarikar, Anika A.
Nesarikar, Ashlesha A. Nesarikar. (Nesarikar, Ashlesha) (Entered: 08/06/2025)
08/12/2025
035
RESPONSE to 34 Objection to Report and Recommendations by Acting Director of the
United States Patent and Trademark Office, The United States Patent and Trademark
Office. (Sternhell, Philip) (Entered: 08/12/2025)
10/01/2025
036 ORDER adopting Report and Recommendations. The court grants defendants' motion to
dismiss (Doc. 17), denies plaintiffs' motion for a preliminary injunction (Doc. 2) as
moot, and dismisses this action without prejudice. Any pending motions are denied as
moot. Signed by District Judge J. Campbell Barker on 10/1/2025. (CLC) (Entered:
10/01/2025)
10/01/2025
037 FINAL JUDGMENT. The court, having considered plaintiffs' case and rendered its
decision by separate opinion, enters judgment that plaintiffs' claims are dismissed
without prejudice. Signed by District Judge J. Campbell Barker on 10/1/2025. (CLC)
(Entered: 10/01/2025)
11/09/2025
038 NOTICE OF APPEAL- FEDERAL CIRCUIT as to 36 Order Adopting Report and
Recommendations, 37 Judgment, by Abhijit R. Nesarikar, Anika A. Nesarikar, Ashlesha
A. Nesarikar. Filing fee$ 605, receipt number ATXEDC-11195400. (Nesarikar,
Ashlesha) (Entered: 11/09/2025)
Case: 26-1167 Document: 1-2 Page: 7 Filed: 11/18/2025
Appx0446