Richard W. Goldstein v. HARRY I. MOATZ, Director, Office of Enrollment and Discipline; NICHOLAS GODICI

PUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
 RICHARD W. GOLDSTEIN,
Plaintiff-Appellant,
v.
HARRY I. MOATZ, Director, Office of
Enrollment and Discipline;
NICHOLAS GODICI,
Defendants-Appellees,
and No. 05-1144 
LAWRENCE ANDERSON; JAMES E.
ROGAN, Under Secretary of
Commerce for Intellectual Property
and Director of USPTO; JAMES A.
TOUPIN; DAVID M. PUROL, USPTO,
Patent Examiner; UNITED STATES OF
AMERICA; JOHN DOES, 1-5,
Defendants. 

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 RICHARD W. GOLDSTEIN,
Plaintiff-Appellant,
v.
HARRY I. MOATZ, Director, Office of
Enrollment and Discipline;
NICHOLAS GODICI,
Defendants-Appellees,
and
LAWRENCE ANDERSON; JAMES E.
ROGAN, Under Secretary of No. 05-1399 
Commerce for Intellectual Property
and Director of USPTO; JAMES A.
TOUPIN; DAVID M. PUROL, USPTO,
Patent Examiner; UNITED STATES OF
AMERICA; JOHN DOES, 1-5,
Defendants.
AMERICAN CIVIL LIBERTIES UNION OF
VIRGINIA, INCORPORATED,
Amicus Supporting Appellant. 
Appeals from the United States District Court
for the Eastern District of Virginia, at Alexandria.
Leonie M. Brinkema, District Judge.
(CA-02-1734-A)
Argued: February 1, 2006
Decided: April 20, 2006
Before WILLIAMS, MOTZ, and KING, Circuit Judges.
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Affirmed in part and dismissed in part by published opinion. Judge
King wrote the opinion, in which Judge Williams and Judge Motz
joined.
COUNSEL
ARGUED: Victor Michael Glasberg, Alexandria, Virginia, for
Appellant. Steven E. Gordon, Assistant United States Attorney,
OFFICE OF THE UNITED STATES ATTORNEY, Alexandria, Vir-
ginia, for Appellees. ON BRIEF: Paul Gowder, VICTOR M. GLAS-
BERG & ASSOCIATES, Alexandria, Virginia, for Appellant. Paul J.
McNulty, United States Attorney, Alexandria, Virginia, for Appel-
lees. Rebecca K. Glenberg, AMERICAN CIVIL LIBERTIES UNION
OF VIRGINIA FOUNDATION, INC., Richmond, Virginia, for
Amicus Supporting Appellant.
OPINION
KING, Circuit Judge:
Appellant Richard W. Goldstein, a patent lawyer, appeals the dis-
trict court’s dismissal, on mootness grounds, of his civil action against
certain officials in the Patent and Trademark Office (the "PTO"), and
the PTO’s Office of Enrollment and Discipline (the "OED"). He also
appeals the court’s denial of his application, under the Equal Access
to Justice Act (the "EAJA"), for an award of attorneys’ fees and costs.
As explained below, we dismiss Goldstein’s appeal of the mootness
order as moot and affirm the district court’s denial of his attorneys’
fees and costs application.
I.
A.
The relevant factual background of this dispute is more fully
detailed in our earlier decision in this matter. See Goldstein v. Moatz,
364 F.3d 205, 207-10 (4th Cir. 2004). This proceeding involves the
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OED’s investigation of Goldstein, which was apparently undertaken
after complaints were received from some of his clients. Pursuant to
the PTO’s regulations, its OED Director is responsible for investigat-
ing allegations of misconduct by practitioners in the patent bar. See
37 C.F.R. § 10.131(a). When the Director conducts a disciplinary
investigation, a practitioner is required to report and reveal to the
Director any unprivileged knowledge of disciplinary rule violations.
Id. §§ 10.24(a), 10.131(b). If, after investigation, the Director believes
that a disciplinary violation has occurred, he is obliged to convene the
PTO’s Committee on Discipline (the "Committee"). Id. § 10.132(a).
The Committee is composed of at least three PTO staff attorneys
appointed by the Commissioner for Patents, id. § 10.4(a), and it is
vested with the power and authority to decide the issue of probable
cause on whether a disciplinary rule has been violated, id. § 10.4(b).
If the Committee makes a probable cause finding, the Director initi-
ates a formal disciplinary proceeding by the filing of a complaint
against the practitioner and by referring the matter to an administra-
tive law judge. Id. § 10.132(b), (c). Such a disciplinary proceeding
may result in the issuance of a reprimand, or the suspension or expul-
sion of the practitioner from the patent bar (or, presumably, the com-
plaint’s dismissal). See id. § 10.132(b).
Between December 5, 2000, and November 20, 2001, the OED
served Goldstein with a total of six Requirements for Information
("RFIs"), concerning four of his clients.1 The OED advised Goldstein
in each instance that his failure to comply with the RFIs would consti-
tute a violation of the PTO’s disciplinary rules requiring compliance
with OED investigations. In all, the six RFIs required Goldstein to
respond to more than 300 inquiries.
On December 20, 2001 — a year after the first RFI was pro-
pounded on Goldstein and a month after being served with the last
1The regulation authorizing issuance of RFIs, entitled "Requirements
for information," provides that: "In the course of examining or treating
a matter in a pending or abandoned application . . . , in a patent, or in
a reexamination proceeding, the examiner or other [PTO] employee may
require the submission . . . of such information as may be reasonably
necessary to properly examine or treat the matter . . . ." 37 C.F.R.
§ 1.105(a)(1).
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RFI — Goldstein petitioned the PTO for relief, seeking to have the
Commissioner supervise the OED with respect to the RFIs. His peti-
tion was denied by the PTO’s General Counsel on April 12, 2002.
The General Counsel’s letter to Goldstein asserted that the OED’s use
of RFIs was neither excessive nor an abuse of discretion, and it noti-
fied Goldstein that the decision embodied in the letter was not a final
agency action from which he could seek review. The General Counsel
also instructed Goldstein to respond to the outstanding RFIs within
thirty days, a directive with which Goldstein complied.
On November 26, 2002, Goldstein instituted this lawsuit in the
Eastern District of Virginia. By his complaint, he alleged claims of
constitutional violations and state torts, and sought money damages
and a judgment declaring that the PTO and the OED had violated his
due process rights in propounding the RFIs. On February 21, 2003,
the district court dismissed his complaint, as relevant here, on grounds
of absolute immunity. Without reaching the merits of Goldstein’s
constitutional claims, we vacated in part and remanded for further
proceedings, concluding, as relevant here, that the OED officers who
had been sued were not entitled to absolute immunity. See Goldstein,
364 F.3d at 211-19. At the time of the appeal, the OED had neither
initiated disciplinary proceedings against Goldstein nor informed him
of whether its investigation was concluded.
B.
On July 2, 2004, after remand, Goldstein filed an Amended Com-
plaint, abandoning his claims for damages and requesting, for the first
time, injunctive relief. He also asserted a claim for $1000 in statutory
damages under the Privacy Act. See 5 U.S.C. § 552a.2 In December
2004, after conducting discovery proceedings, the parties unsuccess-
fully attempted to settle their dispute. The PTO then sought dismissal
of the Amended Complaint by the district court on multiple grounds,
including mootness, and, in support, filed several declarations by its
employees. By its supporting memorandum, the PTO contended that,
2In his Amended Complaint, Goldstein sued Harry I. Moatz, Director
of the OED, and Nicholas P. Godici, PTO Commissioner for Patents, in
their official capacities. We include these defendants, the appellees
herein, in our collective references to "the PTO."
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in light of the declarations it submitted to the court, the entire dispute
was moot. Goldstein countered with his own motion for summary
judgment.
On January 7, 2005, following a hearing at which oral argument
was presented, the district court entered an order denying Goldstein’s
motion for summary judgment and dismissing Goldstein’s complaint
as moot (the "Mootness Order"). In so ruling, the court observed that
its decision was "[b]ased on the parties’ representations." Mootness
Order at 1. Goldstein then appealed the Mootness Order to this Court
(Appeal No. 05-1144).
On February 14, 2005, Goldstein applied in the district court for an
award of his attorneys’ fees and costs under the EAJA, 28 U.S.C.
§ 2412. His application for such an award was denied by the court’s
order of March 24, 2005 (the "Fee Order"). In the Fee Order, the court
concluded that Goldstein did not qualify for an award of attorneys’
fees and costs under the EAJA because he was not a "prevailing
party." Fee Order at 2-5. Alternatively, the court concluded that Gold-
stein was not entitled to such an award because the PTO’s position
on the RFIs was substantially justified and, in any event, his applica-
tion for an attorneys’ fees and costs award was "entirely unreason-
able." Id. at 5-6. Goldstein has appealed the Fee Order (Appeal No.
05-1399). The two appeals were consolidated for handling in this
Court, and we possess jurisdiction pursuant to 28 U.S.C. § 1291.
II.
A.
Oral argument was conducted in the two consolidated appeals
before this Court on February 1, 2006. Thereafter, on March 2, 2006,
the PTO filed a motion to dismiss Appeal No. 05-1144 (the Mootness
Order appeal), asserting that, by its letter to Goldstein’s counsel of
February 27, 2006, the PTO had notified Goldstein of its decision not
to "pursue formal disciplinary action against Mr. Goldstein." In
response to the PTO’s motion, Goldstein has now conceded that, in
view of the PTO’s letter of February 27, 2006, his claims for declara-
tory and injunctive relief are moot and that his appeal of the Mootness
Order should be dismissed. Accordingly, we grant the PTO’s March
2, 2006 motion and dismiss Appeal No. 05-1144 as moot.
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B.
In his remaining appeal (No. 05-1399), Goldstein contends that the
district court erred in entering the Fee Order, thereby denying his
application under the EAJA for an award of attorneys’ fees and costs.
He maintains that the court should have recognized the existence of
a "tactical mooting" exception to the general rule that a party applying
for fees and costs must have first secured some court-ordered relief.
As explained below, we reject Goldstein’s contention and affirm the
Fee Order.
We review de novo a district court’s determination that an appli-
cant for an award of fees and costs under the EAJA is not a prevailing
party. See Smyth ex rel. Smyth v. Rivero, 282 F.3d 268, 274 (4th Cir.
2002). Under the traditional "American Rule," the parties to litigation
normally bear their own respective costs, unless an applicable statute
expressly provides otherwise. See Buckhannon Board & Care Home
v. W.V. Dep’t of Health and Human Res., 532 U.S. 598, 602 (2001);
Smyth, 282 F.3d at 274. The EAJA creates such a statutory exception
to the American Rule, authorizing an award of attorneys’ fees and
costs to "the prevailing party" in a civil action against the United
States, or against its agencies or officials. See 28 U.S.C. § 2412.
In its recent Buckhannon decision, the Supreme Court explained
that a "prevailing party," within the meaning of the EAJA and similar
federal fee-shifting statutes, "is one who has been awarded some
relief by the court." See 532 U.S. at 603. Although the Buckhannon
case did not specifically involve the EAJA, the Court observed that
it has "interpreted . . . fee-shifting provisions consistently." See id. at
603 n.4. Because the EAJA shares the "prevailing party" language
with the statute at issue in Buckhannon (42 U.S.C. § 3613), see id. at
601, the Buckhannon principles are applicable here. And in Buckhan-
non, the Court instructed the lower courts that only "enforceable judg-
ments on the merits and court-ordered consent decrees create the
material alteration of the legal relationship of the parties necessary to
permit an award of attorney’s fees." Id. at 604 (internal quotation
marks omitted). As we have observed, a consent decree approved and
entered by a trial court is sufficient to make the party that obtains
relief a "prevailing party" under the fee-shifting statutes, because such
a decree "is entered as an [approved] order of the court . . . and is sub-
ject to the oversight attendant to the court’s authority to enforce its
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orders, characteristics not typical of settlement agreements." Smyth,
282 F.3d at 281.
In this situation, the district court properly concluded in its Fee
Order that Goldstein was not, within the meaning of the EAJA, a
"prevailing party." First, the court did not grant Goldstein any relief
on the merits of his Amended Complaint, and neither did our earlier
appellate decision.3 Second, Goldstein has never secured a court-
ordered consent decree creating a "material alteration of the legal
relationship of the parties." Buckhannon, 532 U.S. at 604 (internal
quotation marks omitted); see also Smyth, 282 F.3d at 281; Rice
Servs., Ltd. v. United States, 405 F.3d 1017 (Fed. Cir. 2005) (revers-
ing EAJA fees and costs award premised on order that recognized
Government’s voluntary concession to requested relief).
Notwithstanding the foregoing legal principles and the underlying
facts, Goldstein, with the amicus curiae’s support, contends that he
should be eligible for an attorneys’ fees and costs award under the
EAJA because the Buckhannon decision does not apply to the "tacti-
cal mooting" circumstances that, in his view, occurred here.4 The
Supreme Court in Buckhannon, however, did not leave the door ajar
for an inferior court to engraft a broad tactical mooting exception onto
its ruling. Rather, the Court concluded that tactical mooting concerns
are simply insufficient to overcome the statutory requirement that a
3Although an appellate ruling could render a party a "prevailing party,"
if "[o]n its face, [the] ruling entitled the [party] to relief," see Walker v.
City of Mesquite, 313 F.3d 246, 250 (5th Cir. 2002), our prior decision
in this matter was not such a ruling. Indeed, in our prior decision, we
expressly declined to reach the merits of Goldstein’s claims and resolved
only the issue of absolute immunity. See Goldstein v. Moatz, 364 F.3d
205, 212 n.11 (4th Cir. 2004) ("We note that . . . it is not necessary to
determine whether Goldstein has alleged a constitutional violation.").
Our earlier decision therefore did not render Goldstein a "prevailing
party" as meant in the EAJA. Cf. Buckhannon, 532 U.S. at 605 ("[A]n
interlocutory ruling that reverses a dismissal for failure to state a claim
is not the stuff of which legal victories are made." (internal quotation
marks omitted)).
4"Tactical mooting" could be recognized as occurring where a defen-
dant has agreed to the plaintiff’s requested relief in order to avoid the
prospect of an adverse fees and costs award.
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party applying for a fees and costs award must first have been
accorded some relief in the district court. See 532 U.S. at 608-09.5 We
need not and do not decide today whether there is an exception to the
Buckhannon rule where a defendant has agreed to provide the relief
requested in response to an affirmative indication by the presiding
court that the plaintiff is about to prevail. In the circumstances pre-
sented, we are not at liberty to carve out a tactical mooting exception
to the Buckhannon principles, and we are obliged to affirm the Fee
Order.6
III.
Pursuant to the foregoing, we dismiss Goldstein’s appeal of the
Mootness Order and affirm the district court’s Fee Order.
AFFIRMED IN PART AND
DISMISSED IN PART
5In rejecting concerns that defendants could use the Buckhannon prin-
ciples to tactically avoid paying fees and costs, the Court observed:
[S]o long as the plaintiff has a cause of action for damages, a
defendant’s change in conduct will not moot the case. Even then,
it is not clear how often courts will find a case mooted . . . . If
a case is not found to be moot, and the plaintiff later procures an
enforceable judgment, the court may of course award attorney’s
fees. Given this possibility, a defendant has a strong incentive to
enter a settlement agreement, where it can negotiate attorney’s
fees and costs.
532 U.S. at 608-09. In so doing, the Court essentially concluded that a
party cannot be designated a "prevailing party" without having first been
awarded some relief in court, notwithstanding concerns that such a rule
might be used nefariously.
6Because Goldstein was not a "prevailing party" within the meaning of
the EAJA, we need not reach the district court’s alternative rulings that
the PTO’s position was substantially justified and that the attorneys’ fees
and costs award requested by Goldstein was unreasonable.
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