       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

              MITCHELL R. SWARTZ,
                 Plaintiff-Appellant

                           v.

  UNITED STATES PATENT AND TRADEMARK
OFFICE, ANDREI IANCU, UNDER SECRETARY OF
 COMMERCE FOR INTELLECTUAL PROPERTY
   AND DIRECTOR OF THE UNITED STATES
     PATENT AND TRADEMARK OFFICE,
             Defendants-Appellees
            ______________________

                      2018-1122
                ______________________

   Appeal from the United States District Court for the
Eastern District of Virginia in No. 1:17-cv-00482-LMB-
TCB, Judge Leonie M. Brinkema.
                ______________________

                Decided: July 17, 2018
                ______________________

   MITCHELL R. SWARTZ, Weston, MA, pro se.

    NATHAN K. KELLEY, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
defendants-appellees. Also represented by MICHAEL S.
FORMAN, BENJAMIN T. HICKMAN, THOMAS W. KRAUSE;
2                                             SWARTZ v. PATO




TRACY DOHERTY-MCCORMICK, KIMERE JANE KIMBALL,
Office of the United States Attorney for the Eastern
District of Virginia, Alexandria, VA.
                  ______________________

    Before PROST, Chief Judge, NEWMAN and LINN, Circuit
                         Judges.
PER CURIAM.
    Mitchell R. Swartz brought a complaint in the East-
ern District of Virginia pursuant to 35 U.S.C. § 145, in
which he challenged the decision of the U.S. Patent
Trademark Office rejecting six of Swartz’s patent applica-
tions—U.S. Patent Application No. 12/932,058; No.
12/589,258; No. 13/544,381; No. 12/316,643; No.
09/748,691; and No. 09/750,765—as unpatentable under
35 U.S.C. §§ 101 and 112. Swartz also alleged various
forms of misconduct by the patent office. The district
court dismissed his complaint under Fed. R. Civ. P.
12(b)(1) and 12(b)(6) and Swartz now appeals. Swartz v.
Matal, No. 1:17-cv-482 (E.D.Va. Aug. 22, 2017)
(Brinkema, J.) (“District Court Op.”). Because the District
Court did not err, we affirm.
    We begin with the ‘381 application. Section 145 cre-
ates a cause of action to challenge a “decision of the
Patent Trial and Appeal Board.” At the time Swartz filed
his complaint in district court, and throughout the pen-
dency of this action before the district court’s decision, the
Board had not yet issued its decision with respect to the
’381 application. Because there was no “decision” of the
Board to challenge with respect to that application, the
district court properly dismissed that portion of Swartz’s
claim.
    The district court also properly dismissed Swartz’s
claims with respect to the ’058 and ’765 applications on
the bases of collateral estoppel. In In re Swartz, 50 F.
App’x 422, 424-25 (Fed. Cir. 2002) (“Swartz II”) (per
SWARTZ v. PATO                                           3



curiam), this court affirmed the rejection of Swartz’s U.S.
Patent Application No. 08/406,457 for failure of utility
and enablement. The at-issue ’058 application is a con-
tinuation of the ’457 application, and the representative
claims in the two are “identical,” as represented by the
Board and uncontested by Swartz.
    Similarly, in In re Swartz, 232 F.3d 862, 864 (Fed.
Cir. 2000) (“Swartz I”), this court held that the claims of
Swartz’s U.S. Patent Application No. 07/760,970 were
unpatentable for failure of utility and enablement. The
at-issue ’765 application is a continuation of the ’970
application, and the representative claims in the two are
nearly identical.
    The core requirements for collateral estoppel are that:
the issue in question is identical to an issue previously
decided, the issue was actually litigated in the prior
proceeding, the resolution of the issue was necessary to
the prior judgment, and the party challenging the issue
must have been given a full and fair opportunity to liti-
gate the issue in the prior proceeding. Jet, Inc. v. Sewage
Aeration Sys., 223 F.3d 1360, 1366 (Fed. Cir. 2000).
Swartz argues that the district court wrongly applied
estoppel here because he submitted new references not
present in the previous appeals to show utility, and
because the applications here no longer include explicit
references to cold fusion.
     Neither the new references nor the elimination of ex-
plicit reference to cold fusion avoids the application of
collateral estoppel. Swartz has not shown that these
differences “materially alter the question of invalidity.”
See Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333,
1342 (Fed. Cir. 2013). Substantially identical claims were
4                                              SWARTZ v. PATO




previously found to be invalid as lacking utility and not
enabled. That holding is binding on Swartz. 1
     We turn next to the ’258, ’643, and ’691 applications.
The PTO carries the initial burden of challenging the
utility of an invention. In re Brana, 51 F.3d 1560, 1566
(Fed. Cir. 1995). However, the PTO carries that burden if
the patent “suggest[s] an inherently unbelievable under-
taking or involve[s] implausible scientific principles.” Id.
As we have held, cold fusion suggests such an inherently
unbelievable undertaking. Swartz I, 232 F.3d at 864.
The burden therefore shifted to Swartz to show sufficient
evidence to convince an ordinarily skilled artisan of the
inventions’ utility. Id. at 864. The evidence and argu-
ments Swartz presents do not satisfy this burden.
     Swartz makes two inconsistent arguments: his inven-
tions are not directed to cold fusion or LENR, and he
presented new evidence to the district court proving the
utility of LENR technology.
    First, Swartz’s assertion that his inventions are not
directed to cold fusion or LENR technology is baseless.
The references Swartz relies on here are related to LENR
technology.    Moreover, the parent applications were
expressly directed to cold fusion, as we previously held.
    Second, the new evidence submitted by Swartz does
not cure the lack of enablement or utility. The new evi-
dence comprised reports by the Defense Intelligence
Agency (“DIA”), Defense Threat Reduction Agency
(“DTRA”), and other scientific articles.



    1    That this case is proceeding under § 145 in the
district court, instead of through a direct appeal from the
U.S. Patent and Trademark Office (“PTO”) is also inappo-
site—it is the identity of issues, inter alia, not the cause of
action, that gives rise to collateral estoppel.
SWARTZ v. PATO                                           5



      The DIA report cited Swartz’s research to support the
statement, “In May 2002, researchers at JET Thermal in
Massachusetts reported excess heat and optimal operat-
ing points for LENR manifolds.” That same report indi-
cates fundamental skepticism about the result of the
research. It notes that scientists from various nations
“are devoting significant resources to this work in the
hope of finding a new clean energy source. Scientists
worldwide have been reporting anomalous excess heat
production, as well as evidence of nuclear particles and
transmutation.” It also states, “If nuclear reactions in
LENR experiments are real and controllable, DIA assess-
es that whoever produces the first commercialized LENR
power source could revolutionize energy production and
storage for the future.” The DIA report also states that
“much skepticism remains” about LENR programs. The
DTRA reference strikes a similar note. It explains that
LENR reactions “are showing some remarkable progress
. . . but experiments remain only thinly reproducible,”
that they “suffer[] from a basic lack of understanding of
the governing physics,” and that “it seems unlikely that
deployable/useable devices could be expected within a five
to ten year horizon.”
     These references do little to overcome the presump-
tion of no utility. At best, they demonstrate some positive
experimental results attained by Swartz, tempered by
much remaining skepticism and uncertainty about the
utility of the discussed technology. With respect to the
remaining declarations and articles, the district court
correctly concluded, “nowhere, for example, does [Swartz]
explain how an invention described in any of the relevant
patent applications was used in the course of any of the
referenced demonstrations or experiments.”         District
Court Op. at 11.
    Swartz presents a number of additional arguments,
none of which have merit. Swartz cites In re Oetiker, 977
F.2d 1443 (Fed. Cir. 1992) for the proposition that the
6                                             SWARTZ v. PATO




Board failed to make its prima facie case of invalidity. As
discussed above, applications that suggest inherently
unbelievable inventions satisfy the Board’s initial burden
to show lack of utility, and we have previously held that
Dr. Swartz’s LENR-related inventions here properly fall
within that realm.
    Swartz argues that the district court failed to apply
the de novo review required under § 145. See Kappos v.
Hyatt, 566 U.S. 431, 444 (2012). The district court explic-
itly applied a de novo standard of review, citing Hyatt.
District Court Op. at 7.
    Swartz argues that the PTO failed to “docket[]” and
“sequestered” documents. Swartz does not explain what
documents were not docketed or were hidden, or by whom,
or their potential relevance to the utility and enablement
determinations. Swartz also argues that the PTO “misde-
scribed” several of his patent applications as directed to
cold fusion. According to Swartz, the ’058 application is
properly directed to “a heat measurement system” and the
’765 application is properly directed to “a measurement of
hydrogen loading into a metal.” Regardless of how the
applications are described, however, the nearly identical
claims presented in the ’058 and ’765 applications have
already been determined in Swartz I and Swartz II to be
within the realm of the inherently unbelievable and,
therefore, unpatentable. As discussed above, collateral
estoppel properly forecloses revisiting that issue here.
     Swartz argues that the PTO has issued patents in the
field, citing Dr. Swartz’s applications. Each patent is
evaluated on its own terms, however, and the citation to
Dr. Swartz’s applications does not demonstrate their
utility.
    Swartz next argues that the district court erred in
dismissing his various Constitutional claims for discrimi-
nation, violation of due process, violation of his right to an
impartial tribunal under 28 U.S.C. § 144, and violation of
SWARTZ v. PATO                                           7



the patents clause of the Constitution. Swartz specifically
relies on 42 U.S.C. § 1983 and Bivens v. Six Unknown
Named Agents, 403 U.S. 388 (1971) to support these
violations. Swartz does not explain why the district court
erred in its conclusions that 42 U.S.C. § 1983 only applies
to actions taken under color of law by “any State or Terri-
tory,” not the federal government, and that a Bivens
action cannot be brought against a federal employee in his
official capacity. Swartz also has not proffered anything
but a bare assertion of prejudice by the district court.
Finally, Swartz has not shown error in the district court’s
dismissal of his challenge under the patent clause of the
Constitution. His entitlement to a patent under that
provision is framed and defined by Title 35 of the U.S.
Code, which includes explicit requirements for utility and
enablement. Because the Board and district court ade-
quately showed that Swartz’s inventions lack utility and
enablement, he is not entitled to patents on those inven-
tions.
    We have considered Swartz’s other arguments, includ-
ing his allegations of intentional torts, fraudulent state-
ments, and criminal misconduct, and find them lacking in
any merit.
                      AFFIRMED
                          Costs
   No costs.
