In re Clark

522 F.2d 623, 187 U.S.P.Q. (BNA) 209, 1975 CCPA LEXIS 129

• Court: Court of Customs and Patent Appeals
• Decided: September 25, 1975
• Docket: Patent Appeal No. 75-505
• Status: Published

Opinions

RICH, Judge.

This appeal is from a decision of the Patent and Trademark Office Board of Appeals affirming the examiner’s rejection of all claims remaining in an application to reissue a patent.¹ The examiner rejected the reissue application on three separate grounds and the board affirmed all three. We affirm.

The first ground was, speaking generally and in the words of the board, a rejection “(1) Under 35 U.S.C. 251,” the statute authorizing reissue of defective patents. That statute reads, in pertinent part:

§ 251. Reissue of defective patents Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Commissioner shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent.

In his first action on the reissue application the examiner rejected all claims under § 251 for two reasons. First, the examiner said that in view of the decision of the Court of Appeals in Beckman Instruments, Inc. v. Chemtronics, Inc., 428 F.2d 555 (5th Cir.), cert. denied, 400 U.S. 956, 91 S.Ct. 353, 27 L.Ed.2d 264 (1970), “applicant is not deemed to have satisfied the statutory requirement of a lack of ‘deceptive intention’.” Second, the examiner said that in view of the statement in the reissue oath (declaration)

* * * that the purpose of this reissue application is to amend certain claims in order to make more explicit structural features already implicit in those claims

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“reissue would not be proper.”

After considering extensive arguments by appellant, the examiner, in his final rejection, repeated and adhered to both of his reasons for rejecting all claims under § 251. As to the first reason he said,

Applicant is reminded that the Court of Appeals of the Fifth Circuit found the Clark patent to be invalid for the deliberate failure to fulfill the uncomprising [sic, uncompromising] duty of full and good faith disclosure to the Patent Office. This is considered to be sufficient ground for rejection under 35 U.S.C. 251 as not meeting the requirement of lacking deceptive intent.

As to the second reason, he reiterated that making more explicit structural features already implicit in claims “is not a proper basis for seeking reissue.”

In his Examiner’s Answer, responding to appellant’s appeal brief, the examiner pointed out, inter alia, that this application is to reissue a patent involved in a litigation in which the Fifth Circuit Court of Appeals had held the patent invalid because of plaintiffs’ (the plaintiffs being appellant and his exclusive licensee, by whom the application for the patent sought to be reissued had been prosecuted) “failure to fulfill the ‘uncompromising duty’ of full and good faith disclosure to the Patent Office.” That failure resided in not disclosing to the Patent Office the Stow et al. publication, well known to plaintiffs at the time and clearly known to them to be of pivotal importance in determining the patentability of Clark’s claims.²

As the examiner had done previously, he equated the deliberate failure to disclose the Stow et al. reference to the Patent Office with failure to comply with § 251, which requires that whatever the defect in the patent may be it shall have occurred “through error without any deceptive intention.” He then concluded:

The deliberate failure to fulfill an uncomprising [sic] duty of disclosure as found by the Court of Appeals is considered sufficient ground for rejection under 35 USC 251.

And, summarizing his previously-stated second reason for noncompliance with § 251, he said:

The rejection under 35 USC 251 is also proper because applicant alleges in the oath * * * that the sought changes merely “make more explicit structural features already implicit in those claims.” If this is so, re-issue is not proper.

The board, in affirming the rejection under § 251, said (emphasis added):

Deliberate conduct, found by the Court of Appeals to justify a finding of invalidity [of the patent] based upon such conduct, in our view, is sufficient to preclude a finding that there was error within the meaning of 35 U.S.C. 251, to permit reissue of the patent. Therefore, the Examiner’s rejection under 35 U.S.C. 251 is sustainable.

The opinion of the Fifth Circuit Court of Appeals, in the suit above referred to, summarized the court’s decision on validity of the patent sought to be reissued by saying, in part:

We find the patent sued upon in this case to be invalid for two independent reasons. * * * The second is that Beckman, in securing the patent, failed to fulfill the “uncompromising duty” of disclosure of an applicant before the Patent Office, because Beck-man, while possessed of information regarding Stow’s invention and realizing its significance, omitted that information from its patent application.

The court followed up that statement with a full discussion of the second ground in section II B of its opinion wherein it said, inter alia, after reciting the facts with respect to the knowledge and relevance of the Stow et al. reference:

Appellants’ only reply to these facts is that they did not consider Stow’s work to be relevant prior art. This assertion, however, is rendered utterly incredible both by Beckman’s conduct and by the obvious similarity of the Stow and Clark devices. * * * there was no excuse for appellants’ failure to disclose Stow’s work to the Patent Office, and this conclusion prevents us from considering Beckman’s conduct as fulfilling an “uncompromising duty” of good faith disclosure.

OPINION

It was appropriate that the examiner should have given initial consideration to the question of whether a proper ground for reissue existed under § 251. That is the first order of business in examining an application for reissue. Stringham, Patent Soliciting and Examining, Sec. 297, pp. 577-78 (1934); McCrady, Patent Office Practice, Sec. 222 (4th ed. 1959); Manual of Patent Examining Procedure 1401.08. This entails a consideration of the grounds stated in the reissue oath or declaration on the basis of which reissue is sought. Only after that hurdle has been cleared is it necessary to consider the issues of patentability of the reissue claims over prior art, as developed on further examination of new or amended claims or reexamination of retained patent claims. See 37 CFR 1.175 and 1.176.

The instant application does not clear the first hurdle and its rejection must be affirmed on that ground. It is therefore unnecessary to consider other questions discussed in the briefs and arguments.

This opinion is sharply focused on the single question of whether appellant has presented a good case for reissue of his patent under § 251.

Claims 1, 2, 6, 7 and 8 are the only claims on which he appealed to the board and on which he appeals here. As the board found, claims 2 and 8 are the same as claims of the patent. Appellant admitted before the board that the remaining claims are “in substance” the same as claims in the patent. This is in accord with the allegation in the reissue declaration with reference to all of the claims initially contained in the reissue application (many of which were cancelled) “that the purpose of this reissue application is to amend certain claims in order to make more explicit structural features already implicit in those claims * *.” (Emphasis added.) Appellant’s Reply Brief before the board similarly admits: “It is true that the claims on appeal are in substance claims which were in the original patent.” We see no change in the subject matter delineated by these “changed” claims.

Simple logic forces the conclusion that appellant never thought he was claiming “more or less than he had a right to claim in the patent.” It could not have been for that statutory reason that reissue was applied for. The declaration of the reissue application' alleges nothing “defective” in the specification or drawing. It is true that some amendments were made to the specification but not until after the final rejection of the reissue application. Consequently, they are not referred to in the declaration as curing defects or as reasons why reissue was necessary. Furthermore, the amendments are all mere deletions, the first being of a formalistic reference to the general field to which the invention “relates” and the remainder being the deletion of three stated “objects” of the invention. Obviously they were deleted merely because the opinion of the Court of Appeals had referred to them in its discussion of claim scope and validity in view of the prior art. These omissions from the specification, however, are no more substantive than the changes in the claims, which were not made until the reissue application had been examined and rejected.

It being apparent that in filing his application for reissue appellant asserted no defects in the specification, drawing, or claims, it may well be asked what his purpose was. Considering the substance of the reissue declaration, it clearly constitutes an argument as to the differences between what he claimed in his patent and the prior art, particularly Stow et al., and a justification of his failure to call the Stow et al. reference to the attention of the Patent Office. The declaration amounts to nothing more than an argument that the Fifth Circuit Court of Appeals erred in holding his patent claims invalid over prior art and a request that the Patent Office issue him a new patent (with specification and claims unchanged “in substance”) over the art on which the court relied, of which art the Office, by virtue of the litigation, is now, of course, fully informed.³ See MPEP 1401.09(a).

Appellant has failed to comply with § 251 because he has not cleared the condition that the patent be inoperative or invalid through some “error.” Appellant has pointed to no error on his part but only to alleged error by the Fifth Circuit Court of Appeals.

In the Fifth Circuit litigation, the patent was held invalid on two grounds: (A) unpatentability over Stow et al. and (B) Clark’s failure to disclose the Stow invention to the Patent Office. The latter point is controlling here, because if it does not fall within the concept of “error” in § 251, it negatives the right to reissue apart from all other considerations. Ground (B), furthermore, goes to the patent right as a whole, independently of particular claims.

The holding of invalidity of the Clark patent on ground (B) was not because of any defect in the patent or the unpatentability of any claim but because of inequitable or at least impermissible conduct on the part of the applicant, or on the part of those he entrusted with the prosecution of his application, by whose acts he is bound under elementary legal principles.

The failure to disclose Stow et al. to the examiner resulted in the Fifth Circuit deeming appellant’s patent to be invalid, and it is this act, whether the Fifth Circuit was correct or not, which impelled appellant to seek a reissue. We cannot accept appellant’s argument that the failure to disclose was an error in the sense that it arose by inadvertence, accident, or mistake. See In re Wadlinger, 496 F.2d 1200 (CCPA 1974). The record, which includes the evidence before the Fifth Circuit as well as the papers in the instant reissue application, shows that Beckman, appellant’s agent, was aware of Stow et al. and, as further shown by the Strickler memorandum, supra note 2, recognized its relevance as prior art. The reissue declaration, furthermore, states (emphasis added):

that [Clark] believes said original patent 2,913,386 to be wholly or partially invalid because he claimed more than he intended to claim in some of the claims of said patent, in that features set forth in such claims which he believed to be definitive in distinguishing devices of his invention from other electrochemical devices were held, in a decision of the United States Court of Appeals for the Fifth Circuit entitled Beckman Instruments, Inc. et al vs. Chemtronics, Inc. et al, 428 [482] F.2d 555, 165 USPQ 355, cert. den. [400 U.S. 956, 91 S.Ct. 353] 27 L.Ed.2d 264, not sufficiently explicit;

that he believed the claims of said patent were definitively directed to polarographic devices, a type of measuring device, which he believes has achieved a distinct status in the field of measuring devices,

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that he did not bring such devices to the attention of the Patent Office and this was not for the purpose of deception or deliberately concealing such devices but was based on his belief that such devices were so fundamentally different from the polarographic devices disclosed in said patent as to be, in his opinion, and in the opinions of others skilled in this art, irrelevant when compared to the prior art devices mentioned in column 1, lines 32 to 64 of said [Clark] patent;

While appellant may have believed that Stow et al. was not a relevant reference, the Patent and Trademark Office now has ample evidence from which to conclude that Stow et al. was known by Beckman to be highly relevant prior art. The duty to disclose relevant, material prior art under these circumstances, known to the applicant or his agents and not found by the examiner, is well established. The Strickler memorandum shows how relevant and material Beckman considered Stow et al. to be. If appellant considered his claims sufficiently narrow to be clear of the close Stow et al. reference, the examiner, and not he or “others skilled in this art,” was the person to decide whether appellant’s original claims had been amended sufficiently to be patentable over Stow et al. We do not agree that appellant could, under the state of the law in 1956 or now, amend claims expressly to avoid a § 102 reference unknown to the examiner and justifiably consider there was no duty to bring that reference to the examiner’s attention. We see no error, accident, inadvertence, or mistake in these facts.

Reissue is not available to rescue a patentee who had presented claims limited to avoid particular prior art and then had failed to disclose that prior art (the examiner not having cited it) after that failure to disclose has resulted in the invalidating of the claims. The sole goal of appellant in soliciting a reissue is to have the examiner re-examine his claims in light of the reference he originally failed to disclose in order, apparently, to relieve him of the consequences of his failure.⁴

While this court has often said that § 251 is to be liberally construed as a remedial statute, In re Oda, 443 F.2d 1200, 58 CCPA 1353 (1971), we do not feel that such liberalism extends to eradication of a dereliction of a duty by what is, in effect, a re-prosecution in which the examiner is now given an opportunity to pass on patentability in light of a very pertinent reference which the applicant knowingly withheld from him. We cannot equate this with “error,” or with “inadvertence, accident, or mistake.”

We have given full consideration to the views of the district court on remand in Beckman Instruments, Inc. v. Chemtronics, Inc., 328 F.Supp. 1132 (W.D.Tex. 1971), in which the court found appellant and its licensee Beckman had not been guilty of any willful and deliberate misrepresentation of a material fact with an intent to deceive the examiner, so as to incur antitrust liability under Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172, 86 S.Ct. 347, 15 L.Ed.2d 247 (1965).

Walker Process dealt with an allegation of fraudulent procurement of a patent and with the traditional elements of fraud. The district judge’s opinion on remand in Beckman found them missing. Like the two opinions in Walker Process, he distinguished honest mistake and other bona fide actions with respect to matters which may result in patent invalidity — sometimes classified as “technical fraud,” which is not fraud at all. Appellant would have us put his conduct in the latter category and on that basis accord to him the right to overcome his failure to perform his uncompromising duty through reissue, holding it was just an “error” under § 251. That we will not do. The attempt comes to late. Even though it is not fraud, an applicant or his agent cannot knowingly withhold relevant prior art from the examiner until he finds out whether such action invalidates his patent and then apply for reissue only if he loses the gamble on the ground he made an “error.” When, as here, a holding of invalidity has been decreed by a court of appeals for a flagrant dereliction of duty to disclose, reissue is not available for expiation.

The decision of the board is affirmed.

Affirmed.

1 . Application serial No. 122,656, entitled “Electrochemical Device for Chemical Analysis,” filed March 10, 1971, to reissue patent No. 2,913,386, granted Nov. 17, 1959.

2 . In support of the statement that Stow et al. was a very important item of prior art, it suffices to repeat a quotation from a memorandum to Beckman’s manager of engineering from its patent liason employee, Strickler, which is found in the Fifth Circuit Court of Appeals’ opinion at 428 F.2d 565, also in the record before us:

A related matter has now come up that creates a rather ticklish situation. As of early 1954, Dr. Richard W. Stow of Ohio State University Medical Center corresponded with our [Beckman’s] Sales Department * * * concerning a glass electrode adaptation that he was developing for pCÜ2 measurement * * *. The electrode is similar to the Clark design in that reference and measuring electrodes are both placed behind a single semi-permeable membrane. The Stow device is clearly within the scope of claims now in the Clark application * * Clark and Stow have known about each others’ work * * *

We do not at the present time know whether Clark or Stow is the prior inventor as concerns the broad claims of the Clark application.

Thereafter, Beckman amended the claims in an attempt to avoid the Stow et al. reference and prosecuted the application to issuance without disclosing Stow et al. to the examiner, who did not discover it on his own.

3 . Appellant’s reply brief contains the statement: “while the Patent Office did not have the opportunity to consider the Stow et al reference in the prosecution of the original Clark patent application, this application for reissue has given the Patent Office that opportunity * * (Emphasis added.)

4 . This case does not require us to decide, and we do not decide, whether it is proper to seek reissue in order to disclose uncited prior art where no holding of invalidity has arisen from the patentee’s failure to have disclosed the pri- or art.