Louis W. Parker, Plaintiff-Appellee-Cross v. Motorola, Inc., Defendant-Appellant-Cross

524 F.2d 518, 188 U.S.P.Q. (BNA) 225, 1975 U.S. App. LEXIS 11590
CourtCourt of Appeals for the Fifth Circuit
DecidedDecember 8, 1975
Docket74-1803
StatusPublished
Cited by55 cases

This text of 524 F.2d 518 (Louis W. Parker, Plaintiff-Appellee-Cross v. Motorola, Inc., Defendant-Appellant-Cross) is published on Counsel Stack Legal Research, covering Court of Appeals for the Fifth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Louis W. Parker, Plaintiff-Appellee-Cross v. Motorola, Inc., Defendant-Appellant-Cross, 524 F.2d 518, 188 U.S.P.Q. (BNA) 225, 1975 U.S. App. LEXIS 11590 (5th Cir. 1975).

Opinion

SIMPSON, Circuit Judge:

Louis W. Parker, a professional inventor, brought suit against Motorola, Inc., 1 alleging infringement of United States Patent No. 2,773,119 (’119), titled “Tuning System for Radio and Television Receivers”. Motorola’s answer denied infringement, and alleged invalidity of the ’119 patent as obvious in light of prior art. Motorola’s answer asserted invalidity of the patent for fraud in its procurement consisting of (a) material misrepresentations by Parker to the United States Patent Office, and (b) failure by Parker to satisfy the duty of complete candor and good faith required in the prosecution of a patent.

The parties stipulated prior to trial that the suit would be tried as to alleged infringing subject matter on the Motorola color television receivers employing chassis TS — 915 as representative of the Motorola chassis TS — 915, TS — 919 and TS — 921 each of which has a fine tuning indicator, and on Motorola chassis TS— 934, as representative of those Motorola *521 television receiver circuits which have Automatic Fine Tuning (AFT).

The district judge found the Parker ’119 patent valid, that the Motorola color television chassis TS — 915 infringed the ’119 patent, but that the Motorola color television chassis TS — 934 did not infringe the ’119 patent. The judgment was directed to be final except as to an accounting for damages for infringement, the ascertainment of which was referred to a Special Master. Motorola appeals from the judgment as to the findings of validity and infringement of the TS — 915 chassis. Parker cross-appeals with regard to the finding of non-infringement by the TS-934 chassis. We reverse as to the validity of the ’119 patent, and, hence, do not reach the issue of infringement. Hughes Tool Co. v. Ingersoll-Rand Co., 5 Cir. 1971, 437 F.2d 1106, cert. denied 403 U.S. 918, 91 S.Ct. 2230, 29 L.Ed.2d 696.

PRESUMPTION OF VALIDITY

We consider initially the effect of the statutory presumption of validity normally attaching to patents which survive the scrutiny of the Patent Office. Title 35, U.S.C., Section 282. This presumption is based upon (a) the acknowledged experience and expertise of the Patent Office personnel, and (b) recognition that patent approval is a species of administrative determination supported by evidence. Beckman Instruments, Inc. v. Chemtronics, Inc., 5 Cir. 1970, 439 F.2d 1369, 1374, cert. denied 400 U.S. 956, 91 S.Ct. 353, 27 L.Ed.2d 264; Neff Instrument Corp. v. Cohu Electronics, Inc., 9 Cir. 1961, 298 F.2d 82; Georgia Pacific Corp. v. United States Plywood Corp., 2 Cir. 1958, 258 F.2d 124, 133, cert. denied 358 U.S. 884, 79 S.Ct. 124, 3 L.Ed.2d 112. While we have sometimes failed to define the quantum of proof necessary to rebut the presumption, we have held that the applicable standard is proof greater than a mere preponderance of the evidence. Railex Corp. v. Speed Check Co., 5 Cir. 1972, 457 F.2d 1040, 1043, cert. denied 409 U.S. 876, 93 S.Ct. 125, 34 L.Ed.2d 128; Hobbs v. United States Atomic Energy Commission, 5 Cir. 1971, 451 F.2d 849, 856. The court below alternatively applied the standards of clear and convincing proof and proof beyond a reasonable doubt, and held that under either Motorola had failed to carry its burden. 2 This was the underpinning for the holding of validity of the ’119 claims.

However, despite any ambiguity in this court’s opinions as to the applicable standard of proof, we have made it clear that when a defendant in an infringement suit attacks the validity of a patent on the ground that it was issued without consideration by or presentation to the Patent Office of pertinent prior art, the reason for the presumption dissipates, and the presumption is weakened. Harrington Manufacturing Co., Inc. v. White, 5 Cir. 1973, 475 F.2d 788, 795, cert. denied 414 U.S. 1040, 94 S.Ct. 542, 38 L.Ed.2d 331; Beckman Instruments, Inc., supra at 1374; Johns-Manville Corp. v. Cement Asbestos Products Co., 5 Cir. 1970, 428 F.2d 1381; Ingersoll-Rand Co. v. Brunner & Lay, Inc., 5 Cir. 1973, 474 F.2d 491, 496, cert. denied 414 U.S. 865, 94 S.Ct. 125, 38 L.Ed.2d 117; Cornell v. Adams Engineering Company, 5 Cir. 1958, 258 F.2d 874. In these circumstances a court must as a minimum scrutinize the patent claims in suit more closely than when the presumption is at full force. Gaddis v. Calgon Corp., 5 Cir. 1975, 506 F.2d 880, 885; Garrett Corp. v. American Safety Flight Systems, Inc., 5 Cir. 1974, 502 F.2d 9. The file wrapper of the Parker ‘119 patent discloses that the Patent Office did not consider the prior art references relied upon by Motorola in its defense of invalidity, 3 so that here the Section 282 presumption was diluted.

Additionally where — as here — evidence of unconsidered prior art appears in combination with evidence of omissions or inaccuracies in the materials presented to the Patent Office in sup *522 port of the application, the bases for the statutory presumption disappear. See Armour and Company v. Swift & Co., 7 Cir. 1972, 466 F.2d 767; National Filters, Inc. v. Research Products Corp., 5 Cir. 1967, 384 F.2d 516, 520; Lodge & Shipley Co. v. Holstein and Kappert, S.D.Tex. 1970, 322 F.Supp. 1039; Ansul Co. v. Uniroyal, Inc., S.D.N.Y.1969, 301 F.Supp. 273, affd. 2 Cir. 1971, 448 F.2d 872, cert. denied 404 U.S. 1018, 92 S.Ct. 680, 30 L.Ed.2d 666. Because the district court ignored the effect of the above factors on the statutory presumption of validity we examine the claims of the T19 patent more carefully than would be necessary otherwise.

Even though the presumption is seriously weakened we will construe the claims of the T19 patent as narrowly as possible so as to avoid the prior art to the extent that such a construction comports with reason. Sterner Lighting, Inc. v. Allied Elec. Supply, Inc., 5 Cir. 1970, 431 F.2d 539, cert. denied 401 U.S. 909, 91 S.Ct. 869, 27 L.Ed.2d 807. In addition, close examination of the file wrapper history of the T19 patent is necessary not only for a proper construction of the patent claims, but also because of Motorola’s contention that the patent was obtained by Parker by misrepresentations to the Patent Office. Waldon, Inc. v. Alexander Manufacturing Co., 5 Cir. 1970, 423 F.2d 91, 93; Bros. Inc. v. W. E. Grace Manufacturing Co., 5 Cir. 1965, 351 F.2d 208, 213, cert.

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524 F.2d 518, 188 U.S.P.Q. (BNA) 225, 1975 U.S. App. LEXIS 11590, Counsel Stack Legal Research, https://law.counselstack.com/opinion/louis-w-parker-plaintiff-appellee-cross-v-motorola-inc-ca5-1975.