Research Corporation v. Radio Corporation of America

• Decision Date: 25 February 1960
• Docket Number: Civ. A. No. 2147.
• Citation: 181 F. Supp. 709
• Parties: RESEARCH CORPORATION, Plaintiff, v. RADIO CORPORATION OF AMERICA, Defendant.
• Court: U.S. District Court — District of Delaware

181 F. Supp. 709

RESEARCH CORPORATION, Plaintiff, v. RADIO CORPORATION OF AMERICA, Defendant.

Civ. A. No. 2147.

United States District Court D. Delaware.

February 25, 1960.

Arthur G. Connolly and Thomas Cooch, of Connolly, Cooch & Bove, Wilmington, Del., R. Morton Adams and Frank F. Scheck, of Pennie, Edmonds, Morton, Barrows and Taylor, New York City, and Melvin R. Jenney, of Kenway, Jenney, Witter & Hildreth, Boston, Mass., of counsel, for plaintiff.

Caleb S. Layton and Rodney M. Layton, of Richards, Layton & Finger, Wilmington, Del., and Stephen H. Philbin, of Fish, Richardson & Neave, New York City, of counsel, for defendant.

CALEB M. WRIGHT, Chief Judge.

This matter is before the court on defendant, Radio Corporation of America's motion to stay the present infringement action commenced by plaintiff, Research Corporation, pending the conclusion of interference proceedings in the Patent Office involving a contest over priority of invention between the same parties with respect to 12 of the 29 claims in plaintiff's patent. The patent in suit, Forrester No. 2,736,880, covering a "Multi-coordinate Digital Information Storage Device", issued February 28, 1956 on an application filed May 11, 1951.

Paragraph VII of the complaint states:

"VII. Defendant has claimed that certain claims of said patent, namely, claims 1, 2, 3, 6, 7, 9, 11, 12, 16, 22, 25 and 26 are invalid on the alleged ground that the patentee, Forrester plaintiff's assignor, was not the first inventor thereof but that one Rajchman, an employee of defendant and assignor to defendant, was the original inventor thereof."

Plaintiff thereafter prays, in part, for a judgment, "2. that Rajchman is not the prior inventor as to claims 1, 2, 3, 6, 7, 9, 11, 12, 16, 22, 25 and 26 thereof".

The Rajchman application serial No. 187,733 was filed in the Patent Office on September 30, 1950, about seven months prior to the May 11, 1951 filing date of the Forrester application. The Rajchman application has not culminated in the issuance of a patent.

On April 10, 1956, Rajchman amended his application, copying 12 claims of the Forrester patent, asserting that the 12 claims had been improperly granted to Forrester, because he, Rajchman, was the prior inventor. Thereafter, on September 25, 1956 the Patent Office declared an interference between the Rajchman application and the Forrester patent with respect to the 12 claims. The action in this court was initiated on November 9, 1959 and promptly thereafter on November 25 defendant filed the present motion to stay.

A motion to stay is addressed to the sound discretion of the court, and the denial or grant of a stay is predicated upon the inherent power of a court to control its docket.¹ An exhaustive search discloses only three reported decisions presenting similar factual settings to the case at bar. In two, stay was denied² and in one, it was granted.³

The patent in question has been in litigation in the Patent Office since September 1956, three years prior to the institution of the present suit. The motion to stay was timely, consequently the pending action has not proceeded past the pleading stages. Plaintiff does not assert that priority is an inconsequential issue. To the contrary, from the record now before the court it appears that the priority contention will, in fact, be a prominent issue in the infringement suit. As indicated, Paragraph VII of the complaint is specifically directed to defendant's claims asserted in the interference proceeding. Plaintiff's second prayer seeks a favorable determination with respect to the 12 contested claims.

The issue of priority is indeed unique for defendant's contention is based on a prior recorded application to that forming the basis of plaintiff's patent. Thus, perhaps there is merit to defendant's suggestion that by an oversight or error in the Patent Office no interference was initially declared. This matter need not, however, be resolved; for, as previously expressed and as subsequently noted, there exist persuasive reasons indicating a stay to be in order.

Of no little consequence is the different burdens of the respective parties depending upon the tribunal in which this issue be litigated. In view of defendant's prior application, plaintiff bears the initial risk of nonpersuasion in the Patent Office. In the present infringement suit, however, by virtue of the presumption of validity attending the issuance of a patent, defendant, in effect, must shoulder the burden.

Predominating in this determination are policy considerations. There is no sound reason why litigation between the same parties and embracing common issues be prosecuted simultaneously. Not only is an economic hardship imposed upon the parties, but litigation in two tribunals at the same time is a luxury not compatible with the efficient administration of justice. Different circumstances might warrant the invocation of policy considerations other than those indicated, compelling a different determination. No such case has been presented here.

The fact that the Patent Office is an administrative body is no barrier to a stay. The language of Chief Judge Leahy in Illinois Iowa Power Co. v. North American Light & Power Co.⁴ is peculiarly appropriate:

"Where there is available in proceedings before an administrative agency a remedy, including a final resort to a court at an appropriate stage to review the administrative conclusion, stay should be granted. Propriety of a stay brings up no novel

...