Albert v. Kevex Corp., s. 83-720

• Decision Date: 06 March 1984
• Docket Number: Nos. 83-720,83-781,s. 83-720
• Citation: 729 F.2d 757,221 USPQ 202
• Parties: Richard D. ALBERT, Appellee, v. KEVEX CORPORATION, Appellant. Richard D. ALBERT, Appellant, v. KEVEX CORPORATION, Appellee. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 757

729 F.2d 757

221 U.S.P.Q. 202

Richard D. ALBERT, Appellee, v. KEVEX CORPORATION, Appellant.

Richard D. ALBERT, Appellant, v. KEVEX CORPORATION, Appellee.

Appeal Nos. 83-720, 83-781.

United States Court of Appeals Federal Circuit.

March 6, 1984.

David B. Harrison and Michael Baker, San Mateo, Cal., argued for appellant.

Julian Caplan, Menlo Park, Cal., submitted for appellee.

Before RICH, DAVIS, BENNETT, MILLER and SMITH, Circuit Judges.

RICH, Circuit Judge.

These two appeals derive from a patent case in which the original complaint contained three counts and an amended complaint contained two more, pleading a total of five causes of action. The first two were suits by Albert against Kevex Corporation (Kevex) for the infringement of two patents owned by Albert and are not before us. The third count was a type of action now rarely seen, an "interfering patents" suit predicated on 35 U.S.C. Sec. 291, ¹ and has given rise to appeal No. 83-720. The fourth count, based on California state law, is entitled "Wrongful Interference With Prospective Business Advantage," and the fifth count is for violation of the Sherman and Clayton Acts. Counts four and five are the subject of appeal No. 83-781.

In this suit before Judge Eugene F. Lynch in the District Court for the Northern District of California, the court entered an order on December 23, 1982, granting Albert's motion for summary judgment holding invalid a patent owned by Kevex, No. 3,919,548 to David E. Porter (Porter patent).

It is important to note that the Porter patent was before the court only by reason of Albert's allegation, denied by Kevex, that it interfered with one of Albert's two patents in suit, No. 4,260,885 ('885 patent), alleged to be infringed by Kevex.

The Porter patent was held invalid by summary judgment under 35 U.S.C. Sec. 102(b) on the ground that the device claimed therein had been in public use or on sale more than one year before Porter filed his application. Kevex appeals from that holding, appeal No. 83-720.

The trial court entered another order on January 13, 1983, granting a motion for partial summary judgment by Kevex holding that Albert's fourth and fifth counts are barred by statutes of limitations, a two-year statute under California law and a four-year statute under federal law, respectively. Albert appeals from that holding, appeal No. 83-781.

These two appeals, which involve entirely distinct issues, were combined for oral argument. Herein we shall consider them separately.

A preliminary matter common to both appeals has been raised, however, by the contentions of both parties that this court should not consider the appeals because they are not from a final judgment within the meaning of 28 U.S.C. Sec. 1292(c) or (d), or 28 U.S.C. Sec. 1295, because Counts 1 and 2 of Albert's complaint had not yet been adjudicated when these appeals were filed. See Veach v. Vinyl Improvement Products Co., 700 F.2d 1390, 217 USPQ 97 (Fed.Cir.1983).

This court has previously denied Albert's motion to dismiss appeal No. 83-720, and adhered to that decision on reconsideration, saying that this case is factually distinguishable from Veach in that it presents an issue wholly separable from the remainder of the case before the district court. The court has similarly denied Kevex's motion to dismiss appeal No. 83-781. The court's disposition of these motions has settled whether this court has jurisdiction to hear these appeals.

Appeal No. 83-720

Albert, the plaintiff below, is the sole named inventor in the '885 patent, issued April 7, 1981, and entitled "Selectable Wavelength X-Ray Source, Spectrometer and Assay Method." The '885 patent describes and claims an apparatus and method for practicing X-ray spectroscopy. Briefly, X-ray spectroscopy involves bombarding a sample of material with X-rays to determine its elemental composition. The incident X-rays cause the elements in the sample to fluoresce x-rays, that is, to produce X-rays themselves, each at its own characteristic wavelength. Spectral analysis of the fluoresced X-rays then yields the elemental composition of the sample. The application for the '885 patent was filed on February 24, 1978, claiming entitlement to the filing date of a great-grandparent application filed April 24, 1973, under 35 U.S.C. Sec. 120.

Kevex was the defendant below. It owns the Porter patent, which issued on November 11, 1975, and is entitled "X-Ray Spectrometer System." The Porter patent was filed for on July 24, 1974, and claims entitlement to no earlier date.

Albert filed the complaint in this action on July 20, 1981, about three months after his '885 patent issued. Count 3 of the complaint, the only count involved in this appeal, alleged that:

an interference exists between said Kevex patent (No. 3,919,548) and said Albert patent (No. 4,260,885) in that said Kevex patent relates to [sic; claims] the same invention as claims 1, 2, and 9 of the said Albert patent.

On August 9, 1982, Albert moved for summary judgment that "the [Porter] patent of Kevex Corporation ... is invalid on the grounds that it was in public use, on sale, or sold more than one year prior to the date of the application therefor, wherefore said patent is invalid as a matter of law." ² Albert's assertion of invalidity was based on several sales by Kevex of spectrometers allegedly embodying the subject matter claimed in its '548 patent more than one year before its filing date, i.e., before July 23, 1973. On August 24, 1982, Kevex objected to the trial judge's assertion of subject matter jurisdiction over Albert's Sec. 291 count because Albert had not shown interference between the Porter and '885 patents, i.e., that they claimed the same invention, as required for subject matter jurisdiction under Sec. 291. This argument was incorporated by reference into Kevex's later-filed memorandum in opposition to Albert's motion for summary judgment, which also included an assertion of the case law "experimental use exception" to the Sec. 102(b) public use and on sale one-year bars.

On October 27, 1983, Kevex filed a disclaimer in the U.S. Patent & Trademark Office (PTO) under 35 U.S.C. Sec. 253 ³ and 37 CFR 1.321 of claims 1, 2, and 3 of the Porter patent, at the same time informing the trial judge of the action it had taken. Kevex asserts in its brief that the trial judge then "ruled orally from the bench at a status conference ... on October 29, 1982, that count 3: interfering patents was mooted." Kevex also asserts that the trial judge at the same status conference indicated that he still intended to pass on the validity of the Porter patent.

On December 23, 1982, the trial judge granted Albert's motion for summary judgment on Count 3. He held that there were no genuine issues as to whether Kevex had offered for sale the device claimed in the Porter patent more than one year before its filing date, and that the experimental use exception did not apply. The trial judge did not mention whether the Porter patent had ever interfered with the '885 patent, or whether Kevex had, since the commencement of the action, disclaimed all interfering subject matter. With respect to jurisdiction, the trial judge limited his analysis to an assertion in the last numbered paragraph of his order that "The Court has jurisdiction over the subject matter involved pursuant to 27 [sic, 28] U.S.C. Sec. 1338 and 35 U.S.C. Sec. 1 et seq."

Kevex argues that under Sec. 291 the existence of an interference is jurisdictional, so that the district court was required to ascertain whether the Porter patent and the '885 patent interfere before determining the validity of either. Albert maintains just the opposite: that under Sec. 291, if a court is shown that one of the allegedly interfering patents is invalid, it can and indeed must hold that patent invalid regardless of whether it has determined that the patents before it interfere. Albert bases his argument primarily on Sec. 291's provision that "the court may adjudge the question of validity of any of the interfering patents, in whole or in part," a cart before the horse argument.

We agree with Kevex. The major shortcoming with Albert's argument is apparent. Even the portion of Sec. 291 upon which he relies plainly states that the question of validity of interfering patents may be adjudged. The first phrase of Sec. 291 states with equal clarity that the owner of an interfering patent may sue thereunder. The section is even entitled "Interfering patents." Under any construction of Sec. 291, it is impossible to conceive how it could be any clearer that interference between patents is a sine qua non of an action under Sec. 291. Absent interference, a court has no power under Sec. 291 to adjudicate the validity of any patent. We hold that the court has no jurisdiction under Sec. 291 unless interference is established. Mere citation of that statute or recitation in a pleading as a basis for suit is not enough. When challenged, the pleader must establish that interference does in fact exist.

If the statute leaves a doubt that interference is a jurisdictional prerequisite under Sec. 291, it should have long since been dispelled by P.J. Federico, the principal drafter of the 1952 Patent Act, in his "Commentary on the New Patent Act," published as a prologue to 35 USCA (West 1954), at p. 57:

Section 291 relates to interfering patents. When there are interfering patents, the owner of one may file a civil action against the owner of the other and the court may adjudge either or both the patents invalid. The new section has considerably condensed the language of the old statute. Under the old statute, interfering patents arose mostly if not always when a second patent for the same invention, with identical claims, was granted to another inventor who had won an interference with the first patentee in the Patent Office. The losing patentee could not file a civil action against the winning applicant, but could...