Western Elec. Co., Inc. v. Piezo Technology, Inc.

Citation8 USPQ2d 1853,860 F.2d 428
Decision Date01 November 1988
Docket NumberNo. 88-1216,88-1216
Parties, 8 U.S.P.Q.2d 1853 WESTERN ELECTRIC COMPANY, INCORPORATED, Plaintiff, v. PIEZO TECHNOLOGY, INC., Defendant-Appellee, v. Donald QUIGG, Assistant Secretary and Commissioner of Patents and Trademarks, Appellant.
CourtU.S. Court of Appeals — Federal Circuit

Jacob M. Lewis of the Civil Div., Dept. of Justice, Washington, D.C., argued for appellant. With him on the brief were John R. Bolton, Asst. Atty. Gen., Washington, D.C., Henry H. Hudson, U.S. Atty., Alexandria, Va., and John F. Cordes, Washington, D.C. Of counsel were Fred E. McKelvey, Sol., and John W. Dewhirst, Associate Sol., U.S. Patent & Trademark Office, Arlington, Va.

Gordon D. Coplein of Darby & Darby, New York City, argued for defendant-appellee. With him on the brief was Peter C. Schechter of Darby & Darby, New York City. Of counsel was Steven E. Lipman, of Lupo, Lipman & Lever, Washington, D.C.

Before ARCHER, Circuit Judge, BALDWIN, Senior Circuit Judge, and MAYER, Circuit Judge.

ARCHER, Circuit Judge.

Donald Quigg, Assistant Secretary and Commissioner of Patents and Trademarks (Commissioner), appeals from an order of the United States District Court for the Eastern District of Virginia holding the Commissioner in civil contempt for prohibiting a patent examiner from answering certain deposition questions posed by Piezo Technology, Inc. (Piezo), the defendant in a private patent infringement suit. We reverse.

Background

Western Electric Company, Incorporated (Western Electric) sued Piezo for infringement of U.S. Patent No. 3,564,463 ('463) in the Middle District of Florida. At issue are monolithic dual resonator devices manufactured by Piezo. During the course of the infringement suit a reexamination of the patent was conducted. 1 Piezo then added a defense of inequitable conduct during the reexamination proceeding to the patent infringement suit. Piezo noticed the deposition of Marvin L. Nussbaum, the patent examiner assigned to the reexamination, to be taken at the office of the Solicitor of the United States Patent and Trademark Office (PTO), which is located in the Eastern District of Virginia.

During the deposition the associate solicitor for the PTO objected to certain questions asked of Examiner Nussbaum and eventually instructed the Examiner not to answer certain questions. Piezo proceeded question by question to make a record of the questions for which answers were desired. 2

Piezo moved the United States District Court for the Eastern District of Virginia for an order compelling Examiner Nussbaum to answer questions seeking to "determine the prior art knowledge of the Patent Office at the time of the issuance [of the reexamination certificate] and the facts upon which the examiner's decision was based." The district court granted Piezo's motion to compel, noting from the bench that the relevant caselaw permitted Piezo to "inquire into the facts but not into the thought processes." The Commissioner moved for reconsideration. This motion was denied. The court stated orally that "the questions advanced sought to reveal the examiner's technical knowledge of prior art not the examiner's mental processes and were therefore proper under Standard When Examiner Nussbaum's deposition resumed he was instructed by the associate solicitor for the PTO not to answer a total of 58 questions. Piezo then moved for an order of civil contempt against the Commissioner, in response to which the court ordered Examiner Nussbaum to answer the questions. The court required the Commissioner to inform Piezo whether Examiner Nussbaum would answer the questions. The Commissioner informed Piezo that he had directed the Examiner not to answer the questions and Piezo renewed its motion for contempt.

Packing Corp. v. Curwood, [sic] [365 F.Supp. 134, 180 USPQ 235 (N.D.Ill.1973) ] ... and In Re Mayewsky, [sic] [162 USPQ 86, 89 (E.D.Va.1969) ]." The court thereupon ruled that Examiner Nussbaum must answer the rephrased questions "exactly as to his technical knowledge of [the] prior art and not the examiner's mental processes."

The district court entered an order holding Examiner Nussbaum in civil contempt for violating its previous directives to answer the questions. This order was later modified to hold the Commissioner in contempt rather than Examiner Nussbaum and imposed a fine of $300, which was stayed pending appeal.

Contentions of the Parties

The Commissioner contends that Piezo's questions are not limited to "questions of fact" but instead "go into hypothetical or speculative areas or the bases, reasons, mental processes, analyses or conclusions" for the examiner's decision. The Commissioner in his brief states that "[v]irtually all of the questions sought to ascertain the examiner's knowledge at the time of the reexamination, or that of the PTO, of various aspects of crystal filter technology." Such questions, according to the Commissioner, violate the rule set out in United States v. Morgan, 313 U.S. 409, 422, 61 S.Ct. 999, 1004-05, 85 L.Ed. 1429 (1941). The Commissioner also considers Piezo's questions as an attempt to attack Examiner Nussbaum's reexamination decision indirectly by challenging his knowledge of crystal filter technology. Lastly, the Commissioner argues that Piezo's questions are irrelevant to its inequitable conduct defense. A patent applicant has a duty under 37 C.F.R. Sec. 1.56(a) to disclose information only insofar as it would have been material to a "reasonable examiner." Because this is an objective standard, the expertise of Examiner Nussbaum, according to the Commissioner, is irrelevant to the issue of inequitable conduct.

Piezo urges that its questioning of the examiner was only for factual information and that it did not seek to attack the decision on reexamination. As to the relevancy of the inquiries Piezo notes that Western Electric claimed in the trial court that inequitable conduct could not have occurred because the examiner was an independent and impartial "expert" who could recognize inaccurate or misleading statements about prior art. Piezo contends that because of Western Electric's stated position in the trial court its questions were permissible. According to Piezo, "The factual question before the trial court is whether, as Western contends, the Examiner has the prior art knowledge of an expert in the technological field."

ISSUE

Whether a patent examiner may be compelled to answer questions during a deposition which probe the examiner's technical knowledge of the subject matter of the patent?

OPINION

A district court's decision in a discovery matter is reviewable only to determine whether that court abused its discretion. National Hockey League v. Metropolitan Hockey Club, Inc., 427 U.S. 639, 642, 96 S.Ct. 2778, 2780, 49 L.Ed.2d 747 (1976); Adkins v. United States, 816 F.2d 1580, 1581-82 (Fed.Cir.1987). An abuse of discretion may be found when (1) the court's decision is clearly unreasonable, arbitrary or fanciful; (2) the decision is based on an erroneous conclusion of the law; (3) the district court's findings are clearly erroneous; or (4) the record contains no evidence upon which the district court rationally could have based its decision. Heat and Control, Inc. v. Hester Industries, Inc., 785 F.2d 1017, 1022, 228 USPQ 926, 930 (Fed.Cir.1986); PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567, 6 USPQ2d 1010, 1013 (Fed.Cir.1988) ("In determining if the district court abused its discretion ... the principles guiding this court are whether the district court's decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or whether the district court committed a clear error of judgment."). A district court's determination of the law and the application thereof to the facts is not a matter within the trial court's discretion. United States v. Singer Mfg. Co., 374 U.S. 174, 193, 83 S.Ct. 1773, 1783, 10 L.Ed.2d 823, 137 USPQ 808, 815 (1963).

In this case the district court erred in misconstruing and misapplying the Supreme Court's decision in United States v. Morgan, 313 U.S. 409, 61 S.Ct. 999, 85 L.Ed. 1429 (1941). In Morgan, an order of the Secretary of Agriculture setting rates at the Kansas City Stockyards under the Packers and Stockyards Act was challenged. Id. at 413, 61 S.Ct. at 1000. Plaintiffs in that case were permitted by the district court to take the deposition of the Secretary and to question him "at length" during the trial "regarding the process by which he reached the conclusions of his order, including the manner and extent of his study of the record and his consultation with subordinates." Id. at 422, 61 S.Ct. at 1004. The Supreme Court held that "the short of the business is that the Secretary should never have been subjected to this examination." Id. The Court explained that the "proceeding before the Secretary 'has a quality resembling that of a judicial proceeding.' Morgan v. United States, 298 U.S. 468, 480, 56 S.Ct. 906, 911, 80 L.Ed. 1288. Such an examination of a judge would be destructive of judicial responsibility.... Just as a judge cannot be subjected to such scrutiny, ... so the integrity of the administrative process must be equally respected." Id. Morgan does not, however, expressly prohibit such an official, exercising a quasi-judicial function, from being compelled to testify as to relevant matters of fact as long as the factual matters do not probe into the mental processes employed in formulating the decision in question.

This court applied the Morgan rule in Bacon v. Department of Housing & Urban Dev., 757 F.2d 265, 269-70 (Fed.Cir.1985), in which we held that a court could not look behind the Secretary of HUD's stated purpose for a reduction-in-force. One of our predecessor courts (whose precedent is binding, South Corp. v. United States, 690 F.2d 1368, 1371, 215 USPQ 657, 658 (Fed.Cir.1982) (en banc )) applied this rule in holding that a party...

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