Abrutyn v. Giovanniello, s. 93-1248

• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
• Writing for the Court: Before ARCHER, MICHEL and SCHALL; MICHEL
• Citation: 15 F.3d 1048,29 USPQ2d 1615
• Parties: Eric S. ABRUTYN and Robert J. Sloan, Appellants, v. Rocco GIOVANNIELLO, Appellee.
• Docket Number: 93-1249,Nos. 93-1248,s. 93-1248
• Decision Date: 27 January 1994

Page 1048

15 F.3d 1048 29 U.S.P.Q.2d 1615 Eric S. ABRUTYN and Robert J. Sloan, Appellants,
v.
Rocco GIOVANNIELLO, Appellee. Nos. 93-1248, 93-1249. United States Court of Appeals,
Federal Circuit. Jan. 27, 1994.

Page 1049

Chris Doninger, Glynn & Byrnes, Flemington, NJ, argued for appellants. With him on the brief was Kenneth P. Glynn.

Anthony L. Lagani, Jr., P.C., Morristown, NJ, argued for appellee.

Fred E. McKelvey, Sol. and Richard Torczon, Asst. Sol., Office of the Sol., Arlington, VA, were on the brief for amicus curiae, Com'r of Patents and Trademarks.

Before ARCHER, MICHEL and SCHALL, Circuit Judges.

MICHEL, Circuit Judge.

Eric Abrutyn and Robert Sloan, through their assignee Somerville Technology Group (STG), appeal the December 18, 1992 default judgment of the Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board), awarding the subject matter of the counts of two related interferences, Nos. 102,895 and 102,896, to Rocco Giovanniello. Abrutyn and Sloan failed to file a preliminary statement or preliminary motion by the deadline for doing so or for two months thereafter. Because of the presumption that the senior party, Giovanniello, made the invention first, the Board awarded the subject matter of the counts to him. Since STG, as the assignee of record, clearly had standing under PTO rules to file papers during the latter two months, we cannot say on this record the Board abused its discretion in entering the default judgment. Therefore, we affirm.

BACKGROUND

In 1987 Eric Abrutyn and Robert Sloan, inventors named in U.S. patent No. 4,859,446 (the Abrutyn patent), assigned their interest in that patent to Wickhen Products, Inc., which recorded the assignment in the PTO. In 1988 Dow Corning Corporation acquired Wickhen and included that company in its Huguenot Division. However, Dow failed to record in the PTO an assignment of the Abrutyn patent from Wickhen to it.

On July 15, 1992, STG purchased the Huguenot Division and received from Dow an assignment of the Abrutyn patent. STG recorded that assignment in the PTO on September 22, 1992, but the recording was ineffective due to the missing link in the chain of title, specifically the assignment from Wickhen to Dow which had never been recorded.

Meanwhile, on July 14, 1992, the PTO declared the two related interferences between the Abrutyn patent and two Giovanniello applications, serial nos. 07/409,654 and 07/215,639. Based on filing dates, Abrutyn and Sloan were named the junior party and Giovanniello the senior party in both interferences. The parties were given until October 14,

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1992 to file preliminary motions and statements.

The PTO mailed the notices declaring the interferences to the attorneys of record for the Abrutyn patent, including Lewis Gould. Gould contacted Dow which first instructed him to designate himself as lead attorney. After Gould had filed as lead attorney, Dow informed him of the sale to STG. Accordingly, on July 28, 1992, Gould sent a letter to Paul Plourde, attorney for STG, advising him of the interferences. Gould also filed a motion in the PTO to remove himself as lead attorney due to the assignment of the patent and served a copy on Plourde. The motion was granted on September 23, 1992 but the other original attorneys remained of record.

In his motion to be removed as lead attorney, Gould requested that the examiner-in-chief (EIC) "provide [STG], the new owner of the '446 patent additional time for designating its Lead Attorney." The EIC denied this request. Because PTO records still indicated Wickhen as the assignee, under the PTO rules STG was a non-party and the EIC could not "communicate" with a non-party by granting STG an extension of time. Because the assignment of the Abrutyn patent from Wickhen to Dow had not been effectively recorded in the PTO and because STG's attorneys were not of record, STG could not officially participate in the interferences until the situation was rectified.

Dow recorded an assignment from Wickhen to Dow on October 5, 1992. On October 19, 1992, STG recorded its assignment from Dow to STG in the PTO. Thus, by October 19 STG, as the assignee of record, had standing under PTO rules to file papers in the two interferences. However, the deadline for filing preliminary papers had already passed.

On December 18, 1992, the Board issued a final judgment awarding the subject matter of the counts in both interferences to Giovanniello. Since a rebuttable presumption exists that the inventors made their invention in accordance with the order of their filing dates, the Board rendered judgment based on the parties' filing dates. Consequently, STG, the assignee of the Abrutyn patent, lost that patent which was cancelled.

STG had filed a petition ex parte with the Commissioner to redeclare the interferences on December 15. The EIC dismissed that petition as moot on January 28, 1993, stating that the petition was not provided for in the rules and contained nothing that would require a change in the December 18 judgment. On appeal, STG does not challenge this dismissal or the failure of the Commissioner to act on the petition earlier.

Abrutyn executed a new assignment to Wickhen on December 17, 1992 to correct the original assignment which erroneously listed Wickhen as a New York rather than a Delaware corporation. Wickhen then executed a new assignment to Dow on December 18, 1992 and on January 4, 1993, Dow executed a new assignment to STG to correct the entire chain of title. These corrected assignments, however, were not recorded in the PTO.

Abrutyn and Sloan, through their assignee, STG, appealed the default judgment entered by the Board.

We have jurisdiction pursuant to 28 U.S.C. Sec. 1295(a)(4)(A) (1988) and 35 U.S.C. Sec. 141 (1988).

ANALYSIS

I. Standard of Review

The Board or EIC may impose an appropriate sanction, including granting judgment in an interference, against a party who fails to comply with the rules governing interferences, including filing deadlines. 37 C.F.R. Sec. 1.616 (1993). A board decision pursuant to the permissive rules governing an interference is reviewed for abuse of discretion. Gerritsen v. Shirai, 979 F.2d 1524, 1527-28, 24 USPQ2d 1912, 1915-16 (Fed.Cir.1992) (vacating default judgment in interference for abuse of discretion). Thus, we review the Board's decision to enter the December 18 default judgment for an abuse of discretion.

An abuse of discretion occurs if the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which

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the Board could rationally base its decision. Heat & Control, Inc. v. Hester Indus., Inc., 785 F.2d 1017, 1022, 228 USPQ 926, 930 (Fed.Cir.1986).

II. Appellant's Argument of Abuse of Discretion

STG argues that the Board "acted in inappropriate haste in granting judgment on the interferences without ... first allowing all interested parties a chance to take action." Appellant's Brief at 13. According to STG, as a result of the defective chain of title, it was...