Baker Perkins, Inc. v. Werner & Pfleiderer Corp.

Decision Date29 June 1983
Docket NumberNo. 83-863,83-863
Citation218 USPQ 577,710 F.2d 1561
PartiesBAKER PERKINS, INC., Appellant-Petitioner, v. WERNER & PFLEIDERER CORPORATION, Appellee-Respondent. Appeal
CourtU.S. Court of Appeals — Federal Circuit

John F.Learman, Saginaw, Mich., for appellant-petitioner.

Peter F. Felfe, New York City, for appellee-respondent.

Before NICHOLS, BALDWIN and KASHIWA, Circuit Judges.



BALDWIN, Circuit Judge.

Baker Perkins, Inc. (Baker Perkins), appeals to this court from an order of the United States District Court for the District of New Jersey, entered February 23, 1983. The February 23 order directs Baker Perkins to petition the United States Patent and Trademark Office (PTO) to revive an abandoned reissue application for a patent that is now expired. The order also directs the PTO to revive the abandoned reissue application and to prosecute the reissue application to a final determination with full participation by Werner & Pfleiderer Corporation (Werner & Pfleiderer).

Apparently anticipating difficulty in establishing a final judgment from which an appeal may be taken, Baker Perkins alternatively petitions this court for a Writ of Mandamus, pursuant to 28 U.S.C. Sec. 1651 (1976), compelling the district court to vacate its order. Finally, Baker Perkins requests that the entire matter be transferred to an appropriate United States Court of Appeals in the event this court finds it has no jurisdiction to hear an appeal or issue a Writ of Mandamus.

Werner & Pfleiderer has moved to dismiss the appeal for lack of jurisdiction and has opposed the issuance of a Writ of Mandamus. The parties have briefed the issues in this case and the PTO has filed a memorandum, at the request of this court, concerning its authority and ability to comply with the district court's order.

On the record now before this court, Werner & Pfleiderer's motion to dismiss the appeal for lack of jurisdiction is granted. Baker Perkins' petition for a writ of mandamus is denied and the request for transfer of this matter to a different court is denied.


This appeal and petition for Writ of Mandamus arise from an action for declaratory judgment filed by Werner & Pfleiderer in July, 1979. The complaint sought declaratory judgment regarding the validity of U.S. Patent No. 3,195,868 ('868 patent), issued July 20, 1965, and owned by Baker Perkins. Baker Perkins answered the complaint filed by Werner & Pfleiderer and counterclaimed for damages for patent infringement.

In compliance with an order of the district court, entered in June, 1980, Baker Perkins filed a reissue application, Serial No. 06/190,011 (first reissue application) on the '868 patent. The reissue application was filed under 37 CFR 1.175(a)(4) (1981), together with items of prior art, for the purpose of having the claims of the issued patent reexamined in the light of submitted prior art. The regulation under which the application was filed was known as the "no defect" reissue provision through which the PTO gave advisory opinions on validity. Werner & Pfleiderer agreed to be bound by the decision of the PTO, but the patent owner, Baker Perkins, did not agree to be bound.

Several events affecting this case occurred after the first reissue application was filed. The involvement of a protester in a reissue application filed after December 8, 1981, was restricted to the filing of a formal protest. 37 CFR 1.291 (1982). On April 14, 1982, Baker Perkins expressly abandoned the first reissue application in favor of a continuing reissue application Serial No. 06/368,649 (second reissue application). A new claim, new arguments and new evidence were subsequently introduced into the second reissue application. The "no defect" reissue procedure authorized by 37 CFR 1.175(a)(4) (1981) was eliminated in July, 1982. See generally In re Dien, 680 F.2d 151 (Cust. & Pat.App.1982). By the end of July, the '868 patent owned by Baker Perkins expired before a final decision had been reached in the second reissue application.

The PTO informed the parties that the patent sought to be reissued had expired and that no further proceedings would occur unless both parties consented, or the district court requested some form of further proceedings. The PTO set a deadline of December 23, 1982 for the parties or the court to submit their comments. Baker Perkins timely filed its comments with the PTO, asserting there was no legal basis for continuing the reissue proceedings. Werner & Pfleiderer failed to respond by the December 23 deadline and no comment was made by the district court. Werner & Pfleiderer requested permission in January, 1983, to file comments late, but the request was denied by the PTO because they had never filed a formal protest in the continuation application and because the rules applicable to applications filed after December 8, 1981 do not permit participation by a protester in the prosecution of an application beyond the filing of a formal protest.

To skirt the stalemate on the second reissue application, Werner & Pfleiderer moved the district court to compel completion of the first reissue application. The district court granted the motion and ordered, in part:

(1) That the United States Patent and Trademark Office (PTO) be and hereby shall continue and complete examination of reissue application Serial No. 06/190,011 [the first reissue application] filed by Defendant, with the full participation by Plaintiff as Protester in accordance with this Court's Order of June 9, 1980.

(2) That Defendant shall petition the PTO to revive its above identified reissue application and shall prosecute the reissue application to a final determination by the PTO.

It is this order that Baker Perkins seeks to have reviewed on appeal or to have vacated through a Writ of Mandamus.

The PTO has asserted in the memorandum it filed in this court that it has no authority to comply with the above order. However, Baker Perkins has not attempted to comply with the district court's order and the PTO has therefore not been formally presented with a petition on which it could act. The PTO has not sought to intervene in the district proceeding and is not a party before this court.

The Appeal

Baker Perkins argues that the district court's...

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