Bally Mfg. Corp. v. Diamond

• Decision Date: 02 September 1980
• Docket Number: No. 79-1840,79-1840
• Citation: 207 U.S.P.Q. 177,629 F.2d 955
• Parties: BALLY MANUFACTURING CORP., Appellant, v. Sidney A. DIAMOND, Commissioner of Patents and Trademarks, Appellee.
• Court: U.S. Court of Appeals — Fourth Circuit

Page 955

629 F.2d 955

207 U.S.P.Q. 177

BALLY MANUFACTURING CORP., Appellant, v. Sidney A. DIAMOND, Commissioner of Patents and Trademarks, Appellee.

No. 79-1840.

United States Court of Appeals,

Fourth Circuit.

Argued June 4, 1980.

Decided Sept. 2, 1980.

John F. Flannery, Chicago, Ill. (Donald L. Welsh, A. Sidney Katz, Fitch, Even, Tabin, Flannery & Welsh, Chicago, Ill., on brief), for appellant.

Henry W. Tarring, II, Associate Sol., Washington, D. C. (Justin W. Williams, U. S. Atty., Linda B. Bridgeman, Asst. U. S. Atty., Alexandria, Va.; Joseph F. Nakamura, Sol., on brief), for appellee.

John F. Lynch, Sydney M. Leach, Walter R. Brookhart, Arnold, White & Durkee, Houston, Tex., on brief, for amici curiae.

Before RUSSELL, Circuit Judge, HARRY PHILLIPS, Senior Circuit Judge, Sixth Circuit, sitting by designation and Widener, Circuit Judge.

PHILLIPS, Senior Circuit Judge.

Plaintiff-appellant Bally Manufacturing Corp. filed this suit to enjoin the Patent and Trademark Office (PTO) from examining Bally's reissue patent application until the PTO promulgates rules to govern its consideration of unpublished evidence of prior invention by another. The district court dismissed on the grounds Bally had not exhausted its administrative remedies and had failed to establish that examining the reissue application under present PTO rules would subject Bally to irreparable harm. We affirm.

I

Bally manufactures pinball machines and electronic games. On June 6, 1978, Bally was issued patent No. 4,093,232 for a "Player Operated Game Apparatus". Thereafter, Bally filed two infringement actions in the United states District Court for the Northern District of Illinois, Civil Actions Nos. 78 C 2246 and 79 C 713, against D. Gottlieb & Co., Williams Electronic, Inc., Rockwell International Corporation and Game Plan, Inc. These competing game manufacturers defended on the ground that Bally's patent is invalid because the claimed invention was obvious in light of the prior art, 35 U.S.C. § 103, and anticipated by the invention of another, 35 U.S.C. § 102(g). The two infringement actions, to which we shall refer jointly as the Illinois litigation, have been stayed by order of the Illinois district court pending a PTO decision on Bally's reissue application.

On August 25, 1978, Bally filed its application for reissue of patent No. 4,093,232. On February 28, 1979, Williams Electronics and D. Gottlieb & Co., defendants in the Illinois litigation, filed a protest ¹ alleging the reissue claims are unpatentable because of obviousness and prior invention by another, 35 U.S.C. §§ 103 and 102(g) respectively. On September 15, 1979, infringement defendant Rockwell International joined the Patent Office fray by filing its own protest, also alleging prior invention by another. Both protests were based on evidence discovered in the Illinois litigation, and the protest by Rockwell included supporting excerpts from internal corporate documents and deposition testimony subpoenaed by the defendants in that litigation.

Alarmed by the possibility that the patent examiner would consider these unpublished documents and deposition excerpts in making his ex parte examination of Bally's reissue application, Bally petitioned the Commissioner of Patents and Trademarks to stay the proceedings. The Assistant Commissioner for Patents denied the request and forwarded the reissue application to the examiner for examination in light of all the prior art evidence, including that submitted by the protestors.

Bally filed this suit on October 29, 1979, seeking an injunction to restrain the PTO from examining Bally's reissue application in light of the protestors' evidence of prior invention by another. Senior District Judge Oren R. Lewis denied the injunction. He held that the decision by the Assistant Commissioner to proceed with the examination is an interlocutory order from which Bally ultimately will have extensive administrative (35 U.S.C. §§ 132, 7 and 134) and judicial (35 U.S.C. §§ 141 or 145) appeals. The court held Bally has not exhausted its administrative remedies. Judge Lewis found the impending reissue decision will bind neither Bally nor the Illinois trial court and does not threaten such irreparable harm as justifies an injunction. Accordingly, the court dismissed the suit. Bally appeals.

II

The reissue process traditionally has provided a mechanism whereby an inventor who, through error and without any deceptive intention, has been granted a defective patent, may obtain a valid patent conforming to the true scope of his invention. ² Ordinarily, the patentee submits his previously issued patent, 37 C.F.R. § 1.178, and files an affidavit stating the reason he believes it to be wholly or partly invalid, 37 C.F.R. § 1.175. He also is required to file a reissue application containing the entire specification and claims of the original patent, with proposed deletions bracketed and proposed additions underlined, 37 C.F.R. § 1.173. A patent examiner reexamines all claims included in the reissue application as if they were presented in an original application, 37 C.F.R. § 1.176. If he finds the previously issued patent "wholly or partly inoperative or invalid", 35 U.S.C. § 251, the examiner determines whether the applicant is entitled to a patent under the reissue claims. If a reissue is refused, whether because the previously issued patent is entirely valid or because the reissue claims do not describe a patentable invention, the original patent will be returned to the applicant upon his request, 37 C.F.R. § 1.178. Reissue patents are entitled to the same presumption of validity as original patents. National Rolled Thread Die Co. v. E. W. Ferry Screw Products, Inc., 541 F.2d 593, 597 (6th Cir. 1976).

In January 1977, the Commissioner adopted a new regulation which permits a patentee to use the reissue process to obtain an advisory opinion as to the validity of his patent. Under 37 C.F.R. § 1.175(a)(4) ³ a patent owner may have new prior art considered by the PTO in a reissue proceeding without making any changes in his original claims or specification. The official commentary indicates that the new rule was intended to allow a patentee to file a reissue application even if he believes his patent is valid over prior art not previously considered by the PTO. 42 Fed.Reg. 5588 (1977). Since reissue applications can be granted only where the original patent is wholly or partly inoperative or invalid, 35 U.S.C. § 251, filing a reissue application subjects the original patent to the patent examiner's expert determination of validity in light of the new prior art. A reissue rejection, whether based on the finding of the examiner that the original patent is entirely valid or on his finding that the reissue claims do not describe a patentable invention, is purely advisory. ⁴ The examiner's expert opinion may carry substantial weight in an infringement action involving the same patent and prior art. ⁵

Bally sought to bolster its position in the Illinois litigation by filing an application under the advisory reissue procedures of the PTO. Bally's reissue claims and specifications are identical to the claims and specification of its patent No. 4,093,232. Bally hoped the examiner would reject the reissue application as lacking statutory basis, namely total or partial invalidity of the original patent. The basis for the rejection then would become part of the record of prosecution of the reissue application, 42 Fed.Reg. 5588 (1977), and could be urged upon the court in the Illinois litigation as support for the validity of the patent.

Recognizing that a PTO decision on validity may carry substantial weight with the Illinois district court, and hoping to influence that decision in their favor, the infringement defendants filed protests to Bally's reissue application. They urged that Bally's application should be denied because the reissue claims, which are identical to the original claims, do not describe a patentable invention. As support for this proposition, the protestors cited evidence that several of Bally's competitors previously had conceived and reduced to practice electronic game mechanisms which substantially anticipated the invention described in Bally's patent. According to the protestors, these prior inventive activities rendered Bally's invention unpatentable under 35 U.S.C. §§ 102(g) and 103. Like Bally, the protestors hope the examiner will deny the reissue application on a ground that supports their position in the Illinois litigation.

One problem in this case arises from the fact that the evidence the protestors want the examiner to consider in the reissue examination consists of internal corporate memoranda and deposition testimony tending to show prior inventive activities by strangers to the protest. Bally distinguishes between "prior art documents", which it says are the only evidence that may be considered in a reissue examination, and other types of proof, including the protestors' supporting documents. According to Bally, prior art documents are of three types: (1) other patents, 35 U.S.C. § 102(e); (2) printed publications that describe the patented invention and were published before the reissue applicant's date of invention or more than a year before he filed his original application, 35 U.S.C. §§ 102(a) and (b); and (3) the reissue applicant's written admissions that something is prior art as to his claims, In re Bass, 474 F.2d 1276, 1286-87 (CCPA 1973). These documents may be considered in reissue examinations, Bally says, because they "render a claim or claims invalid without more under (§§ 102(a), (b) or (e)) or § 103". In other words, they are conclusive against patentability. By contrast, other types of evidence can only contribute to meeting the burden of persuasion that alleged prior inventive activities actually took place; only those activities, not the documents themselves, can render the claims invalid under §§...