Choat v. Rome Industries, Inc., Civ. A. No. C77-78R.

• Decision Date: 22 August 1979
• Docket Number: Civ. A. No. C77-78R.
• Citation: 480 F. Supp. 387
• Parties: Joseph S. CHOAT, Plaintiff, v. ROME INDUSTRIES, INC. et al., Defendants.
• Court: U.S. District Court — Northern District of Georgia

480 F. Supp. 387

Joseph S. CHOAT, Plaintiff, v. ROME INDUSTRIES, INC. et al., Defendants.

Civ. A. No. C77-78R.

United States District Court, N. D. Georgia, Rome Division.

August 22, 1979.

COPYRIGHT MATERIAL OMITTED

R. B. Jones, Jones & Monroe, Birmingham, Ala., Ronald G. Shedd, Rome, Ga., for plaintiff.

William J. Ormsby, Jr., and Edward T. Newton, Newton, Hopkins & Ormsby, Atlanta, Ga., Cyrus F. Lee, Connor, Lee, Connor, Reece & Bunn, Wilson, N. C., for Rome Industries, Inc. & John Deere Co.

ORDER

HAROLD L. MURPHY, District Judge.

This action concerns alleged infringement of U.S. Letters Patent No. 3,493,020. Jurisdiction is invoked pursuant to 28 U.S.C. §§ 1338 and 1400(b). Presently pending before the Court are the following motions: defendants' motion for reconsideration which asks for an order directing plaintiff to file an application for reissue of the patent-in-suit; plaintiff's motion to amend the complaint; defendants' motion for a more definite statement; defendants' motion to reopen discovery; plaintiff's motion to compel answers to interrogatories; and defendants' motion for a protective order.

On December 11, 1978, this Court entered an order denying a motion by defendants which requested that the Court order plaintiff to seek a reissue patent pursuant to 37 C.F.R. § 1.175. In support of this decision, the Court cited the delay involved in seeking a reissue patent and the capability of the Court to reach a final determination of the particular claims involved in this suit. Since that time, several events have transpired that have led the Court to reconsider its original order.

First, the problem of inordinate delay accompanying application for a reissue patent has been substantially alleviated by a new procedure promulgated by the U.S. Patent and Trademark Office (Patent Office) which provides for expedited processing of reissue applications involved in litigation. See, 983 O.G. 24 (June 26, 1979). This new procedure was adopted specifically to meet the concerns of courts regarding the timeliness of Patent Office handling of reissue applications that are the subject of an ongoing suit.

The effect of the new procedure, now in operation, will be the immediate, expedited examination of reissue applications involved in litigation. Reissue applications that are a part of litigation in which the court has stayed further action will be considered in advance of all other reissue applications. The process provides for prompt resolution of any patentability issues and prompt determination on the merits viewed in light of the prior art. Consideration of issues concerning fraud or failure to comply with the duty of disclosure will be delayed by the Patent Office until resolution of the patentability issues. Monitoring systems will closely check the time used by applicants, protesters, and examiners in processing the reissue applications of patents involved in stayed litigation. Thus, a decision regarding such a reissue application would take a minimal amount of time before the Patent Office.

Use of this procedure will not disadvantage the plaintiff in any way. As provided in 37 C.F.R. § 1.175(a)(4), a patent owner may have additional prior art considered by the U.S. Patent and Trademark Office without the making of changes in claims or specifications. The reissue procedure is available even though a patentee maintains that the validity of his patent continues. Although the exact time required for the reissue procedure is still subject to conjecture, the Court may provide for periodic review of the proceedings to insure adequate progress.

Resort to this procedure will not deprive the plaintiff of his right to a jury trial. The action defendants seek merely requires a stay of further proceedings, not a dismissal of the litigation. If, upon examination of the provisions of the prior art, the claims of the patent are determined to lack the requisite degree of novelty or invention, the Court may determine that there would be no question appropriate for jury resolution. The stay may not require any delay and it clearly does not deny plaintiff his right to trial by jury. See, Lee-Boy Manufacturing Co., Inc. v. Puckett et al., No. C77-1366A (N.D.Ga. Sept. 15, 1978).

Further, patents are entitled to a statutory presumption of validity. 35 U.S.C. § 282. This presumption is premised upon the acknowledged expertise of the Patent Office and the recognition that patent approval is a species of administrative determination supported by evidence. Parker v. Motorola, Inc., 524 F.2d 518, 521 (5th Cir. 1975). A referral to the Patent Office of samples of the prior art not previously considered by it is consistent with the directives of the statutes and the case law. See, Christopher J. Foster, Inc. v. Newport News Shipbuilding, 531 F.2d 1243, 1245 (4th Cir. 1975); Gaddis v. Calgon Corporation, 506 F.2d 880, 885 (5th Cir. 1975). Should plaintiff's patent-in-suit be denied reissue on the ground that no change in the claims of the patent is necessary by reason of the prior art raised, plaintiff will enjoy a strengthened presumption of validity. Corometrics Medical Systems v. Berkeley Bio-Engineering, 193 USPQ 467, 474 (N.D.Cal. 1977).

Although this Court is not bound by a decision rendered by the Patent Office regarding reissue of plaintiff's patent-in-suit, directing reissue could in effect determine the question of validity subject to review by this Court, and end this litigation by making moot all other issues. See, W. F. Altenpohl, Inc. v. Gainesville Machine Co., Inc., 183 USPQ 497 (N.D.Ga.1975), wherein the court adopted the Patent Office finding of invalidity and dismissed the complaint.

The second event entering into the Court's decision to reconsider its order with respect to the reissue patent is the motion filed by plaintiff to amend his complaint. Plaintiff is now seeking leave to amend his original complaint to allege infringement of his patent by the production of 21 different tree shears manufactured by the defendants. The Federal Rules of Civil Procedure require that leave to amend "shall be freely given when justice so requires." Fed.R. Civ.P. 15(a). This provision has been liberally construed and expansively applied. See, Foman v. Davis, 371 U.S. 178, 83 S.Ct. 227, 9 L.Ed.2d 222 (1962). The proffered amendment adds claims relevant to this case, and, in light of the Court's liberal amendment policies, is hereby allowed. However, the amendment is a sizeable enlargement from the allegation contained in the original complaint, which referred only to infringement by a tree shear manufactured by defendants. Such an expansion broadens the scope of this litigation, makes further discovery necessary and expands the time that will be necessary to try the case. As the plaintiff is here by his own motion lengthening trial of the case, the slight delay resulting from application for a reissue patent should not prejudice the plaintiff.

An additional reason given by this Court in denying defendants' motion to direct plaintiff to file an application for a reissue patent was the Court's ability to try the particular issues involved in the instant case. At that time, plaintiff was alleging infringement of his patent by a tree shear manufactured by defendants. The amendment granted expands this allegation to include infringement by 21 different models of tree shears. Thus, a greater amount of technical knowledge will be necessary to resolve the issues in the instant case than initially anticipated. In such circumstances, the special expertise of the Patent Office should be utilized. The advantages of pursuing this course of action are numerous. The Patent Office with its scientific expertise will have the opportunity to analyze the prior art before consideration by this Court. Many discovery problems could be alleviated by the Patent Office's investigation. And, the complexity, length, and costs of trial could be considerably lessened. See generally, Fisher Controls Co., Inc., v. Control Components, Inc., 443 F.Supp. 581, 196 USPQ 817 (S.D.Iowa 1977).

Finally, unlike the circumstances accompanying the original request by defendants to direct plaintiff to apply for a reissue patent, plaintiff has not filed a response to this motion....