Commonwealth of Australia v. Radio Corp. of America

• Decision Date: 05 September 1968
• Docket Number: Docket 31737.,No. 178,178
• Parties: COMMONWEALTH OF AUSTRALIA, Plaintiff-Appellant, v. RADIO CORPORATION OF AMERICA, Defendant-Appellee.
• Court: U.S. Court of Appeals — Second Circuit

159 USPQ 1, 399 F.2d 807 (1968)

COMMONWEALTH OF AUSTRALIA, Plaintiff-Appellant, v. RADIO CORPORATION OF AMERICA, Defendant-Appellee.

No. 178, Docket 31737.

United States Court of Appeals Second Circuit.

Argued November 15, 1967.

Decided September 5, 1968.

Alan K. Roberts, New York City, for plaintiff-appellant.

John Farley, New York City, A. Russinoff, Princeton, N. J., for defendant-appellee.

Before WATERMAN, FRIENDLY and SMITH, Circuit Judges.

WATERMAN, Circuit Judge:

The sole issue before the court on this appeal is whether the district court below was correct in holding that the civil action brought pursuant to 35 U.S.C. § 146 by appellant as a party dissatisfied with a decision of the Board of Patent Interferences on the question of priority, was commenced out of time under the terms of Section 146. In so holding the court granted appellee's motions for dismissal under Fed.R.Civ.P. 12(b) and for summary judgment under Fed.R. Civ.P. 56. We reverse and remand to the district court for further proceedings.

On September 11, 1962, a patent was issued to one Greig, assignor of appellee Radio Corporation of America (RCA), directed to a liquid developer for use in electrostatic developers and particularly to a certain liquid to be used in the developer. On February 19, 1963, a patent was issued to K. Metcalfe and R. Wright, assignors of appellant Commonwealth of Australia (Australia), also directed to a liquid developer for electrostatic development, but directed specifically to a cooperating combination of a liquid carrier, pigment particles, and other agents. Thereafter, on June 18, 1963, Greig filed a reissue application; he offered to surrender his original patent but requested that the patent be reissued to him inclusive of the patent claims previously granted to Metcalfe and Wright, and he simultaneously asked that an interference proceeding, i. e., a Patent Office proceeding to determine which of two or more parties is entitled to a patent claim, be declared between the Metcalfe-Wright patent and the Greig reissue application. An interference, No. 94,531, was so declared and the Patent Office examiner decided it in favor of Greig on the theory that the features specifically expressed in the Metcalfe-Wright disclosure had been inherently expressed in the Greig disclosure. Thereupon, jurisdiction in this matter passed from the examiner to the Board of Patent Interferences and that Board declared the interference proceedings terminated on September 2, 1966.

At this point, Metcalfe and Wright could: (1) file an appeal within 60 days to the Court of Customs and Patent Appeals under 35 U.S.C. §§ 141, 142, and Patent Office Rule 304, 37 C.F.R. § 1.304; or (2) bring a civil action within 60 days in the United States District Court as provided in 35 U.S.C. § 146, and Patent Office Rule 304, 37 C.F.R. § 1.304; or (3) file a request within 30 days for reconsideration of the Patent Office decision under Patent Office Rule 256(b), 37 C.F.R. § 1.256(b). Metcalfe and Wright rejected alternative (1) and filed, on October 17, 1966, a request for reconsideration of the Patent Office decision while at the same time filing a motion for leave to take testimony in the Patent Office.¹ This was the first of a series of petitions, counter-petitions, and rulings in the Patent Office, all of which are important in the determination of this case. We now set out these moves. On October 26, 1966, Greig filed a memorandum in opposition to both the request and the motion. Both were finally denied by the Patent Office on December 6, 1966, because, inter alia, they had been late-filed. Twenty-two days later, Metcalfe and Wright sought a suspension of proceedings in the Patent Office so as to afford themselves time to study jurisdictional and venue problems thought necessary to be resolved before commencing a civil action in the federal courts. The action was commenced by Australia² in the Southern District of New York on January 4, 1967, and, on January 6, 1967, the First Assistant Commissioner of Patents denied the suspension of proceedings sought by Metcalfe and Wright, but he did extend to February 6, 1967, their time for filing suit in the district court. Greig, on January 16, 1967, filed a petition in the Patent Office requesting that the extension to February 6 be vacated; this petition was denied on February 9, 1967. With this history in mind, we turn to the provisions of the relevant statutes and of the Patent Office rules.

35 U.S.C. § 146 provides that any party to a patent interference proceeding who is "dissatisfied with the decision of the board of patent interferences on the question of priority" has a remedy by civil action in the United States District Court. Such an action must be commenced "within such time after such decision, not less than sixty days, as the Commissioner appoints." 35 U.S.C. § 146. In Patent Office Rule 304, the Commissioner has designated the statutory sixty-day minimum period as the maximum period for commencing a civil action, except where "a petition for rehearing or reconsideration is filed within thirty days after the date of the decision of the * * * Board of Patent Interferences," in which event the time is extended to thirty days after action on the petition. 37 C.F.R. § 1.304.³

Here, although a petition for reconsideration was filed, it was not filed until 45 days after the date of decision of the Board of Patent Interferences and hence was filed 15 days after the period contemplated in the exception provided in Patent Office Rule 304, supra, had expired. If the effect of the filing of this petition for reconsideration, untimely for purposes of Rule 304, were all that were involved in this case, the district court would have been correct in refusing to entertain this action filed on January 4, 1967, for appellant's time to commence its action in the district court would have run out on November 1, 1966.

However, appellant advances the contention, apparently a novel one in both the Patent Office and the courts, that the time limitation set forth in Rule 304 is not decisive in this case. Appellant argues that inasmuch as a motion to take testimony in the Patent Office was also filed here the Board of Patent Interferences retained jurisdiction until the Board ruled on that motion. As this situation was apparently neither contemplated nor covered by the provisions of Rule 304, which by its terms deals only with petitions for rehearing or reconsideration, appellant submits that Rule 304 is inapplicable. Appellant contends that as there is no Patent Office rule specifically limiting the time within which a district court action must be commenced after a Patent Office decision upon a motion of the nature of appellant's motion, the maximum time permitted for filing the district court action must be fixed by the Commissioner pursuant to the power conferred upon him by 35 U.S.C. § 146, a power which is delegable under 35 U.S.C. § 3 to any Assistant Commissioner.

Bottomed upon this contention appellant concludes that its action in the district court was timely filed because the First Assistant Commissioner, in his paper of January 6, 1967, appointed that the time for filing should run until February 6, 1967. Appellee advances the argument that was relied upon by the district court when it held below that appellant's action was time-barred, i. e., that the motion to take testimony was not an independent motion but was ancillary to the petition for reconsideration and that, in fact, the testimony appellant sought to take was to be used in support of that very petition for reconsideration; therefore any disposition of the motion was really a "proceeding" on the petition for reconsideration. Appellee then notes that Rule 304 specifically provides that no petition for rehearing or reconsideration filed outside the time specified (30 days), "nor any proceeding on such petition shall operate to extend the period of sixty days * * *."⁴ and thereby it claims that the present case is covered by Rule 304 and that appellant's action was thus time-barred.

While we find each of these opposing analyses logical, we need not pass upon their validity other than to observe that they provide a backdrop for our own discussion and for the result we reach. We hold that appellant should have a hearing in the district court on the merits of its action. It is apparent to us that the novelty of finding a motion to take testimony appended to a petition for reconsideration caused the Board of Patent Interferences to deliberate for a longer time here than it would ordinarily have deliberated before rejecting a petition for reconsideration which had obviously been filed belatedly. Surely it would not ordinarily take the Board 50 days to reject a petition on the ground of late filing. Even if the above were not apparent to us, we would at least have to take note of the fact that the lengthy deliberation of the Board of Patent Interferences upon the petition for reconsideration and appended motion was a major factor in the First Assistant Commissioner's decision to extend to February 6, 1967, the time within which an action might be commenced in the district court. In his denial of Greig's petition of January 16, 1967, seeking reconsideration of the First Assistant Commissioner's decision of January 6, 1967, the First Assistant Commissioner said:

"However, the petition also included a request for leave to take testimony, and the decision of the Board on the petition was four pages in length as compared with an original decision on the interference itself of one page. * * *

"Upon consideration of the entire situation as now presented, it is concluded that the time for seeking court review should remain as fixed by the decision of January 6, 1967, even if the petition filed by Metcalfe et al. be regarded as not, technically, extending that time. It is thought that Metcalfe et al. should not be deprived, on a purely

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