Constant v. Advanced Micro-Devices, Inc., MICRO-DEVICE

• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
• Writing for the Court: Before DAVIS and SMITH, Circuit Judges, and COWEN; DAVIS
• Citation: 848 F.2d 1560,7 USPQ2d 1057
• Parties: James CONSTANT, Plaintiff-Appellant, v. ADVANCED, Gould, Inc., American Microsystems, Inc., Analog Devices, Inc., Fujitsu, Ltd., Fujitsu Microelectronics, Inc., Digital Switch, Inc., Granger Associates, Inc., Hitachi Corporation, Intel, Inc., Interactive Circuits & Sys. Ltd., Matshushita Electronics Corp., Computer Modules, Inc., Nippon Electric Co., Ltd., NEC Electronics USA, Paradyne Corporation, Semiconductor Products, Texas Instruments, Inc. and TRW, Inc., Defendants-Appellees.
• Decision Date: 09 June 1988
• Docket Number: MICRO-DEVICE,No. 88-1101,INC

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848 F.2d 1560 7 U.S.P.Q.2d 1057 James CONSTANT, Plaintiff-Appellant,
v.
ADVANCED MICRO-DEVICES, INC., Gould, Inc., American
Microsystems, Inc., Analog Devices, Inc., Fujitsu, Ltd.,
Fujitsu Microelectronics, Inc., Digital Switch, Inc.,
Granger Associates, Inc., Hitachi Corporation, Intel, Inc.,
Interactive Circuits & Sys. Ltd., Matshushita Electronics
Corp., Computer Modules, Inc., Nippon Electric Co., Ltd.,
NEC Electronics USA, Paradyne Corporation, Semiconductor
Products, Texas Instruments, Inc. and TRW, Inc., Defendants-Appellees. No. 88-1101 United States Court of Appeals,
Federal Circuit. June 9, 1988.

Page 1563

James Constant, pro se.

Jerry R. Selinger, Baker, Mills & Glast, Dallas, Tex., for defendant-appellee Texas Instruments, Inc.

Adrian M. Pruetz, Morrison & Foerster, Los Angeles, Cal., for defendants-appellees, Fujitsu, Ltd. and Fujitsu Microelectronics, Inc.

Martin R. Horn, David M. Simon and David A. Hall, Spensley Horn Jubas & Lubitz, Los Angeles, Cal., for defendant-appellee, Hitachi America, Ltd.

Edwin H. Taylor and James C. Scheller, Jr., Blakely, Sokoloff, Taylor & Zafman, Sunnyvale, Cal., for defendants-appellees Advanced Micro-Devices, Inc. Intel Corp.

Before DAVIS and SMITH, Circuit Judges, and COWEN, Senior Circuit Judge.

DAVIS, Circuit Judge.

Appellant Constant has raised a large number of separate and diverse issues on appeal. The appealed decisions and rulings of the United States District Court for the Central District of California are all affirmed.

DISCUSSION

In January 1985, appellant James Constant sued a large group of high technology companies for infringements of his United States Patents Nos. 3,950,635 (the '635 patent) and 4,438,491 (the '491 patent). The complaint also contained nine counts involving other theories of recovery and included challenges to the constitutionality of 35 U.S.C. Sec. 282 and of federal funding of research and development. The district court (Hon. Pamela A. Rymer) dismissed all counts except the infringement claim (Count V) for failure to state claims upon which relief could be granted, and later denied several motions by Constant attempting to revive the dismissed claims.

The defendants filed counterclaims for declaratory relief asking to have the patents declared invalid, unenforceable and not infringed. The case was transferred to the Hon. Steven V. Wilson on December 16, 1985. In August 1986, Judge Wilson, with the agreement of all parties, appointed a Special Master, Robert E. Hillman, to make recommendations to the court concerning motions for summary judgment on issues of patent invalidity. After the special master issued recommendations concluding that the patents are invalid, Constant moved to disqualify the special master and to strike his report. The court ruled against these motions after hearings during which Constant was given a special opportunity to question the master. The court independently determined that there were no material issues of contested facts and entered a summary judgment declaring the claims of the two patents to be invalid under 35 U.S.C. Secs. 102(b) and 103.

Constant now appeals the judgments of invalidity, the dismissal of his constitutional claims, the appropriateness of a summary judgment, the role and conduct of the special master, and several procedural rulings of the district court. Because of appellant's earnest efforts to support his positions, we deal with them in greater detail than their merits deserve.

I. Constitutional Issues

Appellant challenges the constitutionality of 35 U.S.C. Sec. 282, which (among other things) permits the federal courts to adjudicate the validity of patents when invalidity is raised as an affirmative defense in infringement suits . ¹. His argument is based on the wording of the Patent and Copyright Clause of the Constitution, U.S. Const. art. I, Sec. 8, cl. 8, which states that

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Congress shall have the power to "promote the Progress of ... useful Arts, by securing for limited Times to ... Inventors the exclusive Right to their ... Discoveries." Appellant construes the word "securing" to require that a patent issued by the Patent and Trademark Office (PTO) must be "secure," i.e. conclusively valid and unchallengeable.

This novel interpretation is obviously erroneous. Since the adoption of the first Patent Act in 1790, Congress has permitted judicial review of the validity of patents. ² The courts, the interpreters of the meaning of the Constitution, have consistently construed the Patent and Copyright Clause to permit judicial review of patents. See Graham v. John Deere Co., 383 U.S. 1, 8-10, 86 S.Ct. 684, 689-90, 15 L.Ed.2d 545, 148 USPQ 459, 462-64 (1966); Slawson v. Grand Street R.R. 107 U.S. 649, 652, 2 S.Ct. 663, 666, 27 L.Ed. 576 (1882); Mast, Foos & Co. v. Stover Mfg. Co., 177 U.S. 485, 488-89, 20 S.Ct. 708, 710, 44 L.Ed. 856 (1900). Public policy requires that only inventions which fully meet the statutory standards are entitled to patents. This policy is furthered when the validity of a patent, which was originally obtained in ex parte proceedings in the PTO, can be challenged in court. Lear, Inc. v. Adkins, 395 U.S. 653, 670, 89 S.Ct. 1902, 1911, 23 L.Ed.2d 610, 162 USPQ 1, 8 (1969).

"Within the limits of the constitutional grant, the Congress may ... implement the stated purpose of the Framers by selecting the policy which in its judgment best effectuates the constitutional aim." Graham, 383 U.S. at 6, 86 S.Ct. at 688, 148 USPQ at 462. Accord United States v. Dubilier Condenser Corp., 289 U.S. 178, 189, 53 S.Ct. 554, 558, 77 L.Ed. 1114, 17 USPQ 154, 158 (1933). Thus, Congress has broad discretion on how to implement the conditions and tests for patentability. Id.; McClurg v. Kingsland, 42 U.S. (1 How.) 202, 206, 11 L.Ed. 102 (1843). Nowhere does the Constitution require that the determination of patent validity be vested solely in the PTO (or even that there be a PTO). Congress was fully within its constitutional power when it delegated power to the courts in 35 U.S.C. Sec. 282 to adjudicate the validity of patents in infringement suits. ³ Congress was also within its constitutional powers when it created a reexamination procedure as an additional mechanism for the review of patents. The creation of reexamination did not divest the courts of any power to review patent validity. See 35 U.S.C. Sec. 306; Patlex Corp. v. Mossinghoff, 758 F.2d 594, 601-02, 225 USPQ 243, 248-50 (Fed.Cir.1985); In re Etter, 756 F.2d 852, 857-58, 225 USPQ 1, 3-4 (Fed.Cir.1985). The district court thus had jurisdiction to review the validity of the '635 and '491 patents.

Appellant also argues that Government sponsorship of research and development is unconstitutional . He objects particularly to Government sponsorship of the research reported in an article by Allen and Westerfield which was found to be prior art against his patents. He advances two constitutional arguments. First, he argues that Government sponsorship of research and development offends the "Science Clause" ⁴ of the Constitution,

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which he construes to mean that the only constitutionally permissible means for the Government to promote science is by securing the rights of inventors and authors. This interpretation is likewise erroneous. Art. I, Sec. 8, cl. 8 does not state that the Government may promote the progress of the useful arts only through the patent and copyright system. Ample constitutional power for Government funding of research and development can be found in art. I, Sec. 8, cl. 1 (provide for the common Defense and general Welfare), cl. 3 (Commerce), cl. 12 (Army), cl. 13 (Navy) and cl. 18 (necessary and proper clause). It is also settled that art. I., Sec. 8 authorizes Congress to spend money to promote the "general welfare," and that the definition of the general welfare and decisions concerning how to promote it are within the discretion of Congress. Helvering v. Davis, 301 U.S. 619, 640, 57 S.Ct. 904, 908, 81 L.Ed. 1307 (1937); Buckley v. Valeo, 424 U.S. 1, 90-91 (1976). Government support for research and development is well within this discretionary power.

Appellant charges that he has been deprived of liberty and property without due process in violation of his 5th and 14th amendment rights in several contexts [5, 7, 10, 11]. He fails to point to any legally recognized liberty interest of which he has been deprived. The court below has invalidated his patent property interest, but the legal proceedings in which he participated fully provided the constitutionally required degree of due process. There may be debate as to the full meaning of "due process," and the courts have struggled to define its boundaries and requirements within the context of nonjudicial governmental action. E.g., Mathews v. Eldridge, 424 U.S. 319, 96 S.Ct. 893, 47 L.Ed.2d 18 (1976). However, it is unambiguously clear that federal judicial proceedings, with their extensive notice, opportunity to be heard, and procedural protections, satisfy the constitutional requirement of procedural due process required for the invalidation of a patent. Constant has failed to demonstrate any legally cognizable deprivation of due process. On the contrary, the district court went to great lengths to give his claims a full and fair hearing.

Appellant tried to reargue these constitutional arguments in his motions for declaratory judgment . The district court properly dismissed these motions for procedural defects. Plaintiff should understand that, had these motions been considered on the merits, he would have lost for the reasons stated in this opinion.

II. Dismissal of Noninfringement Claims

The district court dismissed Counts I-IV and VI-X for failure to state a claim upon which relief can be granted, pursuant to Fed.R.Civ.P. 12(b)(6) . These counts alleged a variety of causes of action including deprivation of civil rights, constitutional rights, and antitrust violations. The dismissals...