DeGeorge v. Bernier, 84-1281

CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit
Writing for the CourtBefore BALDWIN; BALDWIN
Citation768 F.2d 1318,226 USPQ 758
PartiesPeter J. DeGEORGE, et al., Appellants, v. Donald R. BERNIER, Appellee. Appeal
Docket NumberNo. 84-1281,84-1281
Decision Date19 July 1985

David W. Plant, Fish & Neave, New York City, argued, for appellants. With him on brief were Robert C. Morgan, Robert R. Jackson, and Douglas J. Gilbert, New York City.

Richard H. Smith, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C., argued, for appellee. With him on brief was Richard L. Stroup and Gerald L. Moore, Los Gatos, Cal.

Before BALDWIN, Circuit Judge, and SKELTON and MILLER, * Senior Circuit Judges.

BALDWIN, Circuit Judge.

This appeal is from a decision of the Board of Patent Interferences (board) of the United States Patent and Trademark Office (PTO) awarding priority of counts 1 through 13 to junior-party Bernier. We reverse in part and vacate in part.


The senior-party appellants are Peter J. DeGeorge, Roger F. Ross, and Donald E. Sims (DeGeorge); the real party in interest is International Business Machines Corporation (IBM). The junior-party appellee is Donald R. Bernier (Bernier); the real party in interest is Itel Corporation (Itel).

The DeGeorge Application, Serial No. 228,733 ('733), was filed February 23, 1972. It claims the benefit of DeGeorge application Serial No. 871,424 ('424), filed October 22, 1969, and DeGeorge application Serial No. 609,670 ('670), filed January 16, 1967. The specifications of all three applications can be considered identical for purposes of this appeal.

The interference was declared after DeGeorge copied, as counts 1 through 13, claims 28 through 40 of U.S. patent No. 3,579,193 ('193) to Bernier, issued May 18, 1971 on an application filed May 20, 1968. The counts concern electrical circuitry in word processors (or typewriters) designed to obtain automatic indentation of a block or paragraph of text so that subsequent lines of the block (or paragraph) are indented from the left line regardless of the recorded codes for the subsequent lines. The invention, to be used with a word processor (or typewriter), was referred to by the board as a two-counter comparison paragraph indent (TCCPI) circuit.

Of the 13 counts, 2 through 13 are dependent and do not raise any issue distinct from those raised by independent count 1. All parties agree that the priority determination as to count 1 will govern the award of priority as to all counts. Count 1 reads as follows:

Apparatus for controlling the operation of a data processing system printer having printing mechanism for printing characters and functional mechanism for selecting the location of printing of characters, first means for sensing a first characteristic operation of the printer, second means enabled in response to the sensing of said first characteristic operation for counting a first succession of second characteristic functional operations including first storage means for storing the count of said second characteristic functional operation, comparison circuit means for counting a second succession of said second characteristic functional operations, and means limiting said second succession of second characteristic functional operations when the count of said second succession bears a preselected relationship to the count of said first succession of second characteristic functional operations.

To be successful in the interference, DeGeorge needs the benefit of the '670 filing date. Consequently, a critical issue is the sufficiency of the '670 disclosure with respect to enablement under 35 U.S.C. Sec. 112, paragraph 1. 1 Bernier contends that allegedly essential material contained in four United States patents, a United States patent application, and five IBM customer engineering manuals was improperly incorporated by reference in the '670 application, and that the disclosure without those references, i.e., the per se disclosure, was not enabling.

The board held, inter alia, that the burden of persuasion is on the copier DeGeorge, that the count language defines a combination of word processor and TCCPI circuit (as opposed to only a TCCPI circuit), that the '670 application was not enabling, and, hence, that DeGeorge was not entitled to the '670 filing date. The board also held that the DeGeorge applications did not include a "best mode contemplated by the inventor", also required by 35 U.S.C. Sec. 112, paragraph 1, and, sua sponte, that DeGeorge had not proven conception by all of the named three-person entity--DeGeorge, Ross, and Sims. Consequently, priority of invention was awarded to Bernier.


1. Whether the board imposed on DeGeorge the proper burden of persuasion.

2. Whether the board erred in its interpretation of count 1.

3. Whether the board erred in concluding that the DeGeorge '670 disclosure is not enabling.

4. Whether the board clearly erred in finding that the DeGeorge applications do not disclose the best mode.

5. Whether the board incorrectly ruled, sua sponte, that there was no conception by the three person entity of DeGeorge, Ross, and Simms.

Improper Burden of Persuasion

Having copied the claims from Bernier's '193 patent, DeGeorge must show by clear and convincing evidence that the disclosure on which he relies supports the copied claims that became the interference counts. Burson v. Carmichael, 731 F.2d 849, 852, 221 USPQ 664, 666 (Fed.Cir.1984); Snitzer v. Etzel, 531 F.2d 1062, 1063, 189 USPQ 415, 417 (CCPA 1976). As the party copying the claims, DeGeorge had the burden of persuasion on the right to make the counts which had to be met before an interference could properly be declared. That burden should be met by clear and convincing evidence. Woods v. Tsuchiya, 754 F.2d 1571, 1575, 225 USPQ 11, 13 (Fed.Cir.1985).

DeGeorge argues that the board, instead of using the "clear and convincing" standard, used the "beyond a reasonable doubt" standard or at least equated that with the "clear and convincing" standard to the point that it affected the board's outcome. Bernier contends that the board's discussion of "beyond a reasonable doubt" was made only in passing and not to describe the standard actually applied in the case.

We agree with DeGeorge. The board stated that DeGeorge "at least must show 'by clear convincing evidence' that the involved application supports its claims corresponding to the counts." That burden, stated the board, "has been said to be a heavy one," and:

[I]t has been said further that there must be 'no doubt' that a copier's application discloses every material limitation and that 'all doubts must be resolved against the copier.' (Citation omitted.) Since all, presumably reasonable, doubts must be resolved against the copier, it would appear that the copier's burden also is perhaps beyond doubt. Also see Marathon-Oil Co. v. Firestone ... wherein ... it was stated ... [t]hese varying formulations of the burden of proof ["clear and convincing" and "beyond a reasonable doubt"] do not ... compel different levels of proof.

From that, and other portions of the opinion, it is clear that the board raised the burden of persuasion to an improper level.

The "clear and convincing" standard is different from "beyond a reasonable doubt." See, e.g., In re Caveney, 761 F.2d 671, 674, 226 USPQ 1, 3 (Fed.Cir.1985); Trans-World Manufacturing Corp. v. Al Nyman & Sons, Inc., 750 F.2d 1552, 1559-60, 224 USPQ 259, 262 (Fed.Cir.1984); SSIH Equipment S.A. v. USITC, 718 F.2d 365, 380, 218 USPQ 678, 691 (Fed.Cir.1983) ("Additional views of Circuit Judge Nies"); accord, Addington v. Texas, 441 U.S. 418, 423, 99 S.Ct. 1804, 1808, 60 L.Ed.2d 323 (1979); Woodby v. INS, 385 U.S. 276, 284, 87 S.Ct. 483, 487, 17 L.Ed.2d 362 (1966). Because the board applied an erroneous--and more difficult--standard of proof, the decision must at least be vacated. For the reasons indicated below, however, the board's decision is reversed in part and vacated in part.

Improper Count Construction

There are two asserted count interpretations. The board narrowly interpreted the count as requiring a word processor in addition to the TCCPI. DeGeorge urges a broader interpretation, which would require only the TCCPI. Under the narrower interpretation, the board found DeGeorge's grandparent '670 disclosure not enabling because of insufficient disclosure of a word processor embodiment.

A critical issue, therefore, is construction of the count, a question of law. Cf. Raytheon Co. v. Roper Corp., 724 F.2d 951, 956, 220 USPQ 592, 596 (Fed.Cir.1983), cert. denied, --- U.S. ----, 105 S.Ct. 127, 83 L.Ed.2d 69 (1984) (claim construction is a question of law). Interference counts are given the broadest reasonable interpretation possible, and resort to the specification is necessary only when there are ambiguities inherent in the claim language or obvious from arguments of counsel. See, e.g., Woods v. Tsuchiya 754 F.2d 1571, 1578, 225 USPQ 11, 15 (Fed.Cir.1985); In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 802 (CCPA 1981); Kroekel v. Shah, 558 F.2d 29, 32, 194 USPQ 544, 546 (CCPA 1977); Stansbury v. Bond, 482 F.2d 968, 974-75, 179 USPQ 88, 92 (CCPA 1973). If there is such ambiguity, resort must be had to the specification of the patent from which the copied claim came. See, e.g., Burson v. Carmichael, 731 F.2d 849, 852, 221 USPQ 664, 666 (Fed.Cir.1984); Stockman v. Switzer, 379 F.2d 996, 54 CCPA 1563, 1568, 1000, 154 USPQ 105, 106-07 (1967). 2

Here, the count is arguably ambiguous with respect to whether it includes a word processor (or typewriter) in addition to the TCCPI. The problem arises in large part from the use of "having" (in the second line of the quoted material below), and from a failure to include "comprising" before "first means" (fifth line below):

Apparatus for controlling the operation of a data processing system printer having printing mechanism for printing characters and function mechanism for selecting the location of printing of characters, first...

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