Digital Equipment Corp. v. Diamond, No. 80-1377

CourtUnited States Courts of Appeals. United States Court of Appeals (1st Circuit)
Writing for the CourtBefore CAMPBELL and BREYER; LEVIN H. CAMPBELL
Citation210 USPQ 521,653 F.2d 701
PartiesDIGITAL EQUIPMENT CORPORATION, Plaintiff, Appellant, v. Sidney A. DIAMOND, Etc., et al., Defendants, Appellees.
Docket NumberNo. 80-1377
Decision Date12 June 1981

Page 701

653 F.2d 701
210 U.S.P.Q. 521
DIGITAL EQUIPMENT CORPORATION, Plaintiff, Appellant,
v.
Sidney A. DIAMOND, Etc., et al., Defendants, Appellees.
No. 80-1377.
United States Court of Appeals,
First Circuit.
Argued Jan. 8, 1981.
Decided June 12, 1981.

Page 703

Donald R. Dunner, Washington, D. C., with whom John M. Romary, Charles E. Lipsey, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D. C., Robert A. Cesari, Martin J. O'Donnell, and Cesari & McKenna, Boston, Mass., were on brief, for appellant.

Richard I. Samuel, Westfield, N. J., with whom Sidney David, William L. Mentlik, Lerner, David, Littenberg & Samuel, Westfield, N. J., and Foley, Hoag & Eliot, Boston, Mass., were on brief, for appellee Computer Operations, Inc.

Jere W. Sears, Washington, D. C., Atty., with whom Edward F. Harrington, U. S. Atty., and Charles K. Mone, Asst. U. S. Atty., Boston, Mass., were on brief, for appellee Sidney A. Diamond.

Before CAMPBELL and BREYER, Circuit Judges, and WYZANSKI, * Senior District Judge.

LEVIN H. CAMPBELL, Circuit Judge.

The district court proceeding from which this appeal is taken was instituted by Digital Equipment Corporation (DEC) with the object of overturning a decision of the U.S. Patent and Trademark Office (PTO) striking from the files, on grounds of "fraud," DEC's application for reissue of a patent. Computer Operations, Inc. (COI), DEC's adversary in ongoing patent infringement litigation, intervened as a defendant. On cross-motions for summary judgment, the district court found for the PTO and COI, and DEC now appeals.

Central to the appeal is a question of first impression: whether the PTO is authorized to strike reissue applications on the basis of the "patent law fraud" criteria reflected in the Commissioner's Rule 56, or whether Rule 56 is supplanted as regards reissue applications by a narrower "deceptive intention" standard found in 35 U.S.C. § 251.

I.

The dispute revolves around U.S. Patent No. 3,387,293, which teaches a control format relating to a magnetic-tape data storage and retrieval system for small computers. Issued in 1968 to Thomas C. Stockebrand, a DEC employee, the patent was assigned by him to DEC.

Stockebrand joined DEC in the fall of 1962 and shortly thereafter became involved with a DEC project to develop and commercialize an existing system known as "LINC tape." Stockebrand had participated in the development of the LINC tape system as an employee of MIT Lincoln Laboratories, Bedford, Massachusetts. During the course of the DEC development program, Stockebrand improved upon the LINC tape format, eventually producing a system that could read and write on tape moving in either direction; it is this "bidirectional capability" which, according to DEC, provided the basis for Stockebrand's patentable claims. 1 DEC has marketed the

Page 704

Stockebrand system under the names "DEC tape" and "Micro tape."

In March 1963, DEC prepared an advertisement for the system modelled on LINC tape which it planned to market the "Micro Tape Control Type 550," which could be used in conjunction with up to eight "Micro Tape Transports Type 555." In May 1963, after DEC's development program had progressed further, DEC prepared a new advertising brochure to promote a "Type 550 Control" with bidirectional capability, to be used with up to four "Type 555 Dual Tape Transports." This brochure described in some detail elements of the system disclosed in the Stockebrand patent.

On May 15, 1963, DEC entered into an agreement to lease computer equipment, including two Micro Tape Controls and six Micro Tape Transports (to be used together as a system), to Kie Data Corp. However, when this lease commenced in July 1963, these units were still in process of being developed. As a result, DEC loaned Kie Data several conventional "Potter units" to be used in lieu of the DEC tape system. 2 Between June 1963 and August 1963, DEC also accepted three other orders for DEC tape devices; 3 two of the orders called for delivery on August 15, 1963 (DEC maintains this was the date set for "earliest possible" delivery) and the third set a delivery date of November 1, 1963. The delivery dates were not met, however. All three orders were listed as "overdue" in DEC memoranda of January 25 and 28, 1964, and the first of the three deliveries appears to have occurred on February 14, 1964.

Page 705

During the summer and fall of 1963, Stockebrand worked to perfect the DEC tape system. Sometime in the fall of 1963, a DEC tape system was delivered to Kie Data; the exact date of delivery is not known, but the PTO found on the basis of the evidence before it (including entries in Stockebrand's notebook) that the system was delivered prior to November 1963. According to Stockebrand, the system delivered was his "breadboard model," the "prototype" on which he had been running tests. The system suffered various breakdowns and disappointments in performance, and Stockebrand spent much of his time from November 1963 through January 1964 working on the system at Kie Data's plant.

As early as February 1964, Stockebrand conferred by telephone with Hugo Liepmann, DEC's patent counsel, concerning the DEC tape invention. He did not, however, at this time or later inform Liepmann of the delivery of the system to Kie Data or of the other orders for DEC tape systems accepted in the summer of 1963. Liepmann and Stockebrand first met on November 5, 1964, four days before the application for patent was filed, at which time they reviewed the application and discussed, inter alia, the preexisting LINC tape system. The application was then dated November 6, 1964 and was filed on November 9, 1964. 4 The application did not refer to LINC tape by name (although it contained what DEC characterizes as a description of prior art, which discloses certain features of the LINC tape system), nor did it mention the Kie Data delivery or other early commercial activity relating to DEC tape. (Although at least two other DEC employees who assisted in preparation of the patent application were aware that a system had been delivered to Kie Data, this fact was never disclosed to Liepmann or to his successor patent counsel, O'Donnell). As part of the application, Stockebrand signed an oath stating, inter alia:

I do not know and do not believe that this invention was ever known or used before my invention or discovery thereof, or ... in public use or on sale in the United States more than one year prior to this application....

Stockebrand restated the above in a "supplemental declaration" filed prior to issuance of the patent. On June 4, 1968, the PTO issued the patent to Stockebrand, and the patent became the property of the assignee, DEC.

In 1973, DEC learned that COI was marketing a tape system with an option that could read and write DEC tape. Following an exchange of correspondence between DEC and COI on the subject of possible infringement, on July 2, 1974 COI instituted an action against DEC, asserting antitrust claims and seeking a declaratory judgment of the invalidity and non-infringement of the Stockebrand patent (hereinafter, "infringement action"). COI raised issues relating to possible prior art and "on sale" bars to the patentability of DEC tape. See 35 U.S.C. §§ 102 & 103. To bolster its position in the infringement action, on February 3, 1975 DEC filed an application to reissue the patent pursuant to 35 U.S.C. § 251; it sought both to amend certain claims that "might be subject to a construction which covers more than the applicant is claiming as his invention," and to disclose to the PTO for the first time information relating

Page 706

to the Kie Data delivery and the LINC tape system, said to have been "discovered" in the course of investigating COI's charges in the infringement action.

Having been invited by DEC to participate in the reissue proceedings, COI petitioned the PTO to "strike" the reissue application on grounds of "fraud," pursuant to PTO Rule 56 (37 C.F.R. § 1.56). After further correspondence with DEC and COI, and following receipt of DEC's responses to two "Requirements for Information," on November 3, 1976 the PTO issued an "Order to Show Cause" why COI's petition should not be granted. The Order set forth 13 "grounds" establishing a "prima facie case of fraud": seven grounds related to the undisclosed commercial activity and to Stockebrand's declaration that the invention had not been "on sale" in the United States more than one year prior to the date of application (i. e., prior to November 9, 1963, the "critical date"); three grounds related to the undisclosed advertising materials prepared in the spring of 1963, which were said to be " 'prima facie' available as prior art against the application"; two grounds related to the inadequate disclosure of LINC tape, the "closest prior art of which (Stockebrand and DEC) were aware"; and one ground concerned the "mischaracterization" of the circumstances leading to the "discovery" and subsequent disclosure of the above information.

Following COI's submission of comments on the Order to Show Cause, on March 2, 1977 DEC filed its response to the Order, which was accompanied by five affidavits, including Stockebrand's. On April 4, 1978, the PTO issued a decision striking the reissue application under Rule 56, finding that nine of the thirteen grounds of fraud had been established by "clear and convincing evidence." The decision was signed by the Assistant Commissioner for Patents. DEC then brought this suit in the district court, and, as already noted, the district court refused to set aside the PTO action.

On appeal, DEC makes essentially two arguments:

(1) The PTO proceeded in excess of its statutory authority in striking the reissue application on grounds of fraud; and

(2) The finding that "clear and convincing" evidence of fraud had been presented was "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law," 5...

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31 practice notes
  • Department of Commerce, Patent and Trademark Office,
    • United States
    • Federal Register September 18, 2000
    • September 18, 2000
    ...making a written restriction (or election) requirement a notification under 35 U.S.C. 132. See also Digital Equipment Corp. v. Diamond, 653 F.2d 701, 713 n.13, 210 USPQ 521, 535-36 n.13 (1st Cir. 1981) (citing 35 U.S.C. 132 when noting that the terms ``requirement'' and ``objection'' are di......
  • Hewlett-Packard Co. v. Bausch & Lomb, Inc., No. C-84-20642 RPA.
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Northern District of California
    • July 22, 1988
    ...to reissuance of claims, just as sections 102 and 103 might stand as a bar to the issuance of claims." Digital Equipment Corp. v. Diamond, 653 F.2d 701, 710 (1st Cir.1981). On review, a district court must have the authority to enforce the statutory bar of § 251 in the same degree as it enf......
  • UMC Electronics Co. v. U.S., Nos. 86-522
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • April 15, 1987
    ...Stewart-Warner Corp. v. City of Pontiac, 717 F.2d 269, 273-74, 219 USPQ 1162, 1166 (6th Cir.1983); Digital Equip. Corp. v. Diamond, 653 F.2d 701, 718, 210 USPQ 521, 540 (1st Cir.1981); Austin v. Marco Dental Prod., Inc., 560 F.2d 966, 970, 195 USPQ 529, 532 (9th Cir.), cert. denied, 435 U.S......
  • E-Z Bowz v. Professional Product Research Co., Inc., 00 Civ. 8670 (LTS) (GWG).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • September 5, 2003
    ...that the Court has found the `998 Patent invalid due to the on-sale bar does not establish fraud. See Digital Equip. Corp. v. Diamond, 653 F.2d 701, 719 (1st Cir. 1981) ("At most, the [US]PTO has established that [the inventor] was `negligent' in not exploring . . . the possibility that the......
  • Request a trial to view additional results
30 cases
  • Hewlett-Packard Co. v. Bausch & Lomb, Inc., No. C-84-20642 RPA.
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Northern District of California
    • July 22, 1988
    ...to reissuance of claims, just as sections 102 and 103 might stand as a bar to the issuance of claims." Digital Equipment Corp. v. Diamond, 653 F.2d 701, 710 (1st Cir.1981). On review, a district court must have the authority to enforce the statutory bar of § 251 in the same degree as it enf......
  • UMC Electronics Co. v. U.S., Nos. 86-522
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • April 15, 1987
    ...Stewart-Warner Corp. v. City of Pontiac, 717 F.2d 269, 273-74, 219 USPQ 1162, 1166 (6th Cir.1983); Digital Equip. Corp. v. Diamond, 653 F.2d 701, 718, 210 USPQ 521, 540 (1st Cir.1981); Austin v. Marco Dental Prod., Inc., 560 F.2d 966, 970, 195 USPQ 529, 532 (9th Cir.), cert. denied, 435 U.S......
  • E-Z Bowz v. Professional Product Research Co., Inc., 00 Civ. 8670 (LTS) (GWG).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • September 5, 2003
    ...that the Court has found the `998 Patent invalid due to the on-sale bar does not establish fraud. See Digital Equip. Corp. v. Diamond, 653 F.2d 701, 719 (1st Cir. 1981) ("At most, the [US]PTO has established that [the inventor] was `negligent' in not exploring . . . the possibility that the......
  • Revlon, Inc. v. Carson Products Co., No. 82 Civ. 4326 (IBC).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • March 21, 1985
    ...information of which he is aware, American Hoist & Derrick Co., supra, at 1362; Digital Equipment Corp. 602 F. Supp. 1104 v. Diamond, 653 F.2d 701, 716 (1st Cir. 1981), we note that when it was advantageous for the defendant to present the PTO with an Eiermann affidavit, defendant was quick......
  • Request a trial to view additional results

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