Gechter v. Davidson

• Decision Date: 12 June 1997
• Docket Number: Nos. 96-1374,96-1375,s. 96-1374
• Parties: Jerry GECHTER, Robert L. Pokress, Jeffrey A. Fried, and G. Wayne Andrews, Appellants, v. Wayne A. DAVIDSON and Diana S. Winter, Cross-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1454

116 F.3d 1454

43 U.S.P.Q.2d 1030

Jerry GECHTER, Robert L. Pokress, Jeffrey A. Fried, and G Wayne Andrews, Appellants, v. Wayne A. DAVIDSON and Diana S. Winter, Cross-Appellants.

Nos. 96-1374, 96-1375.

United States Court of Appeals Federal Circuit.

June 12, 1997.

William E. Booth, Fish & Richardson, P.C., Boston, MA, argued, for Appellants. Of counsel were Robert E. Hillman and Mary D. Mosley-Goren, Boston, MA, and Barry E. Bretschneider, Washington, D.C.

Charles L. Warren, Lucent Technologies Inc., Naperville, IL, argued, for Cross-Appellants. With him on the brief was Dennis J. Williamson.

Before MICHEL, LOURIE, and SCHALL, Circuit Judges.

MICHEL, Circuit Judge.

On October 26, 1995, the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board) issued a decision in Interference No. 103,051, finding that the independent claims corresponding to the count were unpatentable under 35 U.S.C. § 102 (1994) as anticipated by U.S. Patent No. 4,763,353 (Canale); the dependent claims fell by stipulation. Jerry Gechter, Robert L. Pokress, Jeffrey A. Fried, and G. Wayne Andrews (collectively, Gechter) appeal the unpatentability ruling which invalidates their U.S. Patent No. 5,036,535 (the '535 patent); Wayne A. Davidson and Diana S. Winter (collectively, Davidson) cross-appeal the same ruling which effectively rejects the claims in their application, Serial No. 07/748,147. The case was submitted for our decision after oral argument on March 7, 1997. Because the Board failed to set forth findings of fact adequate to enable us to determine whether its decision of anticipation is clearly erroneous, we vacate the Board's decision and remand the case for preparation of an opinion that makes the fact findings and claim construction necessary to make the decision reviewable on appeal.

BACKGROUND

The senior party, Davidson, provoked the interference by copying the claims of Gechter's patent (the '535 patent) in his application. The claims of both Davidson and Gechter are directed to an automatic call distribution system that automatically distributes calls over a telephone network to a group of telephone operators who may be located distant from the central number and are waiting to receive calls. ¹ The '535 patent has 63 claims, only claims 1 and 49 being independent. Claim 1, which corresponds exactly to the sole count in the interference, recites:

An automatic call distributing system for automatically distributing telephone calls placed over a network to one of a plurality of agent stations connected to said network via network service interfaces and providing agent status messages to said network, said system comprising

receiving means connected via a network service interface to said network for receiving said agent status messages and call arrival messages from said network indicating that incoming calls have been made on said network, said agent status messages being generated at said agent stations and communicated through said network service interfaces and network to said receiving means, and

routing means responsive to said receiving means for generating a routing signal provided to the network to cause said network to establish a connection directly between said incoming call and an agent station through the network so that said connection is external of said routing means.

In its Final Decision, the Board found the independent claims corresponding to the count to be unpatentable to both Gechter and Davidson as anticipated by Canale. ² The Board limited its anticipation analysis essentially to two paragraphs of its opinion. It focused on the findings that (1) Canale disclosed "agent status messages of these claims"; and (2) the claims corresponding to the count required only that the agent status messages have the same "content" throughout their transmission. The Board did not expressly construe the limitation, "agent status messages," before it determined that Canale reads on that limitation and the count. Gechter appeals from the Board's decision, arguing that the Board failed to interpret properly the limitation in light of his specification and therefore clearly erred in finding anticipation. Davidson cross-appeals, contending

that if this court finds Gechter's claims corresponding to the count patentable over Canale, then it should also find that Davidson's claims corresponding to the count are patentable over Canale by reading the count in light of Davidson's specification. We have jurisdiction over this appeal pursuant to 35 U.S.C. § 141 (1994) and 28 U.S.C. § 1295(a)(4)(A) (1994).

I.

Under 35 U.S.C. § 102, every limitation of a claim must identically appear in a single prior art reference for it to anticipate the claim. In re Bond, 910 F.2d 831, 832, 15 USPQ2d 1566, 1567 (Fed.Cir.1990). As the Board's finding of anticipation presents a question of fact, this court's review is limited to deciding whether such finding was clearly erroneous. In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed.Cir.1986). Implicit in our review of the Board's anticipation analysis is that the claim must first have been correctly construed to define the scope and meaning of each contested limitation. See, e.g., In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674 (Fed.Cir.1994) ("[T]o properly compare [an allegedly anticipatory prior art reference] with the claims at issue, we must construe the term 'computer' to ascertain its scope and meaning."). Claim construction is a question of law and therefore reviewed de novo. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979, 34 USPQ2d 1321, 1329 (Fed.Cir.1995) (in banc), aff'd, --- U.S. ----, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).

A.

The relevant statute and our own case law compel our vacatur of the Board's decision. By appealing the Board's decision to this court, Gechter invoked our jurisdiction under 35 U.S.C. § 141, which provides that "[a] party to an interference dissatisfied with the decision of the Board of Patent Appeals and Interferences on the interference may appeal the decision to the United States Court of Appeals for the Federal Circuit." See also 37 C.F.R. § 1.301 (1996). It then becomes our duty to review that decision for error. 35 U.S.C. § 144 (1994) ("The United States Court of Appeals for the Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office." (emphasis added)). For an appellate court to fulfill its role of judicial review, it must have a clear understanding of the ground § for the decision being reviewed. Cf. Atlantic Thermoplastics Co. v. Faytex Corp., 5 F.3d 1477, 1479, 28 USPQ2d 1343, 1345 (Fed.Cir.1993) ("Here the court's opinion is too conclusory and sparse to provide a factual basis for determining whether the invention was on sale....") . When the opinion explaining the decision lacks adequate fact findings, meaningful review is not possible, frustrating the very purpose of appellate review as well as this court's compliance with its statutory mandate. Id. Therefore, the statute's mandate to "review" implies inherent power in this court to require that the Board's decision be capable of review.

Necessary findings must be expressed with sufficient particularity to enable our court, without resort to speculation, to understand the reasoning of the Board, and to determine whether it applied the law correctly and whether the evidence supported the underlying and ultimate fact findings. If either the crucial findings on underlying factual issues or the ultimate finding of anticipation is clearly erroneous, the decision must be reversed. See, e.g., King, 801 F.2d at 1327, 231 USPQ at 139 ("The board's finding of anticipation ... cannot be clearly erroneous in the face of the supporting evidence."). Similarly, if the claims were misconstrued, a finding of anticipation must be reversed unless the error was harmless. Rowe, at 481 (Because of improper claim construction, "the Board clearly erred in its conclusion that the [prior art] patent anticipated Rowe's claims corresponding to the interference count[.]"); see also In re Graves, 69 F.3d 1147, 1152-53, 36 USPQ2d 1697, 1702 (Fed.Cir.1995) ("In summary, we find that the Board's claim construction is reasonable, and its determination what [the prior art] teaches is not clearly erroneous. We cannot say, therefore, that the Board's conclusion that [the prior art] anticipates claims 4 and 6 is clearly erroneous.").

Although we have said we review decisions, not opinions, King Instrument Corp. v. Otari Corp., 767 F.2d 853, 862, 226 USPQ 402, 408 (Fed.Cir.1985), like a district court opinion, a Board opinion must contain sufficient findings and reasoning to permit meaningful appellate scrutiny. See Bond, 910 F.2d at 833, 15 USPQ2d at 1568 (because the Board made no finding that the delay means in the specification and that embodied in the prior art reference were structurally equivalent, "its decision as to the anticipation of claim 1 is deficient and must be vacated"); cf. In re Alton, 76 F.3d 1168, 1176, 37 USPQ2d 1578, 1584 (Fed.Cir.1996) (Board's decision vacated for failing to articulate adequate reasons of why applicant's evidence failed to rebut the Board's prima facie case of inadequate description.).

B.

Analogous authority also supports our disposition. T he standard of review of district court fact findings, set forth in Federal Rule of Civil Procedure 52(a), is the "clearly erroneous" standard. That is the same standard of review we apply to Board fact finding in both anticipation and obviousness contexts. Thus, Rule 52(a) and case law construing its requirements are instructive, even though not controlling, here. That rule requires that "[i]n all actions tried upon the facts without a jury or with an advisory jury, the court shall find the facts specially and state separately its conclusions of law thereon," Fed.R.Civ.P. 52(a) (emphasis added)....