Hester Industries, Inc. v. Stein, Inc.

• Decision Date: 06 May 1997
• Docket Number: Civil Action No. 96-719-A.
• Citation: 963 F.Supp. 1403
• Court: U.S. District Court — Eastern District of Virginia
• Parties: HESTER INDUSTRIES, INC., Plaintiff, v. STEIN, INC., Defendant.

963 F.Supp. 1403

HESTER INDUSTRIES, INC., Plaintiff, v. STEIN, INC., Defendant.

Civil Action No. 96-719-A.

United States District Court, E.D. Virginia, Alexandria Division.

May 6, 1997.

Robert A. Vanderhye, Robert W. Adams, Nixon & Vanderhye, P.C., Arlington, VA, for Plaintiff.

James H. Laughlin, Jr., Bruce O. Jolly, Jr., Lane & Mittendorf, Washington, DC, Charles H. De La Garza, Joseph A. Uradnik, Arnold, White & Durkee, Minneapolis, MN, Stephen D. Dellett, L. Gene Spears, Arnold, White & Durkee, Houston, TX, for Defendant.

Elizabeth C. Simon, Ron Kamp, FMC Corporation, Chicago, IL, of counsel.

MEMORANDUM OPINION

ELLIS, District Judge.

In this patent infringement suit, plaintiff, a processor of pre-cooked poultry and meat products, accuses defendant, a manufacturer of industrial appliances, of infringing several claims in two reissue patents covering high humidity steam cookers. In the motion at bar, defendant moves for summary judgment on the question whether the asserted claims of the reissue patents in suit are invalid for failure to comply with the substantive requirements for the reissue of patents found in 35 U.S.C. § 251.

I.

Plaintiff Hester Industries, Inc. ("Hester") has accused Stein, Inc. ("Stein") of infringing claims 26 and 59 of U.S. Patent No. Re. 33,510 ("the 510 Reissue") and claims 28, 30, 31, 32, 75 and 76 of U.S. Patent No. Re. 35,259 ("the 259 Reissue").¹ Generally, these patents cover a cooker that employs a spiral conveyor to escort meat products through a housing in which they are cooked using steam. Both patents are reissue patents, which means that they were issued to replace a then-existing patent pursuant to 35 U.S.C. § 251. Specifically, both the 510 and 259 reissue patents replaced Hester's U.S. Patent No. 4,582,047 ("the 047 patent"), which claimed, in part, the invention of a cooker that utilizes two steam sources, one external and one internal, and cooks solely with high humidity steam. The application for the 047 patent was filed in July 1979, and issued in 1986. Two years after the issuance of the 047 patent, Hester applied for a reissue pursuant to 35 U.S.C. § 251, alleging that the claims of the 047 patent had been drawn too narrowly due to attorney error. This application ripened into the 510 reissue patent. Subsequently, a second reissue application was filed for reasons not relevant here,² and curiously led to the second reissue patent for the same invention. In any event, following allowance of the second reissue patent, Hester filed this action, accusing Stein of infringing two claims in the first reissue patent and four claims in the second.

Early in the case, in December 1996, Stein moved for summary judgment on the question of patent invalidity. Specifically, Stein argued that the reissue patents in suit are invalid for failure to comply with the requirements of 35 U.S.C. § 251. This motion was denied by Order dated January 3, 1997. At trial, Stein renewed its motion for summary judgment on patent validity.

II.

The principles governing summary judgment are well settled. Summary judgment is appropriate where the record shows that "there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Rule 56(c), Fed.R.Civ.P. A factual question is material if a reasonable trier of fact could find for the non-moving party, in part, on its determination of that question. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). In determining whether there is a genuine issue of material fact, the evidence is viewed in the light most favorable to the non-moving party, with all doubt resolved in favor of that party. Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1571 (Fed. Cir.1991). But if the evidence is "merely colorable, or is not significantly probative, summary judgment may be granted." Anderson, 477 U.S. at 249-50, 106 S.Ct. at 2511.

In resolving a summary judgment, due consideration must be given to the burden of proof. Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 2553-54, 91 L.Ed.2d 265 (1986). At trial, patent invalidity must be proven by Stein by clear and convincing evidence. Thus, in this motion, Stein must prove (i) there is no genuine issue of material fact; and (ii) that Stein is entitled to judgment as a matter of law because it has proved, by clear and convincing evidence that the asserted claims of the reissue patents in suit are invalid.

III.

The inquiry into compliance with § 251 appropriately begins with the language of the statute, which states, in pertinent part, that:

[w]henever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Commissioner shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the patent for reissue.

35 U.S.C. § 251. As construed by the Federal Circuit, this section authorizes a reissue patent in four limited circumstances, namely:

(1) to correct an error in the specification;

(2) to correct a defective drawing;

(3) to narrow the claims of a patent, most often resulting from the belated discovery of partially-invalidating prior art; or

(4) to broaden the claims of a patent, most often resulting from post-issuance discovery of attorney error in understanding the scope of the invention.

In re Amos, 953 F.2d 613, 616 (Fed.Cir.1991). Only the fourth circumstance is present here. Hester secured its reissue patents to broaden patent claims.

Section 251 requires a patentee seeking reissue to submit an oath or declaration claiming (i) that the patent is defective, and (ii) that the defect or insufficiency in the patent occurred through error without deceptive intent. Id. Moreover, § 251 requires that the Commissioner reissue patents only "for the invention disclosed in the original patent", the language of the section specifically prohibiting the introduction of new matter into the reissue application. Id. Thus, in sum, a reissue application may only be granted where:

(1) the original patent has a correctable error;

(2) the error was made without deceptive intent; and

(3) the invention claimed in the reissue patent is fully disclosed in and supported by the specification of the original patent.

In analyzing these factors, it is well-settled that the statutory correction mechanism is "based on fundamental principles of equity and fairness, and should be construed liberally." In re Weiler, 790 F.2d 1576, 1579 (Fed. Cir.1986).

Stein does not, for the purposes of this motion, contend that Hester engaged in deception during the reissue application. Rather, Stein attacks the reissue for its failure to satisfy the "error" and "original invention" requirements of § 251. Specifically, Stein's motion presents two principal questions:

(i) whether limitations in the claims of the 047 patent, which were broadened in the reissue patents, are the type of "errors" amenable to correction under § 251, and

(ii) whether the claims of the reissue patents asserted against Stein are fully disclosed in, and supported by, the original 047 patent.

Each is separately addressed.

A.

The complete realm of "errors" for the purposes of § 251 has not been explicitly defined by Congress or the courts, but the statute and Federal Circuit precedent provide some boundary signposts concerning what constitutes an "error" amenable to § 251 correction. The reissue statute, based on the principles of fairness and equity, is construed liberally "to avoid the forfeiture of substantive rights due to error made without intent to deceive." Scripps Clinic, 927 F.2d at 1575. Yet, the Federal Circuit has made unmistakably clear that "not every event or circumstance that might be labeled `error' is correctable by reissue." Weiler, 790 F.2d at 1579. Thus [t]he reissue statute was not enacted as a panacea for all patent prosecution problems, nor as a grant to the patentee of a second opportunity to prosecute de novo his original application.

Weiler, 790 F.2d at 1582.³

Although the statute itself provides no definition of "error", its history is instructive in this regard. Section 251 replaced the prior reissue statute, 35 U.S.C. § 64 (1946), which authorized the correction of patents that contained "error ... by inadvertence, accident, or mistake, and without fraudulent or deceptive intent." Section 251 eliminated the reference to "inadvertence, accident, or mistake" because those terms were deemed to be encompassed by "error" and, therefore, redundant. Hewlett-Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556, 1565 (Fed.Cir.1989), cert. denied, 493 U.S. 1076, 110 S.Ct. 1125, 107 L.Ed.2d 1031 (1990). Yet, this revision did not change the substantive standard for reissue, and "error", for the purposes of the reissue provision, is still interpreted as "inadvertence, accident, or mistake." Id. (quoting Ball Corp. v. United States, 729 F.2d 1429, 1435 & n. 9 (Fed.Cir.1984)). The first two of these terms, "inadvertence" and "accident", refer to circumstances arising unintentionally or unconsciously.⁴ The third term, "mistake", could be more broadly construed to refer to either an intentional or unintentional error.⁵ In light of the principle of ejusdem generis, however, these terms are best construed as requiring an "error" to be made unintentionally in order for that "error" to be eligible for § 251 correction. See generally, In re Mead, 581 F.2d 251, 257 (CCPA 1978)(deliberate, conscious choice not an error amenable to correction by § 251).

The question presented here is...