Interconnect Planning Corp. v. Feil

• Decision Date: 20 June 1984
• Docket Number: No. 80 Civ. 6602 (KTD).,80 Civ. 6602 (KTD).
• Citation: 587 F. Supp. 1495
• Parties: INTERCONNECT PLANNING CORPORATION, Plaintiff, v. Thomas E. FEIL, Robert O. Carpenter, V Band Systems, Inc., and Turret Equipment Corp., Defendants.
• Court: U.S. District Court — Southern District of New York

587 F. Supp. 1495

INTERCONNECT PLANNING CORPORATION, Plaintiff, v. Thomas E. FEIL, Robert O. Carpenter, V Band Systems, Inc., and Turret Equipment Corp., Defendants.

No. 80 Civ. 6602 (KTD).

United States District Court, S.D. New York.

June 20, 1984.

Morgan, Finnegan, Pine, Foley & Lee, New York City, for plaintiff; Jerome G. Lee, Alfred P. Ewert, James W. Gould, Robert A. Molan, Richard J. McGrath, New York City, of counsel.

Towne, Dolgin, Sawyier & Horton, and Berger, Steingut, Weiner, Fox & Stern, New York City, for defendants Thomas E. Feil and V Band Systems, Inc.; Daniel L. Dolgin, Peter R. Stern, Hubbell, Cohen, Stiefel & Gross, P.C., New York City, of counsel.

MEMORANDUM & ORDER

KEVIN THOMAS DUFFY, District Judge:

Defendants, Thomas E. Feil and V Band Systems, Inc. ("V Band") move for partial summary judgment dismissing plaintiff Interconnect Planning Corporation's ("IPC") patent infringement counterclaim that is based on Reissue Patent number 31,144 ("'144") and for judgment on defendants' eleventh counterclaim.¹

BACKGROUND

Defendants' motion for summary judgment concerns Reissue Patent '144 based on Patent 3,991,282 ('282). On an earlier motion by defendants for summary judgment, I found Patent '282 invalid for obviousness. See Interconnect Planning Corp. v. Feil, 543 F.Supp. 610 (S.D.N.Y. 1982). Thereafter, in accordance with 35 U.S.C. § 251,² plaintiff sought and obtained reissue of the patent.

The alleged invention in Patent '282 and Reissue Patent '144 was designed by Feil in 1974 who was then employed by IPC. The '282 patent application was later assigned to IPC by Feil. The claimed invention —a "multi-station telephone switching system"—is stated to be "capable of communicating with any of a large number of standard telephone lines." See Defendants' Exh. A (The claims in the reissue patent are attached in the Appendix). "Non-locking pushbuttons are utilized to select the lines connected to each station." Id. The system is also called a "trader turret system." As I have previously stated: "this name derives from the principal intended user of the system: a roomful of traders in such markets as commodity futures." 543 F.Supp. at 614.

In 1980, Feil left IPC to join V Band also a defendant in this action. In November 1980, IPC commenced this action against Feil, V Band, Robert O. Carpenter who is an officer of V Band, and Turret Equipment Company which is a subsidiary of V Band. Plaintiff asserted in its complaint claims for patent infringement and unfair competition. At the commencement of the action, plaintiff moved for a preliminary injunction. After a hearing, I denied plaintiff's motion and granted defendants' motion for summary judgment on plaintiff's unfair competition claim. Defendants thereafter moved for summary judgment on plaintiff's claim for patent infringement; I granted defendants' motion and dismissed the complaint. 543 F.Supp. at 619. After reviewing each claim and the relevant prior art, I concluded "that the '282 patent, taken as a whole, would have been obvious at the time of the invention to a person having ordinary skill in the pertinent art." Id.

During the pendency of defendants' summary judgment motion, plaintiff filed an application for the reissue of the '282 patent but the Patent Office declined to render a determination until I disposed of the summary judgment motion. After defendants' motion was granted, a meeting was held in September 1982 between the patent examiner and various IPC representatives and IPC's counsel. As a result of the meeting, the '144 reissue application was amended by deleting claims 2, 3, 5, 7-45 and 48, altering the language of claims 1, 4, 6, 46, 47 and 49, and adding claims 50, 51 and 52. The remaining nine claims were renumbered 1 through 9.

The patent examiner granted the reissue patent as amended without any stated reasons; however, the Quality Review division of the Patent Office rejected the reissue. In December 1982, the patent examiner allowed the nine claims but this time provided a statement of reasons in support of his allowance.

On defendants' prior motion for summary judgment, I considered two articles appearing in the Bell Laboratories Record allegedly disclosing the invention in the '282 patent. They were entitled "Voice Communication System For Air Traffic Control" by M.E. Ozenberger published in May 1961 and "A New Switching System for Right-of-Way Companies," by W.H. Keith published in April 1968. The prior art disclosed in the Keith and Ozenberger articles had not been considered by the patent examiner who issued the '282 patent.

In his "Statement of Reasons for Allowance," the patent examiner allowing the '144 reissue stated that "claims 1, 46 and 49 of the reissue application patentably define over the Bell Laboratories Record articles...." First, the officer reasoned that both articles described "crossbar switching and common control circuitry to provide the switching as opposed to the `direct access' switching" of the '282 claims. The examiner stated that the systems disclosed in the two articles failed to reveal "the holding circuits or the logic circuit" set forth in IPC's patent. Second, the examiner found that IPC's system differed from the system described in the Ozenberger article in that only some of the nonlocking pushbuttons were of the direct access type in the latter system. As to the system described by Keith, the patent examiner stated that the Keith article "fails to disclose the use of non-locking pushbutton switches." Third, IPC's separate active line indicator referred to in claims 1 and 49 was also cited as differing from the Ozenberger system.³

Defendants thereafter amended their answer and counterclaims to include claims that related to the invalidity of Reissue Patent '144 and on January 20, 1984, plaintiff filed its Reply to defendants' second amended answer and counterclaims. In its reply, plaintiff included a "compulsory counterclaim" for patent infringement based on the Reissue Patent.

Defendants move for summary judgment dismissing plaintiff's "compulsory counterclaim" contained in its reply and in defendants' favor on their eleventh counterclaim. For the reasons that follow, defendants' motion is granted. Plaintiff's counterclaim is dismissed.

DISCUSSION

"Summary judgment is appropriate where there are no genuine issues of material fact and where expert testimony is unnecessary either to elucidate the patent or assist the court in applying the obviousness test." Janex Corporation v. Bradley Time, 460 F.Supp. 383, 388 (S.D.N.Y.1978). The patent office has reexamined the reissue patent in light of the relevant prior art; thus, a presumption of validity attaches to it. 35 U.S.C. § 282; see Plastic Container Corp. v. Continental Plastics, 607 F.2d 885, 890 (10th Cir.1979), cert. denied, 444 U.S. 1018, 100 S.Ct. 672, 62 L.Ed.2d 648 (1980). The burden of proving invalidity is on the patent challenger and the standard is by clear and convincing evidence. See American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1360 (Fed.Cir. 1984).

The patent laws provide that a patent may not be obtained if "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains." 35 U.S.C. § 103. The test for obviousness is whether the "claimed invention considered as a whole would have been obvious or nonobvious." Jones v. Hardy, 727 F.2d 1524, 1529 (Fed.Cir.1984). The analysis of a claimed invention "begins with the claims, for they measure and define the invention. Each claim must be considered as defining a separate invention." Id. at 1528 (citations omitted).

Whether a claimed invention has been disclosed by prior art at the time of the alleged invention depends on (1) the scope and content of the prior art, (2) the differences between the prior art and claims at issue, and (3) the level of ordinary skill in the art. See Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693, 15 L.Ed.2d 545 (1966); see also Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1547 (Fed.Cir.1983).⁴

On this summary judgment motion, defendants have introduced other prior relevant art not considered by the patent examiner. The presumption of validity, however, does not shift upon the introduction of additional prior art. 722 F.2d at 1549. "It is upon the introduction of art more pertinent or more relevant than that considered by the PTO ... that the patent challenger's burden may be more easily carried." Id. In any case, for the reasons that follow, reference to the additional prior art is unnecessary because I find that claims 1 through 6 of the Reissue Patent are substantially identical to the corresponding claims in the '282 patent. Thus, they are barred by the doctrine of collateral estoppel. Furthermore, claims 1 through 6 and claims 7 through 9 are disclosed in the prior art considered by the patent examiner. Thus, defendants have sustained their burden of proving by clear and convincing evidence that claims 1 through 9 of Reissue '144 were obvious at the time of the alleged invention.

The doctrine of collateral estoppel applies to the claims in the Reissue Patent that are "substantially identical" to the claims in the '282 patent. See Plastic Container Corp. v. Continental Plastics, 607 F.2d at 895; see also Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 350, 91 S.Ct. 1434, 1453, 28 L.Ed.2d 788 (1971). Those claims are barred by collateral estoppel and therefore invalid without any inquiry into the Graham v. John Deere Co., factors. 607 F.2d at 895; see also Stevenson v. Sears, Roebuck & Co., 713 F.2d 705, 709 (Fed.Cir. 1983). "Any determination of whether collateral estoppel applies must be directed to the claimed invention, i.e., the invention defined by...