Lee Pharmaceuticals v. Kreps, No. 76-2082

CourtUnited States Courts of Appeals. United States Court of Appeals (9th Circuit)
Writing for the CourtBefore HUFSTEDLER and WRIGHT; HUFSTEDLER
Citation198 USPQ 601,577 F.2d 610
PartiesLEE PHARMACEUTICALS, Plaintiff-Appellant, v. Juanita M. KREPS, Secretary of Commerce, et al., Defendants-Appellees.
Decision Date29 June 1978
Docket NumberNo. 76-2082

Page 610

577 F.2d 610
198 U.S.P.Q. 601
LEE PHARMACEUTICALS, Plaintiff-Appellant,
v.
Juanita M. KREPS, Secretary of Commerce, et al., Defendants-Appellees.
No. 76-2082.
United States Court of Appeals,
Ninth Circuit.
June 29, 1978.

Page 611

Mary Helen Sears (argued), of Irons & Sears, Washington, D. C., for plaintiff-appellant.

Alice Mattice (argued), Washington, D. C., for defendants-appellees.

Appeal from the United States District Court for the Central District of California.

Page 612

Before HUFSTEDLER and WRIGHT, Circuit Judges, and SOLOMON, * District Judge.

HUFSTEDLER, Circuit Judge:

Lee Pharmaceuticals ("Lee"), a patent applicant, brought this action to compel the Patent Office to produce abandoned patent applications under the Freedom of Information Act ("FOIA"), 5 U.S.C. § 552 (1977) and to consider such applications as evidence of prior art in evaluating Lee's claims of patentability, under 35 U.S.C. § 131 (1970). Lee appeals from a judgment dismissing its complaint for failure to state a claim upon which relief could be granted. We affirm, holding that (1) abandoned patent applications are not producible under FOIA because section 122 of the Patent Act (35 U.S.C. § 122 (1970) ("(a)pplications for patents shall be kept in confidence by the Patent Office")) is a specific statutory exemption from disclosure within the meaning of Exemption 3 of FOIA (5 U.S.C. § 552(b)(3) (as amended in 1976)), and (2) no justiciable controversy is presented by Lee's challenge to Patent Office procedures.

Lee applied for a patent for a "carvable, dental composite restorative material" (Serial No. 504,838). Before the Patent Office began examining its application, Lee wrote to the Solicitor of the Patent Office demanding that abandoned patent applications for products similar to its own be considered as evidence of prior art in the examination process and demanding that copies of those applications be made available to Lee under FOIA. The Solicitor and later the Commissioner of Patents refused the demand relying upon 35 U.S.C. § 122 and citing Sears v. Gottschalk (4th Cir. 1974) 502 F.2d 122, cert. denied sub nom. Sears v. Dann (1975) 422 U.S. 1056, 95 S.Ct. 2680, 45 L.Ed.2d 709. 1 The Commissioner also told Lee that it had no obligation under FOIA to conduct any examination of its patent applications as requested. Lee then brought this action.

Lee's contentions must be placed in the context of the statutes and regulations generally applicable to patent applicants. The Patent Office was created to implement the federal government's constitutional duty to secure to "Inventors the exclusive Right to their respective . . . Discoveries." (United States Constitution, Art. 1, § 8, Cl. 8. See Kewanee Oil Co. v. Bicron Corp. (1974) 416 U.S. 470, 480-83, 94 S.Ct. 1879, 40 L.Ed.2d 315.) The earliest legislation conferring jurisdiction to grant patents was enacted in 1790 and following numerous intervening enactments, the law was clarified and codified by the Patent Act of 1952. (See P. J. Federico, Commentary on the New Patent Act, in 35 U.S.C.A. § 1 at pp. 2-10.) Congress has invested the Commissioner of Patents with broad discretion to establish procedures for the granting and issuing of patents (35 U.S.C. § 6), which has resulted in the issuance of detailed administrative regulations. (See 37 C.F.R. §§ 1.1 et seq. (1977).) Patent applicants whose claims are rejected may obtain internal re-examination and reconsideration by the Patent Office (id. § 1.111-.113) and appeal the rejection of a claim of patentability to the Board of Patent Appeals. (35 U.S.C. § 134; 37 C.F.R. §§ 1.191-.198.) Judicial review of the Board's determination is available alternatively in the Court of Customs and Patent Appeals (35 U.S.C. § 141-44; 37 C.F.R. §§ 1.301-.302) or "by civil action against the Commissioner in the United States District Court for the District of Columbia." (35 U.S.C. § 145; 37 C.F.R. §§ 1.303-.304.)

The principal provision of the Patent Act respecting the duty to examine patent applications is 35 U.S.C. § 131 which provides: "The Commissioner shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is

Page 613

entitled to a patent under the law, the Commissioner shall issue a patent therefor." Of critical import to patentability is the question whether the "invention" is truly novel (see 35 U.S.C. §§ 101 ("Whoever invents or discovers any new and useful process . . . or any new and useful improvement thereof, may obtain a patent . . . .") & 102 (conditions of patentability exclude, inter alia, inventions "known or used by others in this country")). Thus, 35 U.S.C. § 103 provides in pertinent part 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 as to which said subject matter pertains." Patent examiners must by regulation "make a thorough study (of the application) and shall make a thorough investigation of the available prior art relating to the subject matter of the invention sought to be patented." (37 C.F.R. § 1.104(a).) The relevancy of prior art to a patent examination proceeding is described in 5 Deller's Walker on Patents § 453, at 361 (2d ed. 1972) as anything in tangible form that may properly be relied upon "in support of a rejection on a matter of substance, not form, of a claim in a pending application for patent."

Although abandoned patent applications were used as evidence of prior art very early in the history of the United States Patent Office, the practice has been discontinued since at least 1879. (Alexander Milburn Co. v. Davis-Bouronville Co. (1926) 270 U.S. 390, 400, 402, 46 S.Ct. 324, 325, 70 L.Ed. 651 (the practice "is convenient if not necessary to the Patent Office, and we are not disposed to disturb it").) Abandoned patent applications are not used because the secrecy of patent applications negates any assumption that their contents "would have been obvious" to the relevant segment of the public. (35 U.S.C. § 122; 37 C.F.R. § 1.14(a) & (b); Sears v. Gottschalk, supra, 502 F.2d at 131-32. See The Corn-Planter Patent (1874)90 U.S. (23 Wall.) 181, 210-11, 23 L.Ed. 161 (abandoned patent applications do not necessarily evidence prior use of invention and therefore do not bar patentability of later similar device). See also Application of Lund (1967)376 F.2d 982, 988, 991-92 (abandoned patent application not itself the equivalent of public knowledge of invention by reason of secrecy).) An abandoned patent application may become evidence of prior art only when it has been appropriately disclosed, as, for example, when the abandoned patent is referenced in the disclosure of another patent, in a publication, or by voluntary disclosure under 37 C.F.R. § 1.139. (5 Deller's Walker on Patents, supra, § 453 at 386-88.) Abandoned patent applications, as thus disclosed, are discoverable in later interference or infringement actions. (5 Deller's Walker on Patents, supra, § 437 at 49-51; Application of Lund,supra, 376 F.2d 982.)

I.

Lee argues that abandoned patent applications are discoverable under FOIA because (1) section 122 is outside the protection of Exemption 3, and (2) in any event, abandoned patent applications do not fall within section 122. Despite section 122's express promise of confidentiality, Lee contends that it is not a specific statute of exemption within the meaning of Exemption 3. It argues that the contrary holding in Sears v. Gottschalk, supra, 502 F.2d 122, did not survive the 1976 amendment of Exemption 3 because section 122 confers discretion upon the Patent Office to disclose the content of patent applications. Lee asserts that this authority is "indistinguishable" from that conferred by the kinds of discretionary statutes which Congress intended to exclude from Exemption 3, when it enacted the 1976 amendment. In Lee's view, section 122 is not a true confidentiality statute, but, in substance, a statute affirmatively permitting disclosure, subject to limited exceptions. Its fallback position is that the abandoned patent applications it requests are exempted from section 122's coverage because their disclosure is necessary to carry out an alleged duty to consider abandoned patent applications as evidence

Page 614

of prior art in 35 U.S.C. § 131 application examinations.

The Freedom of Information Act provides generally for liberal access to governmental records by citizens (5 U.S.C. § 552(a)), with the exception of those classes of material specifically exempted from disclosure by its own terms (id. § 552(b)). 2 While "the general rule under the Act is to allow disclosure" and to construe the exemptions narrowly (Theriault v. United States (9th Cir. 1974) 503 F.2d 390, 392; see Dept. of Air Force v. Rose (1976) 425 U.S. 352, 360-62, 96 S.Ct. 1592, 48 L.Ed.2d 11; see also Washington Research Project, Inc. v. HEW (1974) 164 U.S.App.D.C. 169, 176, 504 F.2d 238, 245), material which falls within an exemption provision is excluded from the operation of the Act. (NLRB v. Sears, Roebuck & Co. (1975) 421 U.S. 132, 137, 95 S.Ct. 1504, 44 L.Ed.2d 29. See also Administrator, FAA v. Robertson (1975) 422 U.S. 255, 261-65, 95 S.Ct. 2140, 45 L.Ed.2d 164; Westinghouse Electric Co. v. Schlesinger (4th Cir. 1976) 542 F.2d 1190, 1197-99 & nn. 10-17 (if another statute forbids disclosure, agency must not produce the material under FOIA).) The exemption provisions of FOIA express the congressional determination that in some areas the public interest in maintaining confidentiality of public records outweighs the competing interest in having their contents revealed. (See EPA v. Mink (1973) 410 U.S. 73, 80 & n. 6, 93 S.Ct. 827, 35 L.Ed.2d 119; Note, The Effect of the 1976 Amendment to...

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31 practice notes
  • Chamberlain v. Kurtz, No. 76-2336
    • United States
    • United States Courts of Appeals. United States Court of Appeals (5th Circuit)
    • February 14, 1979
    ...statutes analogous to section 6103 to part B of Exemption 3, as amended, See generally Lee Pharmaceuticals v. Kreps, 9 Cir., 1978, 577 F.2d 610; National Commission on Law Enforcement and Social Justice v. CIA, 9 Cir., 1978, 576 F.2d 1373; Baker v. CIA, 1978, 188 U.S.App.D.C. 401, 580 F.2d ......
  • Wyden v. Commissioner of Patents and Trademarks, No. 86-554
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • November 25, 1986
    ...9 See, e.g., Irons v. Diamond, 670 F.2d 265, 214 USPQ 81 (D.C.Cir.1981), and cases cited therein; Lee Pharmaceuticals v. Kreps, 577 F.2d 610, 198 USPQ 601 (9th Cir.1978); Sears v. Gottschalk, 502 F.2d 122, 183 USPQ 134 (4th Cir.1974), cert. denied, 425 U.S. 904, 96 S.Ct. 1494, 47 L.Ed.2d 75......
  • Berry v. Department of Justice, No. 83-1854
    • United States
    • United States Courts of Appeals. United States Court of Appeals (9th Circuit)
    • May 30, 1984
    ...Statutes that do not permit agencies "wholly discretionary non-disclosure" may qualify for the exemption. Lee Pharmaceuticals v. Kreps, 577 F.2d 610, 615 (9th Cir.1978), cert. denied, 439 U.S. 1073, 99 S.Ct. 847, 59 L.Ed.2d 40 (1979). An exemption will exist where there has been a Congressi......
  • GTE Sylvania, Inc. v. Consumer Product Safety Com'n, No. 78-1328
    • United States
    • U.S. Court of Appeals — Third Circuit
    • May 11, 1979
    ...through which legislative judgment is reflected in the making of an administrative disclosure determination. Lee Pharmaceuticals v. Kreps, 577 F.2d 610, 615 (9th Cir. 1978), Cert. denied, --- U.S. ----, 99 S.Ct. 847, 59 L.Ed.2d 40 (1979) (citing Stretch v. Weinberger, 495 F.2d 639 (3d Cir. ......
  • Request a trial to view additional results
31 cases
  • Chamberlain v. Kurtz, No. 76-2336
    • United States
    • United States Courts of Appeals. United States Court of Appeals (5th Circuit)
    • February 14, 1979
    ...statutes analogous to section 6103 to part B of Exemption 3, as amended, See generally Lee Pharmaceuticals v. Kreps, 9 Cir., 1978, 577 F.2d 610; National Commission on Law Enforcement and Social Justice v. CIA, 9 Cir., 1978, 576 F.2d 1373; Baker v. CIA, 1978, 188 U.S.App.D.C. 401, 580 F.2d ......
  • Wyden v. Commissioner of Patents and Trademarks, No. 86-554
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • November 25, 1986
    ...9 See, e.g., Irons v. Diamond, 670 F.2d 265, 214 USPQ 81 (D.C.Cir.1981), and cases cited therein; Lee Pharmaceuticals v. Kreps, 577 F.2d 610, 198 USPQ 601 (9th Cir.1978); Sears v. Gottschalk, 502 F.2d 122, 183 USPQ 134 (4th Cir.1974), cert. denied, 425 U.S. 904, 96 S.Ct. 1494, 47 L.Ed.2d 75......
  • Berry v. Department of Justice, No. 83-1854
    • United States
    • United States Courts of Appeals. United States Court of Appeals (9th Circuit)
    • May 30, 1984
    ...Statutes that do not permit agencies "wholly discretionary non-disclosure" may qualify for the exemption. Lee Pharmaceuticals v. Kreps, 577 F.2d 610, 615 (9th Cir.1978), cert. denied, 439 U.S. 1073, 99 S.Ct. 847, 59 L.Ed.2d 40 (1979). An exemption will exist where there has been a Congressi......
  • GTE Sylvania, Inc. v. Consumer Product Safety Com'n, No. 78-1328
    • United States
    • U.S. Court of Appeals — Third Circuit
    • May 11, 1979
    ...through which legislative judgment is reflected in the making of an administrative disclosure determination. Lee Pharmaceuticals v. Kreps, 577 F.2d 610, 615 (9th Cir. 1978), Cert. denied, --- U.S. ----, 99 S.Ct. 847, 59 L.Ed.2d 40 (1979) (citing Stretch v. Weinberger, 495 F.2d 639 (3d Cir. ......
  • Request a trial to view additional results

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