Monsanto Company v. Kamp

• Decision Date: 15 June 1967
• Docket Number: Civ. A. No. 2372-64.
• Citation: 269 F. Supp. 818,154 USPQ 259
• Parties: MONSANTO COMPANY, Jules Pinsky, Albert E. Adakonis and Alvin R. Nielsen, Plaintiffs, v. Ernst KAMP, Karl Jahn and Edward J. Brenner, Commissioner of Patents, Defendants.
• Court: U.S. District Court — District of Columbia

269 F. Supp. 818

154 USPQ 259

MONSANTO COMPANY, Jules Pinsky, Albert E. Adakonis and Alvin R. Nielsen, Plaintiffs, v. Ernst KAMP, Karl Jahn and Edward J. Brenner, Commissioner of Patents, Defendants.

Civ. A. No. 2372-64.

United States District Court District of Columbia.

June 15, 1967.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Wayne L. Benedict, Herbert B. Roberts, and Platon Mandros, Washington, D. C., for plaintiffs.

Paul M. Craig, Jr. and Donald Antonelli, Washington, D. C., for defendants Kamp and Jahn.

Joseph Schimmel, Solicitor, Washington, D. C., for defendant Brenner.

OPINION

HOLTZOFF, District Judge.

This is an action under 35 U.S.C. § 146, to set aside a determination by the Patent Office, in an interference proceeding, awarding to the defendants Kamp and Jahn, rights of priority to a patent. At this time the case was before this Court on a separate trial as to one of the issues.

The invention involved in this controversy relates to plastic bottles, such as are used for pharmaceutical products. Specifically it consists of coating or lining bottles of this type with a resin compound to prevent the loss of liquid contents by permeation or evaporation. The kind of plastic used is known as polyethylene. The resin employed is known as an epoxy resin. There are two counts in the interference. Each of them covers a coated container as an article of manufacture, one of the counts being somewhat broader than the other.

The plaintiffs, Pinsky, Adakonis, and Nielsen, filed an application for a patent on March 28, 1956. Patent No. 2,830,721 was granted to them on April 15, 1958, and was eventually assigned to the plaintiff Monsanto Company.

The defendants, Kamp and Jahn, filed an application for a patent on April 17, 1956, No. 578,846. They had filed a parent application in Germany on April 22, 1955 and were accorded in the United States the benefit of that earlier date. The application submitted in the United States was claimed to be for the same invention and made in behalf of the same inventors as that previously filed in Germany.

An interference was declared between the plaintiffs' patent and the defendants' application, on March 27, 1961. That proceeding terminated on June 29, 1964 by an award of priority to the defendants, on the basis of their earlier German filing date. The plaintiffs then brought this action to set aside that decision. They contend that they are entitled to priority and, therefore, should be permitted to retain their patent and that none should issue to the defendants.

A motion was made by the plaintiffs in this Court for a preliminary injunction to restrain the Commissioner of Patents from issuing a patent to the defendants during the pendency of this action. Another Judge of this Court denied the application. The Court of Appeals reversed his order and held that the Commissioner of Patents was without authority to issue a patent to the defendants until the final outcome of this suit, in effect, staying the issuance of a patent in the meantime, Monsanto Co. v. Kamp, 123 U.S.App.D.C. 365, 360 F.2d 499.

On the plaintiffs' motion this Court ordered a separate trial of the issue whether defendants, Kamp and Jahn, were entitled to rely on the German application as joint inventors. It was urged by plaintiffs' counsel that if they prevailed on this point, they would be entitled to final judgment in their favor, without a trial of the remaining questions. This trial has been had. Its scope has been somewhat broader than the narrow issue defined by the order of this Court as will appear hereafter. This opinion deals with the issues that were the subject matter of the separate trial.

At the outset, it seems appropriate to recapitulate the principles that govern the scope of judicial review in this instance. Actions in the District Court under 35 U.S.C. § 145 against the Commissioner of Patents, to secure an adjudication that the plaintiff is entitled to a patent on an application that has been rejected by the Commissioner; and actions under 35 U.S.C. § 146, between two or more claimants to a patent, to set aside a decision of the Board of Patent Interferences on the question of priority, are sui generis. They are proceedings of a hybrid nature. They are sometimes denominated "trials de novo", but such use of this term is somewhat loose. Proceedings in this Court in actions of these two types are not true or genuine trials de novo. The administrative record of the Patent Office forms the nucleus of the evidence before the District Court. Unlike, however, the customary judicial review of administrative decisions where the administrative agency acts on a record, the Court does not confine itself to that record in these cases. Additional evidence is admissible in support of contentions advanced by the parties in the Patent Office. It is this feature that has led to the inaccurate use of the appellation "trials de novo" in these actions. There is a limitation on the admissibility of supplementary evidence. Such evidence as was available to the parties, but was withheld from the Patent Office as a result of fraud, bad faith, or gross negligence, may be excluded at the trial, Minnesota Mining & Mfg. Co. v. General Electric Co., D.C., 167 F.Supp. 37, 40; Polaroid Corp. v. Horner, D.C., 197 F. Supp. 950, 957.

The applicable statutes do not contain any provision authorizing the Court to remand the matter to the Patent Office for a consideration of the additional evidence tendered at the trial. In this regard Sections 145 and 146 differ from many of the recent statutes governing judicial review of administrative action. It is not unlikely that this omission is due to the fact that the original precursors of Sections 145 and 146 were enacted long before the origin and development of modern administrative law, and although the patent laws have been amended and codified subsequently, there has been no emphatic demand or pressing proposal for a change in this respect.

There is another significant feature in which these actions differ from true trials de novo. A presumption of regularity attaches to the decisions of the Patent Office. The burden is on the party challenging the administrative ruling to demonstrate that it was erroneous. This doctrine applies to interference proceedings as well as to reviews of denials of applications for patents by the Patent Office. The principle was enunciated in the leading case of Morgan v. Daniels, 153 U.S. 120, 121, 125, 14 S.Ct. 772, 773, 38 L.Ed. 657, in the following language:

"Upon principle and authority, * * it must be laid down as a rule that where the question decided in the patent office is one between contesting parties as to priority of invention, the decision there made must be accepted as controlling upon that question of fact in any subsequent suit between the same parties, unless the contrary is established by testimony which in character and amount carries thorough conviction."

This doctrine has been applied in numerous cases. Among them are the following: United States v. Szuecs, 100 U.S.App.D.C. 24, 25, 240 F.2d 886, 887; Shell Development Co. v. Pure Oil Co., D.C., 111 F.Supp. 197, 201; Minnesota Mining & Mfg. Co. v. General Electric Co., D.C., 167 F.Supp. 37, 40; and Polaroid Corp v. Horner, D.C., 197 F.Supp. 950, 957.

We shall now take up the various contentions advanced by the plaintiffs as a basis for overruling the decision of the Patent Office tribunals. It is claimed, first, that defendants Kamp and Jahn, are not entitled to the benefit of the filing date of the German application, because that application was filed not by them but by Alex Kamp and Company. The oath attached to the American application, however, recites that the German application was filed in their behalf. Subsequently each of the two applicants presented an affidavit to the Patent Office to the effect that Alex Kamp and Company filed the German application in their behalf. It is a well known practice under the German patent law to prosecute applications for patents in the name of an assignee or representative of the inventor. The Patent Office of the United States in this instance accepted the showing made by the defendants, Kamp and Jahn, as sufficient to establish the fact that the German application was submitted in their behalf and that they are entitled to the benefit of its filing date.

An application for a patent made by two or more persons claiming to be joint inventors is prima facie evidence that they are such. The Patent Office may act on such a representation. Lemp v. Randall, 33 App.D.C. 430, 433; Beidler v. Caps, 36 F.2d 122, 17 CCPA, Patents, 703; Brown v. Edeler, 110 F.2d 858, 861, 27 CCPA 1091; Van Otteren v. Hafner, Cust. & Pat.App., 278 F.2d 738, 741; and Cheshire v. Cox Multi-Mailer Co. (7th Cir.) 229 F. 415, 419. No reason for overturning this action of the Patent Office on the basis of its record is perceived. The burden is on the plaintiff to show affirmatively by extrinsic proof that the ruling of the Patent Office was erroneous.

The plaintiffs introduced in evidence at the trial before this Court a Canadian patent issued on the basis of the same parent German application as supports the application in the case at bar. The Canadian application was filed on April 19, 1956 and purports to be presented solely in behalf of Ernst Kamp as the inventor. The Canadian patent was...