Oetiker v. Jurid Werke GmbH, s. 81-1427
| Decision Date | 19 February 1982 |
| Docket Number | Nos. 81-1427,81-1489,s. 81-1427 |
| Citation | 671 F.2d 596,215 U.S.P.Q. 21 |
| Parties | , 215 U.S.P.Q. 21, 1982-1 Trade Cases 64,548 Hans OETIKER, Appellant, v. JURID WERKE GMBH. Hans OETIKER v. JURID WERKE GMBH, Appellant. |
| Court | U.S. Court of Appeals — District of Columbia Circuit |
Paul M. Craig, Jr., Washington, D. C., with whom James F. McKeown, Washington, D. C., was on the brief for Hans Oetiker, appellant in No. 81-1427 and appellee in No. 81-1489.
Martin Fleit, Washington, D. C., with whom Michael R. Slobasky, Washington, D. C., was on the brief for Jurid Werke GmbH, appellee in No. 81-1427 and appellant in No. 81-1489.
Before WILKEY and MIKVA, Circuit Judges, and MARKEY, * Chief Judge, United States Court of Customs and Patent Appeals.
Opinion for the Court filed by Chief Judge MARKEY.
Hans Oetiker (Oetiker) appeals from a judgment of the United States District Court for the District of Columbia dismissing his claim that Jurid Werke GmbH (Jurid) procured U.S. Patent 3,321,811 ('811 patent) by fraud on the Patent and Trademark Office (PTO) and misused the '811 patent in violation of Section 2 of the Sherman Act (15 U.S.C. § 2). Jurid cross appeals the district court's refusal to award it attorneys fees. We affirm.
Oetiker, a Swiss resident and citizen, is engaged in the manufacture and sale of clamps and couplings in various countries, including the United States.
In 1957, Oetiker and Jurid, a German manufacturer, entered an agreement granting Jurid an exclusive license under Oetiker's clamp patents in West Germany and access to related know-how and trade secrets. According to that agreement, Oetiker had the right to freely use any improvements to the Oetiker clamps made by Jurid and to have the same patented. If Oetiker elected not to apply for patent protection, Jurid was free to do so. However, any patents applied for by Jurid were to be in Oetiker's name and were to become Oetiker's property upon termination of the agreement.
On April 4, 1964, Jurid filed a German Gebrauchsmuster (petty patent) application on a hose clamp. Jurid filed a corresponding application in the United States on March 31, 1965. Corresponding applications were also filed in Britain, France, Sweden, Austria and the Netherlands and a utility patent application was filed in Germany. The U.S. application matured into the '811 patent issued May 30, 1967. On December 7, 1967, the German Patent Office rejected the corresponding German application for lack of invention over disclosures in certain prior patents.
In October, 1972, Oetiker began selling axle sleeve clamps to Volkswagen Werken In June, 1973, Jurid wrote to VW calling VW's attention to Jurid's ownership of several patents, including the '811 patent, relating to axle sleeve clamps. 1 Jurid states in that letter that "for the hose clamps presently used by (VW) no relevant Oetiker patents but rather only Jurid patents exist."
AG (VW), a German automobile manufacturer. Before that time, the German axle sleeve clamp market had been the province of Jurid under its exclusive license from Oetiker. That license agreement was terminated in March, 1972.
A year later, on June 14, 1974, Jurid threatened to sue VW for patent infringement, unless settlement was reached by July 8, 1974. VW ignored the letters and Jurid took no further action on the matter.
Oetiker filed this action on November 15, 1974, seeking a declaratory judgment that the '811 patent was: invalid; not infringed; fraudulently procured; and misused to exclude Oetiker from selling clamps in the U.S. and other markets in violation of federal antitrust laws.
On February 6, 1975, Jurid filed a disclaimer of the '811 patent in the PTO and moved to dismiss the invalidity and noninfringement claims as mooted thereby. Jurid also moved to dismiss the misuse claim as a nonfederal pendant claim. The motion to dismiss was granted as to all claims and Oetiker appealed.
On appeal, this court affirmed the dismissal of the invalidity and noninfringement claims as moot, but remanded for consideration of Oetiker's claim that Jurid had procured the '811 patent by fraud sufficient to support a charge of antitrust violation under § 2 of the Sherman Act. Oetiker v. Jurid Werke GmbH, 556 F.2d 1 (D.C.Cir.1977).
In Oetiker's original complaint and first amended complaint, the only allegation of fraud was Jurid's alleged failure to inform the PTO of prior art patents relied upon by the German Patent Office in connection with Jurid's corresponding German patent application.
On remand, Oetiker moved for leave to file a second amended complaint saying "that some of the original factual allegations supporting the theory of fraudulent procurement ... if narrowly construed might be arguably not supported." In the amended complaint, in Oetiker's opposition to Jurid's motion for summary judgment, and in a separate cross-motion for summary judgment, Oetiker advanced new allegations of fraud. He alleged that Jurid wrongly named Karl Thomas, a Jurid employee, as the inventor; that it failed to inform the PTO of the date of the German Gebrauchsmuster; that the invention was inoperative; that Jurid failed to disclose best mode; that it made misrepresentations and nondisclosures concerning two prior art French patents cited by the examiner; that it failed to record an interview with the patent examiner; and that it failed to cite the Tinnerman U.S. Patent 2,335,464 (Tinnerman).
Trial was held May 5-12, 1980. On March 17, 1981, Judge Thomas Flannery entered final judgment for Jurid. In his findings of fact and conclusions of law, Judge Flannery found that each of Oetiker's allegations of fraudulent procurement lacked merit. On April 1, 1981, Judge Flannery denied Jurid's motion for attorneys fees, refusing to find that Oetiker had maintained the litigation in bad faith.
(1) Whether error occurred in finding without merit Oetiker's allegation that Jurid had procured the '811 patent by fraud (2) Whether, after finding no fraudulent procurement, it was error to refrain from considering Oetiker's allegations of fraudulent enforcement.
on the PTO sufficient to support a charge of antitrust violation under § 2 of the Sherman Act.
(3) Whether it was an abuse of discretion to refuse an award of attorneys fees.
OPINIONThe Supreme Court has established that one guilty of fraudulent procurement and attempted enforcement of the patent thus procured may be liable for treble damages to competitors under the antitrust laws. Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172, 86 S.Ct. 347, 15 L.Ed.2d 247 (1965). In Walker Process, the defendant had attempted to enforce a patent allegedly known to be invalid. The Court held that the enforcement of a patent procured by fraud on the PTO may be violative of § 2 of the Sherman Act provided all the other elements necessary to establish a § 2 violation are proved, and that persons injured by that violation may sue for treble damages under § 4 of the Clayton Act. 3
Oetiker says on this appeal that Jurid committed fraud in the procurement of the '811 patent by: (1) misleading the U.S. patent examiner on the pertinence of two prior French references cited by the patent examiner during prosecution of the U.S. application and (2) failing to cite U.S. Patent 2,335,464 (Tinnerman) to the PTO. 4
Respecting (1), Oetiker says that correspondence of Jurid with its patent agents establishes that Jurid believed the French references more pertinent than the art relied upon by the examiner, 5 and that Jurid intentionally misled the examiner by not adequately disclosing the references.
Finding of Fact 64, reads:
64. The court has considered all of the communications among defendant and its U.S. and foreign patent agents in connection with the prosecution of the U.S. '811 patent. These communications do not reveal that defendant believed the French '397 and '312 patents would, or should, have prevented issuance of the '811 patent, nor do the documents reflect any bad faith or intent to deceive or mislead the Examiner.
That finding is not clearly erroneous. The correspondence between Jurid and his German patent attorney, Rau, does not establish that Jurid thought the examiner erred in not relying on the French references. Though the relevancy of those references is discussed in that correspondence and in correspondence between Rau and Jurid's New York counsel, the conclusion reached in those discussions was that the references did not adversely affect patentability.
Oetiker says that the examiner did not appreciate the significance of the references and that Jurid had a duty to ensure that the examiner considered them in greater detail. However, as Finding 64 makes plain, nothing in the Office Action suggests that the examiner misunderstood or misinterpreted the French references. The trial court correctly found that the drawings of the clamps shown in the French patents are clear and would have been easily understood by an examiner working in this art. That the examiner did not specifically apply the French references against the claims of the '811 patent application suggests only that he considered those patents less pertinent than others he found and applied. That the examiner did not apply the references is certainly not an indication that he misunderstood them.
Nor is there evidence that Jurid made any misrepresentations concerning either of the French references. The only direct statements Jurid made concerning the references were in its response to the examiner's Office Action. Those statements were found below to have been true and not misleading to the examiner. Significantly, Jurid stated that the references "pertain to this kind of clamp." As Judge Flannery noted, that statement would hardly have directed the examiner's attention from the references; it would have drawn his...
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