Parker v. Motorola, Inc.

• Decision Date: 08 December 1975
• Docket Number: No. 74-1803,74-1803
• Citation: 188 USPQ 225,524 F.2d 518
• Parties: Louis W. PARKER, Plaintiff-Appellee-Cross Appellant, v. MOTOROLA, INC., Defendant-Appellant-Cross Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 518

524 F.2d 518

188 U.S.P.Q. 225

Louis W. PARKER, Plaintiff-Appellee-Cross Appellant, v. MOTOROLA, INC., Defendant-Appellant-Cross Appellee.

No. 74-1803.

United States Court of Appeals Fifth Circuit.

Dec. 8, 1975.

Foorman L. Mueller, Chicago, Ill., John F. Spellacy, Ft. Lauderdale, Fla., LaValle D. Ptak, Phoenix, Ariz., for plaintiff-appellee-cross appellant.

Eugene F. Malin, Carl V. Wisner, Jr., Ft. Lauderdale, Fla., for defendant-appellant-cross appellee.

Appeals from the United States District Court for the Southern District of Florida.

Before TUTTLE, COLEMAN and SIMPSON, Circuit Judges.

SIMPSON, Circuit Judge:

Louis W. Parker, a professional inventor, brought suit against Motorola, Inc., ¹ alleging infringement of United States Patent No. 2,773,119 ('119), titled "Tuning System for Radio and Television Receivers". Motorola's answer denied infringement, and alleged invalidity of the '119 patent as obvious in light of prior art. Motorola's answer asserted invalidity of the patent for fraud in its procurement consisting of (a) material misrepresentations by Parker to the United States Patent Office, and (b) failure by Parker to satisfy the duty of complete candor and good faith required in the prosecution of a patent.

The parties stipulated prior to trial that the suit would be tried as to alleged infringing subject matter on the Motorola color television receivers employing chassis TS-915 as representative of the Motorola chassis TS-915, TS-919 and TS-921 each of which has a fine tuning indicator, and on Motorola chassis TS-934, as representative of those Motorola television receiver circuits which have Automatic Fine Tuning (AFT).

The district judge found the Parker '119 patent valid, that the Motorola color television chassis TS-915 infringed the '119 patent, but that the Motorola color television chassis TS-934 did not infringe the '119 patent. The judgment was directed to be final except as to an accounting for damages for infringement, the ascertainment of which was referred to a Special Master. Motorola appeals from the judgment as to the findings of validity and infringement of the TS-915 chassis. Parker cross-appeals with regard to the finding of non-infringement by the TS-934 chassis. We reverse as to the validity of the '119 patent, and, hence, do not reach the issue of infringement. Hughes Tool Co. v. Ingersoll-Rand Co., 5 Cir. 1971, 437 F.2d 1106, cert. denied 403 U.S. 918, 91 S.Ct. 2230, 29 L.Ed.2d 696.

PRESUMPTION OF VALIDITY

We consider initially the effect of the statutory presumption of validity normally attaching to patents which survive the scrutiny of the Patent Office. Title 35, U.S.C., Section 282. This presumption is based upon (a) the acknowledged experience and expertise of the Patent Office personnel, and (b) recognition that patent approval is a species of administrative determination supported by evidence. Beckman Instruments, Inc. v. Chemtronics, Inc., 5 Cir. 1970, 439 F.2d 1369, 1374, cert. denied 400 U.S. 956, 91 S.Ct. 353, 27 L.Ed.2d 264; Neff Instrument Corp. v. Cohu Electronics, Inc., 9 Cir. 1961, 298 F.2d 82; Georgia Pacific Corp. v. United States Plywood Corp., 2 Cir. 1958, 258 F.2d 124, 133, cert. denied 358 U.S. 884, 79 S.Ct. 124, 3 L.Ed.2d 112. While we have sometimes failed to define the quantum of proof necessary to rebut the presumption, we have held that the applicable standard is proof greater than a mere preponderance of the evidence. Railex Corp. v. Speed Check Co., 5 Cir. 1972, 457 F.2d 1040, 1043, cert. denied 409 U.S. 876, 93 S.Ct. 125, 34 L.Ed.2d 128; Hobbs v. United States Atomic Energy Commission, 5 Cir. 1971, 451 F.2d 849, 856. The court below alternatively applied the standards of clear and convincing proof and proof beyond a reasonable doubt, and held that under either Motorola had failed to carry its burden. ² This was the underpinning for the holding of validity of the '119 claims.

However, despite any ambiguity in this court's opinions as to the applicable standard of proof, we have made it clear that when a defendant in an infringement suit attacks the validity of a patent on the ground that it was issued without consideration by or presentation to the Patent Office of pertinent prior art, the reason for the presumption dissipates, and the presumption is weakened. Harrington Manufacturing Co., Inc. v. White, 5 Cir. 1973, 475 F.2d 788, 795, cert. denied 414 U.S. 1040, 94 S.Ct. 542, 38 L.Ed.2d 331; Beckman Instruments, Inc., supra at 1374; Johns-Manville Corp. v. Cement Asbestos Products Co., 5 Cir. 1970, 428 F.2d 1381; Ingersoll-Rand Co. v. Brunner & Lay, Inc., 5 Cir. 1973, 474 F.2d 491, 496, cert. denied 414 U.S. 865, 94 S.Ct. 125, 38 L.Ed.2d 117; Cornell v. Adams Engineering Company, 5 Cir. 1958, 258 F.2d 874. In these circumstances a court must as a minimum scrutinize the patent claims in suit more closely than when the presumption is at full force. Gaddis v. Calgon Corp., 5 Cir. 1975, 506 F.2d 880, 885; Garrett Corp. v. American Safety Flight Systems, Inc., 5 Cir. 1974, 502 F.2d 9. The file wrapper of the Parker '119 patent discloses that the Patent Office did not consider the prior art references relied upon by Motorola in its defense of invalidity, ³ so that here the Section 282 presumption was diluted.

Additionally where as here evidence of unconsidered prior art appears in combination with evidence of omissions or inaccuracies in the materials presented to the Patent Office in support of the application, the bases for the statutory presumption disappear. See Armour and Company v. Swift & Co., 7 Cir. 1972, 466 F.2d 767; National Filters, Inc. v. Research Products Corp., 5 Cir. 1967, 384 F.2d 516, 520; Lodge & Shipley Co. v. Holstein and Kappert, S.D.Tex.1970, 322 F.Supp. 1039; Ansul Co. v. Uniroyal, Inc., S.D.N.Y.1969, 301 F.Supp. 273, affd. 2 Cir. 1971, 448 F.2d 872, cert. denied 404 U.S. 1018, 92 S.Ct. 680, 30 L.Ed.2d 666. Because the district court ignored the effect of the above factors on the statutory presumption of validity we examine the claims of the '119 patent more carefully than would be necessary otherwise.

Even though the presumption is seriously weakened we will construe the claims of the '119 patent as narrowly as possible so as to avoid the prior art to the extent that such a construction comports with reason. Sterner Lighting, Inc. v. Allied Elec. Supply, Inc., 5 Cir. 1970, 431 F.2d 539, cert. denied401 U.S. 909, 91 S.Ct. 869, 27 L.Ed.2d 807. In addition, close examination of the file wrapper history of the '119 patent is necessary not only for a proper construction of the patent claims, but also because of Motorola's contention that the patent was obtained by Parker by misrepresentations to the Patent Office. Waldon, Inc. v. Alexander Manufacturing Co., 5 Cir. 1970,423 F.2d 91, 93; Bros. Inc. v. W. E. Grace Manufacturing Co., 5 Cir. 1965,351 F.2d 208, 213, cert. denied 383 U.S. 936, 86 S.Ct. 1065, 15 L.Ed.2d 852.

THE '119 PATENT

The district court found that the '119 patent discloses, in its claims, specifications, and drawings, tuning indicator circuits which provide either a visual indication, an audible indication, or both such indications when a television or a radio receiver is manually tuned by the operator to the peak-tuned position. The '119 patent for a visual tuning indicator discloses a tuning eye indicator with relatively movable luminous arcs. The tuning eye tube circuit of the '119 patent is energized by a superheterodyne receiver, for the purpose of providing a visual indicator to tell the operator who is manually tuning the receiver when the peak-tuned position of the picture is obtained, without his need to observe the picture as it is reproduced on the picture tube of the receiver. This tuning indicator circuit is exactly that and no more. It does not affect the picture, which still must be adjusted to peak-position on the picture tube by manipulation of a tuning knob.

The television receiver employed in the '119 patent to energize the tuning indicator circuit is described as a black and white receiver with superheterodyne circuitry, i. e., having a relatively broad pass band, preferably of the intercarrier sound type. The radio receiver disclosed in patent claim 17, here in suit, is of the frequency modulated (FM) type. The intercarrier sound receiver shown as the preferred embodiment of the '119 patent, was disclosed by Parker in U. S. Patent 2,448,908 ('908) issued on September 7, 1948. '908 expired on September 7, 1965. The '908 patent is cross-referenced in the '119 patent, and Parker stated in correspondence with the Patent Office that the '119 patent was an improvement on the prior '908 patent. The findings of the lower court in accord with the undisputed testimony at trial establish that the '119 patent is a combination patent, comprised of a television or a radio receiver and a tuning indicator circuit. The four patent claims alleged to be infringed by the Motorola chassis, claims 3, 5, 14, and 17 break down into two parts: (1) an intercarrier sound receiver, as disclosed in the '908 patent, combined with (2) a tuning indicator circuit designed to provide a visual indication of optimum tuning. Furthermore, the manual tuning system of the '119 patent is identical to that of the '908 patent.

For purposes of trial, claims 3, 5, 14, and 17 were broken down by Parker into numbered paragraphs. ⁴ One of Parker's expert witnesses acknowledged under cross-examination that each of the four claims in suit employs an intercarrier sound receiver as disclosed in the '908 patent. The witness testified that in claim 3 paragraphs 1-6, in dependent claim 5 paragraphs 1 and 2, in claim 14 paragraphs 1-9, and in claim 17 paragraphs 1-5 and 7, all read on the circuitry of the intercarrier sound receiver of the '908 patent. ⁵ The remaining paragraphs of claims 3, 5, 14, and 17 describe the indicator and coupling circuitry that is combined with the intercarrier receiver. Some explanation...