Sampson v. AMPEX CORPORATION

• Decision Date: 22 October 1971
• Docket Number: No. 69 Civ. 43.,69 Civ. 43.
• Parties: Sidney O. SAMPSON, Plaintiff, v. AMPEX CORPORATION, Defendant.
• Court: U.S. District Court — Southern District of New York

333 F. Supp. 59

Sidney O. SAMPSON, Plaintiff, v. AMPEX CORPORATION, Defendant.

No. 69 Civ. 43.

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

October 22, 1971.

COPYRIGHT MATERIAL OMITTED

Sidney O. Sampson, pro se.

Burke & Burke, New York City, Fitch, Even, Tabin & Luedeka, Chicago, Ill., for defendant by George I. Harris, New York City, John F. Flannery, Chicago, Ill., of counsel.

OPINION

GURFEIN, District Judge.

This is an action for infringement of United States Patent No. 3,233,512, issued February 8, 1966 to plaintiff Sidney O. Sampson. The patent is entitled "STEREO TAPE CONTROL APPARATUS FOR A SLIDE PROJECTOR," and the invention which it embodies is an educational device combining a tape recorder and slide projector. There is jurisdiction and venue under 28 U.S.C. §§ 1338(a) and 1400(b). The plaintiff appears pro se.

The defendant moves for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure on the ground that the patent is invalid under 35 U.S.C. § 102(b). The contention is that the plaintiff lost his right to the patent because he described his invention in a printed publication "more than one year prior to the date of the application for patent" (ibid).

On November 14, 1961 Sampson filed his first application (Serial No. 152,359; hereinafter referred to as the 1961 application) for the patent. In December of 1961, for the purpose of soliciting licenses, he printed and distributed about 2,500 copies of a document entitled "Complete Technological Modernization of Education." This document fully described the invention in question, and even contained the specification and drawings of the 1961 application. The document was widely distributed in this country and abroad; recipients included the industry as a whole, newspapers, universities and government officials. Much later, on March 18, 1963 Sampson filed a second application (Serial No. 267,881; hereinafter referred to as the 1963 application) for the patent. As of February 10, 1964, the 1961 application was declared by the Patent Office to have been abandoned for lack of prosecution. Finally, on June 24, 1964 Sampson filed a third application (Serial No. 380,976; hereinafter referred to as the 1964 application), which eventually issued as Patent No. 3,233,512, the patent in suit.

All three applications, as well as the printed publication, appear to disclose the same invention.¹ Finally, the cross-references made in the 1963 and 1964 applications to earlier-filed applications will be noted where relevant in the discussion below.

35 U.S.C. § 102(b) provides in pertinent part:

"A person shall be entitled to a patent unless—

(b) the invention was * * * described in a printed publication in this or a foreign country * * * more than one year prior to the date of the application for patent in the United States * * *"

This statute clearly provides that a printed publication, even by the inventor himself, will render the disclosed invention unpatentable if published more than one year before the date of the application on which the patent issues. That was, in fact, so held by this Court in a similar case involving this same plaintiff. Robot Education Systems, Inc. v. RCA, 67 Civ. 1818 (S.D.N. Y. Oct. 25, 1968) (McLean, J.), motion to reargue denied (Dec. 3, 1968), motion to vacate denied (Jan. 14, 1970), aff'd Sampson v. Radio Corporation of America, 434 F.2d 315 (2 Cir. 1970). See Rosenberg v. Carr Fastener Co., 51 F.2d 1014, 1016-1017 (2 Cir. 1931); 1 Deller's Walker on Patents § 60 (2d ed. 1964).

Here Sampson filed three "applications for patent." The question is, therefore, what § 102(b) means when it speaks of "the date of the application for patent," since there are three different "dates of the application for patent." The plaintiff asserts that "the date" for § 102(b) purposes is November 14, 1961.

Since the Patent Act of 1952 the provisions of 35 U.S.C. § 120 have a bearing on that question. That section provides:

"§ 120. Benefit of earlier filing date in the United States.

An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States by the same inventor shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application."

To fall within the purview of this section the later application must satisfy four requirements: (1) the same invention must be disclosed as was disclosed in the earlier-filed application; (2) the inventor must be the same; (3) there must be copendency of applications, i. e., the later application must be filed while the earlier-filed application, or a bridging application similarly dating back to the earlier-filed application, is still pending; (4) the later application must contain a specific reference to the earlier-filed application. See Bendix Corp. v. Balax, Inc., 421 F.2d 809, 817 (7 Cir.), cert. denied, 399 U.S. 911, 90 S.Ct. 2203, 26 L.Ed.2d 562 (1970).

The inventor and the invention are the same. The 1964 application was filed when the 1963 application was still pending and the 1963 application was filed when the 1961 application was still pending. The 1963 application was a bridge, thus providing the requisite copendency of applications.

Accordingly, the defendant's contention on this motion distills to the position that requirement (4) was not satisfied, in that there was no specific reference in the 1964 application to the 1961 application, as the statute requires.

The first problem raised by the fourth requirement is the meaning of "earlier filed application," to which reference must be made in the later application. Here, to save the plaintiff's case, the "earlier filed application" would have to be the 1961 application if § 120 is applied directly to give the 1964 application the benefit of the filing date of the 1961 application. The plaintiff also argues for the same result by a repeated application of § 120, first to give the 1964 application the date of the "earlier filed application" of 1963, to which the 1964 application would specifically refer, and second, to give the 1963 application the date of the "earlier filed application" of 1961, to which the 1963 application would in turn specifically refer. While this alternative reading is literally possible, it has been authoritatively held that the statute is not to be so read. Section 120 has been held to require that the latest application in a chain must refer specifically to the earliest application whose filing date is claimed. Sticker Industrial Supply Corp. v. Blaw-Knox Co., 405 F.2d 90 (7 Cir. 1968); Hovlid v. Asari, 305 F.2d 747 (9 Cir. 1962). But cf. In re Henriksen, 399 F.2d 253, 261, 55 C.C.P.A. 1384 (1968) (dictum).

The second problem raised by the fourth requirement is the meaning of "specific reference" to an earlier filed application. This point is elaborated by Rule 78(a) of the Patent Office Rules of Practice which, when the 1964 application was filed, provided in pertinent part:

"(a) When an applicant files an application claiming an invention disclosed in a prior filed copending application of the same applicant, the second application must contain or be amended to contain a reference in the specification to the prior application, identifying it by serial number and filing date and indicating the relationship of the applications, if the benefit of the filing date of the prior application is claimed; if no such reference is made the prior application must be referred to in a separate paper filed in the later application. * * *"

Courts have adopted this Rule's requirement that the necessary specificity involves reference to serial number, filing date and relationship of applications. Sticker Industrial Supply Corp., supra, 405 F.2d at 92; Hovlid, supra, 305 F.2d at 751.² Moreover, Patent Office Rules are by themselves entitled to considerable deference and are not to be "set aside unless found unreasonable and prejudicial to an inventor's rights under the patent statutes * * *" Application of Strain, 187 F.2d 737, 741, 38 C.C.P.A. 933 (1951).

One of the purposes of Rule 78(a) is to require a cross-reference that will inform the public that the application is entitled to the benefit of an earlier filing date. The later application should, therefore, describe, in substance, a relationship that would justify giving such benefit, namely, the relationship of continuation, continuation-in-part, or division of the earlier filed application. L. Admur, Patent Office Rules and Practice, § 78.1 (I. Seidman & L. Horwitz eds. 1959); cf. Gilbert, 112 U.S.P. Q. 339 (P.O.Sup.Exam.1954).

Furthermore, to satisfy § 120 and Rule 78(a) the specific reference must be made by the applicant, originally or by amendment, in the application itself, i. e., in the specification or the oath.³

Under the first reading of § 120 the defendant clearly prevails. This reading requires the 1964 application to refer specifically to the 1961 application. The only reference that appears is one inserted in the heading of the patent, not the application, by the Patent Office, not by the applicant:

Substituted for abandoned application Ser. No. 152,356 (sic), Nov. 14, 1961.

Moreover, there is no description of any relationship of the applications beyond the word "substituted." Significantly, a substitute application is not entitled to the benefit of the filing date of the earlier application for which it is substituted. This is so because the term "substitute" is used to designate an application which is essentially a duplicate of an application already abandoned, and which is hence not...