Sampson v. Dann

• Citation: 466 F. Supp. 965,201 USPQ 15
• Decision Date: 02 November 1978
• Docket Number: Civ. A. No. 75-0901.
• Parties: Sidney O. SAMPSON, Plaintiff, v. C. Marshall DANN, Defendant.
• Court: U.S. District Court — District of Columbia

466 F. Supp. 965

201 USPQ 15

Sidney O. SAMPSON, Plaintiff, v. C. Marshall DANN, Defendant.

Civ. A. No. 75-0901.

United States District Court, District of Columbia.

Memorandum, Findings of Fact, and Conclusions of Law September 12, 1978.

Judgment and Order September 12, 1978.

On Motion to Vacate November 2, 1978.

Sidney O. Sampson, pro se.

Joseph F. Nakamura, Sol., U. S. Patent and Trademark Office, Washington, D. C., for defendant.

MEMORANDUM, FINDINGS OF FACT, AND CONCLUSIONS OF LAW

OBERDORFER, District Judge.

Sidney O. Sampson, a 75 year old inventor, proceeds here pro se. In 1976 Judge McGuire ordered the Commissioner of Patents and Trademarks to permit Sampson to cure formal defects in a 1967 patent of a control for sound recording and reproducing systems so that it could be reissued as Sampson had requested. He has filed this post-judgment "Motion For An Urgent Hearing in this Court of Equity Whereby Plaintiff Can Be Given Due Process Proceedings Under 35 U.S.C. 151 Upon His Reissue Application Which this Court Remanded to the Commissioner For the Purpose of Granting the Plaintiff a Reissue Patent on the Reissue Application."

For the reasons set out below, the Court will enter judgment for plaintiff and direct the Commissioner to issue the patent in question.

I. FINDINGS OF FACT¹

From the filing of his first infringement suit in May of 1967, it took Sampson until July of 1977 to cure a technical defect in his patent application which blocked his efforts to protect his claimed invention in court. Because this history bears on the equities of Sampson's case and the Court's decision to grant Sampson relief at this juncture, it is set out in some detail.

On April 18, 1967, Sampson was issued Patent No. 3,315,041 for a "track selection control means for magnetic signal recording and reproducing systems." In May of that year, he filed a suit in the United States District Court for the Southern District of New York against Radio Corporation of America (RCA) charging infringement of that patent. In September of 1967 he brought a second infringement suit against Sony Corporation of America (Sony), and in October of 1968 a third against Ampex Corporation (Ampex). In May of 1968 RCA moved for summary judgment on the ground that Sampson's patent was invalid under 35 U.S.C. § 102(b) because Sampson had published his invention in July of 1959, more than one year before he applied for a patent.² Sampson conceded that he had inadvertently published his invention, but argued that under 35 U.S.C. § 120,³ his patent was entitled to a filing date of March 5, 1959, because on that date, which preceded the date of the inadvertent publication, he had filed application No. 797,412 for substantially the same invention. On October 25, 1968, the Court granted summary judgment for RCA. The applications Sampson relied upon to satisfy § 120 contained the serial numbers, titles, and subject matter disclosures, but did not state the filing dates of prior applications in the chain. The Court held, therefore, that, lacking the prior application filing dates, Sampson's "specific reference" was not specific enough. Sampson filed a motion to reargue the RCA case on November 1, 1968, and while the motion was pending, he filed a notice of appeal. On December 31, 1968, Sampson reached a settlement with RCA and his appeal was dismissed by stipulation. On the same day, the District Court denied the motion to reargue, so that although the case was settled, judgment was entered for RCA and against Sampson.

Meanwhile, on September 26, 1968, Sampson had entered into a stipulation with Sony to be bound by the result in the RCA litigation. Sampson sought to have the RCA judgment vacated, but his motion to vacate the RCA judgment was denied on January 14, 1970. Thereafter, his complaint against Sony was dismissed pursuant to the earlier stipulation. The Second Circuit affirmed both decisions.⁴

While all this was going on, the Ampex suit had been stayed in the Southern District pending the outcome of the RCA and Sony appeals.⁵ On May 31, 1971, the Supreme Court decided Blonder Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971), making the defense of collateral estoppel available in patent infringement suits. Thereafter, on July 6, 1972, Ampex was granted a summary judgment on the basis of the estoppel effected by the RCA decision. Sampson appealed and the Second Circuit once again affirmed.⁶

In January 1972, Sampson, with his unfortunate Sony experience behind him, returned to the Patent Office to cure the technical defects in his patent application by amending his earlier applications to include the required dates and sought reissue of his patent under 35 U.S.C. § 251.⁷

In an administrative proceeding which consumed the next three years, the Patent and Trademark Office refused to permit Sampson to amend his abandoned patent applications and therefore rejected his reissue applications for the same reasons Sampson's patent had been held invalid in the RCA case. From the decision of the Patent and Trademark Office Board of Appeals, Sampson appealed to this Court under 35 U.S.C. § 145. That section authorizes a disappointed patent applicant to apply to this Court for "remedy by civil action." In such an action this Court may adjudge that an applicant is entitled to receive a patent for his invention, as specified in any of his claims involved in the decision of the Board of Appeals, as the facts in the case may appear, and such adjudication shall authorize the Commissioner to issue such patent in compliance with the requirements of the law.

On November 10, 1970, Judge McGuire entered judgment for plaintiff. Judge McGuire explained that "the legislative history makes it clear that equity shall guide section 251 actions,"⁸ and held that "equity would dictate" that Sampson be allowed to amend his abandoned applications to include the detailed references to dates which would allow a reissue of his letters patent. In conclusion, Judge McGuire stated: "The matter is thus remanded to the Commissioner for the purpose of granting the plaintiff a reissue patent on his application in suit."⁹ No appeal was taken from Judge McGuire's decision.

The Patent and Trademark Office's initial response to Judge McGuire's order was to refer Sampson's reissue application to an examiner. He ordered up the abandoned files, completed the references as ordered by Judge McGuire, conducted and updated search for interferences, and then signed the jacket of the file, signifying that he had reviewed it, and that in his opinion, the application was ready for allowance. The file was then transmitted together with drawings via Quality Control to the Issue Division.¹⁰ On April 4, 1977, the Issue Division, pursuant to the administrative procedure set out in 35 U.S.C. § 151, sent a notice of allowance to Sampson, who promptly paid the requisite fee.¹¹ On April 8, 1977, when it received the fee, the Issue Division scheduled the issuance of the patent for July 12, 1977, and mailed Sampson a notice to that effect.¹²

Section 151 provides that "If it appears that an applicant is entitled to a patent under the law, a written notice of allowance of the application shall be . . . mailed to the applicant . . . specifying a sum, constituting the issue fee . . .. Upon payment of this sum the patent shall issue . . .."

Just over a decade after Sampson filed his infringement suit against RCA, it appeared that he had finally succeeded in remedying what was essentially a technical mistake in the nature of a pleading defect, and that he could resume his pending infringement suits against Sony and Ampex. On April 25, 1977, he filed in these actions in the Southern District of New York a petition for the return of his appeal bonds in each action, and for consolidation of the two actions. On March 3, 1977, Ampex, through its attorneys, filed a letter consenting to the return of the bond, and stating, "In the event plaintiff seeks or attempts to obtain any further or different relief, we respectfully request a continuance to a later date together with a clear explanation of any additional relief to be sought."

By Memorandum of the Patent and Trademark Office Solicitor Joseph P. Nakamura dated May 30, 1978, the Patent and Trademark Office furnished Sampson and Sampson has furnished the Court with the Patent and Trademark Office's account of the communications which thereafter took place between Ampex and the Patent and Trademark Office:

This is in reply to the "Petition to the Commissioner Pursuant to Rule CFR 1.183" dated March 28, 1978, as well as follow-up papers dated May 10 and 16, 1978, (presently entered as Papers 74, 75 and 76, respectively). Since the "Petition . . ." does not seek a suspension or waiver of any regulation under 37 CFR 1.183, it is being treated merely as a request for information concerning the withdrawal of the application from issue. In that regard, the following narrative account should suffice.

On May 26, 1977, a summary of Judge McGuire's memorandum opinion was published by The Bureau of National Affairs, Inc., in its Patent, Trademark & Copyright Journal, No. 330, pp. A-4 and 5 (copy enclosed).

On June 22, 1977, Ampex Corporation filed its "Petition to the Commissioner for Access to Reissue Application" (Paper 47), in which reference was made to "prior art which was not cited by the Patent Office during the prosecution of the original application." Access was sought "so that Ampex can call this prior art and other defenses to the attention of the Examiner." No indication of service upon the applicant accompanied the petition for access.

Ordinarily, where there is no proof of service upon the applicant, a copy of the petition for access "is sent by the associate solicitor to the applicant, who is given a limited period, as a week or ten days, within which to state any objection he may have to

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