Standard Oil Co. v. Montedison, S.P.A.
| Decision Date | 21 July 1976 |
| Docket Number | Nos. 75-2436,No. 75-2436,No. 75-2437,No. 75-2438,75-2436,75-2437,75-2438,s. 75-2436 |
| Citation | 540 F.2d 611,191 USPQ 657 |
| Parties | STANDARD OIL COMPANY, a corporation of Indiana, Appellant in, v. MONTEDISON, S.p.A., a corporation of Italy, et al. Appeal of E. I. duPONT de NEMOURS & COMPANY, inAppeal of PHILLIPS PETROLEUM COMPANY, into 75-2438. |
| Court | U.S. Court of Appeals — Third Circuit |
Thomas F. Reddy, Jr., Pennie & Edmonds, New York City, for appellant in No. 75-2436.
Roger A. Hines, E. I. du Pont de Nemours and Co. Legal Department, Wilmington, Del., for appellant in No. 75-2437.
Harry J. Roper, Neuman, Williams, Anderson & Olson, Chicago, Ill., for appellant in No. 75-2438.
George B. Finnegan, Jr., Morgan, Finnegan, Pine, Foley & Lee, New York City, for appellee.
Before MARIS, ADAMS and HUNTER, Circuit Judges.
These are appeals taken pursuant to 28 U.S.C. § 1292(b) from an interlocutory order of the United States District Court for the District of Delaware denying motions by the plaintiffs, Standard Oil Company (herein Standard Oil), E. I. duPont de Nemours & Company (herein duPont) and Phillips Petroleum Company (herein Phillips), for leave to amend their complaints in civil actions filed in the district court to review, pursuant to 35 U.S.C. § 146, an award of priority of invention made by the Board of Patent Interferences of the Patent Office, now known as the Patent and Trademark Office, 1 to the defendant, Montedison, S.p.A. (herein Montedison).
The history of the controversy involved in the cases may be briefly summarized. Pursuant to 35 U.S.C. § 135, Interference No. 89,635 was instituted and declared in the Patent Office on September 9, 1958 to permit the Board of Patent Interferences of that Office to determine the question of priority of invention as to the following five patent applications all claiming a new composition of matter, crystalline polypropylene: 2
Application of John Paul Hogan and Robert L. Banks, assigned to Phillips, filed January 11, 1956, Ser. No. 558,530.
Application of Edwin J. Vandenberg, assigned to Hercules, Inc., filed July 21, 1955, Ser. No. 523,621; accorded benefit of Ser. No. 500,041 filed April 7, 1955.
Application of Warren Nesmith Baxter, Nicholas George Merckling, Ivan Maxwell Robinson and Gelu Stoeff Stamatoff, assigned to duPont, filed December 30, 1955, Ser. No. 556,548; accorded benefit of Ser. No. 451,064, filed August 19, 1954.
Application of Giulio Natta, Piero Pino and Georgio Mazzanti, assigned to Montedison, filed June 8, 1955, Ser. No. 514,099; accorded benefit of Italian application No. 24,227 filed June 8, 1954.
The interference proceeding lasted for over 13 years during which the parties' extensive discovery efforts generated numerous ancillary proceedings in the federal courts. 3 The Board of Patent Interferences, after compiling a considerable record, including a large number of exhibits and the testimony of 126 witnesses, finally brought the lengthy and complex proceeding to a close on November 29, 1971. The Board awarded priority of invention to Natta and his coinventors, Pino and Mazzanti, the senior parties to the interference, to whom the Commissioner of Patents on February 6, 1973 issued Patent No. 3,715,344. Claim 1 of that patent is similar to the count of the terminated interference. Montedison is the present owner of the application filed by Natta et al. and of the patent subsequently issued on their application.
Standard Oil, duPont and Phillips, three of the assignees and present owners of applications of losing parties to the interference, instituted civil actions, pursuant to 35 U.S.C. § 146, in the District Court for the District of Delaware to challenge the Board's decision. 4 The three plaintiffs, each of whom brought suit individually in January, 1972, named as defendants the assignees of the other parties to the interference proceeding in the Patent Office. These three cases and a fourth § 146 suit filed in the District Court for the District of Columbia by Standard Oil and subsequently transferred to the District Court for the District of Delaware which also named the assignees of the other parties to the interference as defendants were assigned in the district court 5 to Judge Wright who, in September, 1972, stayed the actions until the resolution of earlier-filed, related patent infringement actions which were then pending before him in the district court.
These infringement actions, which had been instituted by Montedison in the years between 1965 and 1969 against a number of alleged infringers and consolidated by the court under Civil Action No. 3343, involved Montedison's Patent No. 3,112,300 issued November 26, 1963 on a divisional application, Serial No. 701,332, the original parent application being the one involved in Interference No. 89,634. Patent No. 3,112,300 covers a species of crystalline polypropylene, crystalline polypropylene being the subject matter of Interference No. 89,634 and of the claims in Patent No. 3,715,344, the patent awarded to Montedison at the conclusion of the interference proceeding. Phillips and a subsidiary of Standard Oil, Amoco Chemicals Corporation, were among the defendants in the consolidated infringement action.
The infringement action was settled shortly before the trial of that action was scheduled to start in February, 1975. Active prosecution of the § 146 suits was then resumed. Standard Oil, duPont and Phillips immediately filed motions for leave to amend and supplement their complaints brought under § 146 to add new charges against Montedison on the basis, as they alleged, of new information received by them since the complaints were filed in the district court. 6 Standard Oil, in addition, sought on the basis of the new charges to introduce a new cause of action under the Declaratory Judgments Act, 28 U.S.C. § 2201, and to include in the relief it sought a prayer that the court adjudge and decree Montedison's Patent No. 3,715,344 invalid and unenforceable. The district court by order of September 25, 1975 denied the motions. The appeals before us are taken from that interlocutory order. On May 15, 1975, prior to the entry of that order, the four pending § 146 actions had been consolidated by the district court under its Civil Action No. 4619.
The proposed amendments would have added charges against Montedison involving issues of unpatentability of invention, misjoinder of inventors and fraud. As to its alleged fraudulent conduct, Montedison was claimed to have deliberately misrepresented and failed to disclose material facts in the process of filing and prosecuting its patent applications Serial Nos. 514,099 and 701,332 in the Patent Office and in the proceedings before the Board of Patent Interferences.
In its opinion filed August 1, 1975, 398 F.Supp. 420, the district court stated its reasons for denying the plaintiffs' motions to amend their complaints as well as Standard Oil's motion to add a count under the Declaratory Judgments Act. In its definitive order of denial the district court stated that it was of the opinion "that this Order denying the motions to amend the pleadings to allege fraud by the party Montedison in connection with the application resulting in U.S. Patent 3,715,344 and the related interference proceeding 89634, involves controlling questions of law as to which there is substantial ground for difference of opinion and that an immediate appeal from the order may materially advance the ultimate termination of the litigation." Thereafter this court granted the petitions of Standard Oil, duPont and Phillips for permission under 28 U.S.C. § 1292(b) to appeal from the order of the district court and, in so doing, we ordered that the briefs of the parties be directed solely to the following question:
"When petitioners bring an action before a district court pursuant to 35 U.S.C. § 146, may the district court determine whether the respondent acted fraudulently in the proceeding before the Board of Patent Interferences, even though that issue was not raised before that Board?"
Standard Oil and duPont requested this court to amend its order by supplementing or restating the question for review in order to make it conform more closely with the scope of the question stated in the order of the district court. The appellants pointed out that the legal question as phrased by this court, literally read, limited the question on appeal to the power of the district court to consider the newly raised issue of fraudulent conduct "in the proceeding before the Board of Patent Interferences" alone. Appellants contended that, on the other hand, the controlling question of law on which the district court ruled and which it certified as justifying an interlocutory appeal encompasses its power to consider newly raised allegations of fraud arising from the activities of Montedison "in connection with the application resulting in U.S. Patent 3,715,344" as well as "the related interference proceeding 89634." This court, on December 17, 1975, denied the motion of Standard Oil and duPont. Accordingly we address ourselves to the question involved in these appeals as we have phrased it, indicating our reasons for limiting the question as we did.
A civil action brought under 35 U.S.C. § 146 is essentially a proceeding to review the action of the Board of Patent Interferences in an interference proceeding in denying priority of invention to the plaintiff. 7 If the district court decides the question of priority against the plaintiff, the latter has obtained the full remedy which the statute gives him. Sanford v. Kepner, 344 U.S. 13, 15, 73 S.Ct. 75, 97 L.Ed. 12 (1952). While in form a trial de novo, the review proceeding is ordinarily subject to the general rule of estoppel applicable to proceedings for the review of administrative agency actions that consideration of issues ancillary to priority is limited to...
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