Vectra Fitness, Inc. v. TNWK Corp.

• Decision Date: 14 December 1998
• Docket Number: No. 98-1192,98-1192
• Citation: 162 F.3d 1379,49 USPQ2d 1144
• Parties: VECTRA FITNESS, INC., Plaintiff-Appellant, v. TNWK CORPORATION (formerly known as Pacific Fitness Corporation), Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1379

162 F.3d 1379

49 U.S.P.Q.2d 1144

VECTRA FITNESS, INC., Plaintiff-Appellant, v. TNWK CORPORATION (formerly known as Pacific Fitness Corporation), Defendant-Appellee.

No. 98-1192.

United States Court of Appeals Federal Circuit.

Dec. 14, 1998.

Rehearing Denied; Suggestion for Rehearing In Banc

Declined Jan. 22, 1999.

Ramsey M. Al-Salam, Seed and Berry LLP, Seattle, Washington, argued for plaintiff-appellant. With him on the brief was Richard W. Seed.

Ronald W. Reagin, Blakely, Sokoloff, Taylor & Zafman, LLP, Los Angeles, California, argued for defendant-appellee. With him on the brief was George W. Hoover.

Before PLAGER, RADER, and SCHALL, Circuit Judges.

SCHALL, Circuit Judge.

Vectra Fitness, Inc. (Vectra) appeals a partial summary judgment of the United States District Court for the Western District of Washington invalidating claims added to Vectra's U.S. Patent No. 4,809,972 (the '972 patent) in reissue proceedings. Vectra Fitness, Inc. v. Pacific Fitness Corp., 135 F.3d 777, 1998 WL 31532, No. C96-1892D (W.D.Wash. Oct. 3, 1997). The district court held that the invalidated claims--which were narrower than the claims originally contained in the '972 patent, but broader

                than the claims remaining in the patent after a disclaimer--impermissibly enlarged the scope of the claims of the original patent more than two years after the grant of the original patent, in violation of 35 U.S.C. § 251. 1  We have jurisdiction over the appeal pursuant to 28 U.S.C. § 1292(c)(1).  We affirm
                

BACKGROUND

I.

On March 7, 1989, the '972 patent, entitled "Exercise Machine with Multiple Exercise Stations," was issued to Vectra as assignee. The '972 patent related to multi-station exercise machines that allow two or more exercise stations to be connected to a single weight stack.

As issued, the '972 patent contained 27 claims. On February 16, 1990, Vectra submitted a disclaimer to the United States Patent and Trademark Office (PTO), in accordance with 35 U.S.C. § 253. The disclaimer canceled Claims 1, 2, 3, 4, 13, 20, 21, and 24. These were the broadest claims of the '972 patent. Vectra submitted the disclaimer when it became aware that the eight claims were invalid based on previously unknown prior art. After the disclaimer was received, it was mishandled by the PTO. Although the disclaimer was added to the file wrapper of the '972 patent, it was not entered on either the cover page or the contents page of the wrapper. In addition, the PTO failed to publish the disclaimer in the Official Gazette, as contemplated by PTO regulations. See 37 C.F.R. § 1.321(a) (1990) ("A notice of the disclaimer is published in the Official Gazette ....").

On May 9, 1991, Vectra filed a reissue application that sought to add new claims 28-30 to the '972 patent. The reissue application, including new claims 28-30, was issued on March 29, 1994, as U.S. Patent No. Re 34,572 (the '572 patent). Before the district court, the parties stipulated that claims 28-30 were narrower in scope than the claims originally contained in the '972 patent, but broader in scope than the claims remaining in the patent after the 1990 disclaimer.

II.

Vectra sued TNWK Corporation (TNWK) (formerly known as Pacific Fitness Corporation) for infringement of the '572 patent on December 4, 1996. In due course, TNWK moved for partial summary judgment. It did so on the ground that claims 28-30 were invalid under 35 U.S.C. § 251 because they impermissibly enlarged the scope of the '972 patent more than two years after the date of its original issue. On October 3, 1997, the district court granted TNWK's motion, holding that the 1990 disclaimer was effective from (i.e., "dated back" to) March 7, 1989, the date of the original patent, and that therefore the reissue claims were broader than the claims of the "original patent." In so holding, the district court rejected Vectra's argument that the disclaimer never took effect because the PTO failed to publish it. The court stated that since current records of the PTO contained the disclaimer as filed February 20, 1990, "it seems obvious that the disclaimer was 'in writing and recorded' in some fashion." The court concluded, "There is virtually no way to say the PTO did not 'record' the disclaimer as required."

Vectra timely moved to certify the case for interlocutory appeal pursuant to 28 U.S.C. § 1292(b), and the district court granted the motion. On January 22, 1998, this court granted Vectra's petition for permission to appeal. See Vectra Fitness, Inc. v. Pacific Fitness Corp., 135 F.3d 777 (Fed.Cir.1998) (Table). Currently, proceedings in the district court are stayed.

DISCUSSION

We review a district court's grant of summary judgment de novo. See Astra v. Lehman, 71 F.3d 1578, 1580, 37 USPQ2d 1212, 1214 (Fed.Cir.1995); Glaxo Operations UK Ltd. v. Quigg, 894 F.2d 392, 395, 13 USPQ2d 1628, 1630 (Fed.Cir.1990). If, as in this case, no genuine issues of material fact are present, we need only decide whether the decision by the district court is correct as a matter of law. See Armco, Inc. v. Cyclops

Corp., 791 F.2d 147, 149, 229 USPQ 721, 723 (Fed.Cir.1986). This case presents a narrow issue of first impression: whether a reissue application filed more than two years after the grant of the original patent is bounded by the claims originally contained in the patent or by the claims remaining in the patent after a disclaimer is filed. This issue of statutory interpretation is a question of law, which we review de novo. See In re Chu, 66 F.3d 292, 296, 36 USPQ2d 1089, 1092-93 (Fed.Cir.1995).

I.

As a preliminary matter, Vectra argues that the mishandling of the disclaimer by the PTO prevented it from being "recorded" within the meaning of that term in 35 U.S.C. § 253. See 35 U.S.C. § 253 ("Such disclaimer shall be in writing, and recorded in the Patent and Trademark Office; and it shall thereafter be considered part of the original patent...."). Accordingly, so the argument goes, the purported disclaimer had no effect. We disagree.

The recording of a disclaimer is not dependent upon actions taken by the PTO. The pertinent PTO rule provides as follows:

The disclaimer, to be recorded in the Patent and Trademark Office, must:

(1) Be signed by the patentee, or an attorney or agent of record;

(2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation;

(3) State the present extent of patentee's ownership interest in the patent; and

(4) Be accompanied by the fee set forth in § 1.20(d).

37 C.F.R. § 1.321(a) (1997); see also Manual of Patent Examining Procedure (MPEP) § 317.01 (6th ed. rev. 3 1997) (setting the date of recording of an assignment, which is analogous to recording a disclaimer, as the date on which the assignment is received by the PTO "in proper form and with the full filing fee"). The language of the regulation was slightly different when the disclaimer at issue in this case was filed, in that the regulation in 1990 did not specifically refer to recording. ² However, both the current regulation and the regulation in 1990 set forth the requirements for a valid disclaimer and therefore the requirements for the recording of the disclaimer. Moreover, nothing in the statutes or regulations requires any action by the PTO for a disclaimer to be "recorded." There is no dispute that Vectra's disclaimer was received by the PTO in proper form and with the appropriate filing fee on February 20, 1990. Accordingly, the disclaimer was recorded on that date regardless of its handling by the PTO.

II.

Turning to the matter of the disclaimer and the reissue, we begin our analysis with the language of the statute. See Zenith Elec. Corp. v. United States, 77 F.3d 426, 430 (Fed.Cir.1996). Where "the statute's language is plain, 'the sole function of the courts is to enforce it according to its terms.' " United States v. Ron Pair Enters., Inc., 489 U.S. 235, 241, 109 S.Ct. 1026, 1030, 103 L.Ed.2d 290 (1989) (quoting Caminetti v. United States, 242 U.S. 470, 485, 37 S.Ct. 192, 194, 61 L.Ed. 442 (1917)).

The reissue of patents is governed by 35 U.S.C § 251, which provides in pertinent part: "No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent." (Emphasis added.) Disclaimers are governed by 35 U.S.C. § 253, which provides as follows:

Whenever, without any deceptive intention, a claim of a patent is invalid the remaining claims shall not thereby be rendered invalid. A patentee, whether of the whole or any sectional interest therein In like manner any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.

may, on payment of the fee required by law, make disclaimer of any complete claim, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing, and recorded in the Patent and Trademark Office; and it shall thereafter be considered as part of the original patent to the extent of the interest possessed by the disclaimant and by those claiming under him.

(Emphasis added.)

Section 251 prohibits the addition of claims that broaden the scope of the claims of the original patent more than two years after the grant of the patent. See 35 U.S.C. § 251. As noted above, the parties agree that claims 28-30 were broader than the claims remaining after the 1990 disclaimer, but narrower than the disclaimed claims. Accordingly, the validity of claims 28-30 depends upon whether or not the disclaimed claims are considered part of the "original patent," as that term is used in section 251. If the disclaimed claims are considered part of the "original patent," claims 28-30 did not broaden the scope of the patent more than two years after its grant in contravention of section 251....