Goss International Americas, Inc., Plaintiff v. MAN Roland, Inc. and MAN Roland Druckmaschinen AG, Defendants; MAN Roland, Inc. and MAN Roland Druckmaschinen AG, Counterclaim Plaintiffs v. Goss International Americas, Inc. and Heidelberger Druckmaschinen AG, Counterclaim Defendants
Civil No. 03-cv-513-SM; Opinion No. 2006 DNH 086
UNITED STATES DISTRICT COURT DISTRICT OF NEW HAMPSHIRE
07/31/06
Steven J. McAuliffe, Chief Judge
Goss v. MAN Roland, et al.
Document no. 173 is MAN Roland‘s second motion for summary judgment on its third counterclaim, which seeks a declaratory judgment of unenforceability based upon a variety of inequitable conduct.1 At issue here is MAN Roland‘s claim that material misrepresentations were made and material information was withheld during the prosecution of the ‘587 application, which is listed as an ancestor application in each of the three patents-in-suit. Specifically, MAN Roland asserts that in a May 27, 1991, petition to revive, Heidelberg Harris, Inc. (“Heidelberg Harris“) falsely represented that the ‘587 application had been abandoned unintentionally rather than on purpose, and failed to provide the PTO with material evidence demonstrating the intentional abandonment of that application.
A. Inequitable Conduct
“A patent may be rendered unenforceable for inequitable conduct if an applicant, with intent to mislead or deceive the examiner, fails to disclose material information or submits materially false information to the PTO during prosecution.” Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 1001 (Fed. Cir. 2006) (quoting Digital Control, Inc. v. Charles Mach. Works, 437 F.3d 1309, 1313 (Fed. Cir. 2006)). Both of these elements, intent and materiality, must be proven by clear and convincing evidence. M. Eagles Tool Warehouse, Inc. v. Fisher Tooling Co., 439 F.3d 1335, 1340 (Fed. Cir. 2006) (citing J.P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553, 1559 (Fed. Cir. 1984)).
At the time the ‘587 application was revived,
In In re Maldaque, 10 U.S.P.Q.2d (BNA) 1477 (Comm‘r Pat. & T.M. 1988), the Commissioner of the PTO denied a petition to revive and described a set of circumstances that did not constitute unintentional abandonment:
Petitioner asserts that Mr. Roodhooft‘s June 30, 1986 decision, although formed with reasonable care and diligence, was in error. A distinction must be made between a mistake in fact, which may form the basis for a holding of unintentional abandonment under
37 CFR 1.137(b) , and the arrival at a different conclusion after reviewing the same facts a second time. An intentional act is not rendered unintentional when an applicant reviewing the same facts changes his mind as to the appropriate course of action to pursue. An application abandoned as a result of a deliberative, intentional course of action after comparing theclaimed invention with the prior art, does not amount to an unintentional abandonment within the meaning of 37 CFR 1.137(b) .
Id. at 1478. A similar result was reached in In re Application of G, 11 U.S.P.Q.2d (BNA) 1378 (Comm‘r. Pat. & T.M. 1989), in which the Commissioner further explained:
A deliberate act is not rendered “unintentional” when an applicant or assignee reviews the same facts (e.g., patentability of the claims) a second time which changes their minds as to the appropriate course of action to pursue. An application abandoned as a result of a deliberate, intentional course of action after comparing the claimed invention with the prior art, does not amount to an unintentional abandonment within the meaning of
35 U.S.C. 41(a)7 and37 CFR 1.137(b) .
Factual Background
The relevant circumstances involve several people and a series of events. The people are: Thomas Tarolli, an attorney with the law firm that initially prosecuted the ‘587 application for Harris Graphics Corporation;2 (“Harris Graphics“); Peter Loftus, Harris Graphics’ patent administrator; Roland T.
The events at issue include the following:
February 27, 1991: The PTO issued a Final Office Action (“FOA“) rejecting the last two pending claims of the ‘587 application4 as obvious in view of the prior art. (MAN Roland‘s Mem. of Law (document no. 174), Ex. X-2.) In the FOA, Harris Graphics was notified of a three-month “shortened statutory period for response” that gave it until May 27, 1991, to respond to the rejection of the ‘587 application. (Id.)
May 15, 1991: The application referred to in the Tarolli letter, the ‘668 application,5 is filed, with Heidelberg Harris as its assignee. (Id., Ex. X-4.) That application, labeled internally as “HEM 90/142,” was designated as a continuation-in-part of the ‘587 application. (Id.)
May 27, 1991: The shortened statutory period for responding to the February 27 rejection of the ‘587 application ends.
June 25, 1991: Bogert drafts a “decision-sheet” regarding the ‘587 application (“Bogert decision-sheet“), directed to Loftus, which includes the notation: “DO NOT CONTINUE WITH APPLICATION - REPLACED BY HEM 90/142.” (Id., Ex. X-6.)
August 13, 1991: Loftus distributes a memo to R.A. Brown6 (with copies to others) titled “Sunday Press Invention Status,” which includes what appears to be a computer-generated report that details “the status of the 90 inventions resulting from the N-954C, PFF-2, NFF, and Telecolor 2 phases of the Sunday Press program,” and contains the notation: “DROPPED DUE TO PRIOR ART - SEE HEM-90/142 FOR BLANKET CONST.” (Id., Ex. X-7.) The source of the information contained in the status report is not clear from the record.
August 26, 1991: Bogert writes, in the “legal opinion” section of a document titled “Heidelberg Decision Sheet 1991,” concerning the ‘587 application: “Object will now be pursued further in HEM 90/142.” (Id., Ex. X-9.)
September 5, 9, and 17, 1991: Three members of Heidelberger‘s Technical Department initial the “comment” section of the Heidelberg Decision Sheet. (Id.)
September 30, 1991: Pfizenmeier writes “drop” in the “decision” section of the Heidelberg Decision Sheet. (Id.)
October 4, 1991: Tarolli receives a PTO Notice of Abandonment regarding the ‘587 application. (Id., Ex. X-10.)
October 18, 1991: After reviewing the ‘587 application and the prior art cited against it and conferring with Heidelberger engineers, Stoltenberg writes on the Heidelberg Decision Sheet “should be corrected” and Pfizenmeier scratches out his previous notation “drop” and writes “retracted October 18, 1991.” (Id., Ex. X-9.)
Late October 1991: Stoltenberg sends Bogert to discuss the revival of the ‘587 application with Mayer. Mayer proposes
April 7, 1992: Mayer files the ‘680 application,7 as a continuation-in-part of ‘668 application. (Id., Ex. X-11.)
May 27, 1992: On the last day to do so, Birde files a petition to revive the ‘587 application, stating that its abandonment “was unintentional.” (Id., Ex. X-12.)
January 1994: Tarolli produces, at the request of Kenyon & Kenyon, an affidavit discussing the abandonment of the ‘587 application. (Id., Ex. X-13.)
In MAN Roland‘s view, Heidelberger acted inequitably in two ways: (1) by falsely stating, in the petition to revive, that the abandonment of the ‘587 application was unintentional; and (2) failing to provide the PTO with: (a) the April 2, 1991, Tarolli letter; (b) the June 25, 1991, Bogert decision-sheet; (c) the August 13, 1991, “Sunday Press Invention Status Report;” (d) the Heidelberg Decision Sheet; and (e) the 1994 Tarolli affidavit.
To be entitled to summary judgment, MAN Roland would have to show that the undisputed factual record contains clear and convincing evidence that Heidelberg Harris and/or Heidelberger: (1) abandoned the ‘587 application intentionally rather than unintentionally; (2) knowingly misrepresented the circumstances of the abandonment of that application to the PTO; and (3) did so with intent to mislead or deceive the examiner. MAN Roland has not met its burden.
First of all, it is not at all clear (and it seems rather unlikely), based on the recited facts and relevant law, that the ‘587 application was abandoned intentionally. To be sure, Tarolli advised allowing the application to lapse, and Bogert, Loftus, Palmatier, Stoltenberg, and Pfizenmeier all indicated concurrence with that advice. However, both Tarolli‘s letter to Loftus and Bogert‘s decision-sheet notation - the only contemporaneous explanatory writings on the matter by identified authors - indicate that while the ‘587 application was to be abandoned, its subject matter was not. Rather, Tarolli and Bogert appear to have believed that the subject matter of the ‘587 application was covered in the ‘668 application, which was
On the other hand, the only documentary evidence of a contrary motivation for abandoning the ‘587 application, the notation “DROPPED DUE TO PRIOR ART,” is unattributed, appears in a memorandum to an unidentified recipient, was written well after the May 27, 1991, deadline for responding to the FPO,8 and also refers to the explanation previously stated by Tarolli and Bogert, i.e., that the ‘587 application could be abandoned because the ‘587 subject matter was included in the ‘668 application. If anything, the undisputed facts tilt toward Heidelberger‘s and Goss‘s position; they certainly do not contain clear and convincing evidence in favor of MAN Roland‘s position.
Moreover, the facts of this case fall outside the limits of the rule stated in Maldaque and Application of G. In each of those cases, a single decision maker twice considered the same body of information and reached a different conclusion on
Here, MAN Roland has not produced clear and convincing evidence that the decision to drop the ‘587 application was “a deliberative, intentional course of action after comparing the claimed invention with the prior art.” Maldaque, 10 U.S.P.Q.2d at 1478. What evidence has been presented suggests the decision was based upon an erroneous comparison of the pending ‘587 application and the ‘668 application. And while the comparison of an invention to the prior art involves a legal analysis, the determination of whether one application includes all the claims of another application, when both are filed by the same entity, is a question of fact.
Moreover, MAN Roland has produced no evidence that Bogert, Stoltenberg, or Pfizenmeier ever concluded that the ‘587 subject matter was not patentable; both the Bogert decision-sheet and the Heidelberg Decision Sheet note that the ‘587 subject matter was
If Stoltenberg or Pfizenmeier had analyzed the ‘587 application in view of the prior art and concluded that the ‘587 subject mater was not patentable in view of the prior art, and then performed the same comparison a month later only to reach a different conclusion, the second conclusion would not make the first one a mistake of fact. See Maldaque, 10 U.S.P.Q.2d at 1478; Application of G, 11 U.S.P.Q.2d at 1380. But MAN Roland has not produced clear and convincing evidence to support any such scenario. MAN Roland has not even produced
Because MAN Roland has failed to provide clear and convincing evidence that the ‘587 application was abandoned intentionally, it has, necessarily, failed to provide clear and convincing evidence that Heidelberg Harris‘s statement of unintentional abandonment was a knowing misrepresentation. Similarly, because the documents MAN Roland says Heidelberg Harris should have provided to the PTO contain, at most, a mere hint of intentional abandonment, i.e., the unattributed notation in the August 13, 1991, status report, it was hardly inequitable of Heidelberg Harris not to provide those documents, especially since the relevant regulation pointedly did not require petitioners to make a showing of unintentional abandonment.
MAN Roland has not produced clear and convincing evidence that Heidelberg Harris acted inequitably in petitioning for revival of the ‘587 application. Accordingly, its motion for
SO ORDERED.
Steven J. McAuliffe
Chief Judge
July 31, 2006
cc: Daniel E. Will, Esq.
Hugh T. Lee, Esq.
Richard S. Gresalfi, Esq.
Georg C. Reitboeck, Esq.
Mark A. Hannemann, Esq.
Michael J. Lennon, Esq.
T. Cy Walker, Esq.
Jonathan M. Shirley, Esq.
Alfred H. Hemingway, Jr., Esq.
Irvin D. Gordon, Esq.
Martin B. Pavane, Esq.
Michael J. Songer, Esq.
Shari R. Lahlou, Esq.
Sidney R. Bresnick, Esq.
Teodor J. Holmberg, Esq.
Richard D. Margiano, Esq.
John F. Sweeney, Esq.
Steven F. Meyer, Esq.
Tony V. Pezzano, Esq.
Bruce W. Felmly, Esq.
Seth J. Atlas, Esq.
Anthony S. Augeri, Esq.