In Re John R. Beattie

1573, USPQ2d 1939, (Fed.Cir. Today, I phone received a call from Dr. 1987)].... Meyer a.m., Stewart at 9:00 in refer- [sic] 4297797_ patent ence to his Dr. Meyer meeting would like to have a [sic] applied ... “In the cases that have you concerning with patent. this intentionally misleading silence context, infringement patent patentee notes, however, Meyers’ state that he told vigorous threatened immediate or en- secretary “many that of the shoes she patent right its forcement of but then did infringed had on the market patent [his] nothing unreasonably long for an time.” rights.” secretary Neither the Meyers nor 1574, USPQ2d at at [Id. 1941.] any litigation indicated that threats of were 1464, USPQ2d Moreover, 912 F.2d at at 1059. The made in the telephone call. Meyers defendants have not shown that Meyers’ record shows that initial communi- vigorous threatened immediate and en- cations with ATC were not followed patents and then forcement of si- Instead, silence. passed several letters be- lence lulled them into the that he belief did Meyers tween and ATC between November patents. not intend to enforce his January 1985. These calls and letters do not rise to the level of a Asics, threat of applying For there is no basis for litigation which subsequent would make a equitable estoppel summary judgment, period misleading. Meyers any did not silence because have contact filing Similarly, with Asics to suit. conclusory Defendants make numerous Meyers Hyde did not contact after assertions they Meyers relied on con- issued, patents Meyers the ’283 or '177 duct, they but presented undisput- have not acquiescence, could not have communicated ed facts to they show that did. To the litigation respect or threatened with to contrary, suggests the evidence Hyde’s alleged infringement pat- of these ignored gave weight defendants little ents. Meyers’ negotiate efforts to licenses. Fur- thermore, defendants patent, Hyde points have not shown that As to the ’797 to a they would letter have altered their conduct if November as evidence of the letter, Meyers estoppel. had sued earlier. first element of The telephone memorializes a conversation be- We conclude that the district court’s Meyers president and a vice tween grant summary judgment on the basis of Saucony Hyde, division of states: reversed, estoppel laches and must be obliged you I should be if would let me the case is remanded. promptly you prepared know if are REVERSED and REMANDED. negotiations enter into view obtaining acceptable mutually licenses on

terms.... propose preliminary meeting

I that a arranged possible soon as should be you any I so that can furnish fur- you may require..;. information ther merely This letter is an invitation to enter BEATTIE. re John R. relationship; into a it neither business litigation conveys impres- nor threatens No. 91-1396. .Hyde’s Meyers acquiesce sion that would Appeals, Court of United States alleged infringement. Federal Circuit. ATC, estoppel, for the first element of points August telephone an conver- Sept. 1992. secretary to Meyers sation between and the president. secretary summa- ATC’s Meyers’ telephone

rized call in a memoran- president: dum to the 1310 Sol., Office Lee, Associate Jameson appel- Va., argued for Sol., Arlington, E. Fred was the brief on himWith lee. E. Richard counsel was Of McKelvey, Sol.

Schafer. Judge, ARCHER NIES, Chief

Before Judges. CLEVENGER, Circuit and Judge. ARCHER, Circuit from appeals (Beattie) R. Beattie John and Trademark of the Patent decision Inter- Appeals and of Patent Board Office April 91-0646, dated (board), No. ferences 1 of claims rejection affirming the 30,1991, 07/300, No. Serial through application 7 103 U.S.C. § under unpatentable (1988). affirm. We

BACKGROUND Invention The

A. “Apparatus entitled application, Beattie’s Music Playing Reading and for Method and Instruments,” Stringed or Keyboard rest on intended marker claims fret- or keyboard other piano keys of read- to facilitate and instrument board marker The music. playing ing and por- and a vertical horizontal of a consists portion horizontal on the Displayed tion. E FD G C musical seven tones corresponding to BA keys white played scale the diatonic piano. aon up an octave make numbers, prefera- displays portion vertical corre- and 4 5 6 1 2 3 bly 0 chro- half-tones the twelve sponds to black and by the white played scale matic octave. up an together make keys that 1 reads: Claim basic use for adapted A marker facilitating the method instructional key- on a of music playing reading and key- standard having a instrument board keys octave per board black, five are and white are seven body portion comprising said marker adapted and material a thin formed keys the black vertically behind to rest key- said keys of white upon the and hav- body portion instrument, said board argued City, Beattie, York New R. John register in vertical thereon ing displayed Pro Se. and with each of said twelve black white and flats indicated as those numbers out- representing keys a number dodecatoni- correspond lined to to the twelve tones of pitch sound- cally the chromatic semitone the octave: 7. key, ed each said black white 608,771 United States Patent No. to Guil- extending horizontally tabs forward ford discloses a of musical notation edge body portion of said the lower identifies the series of half- registering each of said seven white with tones of the chromatic scale with numbers keys, having horizontal tabs each of said 1 2 43 5 6 7 8 9 10 11 12. Guilford designation displayed the letter thereon alphabetical characterizes notation with C, D, E, F, G, A, representing or B sharps “perplexing and flats as and irra- heptatonically degree the diatonic scale tional.” pitch by key, each said white sounded said vertical twelve dodecatonic number Rejection C. designations juxtaposed with the said heptatonic desig- horizontal seven letter The board rejec- affirmed the examiner’s giving regular expres- nations linear and through tion of claims 1 7 under 35 U.S.C. sion to the chromatic semitone twelve- 103 as obvious in view of the combined § pitch keyboard structure of the and of Barnes, teachings of Eschemann Guil- and, simultaneously, music linear and ford. separate- Because the claims are not regular expression to the diatonic scale ly argued, they together. stand or fall degree seven-pitch key- structure of the Kaslow, re USPQ 707 F.2d 217 music, adapted marker board and of said Albrecht, 1089, (Fed.Cir.1983); In re 1096 a method to be used combination with 92, 93-94, 208, 579 F.2d 198 209 display like- for written music which (CCPA 1978). The board concluded that gives regular expression wise linear and taught marking system dis- twelve-pitch chromatic semitone both playing a combination of two different no- degree structure and diatonic scale sev- tations, viz., numerical, alphabetical and en-pitch simultaneously structure and then determined that it would have through superimposition of the dodeca- obvious to the 1 2 3 4 5 6 7 been substitute hepta- upon tonic the traditional numbers 11 12 8 9 10 numerical notation of Guilford noteheads. tonic 1 2 4 for the 1 2 3 4 5 5 6 6 7 numerical notation of Eschemann. B. The Prior Art 1,725,844 United States Patent No. DISCUSSION corresponding Barnes discloses a marker keyboard portion a horizontal dis- I. alphabetical playing traditional notation displaying alpha- portion and a vertical This court reviews an obviousness sharps and plus attendant betical novo, the board de while determination C; D-Flat; D; G-Sharp D-Sharp or flats: underlying findings factual we review G-Flat; G; E-Flat; E; F; F-Sharp or or Woodruff, In re F.2d clear error. 919 A-Flat; A; B-Flat; G-Sharp A-Sharp or (Fed.Cir. 1575, 1577, USPQ2d 1934, 1935 16 B. 1990). ques teaches is a What a reference Corp. v. Dennison tion of fact. Panduit 566,388 Patent No. to Es- United States Co., n. 1 Mfg. 810 F.2d 1579 marking sys- musical chemann teaches a (Fed.Cir.1987). USPQ2d 1593, n. 42 1606 register displaying the tem with a lower patentability of a determining the When keys traditional seven letters on white which combines two claimed invention sharps and and those letters with attendant elements, question is whether “the known keys of the octave and an flats on the black something in the art as there is upper register a numerical rather than desirability, and thus suggest whole to alphabetical Specifically, notation. the tra- obviousness, making the combina represented letters are as numbers ditional Lindemann sharps tion.” through seven with attendant one Maschinenfabrik 1312 Co., Specifically, Guilford tone music theories. Hoist & Derrick

GMBH v. American USPQ 481, 488 221 the deficiencies of traditional mu- discloses (Fed.Cir.1984). theory of on a nota- sic twelve tones based having only tion seven intervals

II. requiring sharps five and flats. He thus “simple at a and rational” solution arrives to the specification, Beattie refers In his utilizing uniform series numbers alphabetical designation CDEFGABas 12 instead of the representation of diatonic heptatonic C, irrational” “perplexing and designa- degrees and the numerical scale G, D, D#/Eb, F, F#/Gb, C#/Db, E, G#/ as a 6 7 8 tion 1 2 4 5 Ab, A, A#/Bb, suggests B. This reference representation of the chromatic dodecatonic simple a desirability implementing the two theories combined semitones. These complex alpha- the achieve, in numerical alternative to single Beattie’s on marker a ad- betical music notation. words, the a “mutual reinforcement approach, per- each vantages in inherent teaching old Armed with a reference the scales, types of the diatonic mitting both system alphabetical marking a notation on chromatic, appear to as smooth and the in one with a new numerical notation hand to easy for students visualize progressions, teaching and a reference a different numer- and understand.” hand, ical in the other the obvious- dispute that Es- is Barnes and There no substituting ness numerical Guilford’s heptatonic the theo- disclose chemann each nu- system twelve tone for Eschemann’s the ry that teaches dodeeaton- twelve tone to arrive at merical sub- theory ic that Guilford’s notation such clearly is Beattie’s claimed invention estab- register of mark- upper on the stituted the lished. ing systems either Barnes or Eschemann ques- claimed invention. The describes the Although Guilford’s tone twelve correctly the here board tion is whether theory is said to be “dodecatonic” while it been obvious to one held that would have theory tone is said to Eschemann’s twelve in the to having ordinary skill combine “heptatonic,” as Beattie defines those to meet the claimed the references order terms, single express a the absence of board, Beattie contends that the invention. the teaching of marker with two theories obviousness, arriving its conclusion of at impossible a combined does not make weight the notion that did not accord due prima sound case obviousness. facie away the from claimed Guilford teaches suggestion long As as some motivation or the declarations and that combination provided the references is to combine convincing provide teachers whole, seven music prior as the law does the art taken inven- of the evidence of nonobviousness the be com require not references tion. by the contemplated for the reasons bined Kronig, 539 F.2d inventor. re reg- displays on lower the Eschemann 1976); USPQ (CCPA 427-28 the marking system his traditional ister of Lintner, In re letters with attend- alone and those letters 1972). (CCPA sharps for “those familiar ant and flats ordinary On the musical notation.” Moreover, of a Guilford’s endorsement 1 1 register, displays the upper over the tone notation dodecatonic twelve “for unfamiliar those tone notation does not traditional twelve Eschemann, theory with the of music.” teaching away older establish a then, tra- provides suggestion retain cannot be com- system such that Guilford when intro- alphabetical notation ditional merely Eschemann. bined with ducing numerical notation. a new to a well-en- presents an alternative course, which, of advantages theory, of a trenched musical Guilford teaches urges replace- he better and theory over considers twelve tone music dodecatonic new musi- of a heptatonic ment. The recommendation seven and twelve however, art, system, thereby does not re- cited rendering cal notation Beattie’s another; quire coexistence obliteration prima issue, claims obvious. That facie teachings of Guilford and traditional of the course, responsibly cannot be addressed nearly century musical notation bears examining teachings without pri- out. this or art. agree allWe that without the dodecaton- III. i.e., equal of nota- ic— tone— argument appeal Beattie’s final tion found in the Guilford reference Beat- supports the declaration evidence is that unpatentable tie’s claims are not under sec- position that the claimed invention tion 103. This is so because Beattie claims The seven declarations of mu nonobvious. radically the combination of two different under sicians and music teachers submitted systems single of musical notation on a praise generally 1.132 Beattie’s C.F.R. § marker, mixing not the mere of numbers invention, away opine that Guilford express and letters on a marker from the claimed invention and conclude not been invention would have same of notation. majority unquestioned obvious. It is that such evi correctly points nothing in the Esche- Piasecki, considered, must In re dence pro- mann or Barnes references that would 1468, 1471, USPQ 785, 223 787 745 F.2d suggestion vide a to combine them with (Fed.Cir.1984), may and be sufficient to majority Guilford. The cannot find such a case of prima overcome obvious facie suggestion in the Eschemann or Barnes 1472, 788, USPQ (quot ness. Id. at 223 at registers markers because both of these 233, 235, ing 138 Surrey, In re 319 F.2d notation, heptatonic markers are in written USPQ 67, (CCPA 1963)). case, 69 In this i.e., primary with seven tones and five sec- however, properly the board considered all ondary tones. There is no indication in arguments and the rebuttal evidence either reference that these markers should they determined that were insufficient to incorporate or could nota- dodecatonic in establish nonobviousness the face of the Consequently, in if tion disclosed Guilford. very strong prima case of obvious facie Guilford is to be combined with either Es- Lindell, 385 F.2d ness. See In re Barnes, it chemann or is because Guilford 521, (CCPA 1967). USPQ 524 155 provides requisite suggestion. Specifically, the board noted that question teaches is a What Guilford part not a the Eschemann reference was Corp. Mfg. fact. Panduit v. Dennison rejection at the time the declarations Co., 1561, 42, USPQ2d 1579 n. 810 F.2d prepared, that the declara were concluded 1593, 1606 (Fed.Cir.), denied, n. cert. long failed to show a felt need and tions 1052, 2187, L.Ed.2d U.S. 107 S.Ct. meet that need as failure of others to Oil, (1987); Ashland Inc. v. Delta Resins urged, and stated that the declarations 281, Inc., 776 F.2d 297 n. Refractories, & opinion only offer evidence themselves (Fed.Cir.1985), 24, 657, USPQ 667 n. 24 sup little factual which has value without denied, 106 S.Ct. port. persuaded are not that the board cert. 475 U.S. We determining (1986). erred in that the declarations 89 L.Ed.2d 315 Whether Guilford establish nonobvious were insufficient to pri- combination with other teaches toward ness. art, away from such combination is or fact, question Raytheon also a Co. v.

AFFIRMED. 951, 960-61, 220 Roper Corp., CLEVENGER, Judge, dissenting denied, Circuit (Fed.Cir.1983), cert. respectfully. 127, 83 L.Ed.2d 69 469 U.S. 105 S.Ct. majority (1984), as the not a mere “notion” rightly majority quite The identifies the today the first time. These factu holds dispositive issue in this case: whether go of the obvious questions al to the core legally to com- is a sufficient reason there analysis. the other ness the Guilford reference with bine then turn Guilford us first examine Let declarations and seven itself Guilford to the declarations. your attention of music persons skilled evidence only factual discloses Guilford teaching are the system notation example, Guil- word, Guilford For addressing whether distinct. is, in a this case measures last four first and combination writes the away from ford toward or thus: Home” “Home Sweet references. or Barnes duration, accent, and pitch, expressing pitch notation traditional describes Guilford music. modern are the elements and irrational perplexing “a as using “the such that flats, suggest and naturals” than fails more sharps, in combi- symbols.” many different has tone same of notation both- line staff his own five nation the traditional He finds Rather, active- notates, most, only done. at has Beattie it ersome nota- alphabetical rejects the ly than the more of octaves one-third one and a system as his proposes and tional range. tradition- musical octave seven re- doing, Guilford In so replacement. al staff suggestion to finding a any basis moves less greater or use the necessitates any with notation system of his combine below and ledger-lines above number al- including the traditional system, other increasing the needlessly staff, thus the in the used notation system of phabetic type-setter, for the composition work and the of both portions lower part the large consuming besides markers. Barnes the measures only a few for page unmis- not these did examine The Board all, great- it adds and, than music, worse Instead, it teachings of Guilford. takable music reading the difficulty of ly to the have artisan would that an merely asserted itself. the with merge Guilford the need seen nota- present that “the also states Guilford thus The Board committed prior art. other for its means in just as defective tion is con- misreading the factual by error clear for means is in its as it time expressing art. prior of the tent the current He finds pitch.” expressing evi- addressing declaration the When that it “illogical” and notation af- “each recognized that dence, the Board conception of modern the express does not that ... discussions ... fidavit [contains] he emphasizes that Guilford musical time. away from [combina- teaches Guilford of note- series single uniform “employ[s] affidavits tion],” dismissed the but all so-called use of “the and that symbols” ultimate on the conclusions they contained is and flats [sharps, naturals] ‘accidentals’ I not do as well. of obviousness legal issue unnecessary.” wholly rendered majority’s or the the Board’s quibble stating: up his invention dramatically sums the on conclusions experts’ rejection the and The Board issue. overcoming legal the above ultimate viewa [w]ith deficiencies, ignore free to however, not are crudities, majority, other faults and ex- music from in the record declarations a new I have devised well the seven-tone agree that all perts who means adequate simple and affords ap- “perplexing the describes as and irrational” to music and twelve-tone approach 26), incompatible (p. con- in to music are two lines 25 and and fact this is a proach declarations, experts the cepts. goal In these similar that of the twelve-number state, part: in systems used music theoreticians.... Burstein, (L. faculty music can Poundie member at

Although it is well known College tones on seven The Mannes of Music and Pre- thought of as based be thought Queens of as based paratory it can also be School and teacher at carrying this tones, Beattie is College.) Mr. twelve by showing step further important an Teachings prior simply cannot art two schools of how to combine prior art combined when contains no appears to me that this thought.... It suggestion or motivation to them. combine attempt to combine two significant is a Hosp. Sys., Hosp., Inc. v. ACS Montefiore previ- in music which had separate trends to be irreconcila- ously assumed been (Fed.Cir.1984). There can be no motivation clearly in ble.... bias [T]he suggestion to combine when doing away with all seven tone toward away any fact teaches combina- orientation, finding ways toward not tion. This, view, my keep it around.... materially the face of uncontroverted desire to eliminate shows [Guilford’s] dispositive contrary, factual evidence to the from his any vestige of seven-orientation declares, dixit, majority zestlessly ipse opposite of the is the exact system which Board, as did the it is obvious to which Mr. reconciliation seven-twelve It combine Guilford with Eschemann. nev- Mandelbaum, (Joel Beattie discloses. you why might er its conclusion other- tells Music, Queens College.) Professor of Furthermore, majori- wise be correct. semi- Since inventor Guilford’s in the ty simply avoids the factual evidence per octave stand all tone numbers precludes Rather record that combination. themselves, in any not correlated and are grips support than come to with the factual seven scale way with the conventional provide proposition for the the declarations objec- his degrees, it is clear to me that away from combina- that Guilford the old seven-based tive was to discard tion, majority simply dismisses the dec- completely replace it entirety unsuccess- larations in their as an system, not combine new twelve-based prima case ful effort to overcome facie positively no discus- the two. He offers the declara- of Just because obviousness. making “heptaton- or hint of sion pertinent to “second- tions address matter In fact the combination. ic/dodecatonic” considerations”, ary see Graham v. John true, specifically he opposite is because 1, 17-18, 684, Co., 86 S.Ct. Deere 383 U.S. 93) 2, system will says (page line that his (1966), 694, justify does not 15 L.Ed.2d 545 “wholly un- the use of accidentals make pertinent of all other calculated avoidance say to necessary”, which is [Guilford] contained therein. Even factual assertions eliminating the seven-based advocates recognized declarations Board that the the (Lawrence system from consideration. teaching away Guilford speak the issue. to instructor, Widdoes, The Julliard music examiner, and the ma- the the Board tells Center.) at Lincoln School system of notation jority not to combine his engaged appears to have been [Guilford] system despises, and he with the stamp the traditional in a crusade to out agree that Guilford those skilled the “perplexing and irration- its These are away from combination. Sheftel, (Paul music system....” al ignored. cannot facts that teacher, author, lecturer, pianist and Beattie majority concludes that composer.) strong case of “very prima faced a intends fairly is evident that Guilford facie [I]t no such case There can be obviousness.” arrangement supersede, numerical to prior in “the can find unless someone reinforce, sys- here the traditional diatonic not suggestion as a whole” he art taken sharps and flats which tem with its other art. combine Petitioner, NUSS, H. Dale conclusory approach The mere undis- majority leaves Board, v. unconvincing. I submit turbed, PERSONNEL OF OFFICE combine the motivation provided Beattie MANAGEMENT, genius His notation. systems the two Respondent. sys- alien hitherto combining two resides 91-3482. No. one marker. notation on of musical tems not obvious pie,” but “simple Perhaps Appeals, Court States United 103. under section Federal Circuit. why the understand am at a loss I 8, Sept. 1992. affirm the compelled to majority seems Board. decision clearly erroneous judg upsets trial court regularly

This court they fail judges III when of Article ments facts. correctly pertinent to consider Inc., Portee, Corp. v. See, e.g., Read (Fed.Cir.1992)(reversing 829, 816, F.2d jury because denial JNOV court district unsupported infringement of willful verdict Corp. evidence); v. Laitram by substantial Rexnord, Inc., F.2d (revers (Fed.Cir.1991) USPQ2d conclusory asser court because ing district insufficient); Eli Lil infringement tions Inc., Medtronic, F.2d v. ly & Co. (Fed.Cir. 2020, 2023 673-74, USPQ2d fac 1990) (reversing district court establish viola findings insufficient tual Why should treat we injunction). tion of Interfer Appeals Patent Board of me. mystery to differently is a ences unsup- crediting the the choice Given my colleagues or the conclusion ported teaching of unmistakable experts factual statments unchallenged art, part com- I must esoteric skilled an colleagues. my pany with

Case Details

Case Name: In Re John R. Beattie

Court Name: Court of Appeals for the Federal Circuit

Date Published: Sep 4, 1992

Citation: 974 F.2d 1309

Docket Number: 91-1396

Court Abbreviation: Fed. Cir.