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SAMPSON v. DANN

UNITED STATES DISTRICT COURT, DISTRICT OF COLUMBIA


November 2, 1978

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

The opinion of the court was delivered by: OBERDORFER

ON MOTION TO VACATE

The defendant moves to vacate the Court's Order of September 12, 1978, on the ground, among others, that it was based on a misapprehension of administrative practices. Plaintiff was not represented by counsel, and was unable to appear physically at the oral argument so that the Court looked to the official defendant for guidance in a field previously unfamiliar to the Court. On April 12, 1978, before the oral argument, the Court entered an Order requesting advice about, among other things:

 

the Commissioner's practice with respect to refusing to issue patents after notice of allowance has been given, where the applicant timely pays all required fees.

 (A copy of this Order is attached as Appendix A.) At the oral argument, a colloquy about the administrative practice included the following:

 

THE COURT: Do you know it as a practice to withdraw cases because of prior art?

 

MR. SEARS: I can, of course, refer to the Hunt and Hull cases.

 

THE COURT: Well, they are pretty old. What I want to know is what these guys do down there every day.

 

MR. SEARS: This isn't an every-day occurrence, believe me.

 

THE COURT: Well, every year since 1875. There must have been several cases.

 

MR. SEARS: I suppose that, again, if it would be helpful, we could document a few.

 

THE COURT: All right.

 

MR. SEARS: I can't document those cases which never issued as patents, though.

 (Excerpts from the transcript of the oral argument are attached as Appendix B.) Defendant's Memorandum in support of his Motion now urges, nevertheless, that there is an administrative practice, supported by regulation and an 1878 decision of the Secretary of the Interior, of withdrawal of applications in certain circumstances after notice of allowance and fee payment.

 The cited regulation provides, as does the governing statute, 35 U.S.C. § 151, that upon such notice and payment the patent is to issue. The regulation, unlike the statute, goes on to say that the Commissioner may withhold such issue even after notice of allowance and payment because of:

 

mistake on the part of the (Patent) Office, or because of fraud or illegality in the application, or for interference. 37 C.F.R. § 1.313(b) (1978).

 And the Patent and Trademark Office has now submitted examples of recent withdrawals pursuant to that regulation. For example, the Patent and Trademark Office withdrew on its own initiative a number of applications involving computer programming after payment of the fee following the Supreme Court's decision in Gottschalk v. Benson, et al., 409 U.S. 63, 93 S. Ct. 253, 34 L. Ed. 2d 273 (1972), holding that certain such programs are not patentable.

 Whatever may be the validity of that regulation and these withdrawals in light of the statute's peremptory language, the claimed exceptions do not by terms or example justify withdrawal here. This withdrawal was effected Ad hoc in response to an irregular, Ex parte communication from the applicant's litigating adversary. That is quite different from a withdrawal, for example, for fraud or in deference to a landmark decision of the United States Supreme Court. Defendant's contentions are unpersuasive, and the Court will deny the Motion.

 The Court is impressed, however, by defendant's representation that the Patent Board of Appeals may soon decide plaintiff's pending appeal from the denial of his reissue application. In order to give the parties reasonable opportunity to have a complete record, the Court will grant a limited stay of the effective date of its order to permit consideration of that decision when it becomes available. To this end the Court requests that the parties submit a copy of that decision as soon as possible after it becomes available.

 Accordingly, after review of defendant's Motion to Vacate Judgment and Motion for Stay, and the points and authorities cited therein, it is this 2d day of November 1978, hereby

 ORDERED: That the Motion to Vacate Judgment is DENIED, and it is

 FURTHER ORDERED: That the Judgment and Order filed September 12, 1978, is hereby stayed until December 1, 1978, to permit reconsideration or modification in light of the forthcoming decision of the Board of Appeals, unless otherwise ordered by this Court on application of either party.

 Appendix A

 ORDER

 The Court, having considered the Motion recently filed by Sidney Sampson and the Opposition thereto filed by the Commissioner, finds that oral argument on several issues raised by pleadings of the parties would be useful. Accordingly, it is this 11th day of April 1978, hereby

 ORDERED: That argument is set for April 20, 1978, at 3:00 p.m. in Courtroom No. 4, U.S. Courthouse, Washington, D.C., on the following issues:

 1. What is the Commissioner's practice with respect to refusing to issue patents after notice of allowance has been given, where the applicant timely pays all required fees?

  2. In light of 35 U.S.C. § 151, and in particular the change in that section effected by Pub.L. 89-93, §§ 4, 6, 79 Stat. 260-61 (1965), what is the Commissioner's authority, if any, to refuse to issue a patent after notice of allowance has been given, assuming that the applicant timely pays all required fees?

 3. Would such a refusal on the part of the Commissioner be reviewable before the Board of Appeals?

 4. Where, as here, the District Court for the District of Columbia, having jurisdiction under 35 U.S.C. § 145, has found for the applicant and remanded to the Patent Office for the purpose of issuing a patent, does the District Court retain jurisdiction to review procedural questions, such as those framed above, which arise in the processing of the applicant's patent on remand?

 Appendix B

 

(NOTE: This is an excerpt of transcript in Sampson v. Gottschalk, CA75-901, heard on April 20, 1978, before The Honorable Louis F. Oberdorfer, United States District Judge, pertaining to the colloquy between The Court and Mr. Sears.)

 THE COURT: Can I come back to you just a minute, if we are past one and two, to the Commissioner's practice with respect to refusing to issue patents and the authority for that?

 Can you make any representation to me with respect to the practice as it relates to cases where you have sent out the notice, received the fee, and then receive information, from whatever source, as to whether there is an invention?

 MR. SEARS: Well, Mr. Sampson has included a section from our manual, this MPEP, bearing upon handling of protests. And it is clear, in certain passages in that material, that a protestor should get his material to the Examiner soon enough so that it can be considered.

 Now, I am not prepared to say what the cut-off would categorically be in other cases. All I can tell you is what happened in this case.

 THE COURT: My question was directed to the practice. Am I to close this record with the statement that the Commissioner could cite no case where, in the past, the Patent Office has interdicted the issuance of a patent after the notice has gone out on account of information about invention? You cite this case. I am asking for any other cases.

 MR. SEARS: Well, all right. Judge Richey has a case, which he has referred to Magistrate Margolis, the Altenpohl case, where the case was withdrawn from issue not once but twice after payment of issue fees.

 

THE COURT: For what reason?

 

MR. SEARS: The first had to do with mistake on the part of the office.

 

THE COURT: Such as?

 

MR. SEARS: Such as failure to consider the question of fraud raised in a collateral suit in Georgia.

 

THE COURT: Fraud?

 

MR. SEARS: Fraud.

 

THE COURT: Okay. That is one case.

 

MR. SEARS: Also tied in with that is a very real consideration of prior art, because the particular prior art involved . . .

 

THE COURT: In this case, there is prior art.

 

MR. SEARS: Yes.

 

. . . was later the basis of a Section 102 rejection sustained by the CCPA on appeal.

 

THE COURT: You can't cite me a case in which there wasn't an element of fraud. Because I can understand fraud.

 

Is this something you want to come back to me about?

 

MR. SEARS: I suppose, if it is necessary.

 

THE COURT: Are you comfortable about it?

 

MR. SEARS: I am comfortable with it.

 

THE COURT: Do you know it as a practice to withdraw cases because of prior art?

 

MR. SEARS: I can, of course, refer to the Hunt and Hull cases.

 

THE COURT: Well, they are pretty old.

 

What I want to know is what these guys do down there every day.

 

MR. SEARS: This isn't an every-day occurrence, believe me.

 

THE COURT: Well, every year since 1875. There must have been several cases.

 

MR. SEARS: I suppose that, again, if it would be helpful, we could document a few.

 

THE COURT: All right.

 

MR. SEARS: I can't document those cases which never issued as patents, though.

 

THE COURT: I need the cases that somebody pulled the plug after the matter had been sent to the issue office.

 

MR. SEARS: Well, it is done most frequently, I would say, in connection with interference.

 

THE COURT: Interference is clear.

 

MR. SEARS: I submit if it can be done for any reason, it belies Mr. Sampson's interpretation of the statute, including fraud.

 

THE COURT: Fraud is different. You can do anything on account of fraud.

 

MR. SEARS: Well, not according to Mr. Sampson's literal interpretation.

 

THE COURT: He is not bound by his representations. I am trying to draw lines here.

 

Let's take a brief recess. . . .

 

(NOTE: This ends the excerpt.)

19781102

© 1992-2004 VersusLaw Inc.



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