United States Court of
Appeals for the Federal Circuit
00-1114,
-1130
DETHMERS
MANUFACTURING COMPANY, INC.,
Plaintiff‑Appellant,
v.
AUTOMATIC
EQUIPMENT MFG CO.,
David A. Tank, Davis, Brown, Koehn,
Shors & Roberts, P.C., of Des Moines, Iowa, filed a petition for rehearing
en banc for plaintiff-appellant. With
him on the petition were Brian J. Laurenzo and Michael C.
Gilchrist, Dorsey & Whitney, LLP, of Des Moines, Iowa.
Timothy R. Engler, Harding, Schultz & Downs,
of Lincoln, Nebraska, filed a response for defendant-cross appellant. With him on the response was Donald R.
Schoonover, Schoonover Law Firm, of Fremont Hills, Missouri.
John M. Whealan, Solicitor, United States
Patent and Trademark Office, of Arlington, Virginia, filed an amicus curiae
brief for the Director of the United States Patent and Trademark Office. With him on the brief were Kristin L.
Yohannan and Cynthia C. Lynch, Associate Solicitors.
Appealed
from: United States District Court for the
Northern District of Iowa
Judge
Mark W. Bennett
United States Court of
Appeals for the Federal Circuit
00-1114,
-1130
DETHMERS
MANUFACTURING COMPANY, INC.,
Plaintiff‑Appellant,
v.
AUTOMATIC
EQUIPMENT MFG CO.,
Defendant‑Cross Appellant.
ON PETITION
FOR REHEARING EN BANC
O R D E
R
A petition for rehearing en
banc was filed by the Appellant, and a response thereto was invited by the
court and filed by the Cross-Appellant.
The United States Patent and Trademark Office filed a brief as amicus
curiae.
This matter was referred
first as a petition for rehearing to the merits panel that heard this
appeal. Thereafter, the petition for
rehearing en banc, response, and the amicus curiae brief were referred to the
circuit judges who are authorized to request a poll whether to rehear the
appeal en banc. A poll was requested,
taken, and failed.
Upon consideration thereof,
IT IS ORDERED THAT:
(1) The petition for rehearing is denied.
(2) The petition for rehearing en banc is
denied.
LINN, Circuit Judge,
with whom NEWMAN, LOURIE, DYK, and PROST, CircuitJudges, join, dissents
in a separate opinion.
DYK, Circuit Judge,
with whom NEWMAN, LOURIE, GAJARSA, LINN, and PROST, Circuit Judges,
join, dissents in a separate opinion.
The mandate of the court
will issue on June 20, 2002.
FOR THE COURT
June 13,
2002
Date Jan Horbaly
Clerk
cc: Brian
J. Laurenzo, Esq.
Donald R. Schoonover, Esq.
John M. Whealan, Esq.
00-1114, -1130
DETHMERS MANUFACTURING COMPANY, INC.,
Plaintiff-Appellant,
v.
AUTOMATIC EQUIPMENT MFG CO.,
Defendant-Cross Appellant,
LINN,
Circuit Judge, with whom NEWMAN, LOURIE, DYK, and PROST, Circuit
Judges, join, dissenting from the order denying rehearing en banc.
The panel decision invalidates certain reissue claims,
not based on any of the statutory grounds of patentability recited in 35 U.S.C.
§§ 101, 102, 103 or 112, nor on any requirement of 35 U.S.C. § 251, but on the
application by the United States Patent and Trademark Office (“PTO”) of its own
procedural rule specifying the content of a reissue oath or declaration. The decision applies a de novo standard of
review in reliance on Nupla Corp. v. IXL Mfg. Co., 114 F.3d 191, 42
USPQ2d 1711 (Fed. Cir. 1997).
The panel decision raises a serious question regarding
the effect of the statutory presumption of validity to which the patent is
entitled under 35 U.S.C. § 282, in circumstances where the PTO’s actions in
administering its own procedural regulations are challenged. The presumption of validity reflects the
deference due the PTO’s determination of patentability and the administrative
regularity underlying the patent grant.
This deference was described in Am. Hoist & Derrick Co. v. Sowa
& Sons, Inc. as:
. . . the deference that is
due to a qualified government agency presumed to have properly done its job,
which includes one or more examiners who are assumed to have some expertise in
interpreting the references and to be familiar from their work with the level
of skill in the art and whose duty it is to issue only valid patents.
725 F.2d 1350, 1359, 220 USPQ 763, 770 (Fed. Cir.
1984).
In Hyatt v. Boone, this Court remarked:
Regularity of routine
administrative procedures [administered by the PTO] is presumed, and departure
therefrom . . . is not grounds of collateral attack. Courts should not readily intervene in the day-to-day operations
of an administrative agency, especially when the agency practice is in
straightforward implementation of the statute.
146 F.3d 1348, 1355-56, 47 USPQ2d 1128, 1133 (Fed.
Cir. 1998). Cf. Bowles v.
Seminole Rock & Sand Co., 325 U.S. 410, 414 (1945) (“The intention of
Congress or the principles of the Constitution in some situations may be
relevant in the first instance in choosing between various constructions [of an
administrative regulation]. But the
ultimate criterion is the administrative interpretation, which becomes of
controlling weight unless it is plainly erroneous or inconsistent with the
regulation.”); Vermont Yankee Nuclear Power Corp. v. Natural Res. Def.
Council, Inc., 435 U.S. 519, 524 (1978) (“[T]his Court has for more than
four decades emphasized that the formulation of procedures was basically to be
left within the discretion of the agencies to which Congress had confided the
responsibility for substantive judgments.”).
From these decisions it can be argued that once a
patent issues, non-compliance with a procedural rule administered by the PTO
within the scope of the agency’s statutory authority and found, by virtue of
the grant of the patent, to have been satisfied during prosecution is, in and
of itself, of no consequence. The
holding of the majority in the present case, based on Nupla, that a
patent may be invalidated due to an examiner’s misapplication of a PTO
procedural rule, is contrary to that proposition and rests on a ground of
invalidity not included in the exclusive list of grounds for invalidating a
patent set forth in 35 U.S.C. § 282.
The holding is thus based on a questionable foundation and fails to
recognize the statutory presumption of validity to which every issued United
States patent is entitled. To the
extent Nupla concludes otherwise, it is incorrect and should be
overruled.
Moreover,
application of the de novo standard of review in the context of this case,
following Nupla, is contrary to the deference owed to PTO
interpretations of its own procedural rules.
See Dickinson v. Zurko, 527 U.S. 150, 161 (1999); Bowles,
325 U.S. at 413-14.
The panel decision thus raises important questions
both as to the effect of the statutory presumption of validity on the
consideration of alleged violations of PTO procedural rules in post-grant inter
partes proceedings and as to the deference owed to the PTO under the
Administrative Procedure Act following Zurko. For these reasons, I respectfully dissent from the court’s
declining to consider this case en banc.
United States Court of Appeals for the Federal Circuit
00-1114,
-1130
DETHMERS
MANUFACTURING COMPANY, INC.,
Plaintiff-Appellant,
v.
AUTOMATIC
EQUIPMENT MFG. CO.,
Defendant-Cross
Appellant,
DYK, Circuit
Judge, with whom NEWMAN, LOURIE, GAJARSA, LINN, and PROST, Circuit
Judges, join, dissenting from the order denying rehearing en banc.
The court’s decision declining to hear this case en banc perpetuates a serious anomaly in the patent law. The central issue is whether the United States Patent and Trademark Office (“PTO”), in interpreting and applying its own regulations, earns the same deference as other administrative agencies. The panel decision holds that the PTO’s interpretation earns no deference, following our earlier decisions in In re Constant, 827 F.2d 728, 729, 3 USPQ2d 1479, 1480 (Fed. Cir.), cert. denied, 484 U.S. 894 (1987), and Nupla Corp. v. IXL Manufacturing Co., 114 F.3d 191, 193, 42 USPQ2d 1711, 1713 (Fed. Cir. 1997).
Although this issue arises in the context of a reissue regulation that has been changed, 37 C.F.R. § 1.175 (1996), the significance of this case is unaffected. The issue is not how the regulation should be construed, but rather the standard of deference due the PTO’s interpretation of the regulation. Our decision on that deference issue, declining to give deference to the PTO interpretation, is directly inconsistent with Supreme Court decisions concerning other agencies[1] and with our own decisions concerning other agencies, see, e.g., American Express Co. v. United States, 262 F.3d 1376, 1382-83 (Fed. Cir. 2001), and direct review cases involving the PTO itself, see, e.g., Kubota v. Shibuya, 999 F.2d 517, 521, 27 USPQ2d 1418, 1421 (Fed. Cir. 1993); Hyatt v. Boone, 146 F.3d 1348, 1355-56, 47 USPQ2d 1128, 1133 (Fed. Cir. 1998), cert. denied, 525 U.S. 1141 (1999). There is no reason to deny deference here. Indeed, if anything, more deference should be afforded the PTO in this particular area because we are ill equipped to determine whether the PTO has received the information that it deems necessary for an examination.
Resolution of the deference issue, as the PTO has urged, is of “exceptional importance.” I respectfully dissent from the decision to deny en banc rehearing.
[1]
United States v. Cleveland
Indians Baseball Co., 532 U.S. 200, 220 (2001); Auer v. Robbins, 519
U.S. 452, 461 (1997); Thomas Jefferson Univ. v. Shalala, 512 U.S. 504,
512 (1994); Udall v. Tallman, 380 U.S. 1, 16 (1965); Bowles v.
Seminole Rock & Sand Co., 325 U.S. 410, 414 (1945); see also Vt.
Yankee Nuclear Power Corp. v. Natural Res. Def. Council, Inc., 435 U.S.
519, 524 (1978); Fed. Power Comm’n v. Transcon. Gas Pipe Line Corp., 423
U.S. 326, 333-34 (1976).