To soften the effects of this harsh all-or-nothing rule, yet prevent patent holders or applicants from extending the life of a later issued patent, Congress in 1952 replaced §§ 65 and 71 with the current §§ 253 and 288. Section 253, entitled "Disclaimer," states:
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, 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. . . .
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.
The first paragraph of § 253 describes the process by which a patentee can disclaim any claim in a patent that, after the patent has been issued, it discovers or determines is actually invalid. The second paragraph is addressed to the "terminal disclaimer," which does not abandon a claim of a patent, but only disclaims that portion of a later-issued patent's 17-year term that extends past the expiration date of an earlier-issued patent that makes claims that might subject the later-issued patent to obviousness-type double patenting.
Section 288 also relates to disclaimers (and indeed only applies to cases in which a disclaimer is necessary to save a patent) and potentially limits the costs available to a patentee who successfully sues for infringement:
Whenever, without deceptive intention, a claim of a patent is invalid, an action may be maintained for the infringement of a claim of the patent which may be valid. The patentee shall recover no costs unless a disclaimer of the invalid mark has been entered at the Patent Office before the commencement of the suit.
The enactment in 1952 of the new §§ 253 and 288 eliminated the drastic result of invalidity of the entire patent because a patentee failed to disclaim all invalid claims or unreasonably delayed in so disclaiming. See Allen Archery v. Jennings Compound Bow, Inc. (9th Cir. 1982) 686 F.2d 780, 783 [hereinafter "Jennings" ] ("The failure of a patentee to disclaim an invalid patent claim does not prevent the patentee from enforcing any remaining claims in the patent which are otherwise valid".); see also Allen Archery, Inc. v. Browning Mfg. Co. (Fed. Cir. 1987) 819 F.2d 1087, 1097 [hereinafter "Allen"] (Federal Circuit adopts Jennings). However, where there is deceptive intent on the patentee's part in obtaining the patent itself, a question entirely distinct from a § 253 disclaimer, the old rule would apply to-render the entire patent unenforceable. See J.P. Stevens & Co. Inc. v. Lex Tex Ltd., Inc. (Fed. Cir. 1984) 747 F.2d 1553, 1561-62.
Turning to defendant's arguments, it is clear that defendant's contention that the "deceptive intention" language in § 253 limits the filing of a terminal disclaimer is without foundation. "In the former statutes . . . 'deceptive intent' did not refer to intent in failing to disclaim." Jennings, 686 F.2d at 783. The Ninth Circuit could find "no reason to suppose that the 1952 express deletion of the Maytag duty to disclaim was intended to place a new construction on the remaining 'deceptive intent' language" -- that is, the reimportation of the deleted duty. Id. Similarly, we see no reason to suppose that Congress intended to place any other new construction -- such as tying it to the terminal disclaimer -- on the remaining language. We conclude, therefore, that plaintiff's intent, deceptive or otherwise, is irrelevant to its decision to file a terminal disclaimer.
Defendant's reimportation of the requirement from § 288's predecessor section that the patentee file a terminal disclaimer without unreasonable delay is equally misguided. Defendant bases this contention on Strong v. General Electric Co. (N.D. Ga. 1969) 305 F. Supp. 1084. The district court there erroneously relied on the Marconi rule regarding the obliterative effect of a patentee's unreasonable delay in disclaiming invalid claims on a patent, and invalidated the entire patent at issue. Id. at 1088. However, the Federal Circuit, when it adopted the Ninth Circuit's holding in Jennings that Strong and Marconi were both "rendered inapplicable by the 1952 acts of Congress," held that this rule was eliminated by the enactment of the new § 288.
Jennings 686 F.2d at 783. We thus conclude that the question of delay is irrelevant to the filing of a terminal disclaimer.
Finally we reject defendant's additional contention that the cost provision in § 288 requires denial of the motion. We cannot understand how a dismissal of defendant's obviousness-type double patenting defenses and counterclaims would in any way prejudice its rights under § 288. That section unequivocally states that no costs are recoverable unless the disclaimer predates the filing of the lawsuit, and plaintiff undisputedly did not file its terminal disclaimer until after the commencement of its suit. Thus plaintiff will not recover costs if at the conclusion of this litigation we determine that § 288 is applicable.
We have considered defendant's other contentions and find them irrelevant to the instant question of the effectiveness of plaintiff's terminal disclaimer, being more appropriately addressed to the issue of plaintiff's alleged inequitable conduct, which is not presented by plaintiff's motion.
Accordingly, plaintiff's motion for partial summary judgment is granted. The Clerk of the Court is directed to enter judgment dismissing defendant's second and third affirmative defenses and second and third counterclaims.
New York, New York
September 8, 1992
WHITMAN KNAPP, U.S.D.J.
ADDENDUM TO OPINION AND ORDER OF 9/8/92
WHITMAN KNAPP, SENIOR D.J.
Defendant asks us to clarify our Opinion and Order filed on September 8, 1992. We then postponed until after the conclusion of this litigation resolution of the question whether § 288 of the Patent Code, 35 U.S.C. § 288, is applicable to a § 253 terminal disclaimer and would prevent plaintiff from being awarded its costs in the event it should prevail on the merits (Opinion at 10). Defendant complains that, should we ultimately determine that § 288 does not cover terminal disclaimers, this postponement would prevent it from establishing that plaintiff's patent was invalid for obviousness-type double patenting, which it claims it could prove in order to block an award of costs to plaintiff.
The questions whether or not § 288 is here applicable -- or, if not, whether proof of obviousness-type double patenting would bar an award of costs -- present complicated legal problems that need not be resolved in this litigation. Plaintiff in its Memorandum in Opposition to Defendant's Motion for Reargument (at 4) points out that the amount of costs it could recover in this action is "trivial," and seems to suggest that it would not appeal a ruling establishing the applicability of § 288 made "at the end of the case." We thoroughly agree with plaintiff's estimate of the triviality of this question in a lawsuit involving hundreds of millions of dollars. We also find it highly undesirable to let such a triviality complicate an already difficult lawsuit, and see no reason why such complication cannot now be eliminated by a ruling that § 288 is here applicable and would bar plaintiff from being awarded costs. Accordingly, we so rule.
This ruling, made without considering the merits of any of the complicated questions involved, is obviously without precedential value.
New York, New York
November 10, 1992
WHITMAN KNAPP, SENIOR U.S.D.J.