Darrel A. Mazzari, and Michael T. Sheedy v. James E. Rogan, Director, Patent and Trademark Office

Citations: 323 F.3d 1000; 66 U.S.P.Q. 2d (BNA) 1049; 2003 U.S. App. LEXIS 4750; 2003 WL 1192478Docket: 02-1269

Court: Court of Appeals for the Federal Circuit; March 16, 2003; Federal Appellate Court

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Darrel A. Mazzari and Michael T. Sheedy appeal a judgment from the United States District Court for the District of Columbia, which granted summary judgment in favor of the United States Patent and Trademark Office (PTO), declaring their patent claims unpatentable. The court found no genuine issue of material fact regarding the claims' obviousness and anticipation based on prior art. Mazzari and Sheedy, who developed a method to eliminate zebra mussels using acoustic waves, filed their patent application on April 15, 1992. The claims under review included claim 13, which details a method for generating acoustic waves to kill, repel, or inhibit the reproduction of non-self-propelled mussels.

The PTO examiner rejected all claims as obvious under 35 U.S.C. § 103, citing prior art from a PCT application by Bryden and a U.S. patent by Menezes. Additionally, the claims were deemed anticipated under 35 U.S.C. § 102 based on a report by Kowalewski et al. Mazzari's appeal to the board included arguments against the examiner's findings and presented declarations asserting an actual reduction to practice by 1990, which he claimed negated the relevance of the Bryden and Kowalewski references. However, the board found the declarations insufficient as they did not demonstrate a successful method for killing or repelling mussels. The board upheld the examiner's conclusion that Bryden disclosed a relevant method and that it would have been obvious to combine Bryden's method with Menezes' generator. The board did not support the examiner's rejection based on Kowalewski due to a lack of evidence regarding its publication date relative to Mazzari's application. The appellate court affirmed the lower court's ruling.

Mazzari challenged an unfavorable decision by the Patent and Trademark Office (PTO) not by direct appeal to the court but through a civil action in the U.S. District Court for the District of Columbia under 35 U.S.C. § 145. The PTO sought summary judgment based on the board's findings and additional references discovered post-decision. Mazzari countered with a declaration from Professor Martin E. Boraas, who argued that a skilled artisan would not combine the references Bryden and Menezes and that they could not be physically combined. 

The district court, considering Boraas's declaration, denied the PTO's motion for summary judgment without prejudice, allowing for further discovery, including a deposition of Boraas. During his deposition, Boraas admitted he lacked expertise in the relevant field and that his observations did not pertain to Bryden's device. The PTO then presented declarations from its expert, Renata Claudi, who argued that prior art, specifically a 1965 work by Kowalewski and Breitig, anticipated Mazzari's claims and established their obviousness. Additionally, librarian Nancy Fish affirmed that the Kowalewski work was publicly available in June 1991.

Subsequently, the PTO filed a supplemental motion for summary judgment. Mazzari did not address the PTO's arguments as ordered, instead submitting an affidavit and a motion to suppress the PTO's supplemental motion, which the district court denied. The court ultimately granted the PTO's supplemental motion for summary judgment, concluding that the claims were anticipated by Kowalewski and obvious in light of Bryden and Menezes. Mazzari appealed, and jurisdiction was established under 28 U.S.C. § 1295(a)(4)(C). 

Under 35 U.S.C. § 145, an applicant dissatisfied with a board decision may seek recourse through a civil action in the District of Columbia, with the court empowered to grant patent rights as the case merits, similar to the precedent set in Hoover Co. v. Coe.

A section 145 review allows applicants to present additional evidence or re-argue existing evidence, unlike a section 141 appeal. The evidentiary record from the Board serves as the foundation for the district court proceedings, but parties may introduce new evidence or live testimony. When new or supplemented evidence is presented, the district court assumes the role of fact-finder and conducts de novo factual findings, especially in cases of disputed facts. The impact of Dickinson v. Zurko on the standard of review for district courts under section 145 is significant. Prior to Zurko, district courts reviewed Board findings for clear error, but Zurko established that the PTO is an agency governed by the Administrative Procedure Act (APA), requiring courts to apply APA standards. This means courts must review agency actions based on the administrative record and apply the substantial evidence standard for fact-finding. If parties introduce additional evidence, the district court makes new factual findings, which are then reviewed for clear error. Legal conclusions by the district court are reviewed without deference.

Nonexpert judicial factfinding requires the court's standard of review; however, in summary judgment cases, de novo review is applied, favoring the non-movant's perspective. Obviousness is treated as a legal question that relies on factual findings. Mazzari contends that summary judgment was improperly granted, asserting he reduced his invention to practice prior to Bryden, and that there was no motivation to combine the works of Bryden and Menezes. To prove actual reduction to practice, an inventor must demonstrate that the invention was constructed and functional for its intended purpose. Despite favorable construal of facts, Mazzari failed to provide evidence that he had effectively performed a method against zebra mussels before Bryden.

Mazzari's argument against motivation to combine Bryden and Menezes was primarily supported by Boraas's declaration, which claimed no skilled individual would combine the two based on unrelated tests. However, Boraas acknowledged he was not skilled in the relevant art, undermining his credibility. The PTO's evidence, including Claudi's declaration, indicated no material factual dispute regarding the motivation to combine.

Additionally, the PTO presented three arguments: 
1. Kowalewski was argued to anticipate Mazzari's claims, with evidence showing it was publicly available before Mazzari's filing.
2. Breitig was also claimed to anticipate Mazzari’s invention, with Mazzari asserting it could not be prior art due to its German publication. However, foreign publications can be statutory bars, and Breitig was publicly accessible in 1965, fulfilling the anticipation requirement.
3. The PTO asserted that other prior art references, when combined with Menezes, demonstrated the obviousness of the claims, which Mazzari did not contest.

Ultimately, the district court's conclusion of unpatentability was upheld, affirming that the combination of Menezes with additional references rendered Mazzari's invention obvious. The judgment from the United States District Court for the District of Columbia is affirmed, with a note that Sheedy's confusing filings led to a referral to bar disciplinary authorities.