Justia Federal District Court Opinions

Asahi/America, Inc. (Asahi) appeals the decision of the Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board) (1) affirming the examiner's final rejection, upon reexamination, of claims 1-3 of U.S. Patent No. 4,930,544 (Ziu '544) as being anticipated by U.S. Patent No. 4,779,652 (Sweeney '652) under 35 U.S.C. Sec. 102(e), and (2) affirming the examiner's finding that the declaration filed pursuant to 37 C.F.R. Sec. 1.131 ("131 declaration") did not show facts sufficient to establish reduction to practice of the invention claimed in the Ziu '544 patent prior to the filing date of Sweeney '652. Asahi is the assignee of the Ziu '544 patent and filed the reexamination request based on the Sweeney '652 patent. Because the Board imposed an overly strict requirement for a showing of reduction to practice, this court reverses the Board's finding that the 131 declaration did not establish reduction to practice and remands for further proceedings consistent with this opinion.¹

Background

On April 30, 1991, Asahi filed a request for reexamination of its Ziu '544 patent based on the Sweeney '652 patent. Both the Ziu '544 and the Sweeney '652 patents contemplate double pipe systems where an inner "carrier" pipe carries the fluid while an outer "containment" pipe surrounds the inner pipe and contains any leaks. Double containment pipe systems have long been employed by the chemical industry to prevent the potentially catastrophic consequences of leaks of corrosive chemicals.

The Sweeney '652 patent contemplates a "simple sealing double walled piping system, one which does not rely on fittings but which uses a simple butt-weld of the inner and outer pipe sections to define an interspace chamber therebetween, the sections being integrally formed as a unitary molded plastic body." Sweeney '652 claims a "modular [double pipe] component usable in series", with each component in the series "comprising a unitary plastic body having inner and outer piping walls with respective first and second ends adapted for assembly in series by bodily abutment end-to-end and a plurality of circumferentially distributed ribs formed integrally with and supporting said piping walls in spaced relation."

The Ziu '544 patent contemplates a double containment pipe system capable of using stock "off the shelf" pipes and a "restraint coupling" to control the differential thermal expansion of the carrier and containment pipes. The claimed coupling comprises "a carrier portion disposed within and generally parallel to the containment portion", the carrier portion having a "diameter selected for end-to-end axial alignment with the carrier pipes," and "a connecting portion rigidly extending between and connecting said containment and carrier portions."

During the reexamination, Asahi did not present evidence of diligence after conception, but instead opted to show reduction to practice prior to the filing date of the Sweeney '652 patent pursuant to 37 C.F.R. Sec. 1.131. Asahi presented evidence that the claimed coupling was manufactured by an outside vendor and shown and described in two trade publications as part of commercial offerings prior to the April 9, 1987 filing date of the Sweeney '652 patent. The photograph published in one of the trade journals is shown below. One article stated that the fittings depicted in the accompanying photograph "fuse to both the inner and outer pipe" of the double containment piping system. Another article represented that the photographed fittings "control differential thermal expansion" of the inner and outer pipes and further stated that the "system is now on the market." A third article, which did not include a photograph, described Asahi's double piping system and stated that the fittings "control differential thermal expansion by allowing both the inner and outer pipes to be solidly fused, creating a point of simultaneous restraint."NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE