Allen Archery, Inc. v. Browning Manufacturing Co.
819 F.2d 1087 (1987)
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Rule of Law:
The Patent Act of 1952 eliminated the requirement that a patentee must disclaim invalid patent claims to enforce the remaining valid claims of the same patent. Furthermore, a good faith belief that prior art is not material, even if that belief is ultimately incorrect, can defeat a claim of inequitable conduct if there was no intent to deceive the Patent and Trademark Office.
Facts:
- H.W. Allen invented a "compound bow" that used eccentric, off-center pulley members on the limb ends to increase arrow speed while reducing the force required to hold the bow at full draw.
- Allen Archery, Inc. owned U.S. Patent No. 3,486,495 covering this invention.
- During the patent's prosecution, Allen's attorney, D.A.N. Chase, became aware of a prior art reference, the Wilkerson patent, but did not disclose it to the Patent and Trademark Office (PTO), believing it was not material and that Allen's invention was "radically different."
- To overcome a rejection based on another reference, the Barna patent, Allen submitted an affidavit to the PTO with test results purporting to show the Barna bow did not work as claimed; Allen later discovered his test was flawed and the results were erroneous.
- After learning his Barna test was incorrect, Allen filed a voluntary disclaimer for claims 1, 2, and 11 of his patent.
- Browning and Browning Manufacturing Company (Browning) manufactured and sold compound bows similar to Allen's design.
- Browning Manufacturing entered into a patent license agreement with Allen Archery, made one initial payment, but then failed to pay any further royalties.
Procedural Posture:
- Allen Archery filed suit against Browning in the U.S. District Court for the District of Utah for patent infringement and breach of a licensing agreement.
- Browning filed a countersuit seeking a declaratory judgment that the Allen patent was invalid and not infringed.
- The district court consolidated the cases and stayed proceedings pending the outcome of a separate case in California, Allen Archery, Inc. v. Jennings Compound Bow, Inc.
- In the Jennings case, a different court held some claims of the Allen patent invalid, but upheld claims 7, 8, 10, and 14 as valid and infringed.
- Following the Jennings decision, Allen Archery disclaimed the claims held invalid in that case.
- The Utah district court then bifurcated its trial. In the first part, it ruled that Allen had not engaged in inequitable conduct before the Patent and Trademark Office.
- In the second part of the trial, the district court held that the remaining patent claims were valid and infringed by Browning, and that Browning had breached the license agreement.
- Browning appealed the district court's judgment of validity and infringement, and Allen Archery cross-appealed the denial of increased damages, both to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does a patentee's failure to disclaim patent claims that have been found invalid render the remaining, otherwise valid claims of the same patent unenforceable?
Opinions:
Majority - Friedman, J.
No. The failure of a patentee to disclaim an invalid patent claim does not prevent the patentee from enforcing any remaining claims in the same patent which are otherwise valid. The court analyzed the pre-1952 patent statutes (§§ 65 and 71) that the Supreme Court relied on in Maytag Co. v. Hurley Machine Co., which imposed a duty on patentees to disclaim invalid claims without unreasonable delay or risk the entire patent. The court held that the Patent Act of 1952, specifically the new §§ 253 and 288, effectively abrogated the Maytag rule by removing the statutory language that required disclaimer to save the remaining valid claims. The legislative history explicitly states that Congress intended to eliminate this requirement so that "one bad claim does not affect the other claims." The court also affirmed that Browning failed to prove inequitable conduct because there was no clear and convincing evidence of an intent to deceive the PTO. The district court found that Allen and his attorney acted in good faith when they failed to disclose the Wilkerson patent, and this finding was not clearly erroneous. A good faith belief that prior art is immaterial, even if mistaken, negates the requisite intent for inequitable conduct.
Analysis:
This decision definitively establishes that the 1952 Patent Act overruled the harsh Maytag doctrine, which previously could invalidate an entire patent if the patentee failed to promptly disclaim claims that were later found to be invalid. This provides patentees with greater security, as the invalidity of one claim no longer jeopardizes the enforcement of others. The case also reinforces the high bar for proving inequitable conduct, emphasizing that it requires not just the failure to disclose material information but also clear evidence of a specific intent to deceive the PTO. A genuine, good-faith belief in the immateriality of prior art, even if objectively wrong, can serve as a successful defense against such allegations.
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