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August 5, 1998


The opinion of the court was delivered by: SHADUR


 This action was brought by Frank Calabrese ("Calabrese"), holder of United States Patent No. 4,322,849 ("'849 Patent") issued March 30, 1982 on a "Data Relay System," charging infringement of the '849 Patent by Square D Company ("Square D"). After extensive discovery the parties filed a barrage of Fed. R. Civ. P. ("Rule") 56 motions for summary judgment (two on each side), but this Court's initial review suggested that special priority ought to be afforded to the one in which Square D charged Calabrese with having violated the "best mode" requirement of 35 U.S.C. § 112 P1 ("Section 112 P1"). That course of action seemed most sensible because Square D's success on that motion would obviate any need for this Court to address what promised to be much more intricate issues, calling for more extended treatment in both factual and legal terms--and conversely, if the motion were unsuccessful nothing would be lost, because the best mode question would have had to be addressed as part of the Rule 56 package in any event.

 Because of the nature of the best mode claim in this case, this Court also regarded the matter as one that would be best served by a rare (at least for this Court) reference to a special master under Rule 53--in this instance a lawyer known to this Court to be knowledgeable and experienced in intellectual property matters, Gerald Geren, Esq. On June 16, 1998 Special Master Geren produced his Report in which he recommended the grant of Square D's summary judgment motion in that respect, and the Report was followed in turn by Calabrese's timely objections (submitted on June 30) and then, at this Court's request, by Square D's response to the Calabrese objections. For the reasons stated in this memorandum opinion and order, this Court independently upholds the Special Master's recommendation and declares the '849 Patent invalid because of Calabrese's noncompliance with the statutory best mode mandate.

 Background Facts

 Most of the facts necessary for the present decision will be set forth in this section. To the extent that any factual matters may mesh better with the substantive discussion, they will be set out a bit later.

 Calabrese really created his own potential best mode problem by his initial decision to split his patent application, when he first tendered it to the Patent Office, into two separate applications. That of course was a perfectly legitimate thing to do so long as the Patent Office (as it ultimately did in this instance) recognized the applications as covering two discrete inventions and hence as escaping the vice of double patenting (see In re Berg, 140 F.3d 1428 (Fed. Cir. 1998)). *fn1"

 But Calabrese's problem in this instance stems from the fact that the application for what became the '451 Patent expressly disclosed the preferred embodiment of the invention that was the subject matter of that application (so that there is of course no question as to Calabrese's knowledge of that preferred embodiment), while that same disclosure was omitted from the '849 Patent. That being the case, if the subject of that preferred embodiment was also something that should have been disclosed as part of the best mode for practicing the invention of the '849 Patent now in suit, that nondisclosure necessarily invalidates the '849 Patent under Section 112 P1.

 What Calabrese did was to file both of the applications (Serial No. 140,229, from which the '849 Patent ultimately matured, and Serial No. 140,212, from which the '451 Patent ultimately matured) on the same April 14, 1980 date. They were placed into different classes, assigned to different Examiners and then traveled different paths:

1. On April 28, 1981 the Examiner assigned to Serial No. 140,229 issued an Office Action setting out objections and rejections to that application. On July 23, 1981 applicant Calabrese amended claim 1 and proffered arguments in response to the Office Action. That then resulted in allowance of the application and issuance of the '849 Patent on March 30, 1982.
2. By contrast, the Examiner assigned to the other application originally rejected its claim 1 on the basis of double patenting, after which Calabrese amended the claims in that application so as to avoid that rejection. Then two later continuations were filed to that application: Serial No. 488,000 filed May 2, 1983 and Serial No. 06/894,083 filed August 6, 1986. On October 27, 1987--more than five years after issuance of the '849 Patent--the '451 Patent issued.

 In consequence of those different paths reflected in the prosecution histories of the two applications, the '849 Patent will expire April 14, 2000, while the '451 Patent will not expire for another 4-1/2 years--on October 27, 2004.

 Each patent as issued says that its invention has as its " provide" ('849 Patent col. 1, lines 23-24) or that the invention "relates to" ('451 Patent col. 1, line 10) a subject described in identical terms: "A data relay system for accessing large quantities of data, of any voltage level, either discrete or analog, from a single source, typically a computer" ('849 Patent col. 1, lines 24-26, '451 Patent col. 1, lines 9-12). And both patents disclose the data relays themselves. But the '451 Patent also discloses as a preferred embodiment, as the '849 Patent does not, an input circuit and a relaying circuit within the data relay system (for receiving and amplifying the address and data information that passes between the data relays and the "host device" or computer).

 There is of course no question that the two patents do not have identical claims, else two different patents would never have issued. Here is the critical claim 1 of the '849 Patent, with emphasis added to focus attention on the elements that have proved to be ...

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