Korsinsky v. Microsoft Corp. , 198 F. App'x 931 ( 2006 )

NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
is not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
2006-1225
GERSH KORSINSKY,
Plaintiff-Appellant,
v.
MICROSOFT CORPORATION,
Defendant-Appellee.
__________________________
DECIDED: August 16, 2006
__________________________
Before NEWMAN, MAYER, and RADER, Circuit Judges.
NEWMAN, Circuit Judge.
Gersh Korsinsky appeals the decision of the United States District Court for the
Eastern District of New York granting summary judgment of noninfringement in favor of
Microsoft Corporation.1 We affirm.
1 Korsinsky v. Microsoft Corporation, No. 04CF2695, 2005 WL 1123769(E.D.N.Y. Mar. 31, 2005).
BACKGROUND
On April 5, 1998 the United States Patent and Trademark Office ("PTO") issued U.S.
Patent No. 4,736,447 to Mr. Korsinsky. The patent expired on April 7, 1992 because Mr.
Korsinsky did not pay the required 3.5 year maintenance fee. On April 28, 2004 Mr.
Korsinsky filed a petition requesting reinstatement of the patent on the ground that he had
never received the maintenance fee reminder. The PTO denied the petition on May 17,
2004 and informed him that he could petition for reconsideration within two months. Mr.
Korsinsky submitted a request for reconsideration on September 8, 2004, this time arguing
that he failed to pay the fee because his wife would not allow him to do so. The PTO
requested further support, and Mr. Korsinsky responded by letter on October 26, 2004.
On June 29, 2004 Mr. Korsinsky filed an action against Microsoft alleging
infringement of the '447 patent. Rather than answer the complaint, Microsoft moved to
dismiss the action for failure to state a claim, stating that Mr. Korsinsky had no infringement
claim against Microsoft because his patent had expired on April 7, 1992, see 35 U.S.C.
§271(a) ("whoever without authority makes, uses, offers to sell, or sells any patented
invention, within the United States or imports into the United States any patented invention
during the term of the patent thereof, infringes the patent") (emphasis added). Because
Microsoft relied on materials beyond the pleadings, the court treated the motion as one for
summary judgment under Rule 56 of the Federal Rules of Civil Procedure, in accordance
with Rule 12(b) ("If, on a motion asserting the defense numbered (6) to dismiss for failure of
the pleading to state a claim upon which relief can be granted, matters outside the pleading
are presented to and not excluded by the court, the motion shall be treated as one for
summary judgment and disposed of as provided in Rule 56"). On January 27, 2005 the
2006-1225 2
court notified the parties of the conversion and instructed them to submit any additional
relevant materials. Mr. Korsinsky submitted affidavits and other materials in support of his
position.
On March 31, 2005 the district court granted summary judgment of noninfringement
in favor of Microsoft. The court acknowledged that Mr. Korsinsky's pro se papers must be
read liberally, but held that it was clear that Mr. Korsinsky had no infringement claim against
Microsoft, because the patent had expired twelve years earlier and any claim Korsinsky
might have had for damages prior to the expiration date would be barred by 35 U.S.C. §286("Except as otherwise provided by law, no recovery shall be had for any infringement
committed more than six years prior to the filing of the complaint or counterclaim for
infringement in the action"). On April 20, 2005 Mr. Korsinsky moved for relief from the
judgment pursuant to Rule 60(b). The court denied the motion on May 11, 2005. Mr.
Korsinsky then filed an appeal with the Second Circuit, which transferred the appeal to the
Federal Circuit.
DISCUSSION
Mr. Korsinsky argues that the district court failed to consider questions regarding the
constitutionality of the patent maintenance fee statute and the statute of limitations, as well
as his rights under Article I §8 of the Constitution and the Fifth Amendment to the
Constitution. Microsoft replies that the district court properly granted summary judgment,
that Mr. Korsinsky did not raise these constitutional issues before the district court, and that
they are not appropriately raised in an action against Microsoft, a private entity. Microsoft
also points out that Mr. Korsinsky is litigating these issues in a separate action directly
2006-1225 3
challenging the Director's subsequent denial of reinstatement. See Korsinsky v. Godici,
2005 WL 2312886 (S.D.N.Y. Sept. 22, 2005).
We agree that the district court did not err in granting summary judgment of
noninfringement. Summary judgment is appropriate where there is no genuine issue of
material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ.
P. 56(c); Johnston v. IVAC Corp., 885 F.2d 1574, 1576-77 (Fed. Cir. 1989). The district
court properly considered the undisputed facts in this case, including the expiration date of
the '447 patent (April 7, 1992), the date of Mr. Korsinsky's complaint (June 29, 2004) and
the fact that damages prior to the expiration date of the '447 patent would be barred by 35
U.S.C. §286.
Neither of the parties discusses whether the district court should have stayed the
case pending the resolution of the PTO proceedings. The district court acknowledged Mr.
Korsinsky's efforts to reinstate the expired patent, but found "no indication in the record that
the PTO has reached any decision on [his] delayed request for reconsideration." Korsinky,
2005 WL 1123769, at *1. The district courts have discretion to stay an action pending PTO
proceedings. See Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 936 (Fed. Cir. 2003) (a
stay pending proceedings in the PTO is "an option within the district court's discretion").
We discern no abuse of discretion in the court's consideration of the parallel proceedings.
We have considered all of Mr. Korsinsky's arguments, and conclude that the
appealed judgment must be affirmed.
2006-1225 4