Merck & Co., Inc. v. U.S. International Trade Commission

DAVIS, Circuit Judge,

dissenting.

For the reasons set forth in Part II, A, of the court’s opinion, I agree that the assignment of December 27, 1983 — if read on its own terms and within its own four corners — cannot be read to have assigned to Merck the four related patents, but solely the ’284 patent (of the now relevant patents).

Unlike the court, I believe, however, that that is the only way that assignment should be read in this public International Trade Commission proceeding, involving parties other than just Merck and Sumito-mo, and concerning the fulfillment of a patent disclaimer. Sumitomo’s patent disclaimer was, of course, a public document on file in the Patent and Trademark Office, intended to be read and understood on its face by all those who sought to discern whether the ’284 patent was still alive. Similarly, in my view, the assignment of December 27, 1983 should be able to be read (at least by outsiders) solely on its face and without having to delve into any non-revealed understandings entertained by Sumitomo and Merck between themselves. If, for instance, an outsider— aware of the disclaimer and attempting to discover the current status of the ownership of the ’284 patent — had actually come across the December 27, 1983 assignment, he should be able to rely solely on its facial meaning, without more. That is not simply a matter of a right of personal estoppel (because, say, of reliance) but is a result of the public purpose and nature of the disclaimer and of its continued implementation and fulfillment — and the consequent right of all outside persons and entities (i.e., all those other than Merck and Sumitomo) to *489be able to rely on the face of the involved documents.1 To my mind, the proper implementation of the system of patent disclaimers calls for that objective and straightforward method of reading documents involved in determining the direct impact of the disclaimer on the life of the patent. I would therefore affirm the Corn-mission,

. As between Merck and Sumitomo in a matter not directly involving the disclaimers — for instance, in a suit between them as to the ownership of the four related patents — the rule might well be different,