APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE. District Court Consolidated Civil Action No. 4319.
Maris, Adams and Hunter, Circuit Judges.
These are appeals taken pursuant to 28 U.S.C. § 1292 (b) from an interlocutory order of the United States District Court for the District of Delaware denying motions by the plaintiffs, Standard Oil Company (herein Standard Oil), E. I. duPont de Nemours & Company (herein duPont) and Phillips Petroleum Company (herein Phillips), for leave to amend their complaints in civil actions filed in the district court to review, pursuant to 35 U.S.C. § 146, an award of priority of invention made by the Board of Patent Interferences of the Patent Office, now known as the Patent and Trademark Office,*fn1 to the defendant, Montedison, S.p.A. (herein Montedison).
The history of the controversy involved in the cases may be briefly summarized. Pursuant to 35 U.S.C. § 135, Interference No. 89,635 was instituted and declared in the Patent Office on September 9, 1958 to permit the Board of Patent Interferences of that Office to determine the question of priority of invention as to the following five patent applications all claiming a new composition of matter, crystalline polypropylene:*fn2
Application of John Paul Hogan and Robert L. Banks, assigned to Phillips, filed January 11, 1956, Ser. No. 558,530.
Application of Edwin J. Vandenberg, assigned to Hercules, Inc., filed July 21, 1955, Ser. No. 523,621; accorded benefit of Ser. No. 500,041 filed April 7, 1955.
Application of Warren Nesmith Baxter, Nicholas George Merckling, Ivan Maxwell Robinson and Gelu Stoeff Stamatoff, assigned to duPont, filed December 30, 1955, Ser. No. 556,548; accorded benefit of Ser. No. 451,064, filed August 19, 1954.
Application of Giulio Natta, Piero Pino and Georgio Mazzanti, assigned to Montedison, filed June 8, 1955, Ser. No. 514,099; accorded benefit of Italian application No. 24,227 filed June 8, 1954.
The interference proceeding lasted for over 13 years during which the parties' extensive discovery efforts generated numerous ancillary proceedings in the federal courts.*fn3 The Board of Patent Interferences, after compiling a considerable record, including a large number of exhibits and the testimony of 126 witnesses, finally brought the lengthy and complex proceeding to a close on November 29, 1971. The Board awarded priority of invention to Natta and his coinventors, Pino and Mazzanti, the senior parties to the interference, to whom the Commissioner of Patents on February 6, 1973 issued Patent No. 3,715,344. Claim 1 of that patent is similar to the count of the terminated interference. Montedison is the present owner of the application filed by Natta et al. and of the patent subsequently issued on their application.
Standard Oil, duPont and Phillips, three of the assignees and present owners of applications of losing parties to the interference, instituted civil actions, pursuant to 35 U.S.C. § 146, in the District Court for the District of Delaware to challenge the Board's decision.*fn4 The three plaintiffs, each of whom brought suit individually in January, 1972, named as defendants the assignees of the other parties to the interference proceeding in the Patent Office. These three cases and a fourth § 146 suit filed in the District Court for the District of Columbia by Standard Oil and subsequently transferred to the District Court for the District of Delaware which also named the assignees of the other parties to the interference as defendants were assigned in the district court*fn5 to Judge Wright who, in September, 1972, stayed the actions until the resolution of earlier-filed, related patent infringement actions which were then pending before him in the district court.
These infringement actions, which had been instituted by Montedison in the years between 1965 and 1969 against a number of alleged infringers and consolidated by the court under Civil Action No. 3343, involved Montedison's Patent No. 3,112,300 issued November 26, 1963 on a divisional application, Serial No. 701,332, the original patent application being the one involved in Interference No. 89,634. Patent No. 3,112,300 covers a species of crystalline polypropylene, crystalline polypropylene being the subject matter of Interference No. 89,634 and of the claims in Patent No. 3,715,344, the patent awarded to Montedison at the conclusion of the interference proceeding. Phillips and a subsidiary of Standard Oil, Amoco Chemicals Corporation, were among the defendants in the consolidated infringement action.
The infringement action was settled shortly before the trial of that action was scheduled to start in February, 1975. Active prosecution of the § 146 suits was then resumed. Standard Oil, duPont and Phillips immediately filed motions for leave to amend and supplement their complaints brought under § 146 to add new charges against Montedison on the basis, as they alleged, of new information received by them since the complaints were filed in the district court.*fn6 Standard Oil, in addition, sought on the basis of the new charges to introduce a new cause of action under the Declaratory Judgments Act, 28 U.S.C. § 2201, and to include in the relief it sought a prayer that the court adjudge and decree Montedison's Patent No. 3,715,344 invalid and unenforceable. The district court by order of September 25, 1975 denied the motions. The ...