A Critique of Recent Opinions in Patent Interferences

I. INTRODUCTION

This article covers (1) precedential and interesting non-precedential opinions relating to interferences published in the USPQ since those covered in my previous annual critique of interference opinions published at 91 JPTOS 1 (2009)[1] and (2) precedential and non-precedential but “informative” opinions posted on the BPAI’s website. This article covers interference opinions published in volumes 89-92 of the USPQ2d and opinions posted on the BPAI’s website dated from January 1, 2008 to December 31, 2009.

II. CONCEPTION

Nothing interesting this year.

III. CLASSICAL DILIGENCE

Nothing interesting this year.

IV. ACTUAL REDUCTION TO PRACTICE

A. Can an Invention Be Actually Reduced to Practice After the Inventor Has Died?

Henkel Corp. v. Procter & Gamble Co.

This is the second time that I’ve written this case up on the same point. The first time was in Gholz, A Critique of Recent Opinions in Patent Interferences, 90 JPTOS 1 (2008), §IV.A., which discussed Henkel Corp. v. Procter & Gamble Co., 485 F.3d 1370, 82 USPQ2d 1784 (Fed. Cir. 2007). The write-up concluded with the following Comment:

It is often said (as it was here) that, to constitute an actual reduction to practice, the significance of what is later asserted to have been an actual reduction to practice must have been appreciated by the or at least an inventor. However, since who is an inventor is determined by who conceived the invention, since inventions are often actually reduaced to practice by individuals other than those who conceived them, and since the individuals who conceived inventions can have died before the inventions are actually reduced to practice, it must be possible for someone else to do the appreciating.

This time I’m writing up Henkel Corp. v. Procter & Gamble, 560 F.3d 1286, 90 USPQ2d 1119 (Fed. Cir. 2009)(opinion by CJ Linn for a panel that also consisted of CJs Prost and Moore), which is the Federal Circuit’s opinion deciding an appeal from the BPAI’s decision on remand. Unfortunately, this opinion only compounds the problem. First the Court set up the issue wrongly (IMHO):

Following our remand in Henkel I, the Board found that P&G demonstrated an actual reduction to practice in February 1997, Board Decision at 10, predating Henkel’s reduction to practice in May 1997, and thus awarded priority of invention to P&G, id. at 69. In so doing, the Board made a key factual determination--that P&G inventors appreciated by February 1997 the limitation in the count requiring that the compressed region of the tablet dissolve at a greater rate than the non-compressed region. Id. at 61-62. Whether substantial evidence supports this finding of fact is the only issue on appeal. Henkel contends that “the objective evidence before the Board fails to record or establish that any P&G inventor contemporaneously appreciated, or even conceived of, an embodiment meeting the express comparative dissolution rate limitation of Count 2 prior to Henkel’s accorded actual reduction to practice date.” Henkel’s Opening Br. at 19. P&G counters that its inventors did, in fact, appreciate the differential dissolution rate limitation, and that the record evidence supports the Board’s decision.[2]

Then, it again devoted its analysis to a discussion of whether or not at least one of the inventors had appreciated the actual reduction to practice (which was proved by the testimony of a corroborating witness):

“In order to establish an actual reduction to practice, the inventor must prove that: (1) he constructed an embodiment or performed a process that met all the limitations of the interference count; and (2) he determined that the invention would work for its intended purpose.” Cooper [v. Goldfarb], 154 F.3d [321(Fed. Cir. 1998)] at 1327. The inventor must also “contemporaneously appreciate that the embodiment worked and that it met all the limitations of the interference count.” Id.; see also Henkel I, 485 F.3d at 1374. As we held in Henkel I, to demonstrate a reduction to practice of the invention at issue here the inventors need only appreciate “that the dissolution rate of the compressed region is greater than the dissolution rate of the other region.” Henkel I, 485 F.3d at 1375.[3]

Comment

I do not quarrel with the proposition that someone must have appreciated by the critical date that the activity relied upon as an actual reduction to practice had been successful. That law goes back to Judge Rich’s venerable decision in Heard v. Burton, 333 F.2d 239, 142 USPQ 97 (CCPA 1964).

The question is who must have appreciated that fact. The extreme cases are, of course, (1) those in which the inventor(s) died between his, her, or their conception of the invention (which is how we decide who invented the claimed subject matter) and the date on which the actual reduction to practice took place and (2) those in which the actual reduction to practice was accomplished by an entity that derived the claimed subject matter from the conceiver (which was the case in Cooper). However, the issue is far broader than either of those somewhat rare situations.

It is common for one person to conceive an invention (e.g., a professor or a senior researcher) and for another person to actually reduce it to practice (e.g., a grad student or a laboratory technician). The second person is, of course, available to corroborate the actual reduction to practice (which is what happened in this case). If the second person also appreciated that what he or she did had achieved the intended result, why shouldn’t that appreciation inure to the benefit of the first person (or, practically speaking, to the benefit of the employer of both the first person and the second person)?

V. SUPPRESSION OR CONCEALMENT AND PEELER DILIGENCE[4]

Nothing interesting this year.

VI. CONSTRUCTIVE REDUCTION TO PRACTICE

Nothing interesting this year.

VII. DERIVATION

Nothing interesting this year.

VIII. THE 35 USC 135(b) BARS

A. Must a 35 USC 135(b)(2) Reference Issue With Substantially Unchanged Claims?

Ryan v. Young[5]

Ryan v. Young (PTOBPAI 4 March 2008) (informative) (Paper No. 116 in Int. No. 105,504) (opinion by SAPJ McKelvey for a panel that also consisted of APJs Torczon and Lane) holds that 35 USC 135(b)(2) bars a target claim only if the reference claim “ultimately (1) issues as published or (2) issues with no material changes.”[6]

I respectfully disagree. In my opinion, 35 USC 135(b)(2) does not impose that condition subsequent. Indeed, 35 USC 135(b)(2) does not even require that the published application ever mature into a patent. Accordingly, I submit that a requirement that a claim in a 35 USC 135(b)(2) reference published application should issue substantially unchanged should no more be imposed judicially than a requirement that a 35 USC 102(e)(1) reference published application must issue should be imposed judicially. That is, each type of application becomes an indefeasible reference upon publication.[7]

While I have found no opinion that is precisely on point,[8] I believe the following opinions to be instructive on this issue: Regents of the University of California v. University of Iowa Research Foundation, 455 F.3d 1371, 1374 n. 1, 79 USPQ2d 1687, 1689 n.1 (Fed. Cir. 2006) (“The difference between paragraphs (b)(1) and (b)(2) [of section 135] is that the former creates a one year bar relative to issued patents, while the latter creates a one year bar relative to published patent applications. Otherwise, the two paragraphs are the same.”); OddsOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1402, 43 USPQ2d 1641, 1645 (Fed. Cir. 1997) (the “secret prior art” of 35 USC 102(e) attains prior art status when the application matures into an issued patent); Lamb-Weston, Inc. v. McCain Foods, Ltd., 78 F.3d 540, 548 n. 4, 37 USPQ2d 1856, 1863 n. 4 (Fed. Cir. 1996) (Newman, J., dissenting) (if an application does not issue and is not referred to in an issued patent, it does not become prior art -- implying that, when an application does issue, it does become prior art regardless of what happens to it later); and Avocent Huntsville Corp. v. ClearCube Tech., Inc., 443 F.Supp.2d 1284, 1329-30 (N.D. Ala. 2006) (not published in the USPQ) (a 35 USC 102(e)(2) reference becomes prior art upon issuance--no mention of a condition subsequent). I also note that the Federal Circuit ruled that the term “issued patent” in 35 USC 135(b)(1) means “any issued patent.”[9]

I think that what the panel in Ryan v. Young tried to do was to rewrite 35 USC 135(b)(2) to make sense. However, as the panel in Ding v. Singer[10] said in response to Ding’s public policy arguments:

It is not our role to legislate. We need not consider the various advantages and disadvantages articulated by the parties with regard to having 35 U.S.C. §120 apply or not apply in the context of 35 U.S.C. §135(b)(2). The statutory language of 35 U.S.C. §120 is clear and leaves no room for adding any scenario to which 35 U.S.C. §120 does not apply. Since 35 U.S.C. §135(b)(2) does not itself exclude the application of 35 U.S.C. §120, the latter does have application in the context of the former.[11]

Similarly, 35 USC 135(b)(2) as written does not itself require any correspondence between the claims of a published application and the claims of a patent that matures from that application or a continuation of that application. Indeed, as previously pointed out, 35 USC 135(b)(2) does not even require that any patent issue from the published application or any continuation of that application, let alone one that includes a claim that is not materially changed from a claim in the published application.[12]

Comment

I strongly agree with Judge McKelvey’s apparent belief that 35 USC 135(b)(2) is a mess. However, I believe that it is a mess that Congress created and that Congress will have to clean up--preferably by repealing 35 USC 135(b)(2).[13]

B. Must an Application Relied On to Avoid a 35 USC 135(b) Bar Be “In the Chain”?

Robertson v. Timmermans

In Santasiero v. DeLucas, 83 USPQ2d 1271 (PTOBPAI 2006)(non-precedential)(opinion by APJ Lane for a panel that also consisted of APJs Schafer and Hanlon), a panel of the board held that an application relied on to avoid a 35 USC 135(b) bar can have been presented in a sister application, rather than in a parent of the application in question. However, Robertson v. Timmermans, 90 USPQ2d 1898 (PTOBPAI 2008)(non-precedential)(opinion by APJ Lee for a panel that also consisted of APJs Schafer and Tierney), stated in dictum that:

In the context of 35 U.S.C. § 135(b), establishing when a claim was made requires a comparison of that claim with claims previously made by the same applicant and within the same chain of application which resulted in the application containing that claim.[14]

Comment

I’m betting on the holding in Santasiero to prevail over the dictum in Robertson.

IX. CORROBORATION

Nothing interesting this year.

X. INTERFERENCE PRACTICE

A. Pre-Interference Mechanics

Nothing interesting this year.

B. Board Mechanics

Nothing interesting this year.

C. Responses to Orders to Show Cause

Nothing interesting this year.

D. Motions, Oppositions, and Replies

1. Request Rehearing!

Pivonka v. Axelrod[15]

It is a familiar aphorism that:

The Moving Finger writes, and having writ,

Moves on: nor all your Piety nor Wit

Shall lure it back to cancel half a line,

Nor all your tears wash out a Word of it.[16]

Applying that aphorism to judicial proceedings (including interferences before the BPAI), that means that requests for rehearing or reconsideration are seldom successful. However, the Federal Circuit’s strange opinion in Pivonka v. Axelrod, 2009 U.S. App. LEXIS 3050 (Fed. Cir. 2009) (not published in Fed. Appx. or USPQ) (non-precedential) (opinion by C.J. Prost for a panel that also consisted of Ch. J. Michel and C.J. Scholl), has given interference practitioners a reason to request rehearing (no matter how low the probability of success) of adverse decisions in interlocutory orders in interferences.

Axelrod had suggested the interference, and it had asked that it be designated as the senior party based on entitlement to the filing date of an earlier application. However, when the interference was declared, it was not given the benefit of that filing date, and it was designated as the junior party. Moreover, according to the court’s unenlightening opinion, “The Board [sua sponte] granted Axelrod twenty days from the date of its order to submit evidence satisfying § 41.202(d)….”[17]

As anyone who has ever prepared a §41.202(d) showing knows, twenty days is an absurdly short period of time to prepare such a showing in most cases! However “Axelrod submitted evidence during the allotted time, which the Board accepted as sufficient under §41.202(d).”[18]

Then, during the first phase of the interference, Axelrod submitted a motion for a judgment that all of Pivonka’s claims were unpatentable over certain references. The panel denied Axelrod’s motion, but it sua sua sponte “set forth its own view that…[all of the claims in Axelrod’s] patent are obvious [over Axelrod’s primary reference and a new secondary reference] and ordered Pivonka to file a response showing why a judgment of invalidity [sic; unpatentability] should not be entered against…[all of its claims].”[19] After considering Pivonka’s response and Axelrod’s reply, the panel entered judgment against Pivonka.

On appeal, Pivonka argued (1) “that the Board abused its discretion by permitting the interference to proceed in the first instance”[20] and (2) “that the Board did not properly apply the law during its obviousness analysis.”[21] The court’s disposition of the second issue is of no special interest to the interference bar, but its disposition of the first issue definitely is.

In a nutshell, the court ducked the issue--by asserting that Pivonka has waived that issue by not objecting to the orders authorizing the interference to go forward. Specifically, the court reasoned as follows:

We conclude that Pivonka waived his objections to the Board’s decision to proceed with the interference. With respect to the Board’s discretionary decision to give Axelrod an additional opportunity to submit evidence of priority, Pivonka does not cite to anything in the record that can be construed as an objection. Instead, Pivonka simply argues that he “was not entitled to present its position” at that time. Appellant’s Reply Br. 1. However, Axelrod pointed out at oral argument that Pivonka could have filed a “miscellaneous motion” as provided for by 37 C.F.R. § 41.121(a)(3). Because Pivonka did not present us with any reason why he could not have filed such a motion, we conclude that this argument was waived. See In re Watts, 354 F.3d 1362, 1367 (Fed. Cir. 2004) (“[I]t is important that the applicant challenging a decision not be permitted to raise arguments on appeal that were not presented to the Board. We have frequently declined to hear arguments that the applicant failed to present to the Board.”).

Similarly, we find that Pivonka waived his objection to the Board’s decision that the evidence submitted by Axelrod was sufficient to satisfy 37 C.F.R. § 41.202(e).[22]

***

Accordingly, we conclude that Pivonka waived this argument by failing to raise it below. See Watts, 354 F.3d at 1367.[23]

Comments

Axelrod’s suggestion that Pivonka could have objected to the board’s orders allowing Axelrod to submit evidence of priority and authorizing the interference to go forward based on that evidence is bizarre. However, what I think that Pivonka could have done is to request what the PTO calls “rehearing” (and what most folks call --reconsideration--) of those two decisions.[24]

Neither decision Federal Circuit review of which Pivonka sought was in response to a motion filed by Pivonka. However, the APJ’s (or APJs’) orders were the functional equivalent of decisions on motions, and I think that the APJ (or APJs) would have entertained requests for rehearing of the decisions on issues that they raised sua sponte in the same fashion.

Of course, I also think it statistically highly unlikely that the APJ (or APJs) would have changed those decisions in response to such requests. However, I think that the Federal Circuit would be forced to concede that the filing of such a request constitutes “objections” to such decisions.

Does this make sense? In my opinion, no! The APJ’s interlocutory decisions (whether they are the decisions of individual APJs or the decision of panels of APJs) are supposed to be merged into the final judgment.[25] If one loses on any motion or issue raised sua sponte by the board, it can be safely assumed that one wishes that one had not lost and that one might want to seek court review of that decision. Requiring an interferent to “object” to such decisions smacks of the long since discredited requirement that trial counsel ritualistically intone “Exception, your Honor” after every adverse ruling on an objection to evidence in order to preserve the issue of the propriety of that ruling for appeal.

2. Responsive Motions to Amend Claims

Chapman v. Casner

During the administrative phase of the interference involved in Chapman v. Casner, 315 Fed. Appx. 294 (Fed. Cir. 2009) (non-precedential) (opinion of the court delivered by C.J. Prost and joined by C.J. Lourie, dissenting opinion by C.J. Rader), Casner filed a motion seeking judgment that all of Chapman’s claims designated as corresponding to the count were unpatentable under 35 USC 103(a). Chapman did not file a 37 CFR 41.121(a)(2) responsive motion[26]seeking to amend any of those claims.[27] That proved fatal, for the BPAI granted Casner’s motion (and the Federal Circuit affirmed) essentially on the ground that Chapman’s claims were too broad--i.e., that, even if they read on non-obvious subject matter, they also read on obvious subject matter.

Chapman’s claims were drawn to a process comprising, i.a., the step of “incubating the mixture under conditions suitable to promote reaction of 8, 14-dihydroxy-7, 8-dihydrocodeinone to 14-hydroxycodeinone.” Chapman’s problem was (1) that “The 8,14-dihydroxys created during the initial oxidation step are stereoisomers--there are two forms, designated ‘8α’ and an “8β,” that differ only by the relative orientation of a hydroxyl group[28];” and (2) that the process recited in its claims would have been obvious using the 8β stereoisomers[29]; and (3) that its “claim does not…differentiate between the 8α and 8β forms of 8,14-dihydroxy, nor does the claim language specifically disclose which conditions are ‘suitable’ for promoting the desired reaction from 8,14-dihydroxy to 14-hydroxy.”[30]

Although the court’s opinion is not 100% clear, apparently Chapman would have had support for a claim that limited the initial oxidation step to the 8α form and that recited at least one condition that would have rendered the process “‘suitable’ for promoting the desired reaction.”[31] However, Chapman did not file a responsive motion to narrow its claims to get around the prior art.

Judge Rader dissented, but, IMHO, his dissent does not come to grips with the breadth of Chapman’s claims. He essentially argued that the subject matter that would have been defined by properly limited claims would have been patentable. And, if pigs had wings, they could fly.

Comment

As Judge Rich wrote in Titanium Metals Corp. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 779 (Fed. Cir. 1985):

It is…an elementary principle of patent law that when, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is “anticipated” if one of them is in the prior art.[32]

3. Once an Interference Has Been Declared, One Cannot Move for a 37 CFR 41.202(d)(2)[33] Order to Show Cause

Rodriguez Rilo v. Benedict[34]

The fundamental issue in Rodriguez Rilo v. Benedict (PTOBPAI 23 March 2009)(informative) (Paper No. 17 in Int. No. 105,684) (opinion by APJ Torczon, not joined by any other APJ)[35] was derivation. Each party accused the other of having derived the invention defined by the count from it. Rodriguez Rilo was the junior party. In order to provoke the interference, it had had to argue that its claims were patentably indistinct from Benedict’s claims. However, Benedict’s claims contained limitations not present in Rodriguez Rilo’s claims. Accordingly, Rodriguez Rilo had argued that the subject matter defined by Benedict’s claims would have been obvious in view of the subject matter defined by its claims.

Benedict moved for an order placing Rodriguez Rilo under a 37 CFR 41.202(d)(2) order to show cause why judgment should not be entered against it because it had “failed to demonstrate the existence of interfering subject matter between the parties.”[36] That motion was denied. According to Judge Torczon:

As a junior-party applicant seeking an interference, Rilo was obliged to file a statement under Bd.R. 202 explaining what it thought the scope of the interference should be and why it would be entitled to prevail. The rule expressly provides for an order to show cause if the applicant fails to demonstrate facially why it would prevail on priority. Bd.R. 2020(d)(2). There is no corresponding express authority for an order to show cause when there are other defects in the Bd. R. 202 statement.[37]

Rodriguez Rilo had “explain[ed]…why it would be entitled to prevail” by “demonstrate[ing] facially” that Benedict had derived from it the subject matter defined by its (i.e., by Rodriguez Rilo’s) claims, and the administrative patent judge who had declared the interference (i.e., Judge Torczon) had “provisionally determin[ed] that the Director[[38]]…[was] of the opinion that an interference exists.”[39]

Benedict’s problem was that “An interference declaration is presumed to be correct.”[40] Accordingly, as Judge Torczon explained, “Benedict’s remedy is to seek authorization to file a motion for [a] judgment of no interference-in-fact.”[41]

Comments

(1) This fight was primarily about money. If Judge Torczon had granted Benedict’s motion, the initial burden would have been on Rodriguez Rilo to show the existence of an interference-in-fact, and a panel of the BPAI might have ruled that it had failed to do so even if Benedict had taken no further part in the proceeding. However, since Judge Torczon denied Benedict’s motion, the initial burden was placed on Benedict to show the nonexistence of an interference-in-fact--and, if it failed to do so, the interference would go forward. At that point, Benedict would have to respond to Rodriguez Rilo’s facial showing that it (i.e., Benedict) derived the subject matter defined by Rodriguez Rilo’s claims from it (i.e., Rodriguez Rilo).

(2) I think that Judge Torczon’s holding can easily be extended to post-declaration attempts to obtain an order to show cause based on alleged failures to “demonstrate facially why…[a junior-party applicant] would prevail on priority.” In that case, too, the APJ would have “provisionally determin[ed]” that the junior-party applicant has carried its burden. Similarly, the interference declaration would be “presumed to be correct.” So, why wouldn’t the senior-party patentee’s remedy similarly be to seek authorization to file a motion for a judgment based on priority?

4. Lists of Proposed Motions Must Be Complete

LaLonde v. Li

In Gholz, A Critique of Recent Opinions in Patent Interference, 90 JPTOS 9, 24 (2008), I discussed Karim v. Jobson, 82 USPQ2d 1018 (PTOBPAI 2006) (non-precedential), in a section entitled “Lists of Proposed Motions Must Be Drawn with Care.” They also must be complete. As stated in LaLonde v. Li (PTOBPAI 19 March 2008) (informative) (Paper No. 23 in Int. No. 105,607) (opinion by APJ Lee, not joined by any other APJ):

The motions list filed by party Li on March 14, 2008, is improper as it contains the language “Senior Party Li reserves the right to modify this list to, inter alia, include additional miscellaneous; preliminary or other motions or responsive motions as necessary.” There is no such right for Li to reserve. The presence of such language renders unreliable the list provided and creates a prejudice against LaLonde.[42]

Comment

This holding is reminiscent of how the board treats attempts to include “reservations” in requests for entry of adverse judgment. See the opinions discussed in Gholz, A Critique of Recent Opinions in Patent Interferences, 91 JPTOS 1 (2009) §X.B.1., “The Interference Estoppel Effect of a Request for Entry of Adverse Judgment.”

5. A Reply Cannot Be Supported By Evidence That Should Have Supported The Motion

Rabbani v. Notomi

37 CFR 41.122(b) reads as follows:

All arguments for the relief requested in a motion must be made in the motion. A reply may only respond to arguments raised in the corresponding opposition.

Rabbani v. Notomi (PTOBPAI 25 January 2008) (informative) (Paper No. 145 in Int. Nos. 105,427 and 105,432) (opinion by SAPJ McKelvey for a panel that also consisted of APJs Torczon and Moore), makes it stunningly clear that, not only can a reply contain no new arguments, even the old arguments cannot be supported by additional evidence which “should” have been submitted with the motion.

The interference was in the priority phase. Rabbani filed a motion for judgment based on priority of invention and supported that motion with certain evidence. Notomi filed an opposition supported by the declaration of an expert witness which asserted (surprise, surprise) that Rabbani’s evidence failed to prove that it had actually reduced the invention to practice. Rabbani filed a miscellaneous motion requesting authorization to submit additional evidence with its reply to “counter” the declaration of Notomi’s expert. That motion was denied. According to SAPJ McKelvey:

It is well-established practice at the Board that[,] in presenting a motion for relief, a moving party must make out a prima facie case for relief. *** If a prima facie case is not made out in the motion, it cannot be made out in a reply. 37 C.F.R. § 41.122(b) (2007) (first sentence).[43]

Apparently what happened was that Notomi’s expert witness offered numerous criticism of Rabbani’s evidence, and Notomi wanted to counter those criticisms on a point-by-point basis. However, the panel was adamant. Rabbani should have anticipated each of Notomi’s criticisms and countered them in its motion.

So what (if anything) could Rabbani have done after reading the declaration of Notomi’s expert witness? According to the panel, its “remedy’ was to cross-examine Notomi’s expert witness,[44] which it had not done.[45]

Interestingly, the panel conceded that the holding in this case represented a change in the Trial Division’s previous policy:

Rabbani alleges that submission of evidence with a reply "is common in interference proceedings." Paper 139, page 9:16-24. Rabbani points out that in connection with other motions, it filed replies.

Rabbani correctly points out that during a recent conference call authorizing this motion the Board noted that the Board's recent experience with reply briefs in general has demonstrated that its current practice of permitting evidence to come in with a reply just does not work. Paper 139, page 10:4-6. Reply briefs, accompanied by evidence, on the issue of priority have been particularly troublesome. [46]

Comments

(1) Cross-examining an honest expert witness can, of course, be very helpful. However, in this case Not

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