A Critique Of Recent Opinions Of The Federal Circuit In Patent Interferences

1995Journal of the Patent and Trademark Office Society, volume 77 (1995), pages 427-49

TABLE OF CONTENTS

I. Introduction

II. Substantive Interference Law

A. Determining Inventorship Is Nothing More Than Determining Who Conceived the Subject Matter at Issue
B. Proof of Conception of a Genus Encompassing a Genus Defined by a Count is Inadequate to Prove Conception of Subject Matter Within the Scope of the Count
C. Evidence Required to Prove an Actual Reduction to Practice

III. Interference Procedure

A. The Board Did Not Abuse Its discretion in Granting Summary Judgment Against a Junior Party That Did Not File a Timely Preliminary Statement Despite the Fact That the Examiner-in-Chief Did Not Issue a 37 CFR 1.640(d)(2) Show Cause Order First
B. The Burden of Proof as to Priority Issues on a Junior Party Applicant
Whose Effective Filing Date Is Before a Senior Party Patentee's Issue Date Is the Preponderance of the Evidence, Not Clear and Convincing Evidence
C. No Adverse Inference Can Be Drawn From a Senior Party's Failure to Cross-Examine a Junior Party or Put On Rebuttal Evidence
D. You Can Allege Alternative Inventors of the Subject Matter of a Count and Alternative Invention Dates in Your Preliminary Statement

IV. Post-Interference Practice

A. New Issues Can be Raised in a Section 146 Action Only in "Compelling Circumstances"

I. Introduction

This article covers Federal Circuit precedential opinions2 published since those covered in the author's previous article by the same title at 76 JPTOS 649 (1994) through December 31, 1994.3

There were two welcome developments in interference law this year. First, in Bosies v. Benedict4 the court undid most of the potential harm that might have been caused by its opinion the previous year in Price v. Symsek.5 In Bosies, the court reaffirmed the well-settled law that the burden of proof as to priority issues on a junior party applicant whose effective filing date is before a senior party patentee's issue date is the preponderance of the evidence, not clear and convincing evidence. Second, In Credle v. Bond6 the court made it clear that you can allege alternative inventors of the subject matter of a count and alternative invention dates in your preliminary statement -- provided that the preliminary statement makes it very clear exactly what you are doing.

The worst interference development of the year was the court's substantial retreat in Scott v. Finney7 from the board's traditional requirement that, in order to be an actual reduction to practice, a prototype must be successfully tested under actual use conditions or conditions accurately simulating actual use conditions for a reasonable length of time.

II. Substantive Interference Law

A. Determining Inventorship Is Nothing More Than Determining
Who Conceived the Subject Matter at Issue

Sewall v. Walters, 21 F.3d 411, 30 USPQ2d 1356 (Fed. Cir. 1994) (opinion delivered by Circuit Judge Rich for a panel that also consisted of Chief Circuit Judge Archer and Senior Circuit Judge Lay of the Eighth Circuit), was "an originality contest as opposed to a priority contest."8 Walters had been a consultant for Sewall's employer ("Star"), and Star filed an application naming Sewall and Waters as joint inventors.9 Twenty six months later, "Walters filed an identical application . . . , which is unassigned, asserting sole inventorship of that subject matter."10 The two applications were placed in interference, and the board entered judgment for the party Walters, holding that "Walters was the sole inventor of . . . [the] subject matter [defined by the count]."11

On appeal, the court first noted that "Determining 'inventorship' is nothing more than determining who conceived the subject matter at issue, whether the subject matter is recited in a claim in an application or in a count in an interference."12 Since Sewall admitted that he did not independently conceive the subject matter recited in the count, "The 'inventorship' issue to be decided . . . [was] . . . who conceived the invention for which patent protection is sought, and not who first conceived that invention."13

The court then summarized some hornbook law on conception as follows:

Conception exists when a definite and permanent idea of an operative invention, including every feature of the subject matter sought to be patented, is known. Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed. Cir. 1985). Conception is completely when one of ordinary skill in the art could construct the apparatus without unduly extensive research or experimentation. See Summers v. Vogel, 332 F.2d 810, 816, 141 USPQ 816, 820 (CCPA 1964); In re Tansel, 253 F.2d 241, 243, 117 USPQ 188, 189 (CCPA 1958).14

Finally, the court applied that well-settled law to the facts of the case before it. What Sewall had done was to embody in hardware form an invention conceived by Walters and the novel portion of which had previously been embodied in software form by Walters. While it is certainly possible that transmuting a device from software form to hardware form could require independent inventive skill, in this case the board had held that it had not, and the court held that "The record amply supports . . . the Board's . . . holding that Sewall's hardware design was dictated explicitly by Walters' specifications."15 Moreover, the court said that, "In addition, Sewall has failed to persuade us that the Board clearly erred in finding that Sewall's design of circuits to carry out Walters' idea was simply the exercise of the normal skill expected of an ordinary chip designer, which did not involve any inventive acts on the part of Sewall."16 Accordingly, the court affirmed the board's judgement.

Comment: The count recited an apparatus comprising five "means" none of which was expressly limited to hardware. In addition, while the specification disclosed the hardware developed by Sewall, it stated that the element which differentiated the invention from the prior art "could be accomplished solely through software . . . ,"17 which the court said "render[ed] the presence of Sewall's alleged coinventive contributions, namely, the circuits that he designed, completely optional to the apparatus of the count."18 That, it seems to me, should have been enough to make the bulk of the court's analysis superfluous.

If Walters first conceived one species within the scope of the count, what difference does it make whether or not a second species within the scope of the count was later conceived by Sewall and Walters jointly, and what difference does it make whether or not the second species was patentably distinct from the first species? If the party Sewall et al. had wanted a count limited to the hardware implementation designed by Sewall, it could have moved under 37 CFR 1.633(c)(5) to require Walters to present a claim to that apparatus19 and under 37 CFR 1.633(c)(1) to add a count so limited.20 If the party Sewall et al. had filed a 37 CFR 1.633(c)(5) motion, and if the party Walters had presented the claim proposed by the party Sewall,21 the examiner-in-chief (initially) and the board (at final hearing) would have considered whether or not the subordinate count was patentably distinct from the generic count in deciding whether or not to add the subordinate count limited to the hardware implementation.22 Similarly, if the party Sewall had any claims that were limited to the hardware implementation designed by Sewall, it could have moved under 37 CFR 1.633(c)(4) to have those claims designated as not corresponding to the count.23 If the party Sewall had sone so, the examiner-in-chief (initially) and the board (at final hearing) would have considered whether or not those claims were patentably distinct from the count in deciding whether or not to "degroup" those claims.24 However, since the party Sewall et al. did not file either type of motion, the question of whether or not the hardware implementation was patentably distinct from the subject matter recited broadly by the count was irrelevant to the issues before the court.

B.Proof of Conception of a Genus Encompassing a Genus Defined by a Count
is Inadequate to Prove Conception of Subject Matter Within the Scope of the Count

Bosies v. Benedict, 27 F.3d 539, 30 USPQ2d 1862 (Fed. Cir. 1994) (opinion delivered by Circuit Judge Lourie for a panel that also consisted of Chief Circuit Judge Archer and Circuit Judge Plager), stands for the propositions (1) that proof of conception of a genus encompassing a genus defined by a count is inadequate to prove conception of subject matter within the scope of the count and (2) that evidence of conception must be evidence of conception by the or a named inventor.

In Bosies the counts all recited25 compounds one component of which was "a . . . hydrocarbon chain containing 2 to 8 carbon atoms . . . ."26 The party Benedict's conception document showed a formula that included those compounds, but had the number "n" for the number of carbon atoms in the hydrocarbon chain and no definition of the number n. That is, the formula in the conception document was generic to the formula in the counts. The formula in the conception document read on the compounds with hydrocarbon chains containing 0 and 1 carbon atoms, and it read on the compounds with hydrocarbon chains containing more than 9 carbon atoms. Moreover, the party Benedict submitted no proof that either of the named inventors comprising the party Benedict had specifically contemplated a compound of the type recited in the counts with the hydrocarbon chain containing 2 to 8 carbon atoms. Instead, it submitted an affidavit by the non-inventor laboratory technician (Sunberg) who witnessed the conception document. In that affidavit, Sunberg testified that he "considered 'n' to be a range of values, including n=1 and n=2."27

As to the first issue, the court said:

In order to establish conception, Benedict . . . was required to submit evidence showing, inter alia, a description of the compounds of the count. See Oka [Oka v. Youssefyeh, 849 F.2d 581, 7 USPQ2d 1169 (Fed. Cir. 1988)], 849 F.2d at 583, 7 USPQ2d at 1171. Absent such a showing, Benedict's case for conception must fail. See Fiers [Fiers v. Sugano, 984 F.2d 1164, 25 USPQ2d 1601 (Fed. Cir. 1993)], 984 F.2d at 1168-69, 25 USPQ2d at 1604-05.
In the instant case, count 1 is directed to a group of compounds in which "A" would, in the notebook formulation, correspond to "n" being two to eight. The formula disclosed, however, is a generic one that does not ascribe a value to "n" and thus does not specifically define any of the compounds to which count 1 is directed. Although the compounds of the count arguably might be within the scope of the generic formula set out in Benedict's notebook, that formula does not constitute a definite description of the compounds of the count. See D'Silva v. Drabek, 214 USPQ 556, 564 (BPAI 1981), aff'd, 691 F.2d 513 (CCPA 1982) (table).28

As to the second issue, the court said:

Sunberg's testimony . . . was directed only to what Sunberg, a non-inventor, understood "n" to mean, and did not show the inventor's intended meaning of that variable. Sunberg did not testify that Benedict indicated in any way what "n" meant.
The question of conception is properly directed to whether there was "formation [] in the mind of the inventor of a definite and permanent idea of the complete and operative invention . . . [and whether] every limitation of the count [was] known to the inventor at the time of the alleged conception." Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed. Cir. 1985) (emphasis added). Because Sunberg's testimony was not probative of what the inventors conceived, it was insufficient as a matter of law to establish the meaning of "n".29

Accordingly, the court reversed the board, holding that it had "erred as a matter of law in concluding that Benedict proved conception of the subject matter of the counts prior to Bosies' effective filing date . . . ."30

Comments: Actually, it is settled law that, to establish conception, Benedict would only have been required to submit evidence showing a description of a single compound of the count,31 not all of the compounds of the count ‹ or a genus congruent with the count, as suggested by the emphasized language in the first part of the first quoted passage.

As for the second point, the court noted that the party Benedict "did not submit the testimony of either inventor"32 and that "Sunberg did not testify that Benedict indicated in any way what 'n' meant,"33 implying that the party Benedict could have carried its burden of proof either by offering the testimony of Benedict that he had understood "n" to mean one or two or by offering the testimony of Sunberg that Benedict had told him that "n" could be either one or two. Suppose however, that by the time testimony was taken. Benedict had not told Sunberg what he intended by "n". Would all have been lost for the party Benedict? I think not. I think that the party Benedict could have offered the testimony of an expert witness to the effect that those of ordinary skill in the relevant art as of the date of the conception document would have "considered 'n' to be a range of values, including n=1 and n=2."34 That is, I do not believe that there was anything inherently wrong with what Sunberg said in this regard. What was wrong with it was that it was offered as the testimony of a fact witness, not as the testimony of an expert witness.35

C. Evidence Required to Prove an Actual Reduction to Practice

How good is good enough is the usual question when evaluating a proffered actual reduction to practice. While every such case is fact-intensive, and while it is, therefore, difficult to draw generalizations, Scott v. Finney, 34 F.3d 1058, 32 USPQ2d 1115 (Fed. Cir. 1994) (opinion delivered by Circuit Judge Rader for a panel that also consisted of Circuit Judges Lourie and Schall), (1) contains a useful tutorial on the subject and (2) involves memorable subject matter. Treating those two facts in combination, Scott v. Finney is likely to become a leading case.

The subject matter in dispute was a penile implant designed to permit the implantee to simulate an erection by manipulation of the implanted device through his skin. The alleged actual reduction to practice was the implantation of a prototype of the device into an anesthetized patient and the manipulation of a prototype by the surgeon while the implantee remained anesthetized. After the surgeon had tested the prototype in that fashion, he (or she) removed the prototype and implanted a prior art, externally pumped mechanism.

The board held that the testing of the prototype did not constitute an actual reduction to practice because the test "had not shown utility, i.e., that the device would successfully operate under actual use conditions for a reasonable length of time."36

The court reversed, saying that "the Board imposed an overly strict requirement for testing to show reduction to practice . . . ."37

Two facts were key to the reversal. First, "The issue of reduction to practice is a question of law which . . . [the Federal Circuit] reviews de novo."38 Second, the invention was a minor improvement in a crowded art. As the court put it;

Only the hydraulics of a fully self-contained internal prosthesis remained to be tested for workability. [The test on the anesthetized patient] . . . adequately showed the workability of these features.39

Comment: If only the hydraulics of the fully self-contained internal prosthesis had to be tested, why was it necessary to put the prototype in the patient at all? It would seem to me that the hydraulics could have been tested for workability just as well by manipulating the prototype externally of a patient. Moreover, it seems to me that the board's requirement for "testing of an implantable medical device under actual use conditions or testing under conditions that closely simulate actual use conditions for an appropriate period of time"40 is far closer to the spirit (or general thrust) of the prior opinions on the subject (particularly the prior board opinions) than the court's acceptance of such an unrealistic "testing" of the prototype prosthetic.41 After all, the whole point of the requirement for testing is that a thing that looks like it will work frequently does not work in practice -- or works for less than the period of time for which it will have to work in practice.42 However, the opinion does contain a useful collection of the cases on the subject of the adequacy of an alleged actual reduction to practice,43 even if it did not follow them.

III. Interference Procedure

A. The Board Did Not Abuse Its Discretion in Granting Summary Judgment
Against a Junior Party That Did Not File a Timely Preliminary Statement
Despite the Fact That the Examiner-In-Chief Did Not Issue a 37 CFR 1.640(d)(2)
Show Cause Order First

37 CFR 1.640(d) provides, in relevant part, that:

An examiner-in-chief may issue an order to show cause why judgment should not be entered against the party when:

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(2) The party is a junior party who fails to file a preliminary statement . . . . [Emphasis supplied.]


However, in Abrutyn v. Giovanniello, 15 F.3d 1048, 29 USPQ2d 1615 (Fed. Cir. 1994) (opinion delivered by Circuit Judge Michel for a panel that also consisted of Circuit Judge Archer and Circuit Judge Schall), the court found no abuse of discretion in the board's simply having entered default judgment in two related interferences against a junior party that did not file a timely preliminary statement despite the facts (1) that the junior party had a reasonably good excuse for not having filed a timely preliminary statement and (2) the Commissioner, appearing as an amicus, asked the court to reverse the board's decision!44

The junior party Abrutyn et al. was a patentee. Prior to declaration of the interference, the Abrutyn et al. patent had been assigned (via two mesne assignments) to the Somerville Technology Group ("STG"). However, the mesne assignments had not been recorded. Accordingly, when the interference was declared, the notice was mailed to the attorney for the first owner of the Abrutyn et al. patent. The attorney for the first owner initially designated himself as lead attorney for the part Abrutyn et al., but he subsequently filed a motion for leave to withdraw as lead attorney (since he did not represent the new owner of the patent). In the motion, he asked the examiner-in-chief to "provide [STG], the new owner of the . . . [Abrutyn et al.] patent[,] additional time for designating its Lead Attorney."45 However, although the examiner-in-chief granted motion for leave to withdraw, he denied the request that the new owner of the patent be given additional time to designate its own lead attorney.

The preliminary statements were due on October 14, 1992. On October 19, 1992, STG recorded the second of the two mesne assignments -- which, according to the court, meant that, "by October 19[,] STG, as the assignee of record, had standing under PTO rules by [sic; to] file papers in the two interferences,"46 Of course, by then the deadline for filing preliminary statements had passed, and, on December 18, 1992, the board entered final judgments against the party Abrutyn et al. in both interferences.

What makes this case interesting is that the examiner-in-chief did not follow the normal procedure of issuing a show cause order under 37 CFR 1.640(d)(2). If he or she47 had done so, STG could have responded to the show cause order by filing a 37 CFR 1.645(b)/1.635 motion for leave to file its preliminary statement belatedly48 and/or a request for final hearing at which, according to the court, it could have "raise[d] the new issue of its ownership [of the Abrutyn et al. patent], as permitted under 37 CFR §1.655(b) (1993)."49 Instead, the board simply moved directly to the entry of default judgment against the party Abrutyn et al.

On appeal, the court first examined the question of what its standard of review should be. According to the court, "the Board or [an] EIC may impose an appropriate sanction, including granting judgment in an interference, against a party who fails to comply with the rules governing interferences, including filing deadlines."50 The court then said that "A board decision pursuant to the permissive rules governing an interference is reviewed for abuse of discretion."51 It concluded from this that it would "review the Board's decision to enter the December 18 default judgment for an abuse of discretion."52

Next, the court dealt with STG's argument that the board had "acted in inappropriate haste in granting judgment on the interference without . . . first allowing all interested parties a chance to take action."53 It acknowledged that STG was "correct in its asserting that it was not permitted to communicate with the EIC before the October 14 deadline."54 However, it faulted STG (or, realistically speaking, STG's attorneys) for failing to take action promptly to remedy the chain-of-title problem despite the fact that "STG had actual notice of the interference early in the proceedings."55 In addition, although STG did not correct its chain-of-title problem until after its preliminary statement was due, because it did so "near two months . . . [before the board entered judgment], STG had ample time to protect its rights."56 According to the court, "An EIC has broad discretion [under 37 CFR 1.645(b)] to consider late filings submitted with a motion showing sufficient cause for delay,"57 and "STG could have filed a preliminary statement with a Rule 1.645(b) motion, but it did not."58 Accordingly, STG was entitled to no sympathy:

We cannot say that the Board abused its discretion in entering judgement for Giovanniello in the face of STG's unexplained inaction for two months after becoming the assignee of record.59

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It was STG's responsibility to act diligently to protect its rights in an interference proceeding.60

The court therefore concluded that it was not an abuse of discretion for the board to enter summary judgment against the party Abrutyn et al. without the examiner-in-chief's having previously issued the party Abrutyn et al. a show cause order.

Comments: While 37 CFR 1.640(d) is certainly a "permissive rule[]," the court does not seem to have appreciated what is permissive about it. The "may" in 37 CFR 1.640(d) has indeed been relied upon to permit the examiners-in-chief not to issue a show cause order in circumstances where it would have been appropriate to do so. However, it has been relied upon in order to permit the party against which the show cause order might have been issued to submit evidence in support of a request for a judgment against the other party.61 To the best of the author's knowledge, the "may" in 37 CFR 1.640(d) has only been relied upon to permit the board to enter summary judgment immediately without giving the junior party (i.e., the party against which the show cause order might have been issued) the opportunity to show why judgment should not be entered against it in cases where the junior party had taken absolutely no action (i.e., there is every indication that the junior party is perfectly willing to lose by a default judgment). That is, the "may" has been used to give parties in the position of the party Abrutyn et al. a break, not to hammer parties in the position of the party Abrutyn et al.!

On the merits, there are two "take home lessons" here. First, record assignments promptly, so that you don't get into the position that STG was in. Second, once you are in an interference, move promptly! As the court obviously felt, STG's lackadaisical attitude toward the whole thing was inexcusable.

B. The Burden of Proof as to Priority Issues on a Junior Party Applicant
Whose Effective Filing Date is Before a Senior Party Patentee's Issue Date
is the Preponderance of the Evidence, Not Clear and Convincing Evidence

In Bosies v. Benedict, 27 F.3d 539, 30 USPQ2d 1862 (Fed. Cir. 1994) (opinion delivered by Circuit Judge Lourie for a panel that also consisted of Chief Circuit Judge Archer and Circuit Judge Plager), the court undid most of the potential harm that might have been caused by its opinion in Price v. Symsek, 988 F.2d 1187, 26 USPQ2d 1031 (Fed. Cir. 1993).62 In Bosies, the party Benedict was a junior party applicant, and the party Bosies was a senior party patentee. Not surprisingly, the party Bosies argued that the party Benedict had to prove its priority case by clear and convincing evidence -- relying on the court's unfortunate dicta in Price. Fortunately, however, the court limited Price to situations where the junior party applicant's filing date is after the senior party patentee's issue date:

It is well-settled that where an interference is between a patent that issued on an application that was copending with an interfering application, the applicable standard of proof is preponderance of the evidence. See Peeler v. Miller, 535 F.2d 647, 651 n. 5, 190 USPQ 117, 120 n. 5 (CCPA 1976); Linkow v. Linkow, 517 F.2d 1370, 1373, 186 USPQ 223, 225 (CCPA 1975); Frilette v. Kimberlin, 412 F.2d 1390, 1391, 162 USPQ 148, 149 (CCPA 1969), cert. denied, 396 U.S. 1002 (1970). Bosies' reliance on Price v. Symsek, 988 F.2d 1187, 26 USPQ2d 1031 (Fed Cir. 1993), for the contrary proposition [sic; for the proposition that, where an interference is between a patent and an application, the applicant's burden of proof as to priority issues is clear and convincing evidence] is inapposite, as that inference did not involve an application and a patent which before issuance had been copending with the application, but an application which was filed for purposes of provoking an interference after issuance of a patent. The court held that under those facts the applicant was required to prove prior invention by clear and convincing evidence. 988 F.2d at 1194, 26 USPQ2d at 1033.63

Comment: Prior to Price it was equally well-settled that, when an interference is between an application and a patent that issued before the filing date or effective filing date of the application, the applicable standard of proof was beyond a reasonable doubt. However, this panel of the court apparently had more regard for precedent than the panel of the court that decided Price.

C. No Adverse Inference Can Be Drawn From a Senior Party's Failure
to Cross-Examine a Junior Party or Put On Rebuttal Evidence

Bosies v. Benedict, 27 F.3d 539, 30 USPQ2d 1862 (Fed. Cir. 1994) (opinion delivered by Circuit Judge Lourie for a penal that also consisted of Chief Circuit Judge Archer and Circuit Judge Plager), dealt with a common situation: your opponent has arguably failed to prove an essential element of its case. Do you cross-examine in an attempt to establish beyond doubt that your opponent did not prove that element because it could not prove that element, or do you let well enough alone and hope that the board will agree that your opponent failed to prove its case? The instinct of any trial lawyer in this situation is to remain silent -- but the board has been holding that adverse inferences can be drawn from the failure to cross-examine or put on rebuttal evidence in such situations. However, Bosies should put an end to that.

In Bosies, the court said that, "In accepting . . . [the] testimony [of Sunberg, a corroborating witness] as dispositive of the meaning of 'n,' the board reasoned that Bosies' failure to cross-examine Sunberg or otherwise present rebuttal testimony 'raises a strong presumption that [Sunberg's] testimony is accurate'."64 However, the court rejected the board's reasoning:

The board's reasoning was incorrect. "[N]o adverse inference can be drawn from a senior party's refraining from taking testimony, because [the senior party] has a right to stand on his position that the junior party failed to establish a prima facie case [of conception]." Linkow [Linkow v. Linkow, 517 F.2d 1370, 186 USPQ 223 (CCPA 1975)], 517 F.2d at 1374, 186 USPQ at 226. Bosies should have been entitled to argue against the sufficiency of Benedict's asserted writing without cross-examining a witness who was not one of the inventors.65

Comment: The court's reasoning should not be limited to senior parties! No adverse inference should be drawn from any party's refraining from cross-examining or submitting rebuttal evidence, because every party has the right to stand on its position that an opposing party failed to establish a prima facie case of conception.

Similarly, the court's reasoning should not be limited to issues of conception. What is said about conception is equally true of every other element that is a part of an opposing party's case.

D. You Can Allege Alternate Inventors of the Subject Matter of a Count
and Alternative Invention Dates in Your Preliminary Statement

Larson v. Johenning, 17 USPQ2d 1610 (PTOBPAI 1990), holds that not all inventors named in a patent or application in interference need be named as an inventor of the subject matter of the or a count and that an inventor named in a patent or application in interference who is not named as an inventor of the subject matter of the or a count can be used as a corroborating witness.66 That is all very well and good if it is clear who was or were the inventor(s) of the subject matter of a count, but suppose that, for one reason or another, you are in doubt as to which of the inventors named in your case in interference was or were the inventor(s) of the subject matter of a count? That is the question which is answered in Credle v. Bond, 25 F.3d 1566, 30 USPQ2d 1911 (Fed. Cir. 1994) (opinion delivered by Circuit Judge Clevenger for a panel that also consisted of Circuit Judge Lourie and Senior Circuit Judge Cowen).

The party Credle et al.'s application in interference and a Boone application were commonly assigned and disclosed closely related subject matter, but Boone was not a named inventor in the Credle et al. application67 and only the Credle et al. application was put into interference.68 The filing dates of the Credle et al., Boone, and Bond application were as follows:

<span style="text-decoration: underline;">Coca-Cola Co.</span> <span style="text-decoration: underline;">Liqui-Box Corp.</span><p><br>Boone: Oct. 17, 1983 <br> Bond: March 29, 1984 <br>Credle et al.: May 18, 1984 </p>

The fun began when the party Credle et al. filed its preliminary statement. As stated by the court:

Credle [the court used the term "Credle" to refer the party Credle et al.] filed a preliminary statement . . . which set forth, inter alia, two distinct, non overlapping6 sets of dates for the activities specified in §1.623(a)(1)-(6).7 One set of dates solely concerned Credle's activities; the other set solely concerned Boone's independent activities.
6The two sets of dates were non-overlapping in that the latest date alleged for any of Boone's § 1.623(a) inventive activities predated the earliest date alleged for any of Credle's § 1.623(a) activities.
7§ 1.623(a) activities consist of the first drawing of the invention; the first written description thereof; the first disclosure thereof by the inventor to another person; conception of the invention by the inventor; actual or constructive reduction to practice thereof [sic; actually, 37 CFR 1.623(a)(5) only requires assertion of "The date on which the invention was first actually reduced to practice"; emphasis supplied]; and the beginning of reasonable diligence towards reduction to practice.69


Remember, Boone was not a named inventor in the Credle et al. application! However, the party Credle et al.'s preliminary statement stated that "The invention of Count 1 . . . was made by William S. Credle, Jr. and Debra C. Boone in this country [the United States], "70 and the party Credle et al. filed concurrently with its preliminary statement a 37 CFR 1.634(a) motion (which the court incorrectly referred to as "a preliminary motion"71) to correct the inventorship of the Credle et al. application by adding Boone as a named joint inventor. In addition, the party Credle et al. filed several preliminary motions, one of which was a 37 CFR 1.633(f) motion for the benefit of the filing date of the Boone application. Of concern here, the examiner-in-chief granted the 37 CFR 1.634 motion,72 but he or she73 denied the 37 CFR 1.633(f) motion. Later, after the close of the testimony periods, the party Credle et al. filed an additional 37 CFR 1.634(a) motion to add an additional joint inventor (Tomic) and a 37 CFR 1.635/1.628(a):

motion for leave to file a corrected preliminary statement that included, in addition to the allegations in the original preliminary statement, a discrete set of dates for Tomic's individual inventive activities, and the inventorship statement: "The invention of Count 1 . . . was made by William S. Credle, Jr., Debra C. Boone and Mladomir Tomic in this country [the United States]."74


The court noted (for reasons that will become apparently later) that:

Tomic's set of dates overlapped with those of the other alleged inventors only to the extent that Boone and Tomic were each alleged to have actually reduced the invention defined by the count to practice "on or after May 18, 1983 and before June 3, 1983." Boone's alleged § 1.623(a) dates otherwise predated those of tomic.75

Not surprisingly, the examiner-in-chief deferred decision on those motions to final hearing. At final hearing, the board did four things that are relevant here. First, it affirmed the denial of the party Credle et al.'s 37 CFR 1.633(f) motion for the benefit of Boone's filing date. Second, it ruled that, because the party Credle et al.'s original preliminary statement was "at best confusing and indefinite in setting out separate dates for each named inventor with respect to the critical inventive acts of conception and actual reduction to practice . . . "76 and because "Any doubt as to whether Credle is alleging joint or independent invention of the subject matter of the count shall be resolved against the party Credle,"77 the party Credle et al. was restricted to the latest date of each period alleged.78 Third, it dismissed the party Credle et al.'s 37 CFR 1.634(a) motion to add Tomic as a named joint inventor and its 37 CFR 1.635/1.628(a) for leave to file a corrected preliminary statement on the ground that "the corrected preliminary statement 'suffer[ed] from the same shortcomings ' as did Credle's original preliminary statement."79 Fourth, because (1) the party Credle et al. did not allege diligence and (2) Credle's alleged actual reduction to practice date (as opposed to Boone's alleged actual reduction to practice date) was after the party Bond's filing date, the board entered judgment for the party Bond.80

In responding to the party Credle et al.'s request for reconsideration, the board "rejected Credle's argument that his original preliminary statement was 'in effect a pleading in the alternative dependent upon a decision by the EIC on the motion to [correct inventorship by] add[ing] Boone as an inventor . . . ' " 81

On appeal, the party Credle et al. explained that:

the reason he included two separate sets of dates in his original preliminary statement was because of the then pending motion to correct inventorship of his application under §§ 1.48, 1.634(a), by adding Boone as a joint inventor.82


That is, if its first 37 CFR 1.634(a) motion had been denied, and if that denial had been upheld at final hearing, the party Credle et al. would have had to rely on Credle's invention dates. However, if its first 37 CFR 1.634(a) motion was granted (as it was), the party Credle et al. wanted to rely on Boone's invention dates.

The party Credle et al. also contended that:

the Board confused his motion to correct inventorship of the application under §§1.48, 1.634(a), by adding Boone as a joint inventor of the application, with his . . . alternative assertion in his original preliminary statement that either Credle alone, or Boone alone, solely invented the subject matter of the count, depending on the interpretation given to the actual language of the count. Indeed, according to Credle at oral argument, "with respect to joint invention, we have never said on the record that as far as the count per se is concerned, that Boone and Credle jointly invented the count."16
16Instead, Credle asserted that he had only advocated that the invention defined by the count had been invented by Boone as a sole inventor, or alternatively, by Credle as a sole inventor.83


The court agreed with the party Credle et al.:

The Board's conclusion that Credle's original preliminary statement is indefinite rests on the proposition that the preliminary statement averred joint inventorship.84 [However,] Credle's original preliminary statement clearly asserted two entirely separate, non overlapping sets of dates for both Credle and Boone.85


The court's holding (found, oddly enough, in a footnote) is that:

A preliminary statement's inventorship statement under § 1.622(a) that two persons are alternatively sole inventors of the invention defined by the count is not inconsistent with the legal requirement that there by only one true inventive entity of an invention. The inventorship statement is merely an allegation subject to later proof.86

Accordingly, the court remanded the case to the board for further proceedings not inconsistent with its opinion. Thus, the party Credle et al. will be able to reply upon Boone's invention dates -- which, of course, may or may not mean that the party Credle et al. will ultimately be able to prevail in the interference.

Comment: It is now blessedly clear that a interferent can allege alternative inventive entities of the subject matter of a count and alternative dates for the alternative inventive entities. The party Credle et al.'s fundamental problem was that it was exceedingly unclear about what it was doing. However, that should not be a problem for subsequent interferents, who will simply have to be clearer about exactly what it is they are trying to accomplish.

It should also be noted that Credle v. Bond is not a license to join in a single case independent inventors who did not collaborate in making the invention defined by a count even if the independent inventors work for the same company. As the court said:

joint inventors[hip] . . . necessarily requires some degree of collaboration. Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., 973 F.2d 911, 915-917, 23 USPQ2d 1921, 1924-26 (Fed. Cir. 1992).*** [W]here the sets of dates alleged define distinct, non-overlapping periods, the allegation that the inventors are joint is facially inconsistent with the two distinct periods, because a person who first conceived and first reduced the subject matter of the invention to practice cannot, under the law, be a joint inventor with a person who allegedly did not even conceive the invention until after the former's reduction to practice. Collaboration under such circumstances simply is not possible. Consequently, Credle and Boone cannot be joint inventors of the subject matter of the count.87


IV. Post-Interference Practice

A. New Issues Can be Raised in a Section 146 Action
Only in "Compelling Circumstances"

The majority opinion in Conservolite, Inc. v. Widmayer, 21 F.3d 1098, 30 USPQ2d 1626 (Fed. Cir. 1994) (majority opinion delivered by Circuit Judge Lourie for himself and Chief Circuit Judge Archer; dissent delivered by Circuit Judge Newman), substantially tightened up the standards for introducing a new issue in a 35 USC 146 action, holding that "the right to raise . . . [new] issues [in a § 146 action] is limited to compelling circumstances . . . ."88 However, the majority's explanation of what the new issue was is so confused that the court's opinion may have limited precedential value!

The party Widmayer was an applicant that had copied five claims in ipsis verbis from the party Hess's patent.89 The primary examiner allowed those claims to Widmayer, subject to the outcome of an interference, and an examiner-in-chief thereafter declared an interference with one count, which as identical to a claim in each party's case in interference. According to the majority's opinion, "The interference was declared . . . with one count; claim 1 of the '569 patent [i.e., the party Hess's patent] and claim 8 of the '830 application [i.e., the party Widmayer's application] were designated to correspond exactly to the count."90

The board entered judgment for the party Widmayer,91 "finding that Widmayer reduced the invention to practice prior to Hess; that Widmayer had not abandoned, suppressed, or concealed the invention; and that Hess derived the invention from Widmayer."92 The assignee of the party Hess then brought a § 146 action against the party Widmayer, which was an unassigned pro se inventor who represented himself in the district court (but not on appeal to the Federal Circuit).

In the § 146 action, the district court:

found that "Widmayer did reduce to practice the invention named in the account [sic] of the interference proceeding," that "Widmayer's reduction to practice came first," and that "Widmayer did not abandon, conceal, or suppress [] his invention." The court opined that if the inventions of Widmayer and Hess had been "sufficiently similar," Hess would have derived the invention from Widmayer. However, relying upon testimony given during trial by an expert witness, the court found that the invention reduced to practice by Widmayer was not "sufficiently similar to the invention described in the count." Based on this finding, the court awarded priority of invention to Conservolite.93


Although the district court's language quoted by the Federal Circuit is somewhat confused, what the district court apparently did was to hold that the party Widmayer's reduction to practice was outside the scope of the count and that, accordingly, the party Widmayer could not rely on the date of its actual reduction to produce as its invention date.94 On appeal to the Federal Circuit, however, both the majority and the dissent hopelessly confused the difference between (a) a 37 CFR 1.633(b) motion for a judgment that there is no interference in fact and (b) an argument that a party's priority evidence is outside the scope of the count.

The majority held that the district court erred in considering the issue that it found dispositive because:

The issues [sic; the issue] presented by the parties were not raised during the interference; therefore, they were not properly before the district court.95

***

Section 146 authorizes the district court on review to accept new testimony, but normally only as to issues raised by the parties during the proceedings below or by the Board's decision. Case v. CPC Int'l, Inc., 730 F.2d 745, 752, 221 USPQ 196, 202 (Fed. Cir.), cert. denied, 469 U.S. 872, 224 USPQ 736 (1984).96

***

Also, we do not hereby hold that [as asserted by the dissent] no new issues can be raised in an action under § 146, only that the right to raise such issues is limited to compelling circumstance, which have not been shown to exist here.97


However, the majority based its holdings on the party Hess's failure to file a 37 CFR 1.633(b) motion for a judgment that there was no interference despite the fact that 37 CFR 1.633(b) expressly says that:

A motion under this paragraph is proper only if: (1) The interference involves a design application or patent or a plant application or patent [which was not the case here!] or (2) no claim of a party which corresponds to a count is identical to any claim of an opponent which corresponds to that count.

Remember, the two parties had five identical claims! Thus, if the party Hess had filed a 37 CFR 1.633(b) motion, the motion would have been denied out of hand. What Conservolite did argue in the district court was the same thing that it had argued (unsuccessfully) to the board -- namely, that the party Widmayer's alleged actual reduction to practice outside of the scope of the count and that, accordingly, the party Widmayer could not rely on that actual reduction to practice for priority purposes.98 That was an issue that cannot be raised by way of a preliminary motion, 99 and it was an issue that the party Hess had raised before the board and was entitled to raise again in the § 146 action -- even under the majority's strict interpretation of 35 USC 146.

Comment: Notwithstanding the hash that it made of the specific case before it, the court's opinion is a welcome clarification of the exceedingly vague language in General Instrument Corp. v. Scientific Atlanta, Inc., 995 F.2d 209, 27 USPQ2d 1145 (Fed. Cir. 1993),100 its previous interpretation of when one can raise a new issue in a § 146 action.

First published in the Journal of the Patent and Trademark Office Society, volume 77 (1995), pages 427-49.

*.Copyright 1994 by Charles L. Gholz; Oblon, Spivak, McClelland, Maier & Neustadt, P.C.; Arlington, Virginia. Portions of this article have been published previously by Patent Resources Groups, Inc. in the chapter entitled "Interferences" of the materials for PRG's twice-a-year programs on Federal Circuit Patent Law.


Endnotes


[1].Partner in Oblon, Spivak, McClelland, Maier & Neustadt, P.C.; Arlington, Virginia.

[2].Federal Circuit Rule 47.8 divides the opinions and orders of the court into those that are "precedential" (i.e., those that may be cited to the court as precedent) and those that are "non-precedential" (i.e., those that may not be cited to the court as precedent). Only the former are discussed in this article.

[3].See also the author's previous articles by the same title at 75 JPTOS 448 (1993), 73 JPTOS 700 (1991), 71 JPTOS 439 (1989), and 69 JPTOS 657 (1987).

[4].27 F.3d 539, 30 USPQ2d 1862 (Fed. Cir. 1994).

[5].988 F.2d 1187, 26 USPQ2d 1031 (Fed. Cir. 1993).

[6].25 F.3d 1566, 30 USPQ2d 1911 (Fed. Cir. 1994).

[7].34 F.3d 1058, 32 USPQ2d 1115 (Fed. Cir. 1994).

[8].21 F.3d at 415, 30 USPQ2d at 1358.

[9].Although the opinion does not say so, the Sewall et al. application was probably filed under 37 CFR 1.47(a), since the court "note[d] that the record is devoid of any evidence that Walters ever represented or acquiesced that Sewall is a joint inventor." 21 F.3d at 417, 30 USPQ2d at 1360.

[10].21 F.3d at 413, 30 USPQ2d at 1357.

[11].21 F.3d at 414, 30 USPQ2d at 1358.

[12].21 F.3d at 414, 30 USPQ2d at 1358.

[13].21 F.3d at 415, 30 USPQ2d at 1358; emphasis in the original.

[14].21 F.3d at 415, 30 USPQ2d at 1358-59; footnote omitted.

[15].21 F.3d at 416, 30 USPQ2d at 1359.

[16].21 F.3d at 416, 30 USPQ2d at 1359.

[17].21 F.3d at 416, 30 USPQ2d at 1359.

[18].21 F.3d at 416, 30 USPQ2d at 1359.

[19].37 CFR 1.633 reads in relevant part as follows:

A party may file the following preliminary motions:

***

(c) A motion to redefine the interfering subject matter by . . . (5) requiring an opponent who is an applicant to add a claim and to designate the claim to correspond to a count.


[20].37 CFR 1.633 reads in relevant part as follows:

A party may file the following preliminary motions:

***

(c) A motion to redefine the interfering subject matter by (1) adding . . . a count . . .


[21].The party Walters might have declined to present the claim so on the ground that Dr. Walters was not the inventor of any claim limited to the hardware implementation.

[22].See 37 CFR 1.637(c)(1), which reads in relevant part as follows:

A preliminary motion seeking to add . . . a count shall:
(v) Show that each proposed count defines a separate patentable invention from every other count in the interference.


[23].See 37 CFR 1.633(c)(1), which reads in relevant part as follows:

A motion to redefine the interfering subject matter by *** (4) designating an application . . . claim as not corresponding to a count . . .


[24].See 37 CFR 1.647(c)(4), which reads in relevant part as follows:

A preliminary motion seeking to designate an application . . . claim as not corresponding to a count shall:

***

(iii) Show [that] the claims does not define the same patentable invention as any other claim designated in the notice declaring the interference as corresponding to the count.


[25].Count 1 recited compounds. Counts 2 and 3 both depended from count 1 and recited, respectively, a pharmaceutical composition containing an effective amount of the compounds and a method of treating a medical problem comprising administering an effective amount of the compounds.

[26].27 F.3d at 540, 30 USPQ2d at 1863.

[27].27 F.3d at 541, 30 USPQ2d at 1864.

[28].27 F.3d at 542, 30 USPQ2d at 1865; emphasis supplied; interpolations supplied.

[29].27 F.3d at 542-43, 30 USPQ2d at 1865.

[30].27 F.3d at 540, 30 USPQ2d at 1863.

[31].Hunt v. Treppschuh, 523 F.2d 1386, 1389, 187 USPQ 426, 429 (CCPA 1975); and Hoffman v. Schoenwald, 15 USPQ2d 1512, 1514 (PTOBPAI 1990) ("Conception of a species within the genus constitutes conception of the genus for priority of invention purposes").

[32].27 F.3d at 541, 30 USPQ2d at 1864.

[33].27 F.3d at 542, 30 USPQ2d at 1865.

[34].27 F.3d at 541, 30 USPQ2d at 1864.

[35].But see Coleman v. Dines, 754 F.2d 353, 228 USPQ 857 (Fed. Cir. 1985), which could be used as the basis of a contrary argument.

[36].34 F.3d at 1060, 32 USPQ2d at 1117.

[37].34 F.3d at 1059, 32 USPQ2d at 1116.

[38].34 F.3d at 1061, 32 USPQ2d at 1117, citing Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d at 1367, 1376, 231 USPQ 81, 87 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987).

[39].34 F.3d at 1063, 32 USPQ 2d at 1120.

[40].34 F.3d at 1060-61, 32 USPQ2d at 1117, quoting the board's opinion.

[41].In recent years the court's standards for an actual reduction to practice have been far lower than the board's standards for an actual reduction to practice.

[42].Compare Judge Nies's post-Scott statement in her dissent in Rogers v. Baxter International Inc., ______ F.3d_____, _____ USPQ2d _____ (Fed. Cir. 1994) (non-precedential):

The patented apparatus' nature as a medical device, having the potential for serious health implications if it fails to function properly, is not the type of "simple" device contemplated by some of our precedent where a reduction to practice may exist without any testing. See King Instrument Corp. v. Otari Corp., 767 F.2d 853, 861, 226 USPQ 402, 407 (Fed. Cir. 1985), cert. denied, 475 U.S. 1016 (1986). Rather, the test for an actual reduction to practice of this type of apparatus is that an embodiment containing all elements of the claim must be tested sufficiently to demonstrate that it will actually work for its intended purpose. See Newkirk v. Lulejian, 825 F.2d 1581, 1582, 3 USPQ2d 1793, 1794 (Fed. Cir. 1987); and Kimberly-Clark v. Johnson & Johnson, 745 F.2d 1437, 1445, 223 USPQ 603, 607 (Fed. Cir. 1984).


[43].Interestingly, however, the court did not cite DSL Dynamic Sciences Ltd. v Union Switch & Signal, Inc., 928 F.2d 1122, 18 USPQ2d 1152 (Fed. Cir. 1991), discussed in Gholz, A Critique of Recent Opinions of the Federal Circuit in Patent Interferences, 75 JPTOS 448 (1993) at pages 450-54, which is the court's most recent treatment of this subject and which arguably supports its holding in Scott v. Finney better than any of the older cases which it did cite.

[44].According to the court, what the Commissioner asked was "that these interferences be remanded so that the Board may vacate its default judgment and proceed with the interferences on the merits. According to the Commissioner, the Board would now decide this case differently . . . " 15 F.3d at 1052, 29 USPQ2d at 1618. However, as the court properly pointed out, the board had entered a judgment, and, "absent a determination that the Board abused its discretion in entering the default judgment . . . [, the court could not] properly vacate the Board's judgement and remand these interferences simply because the Board may have [had] a change of heart." 15 F.3d at 1052, 29 USPQ2d at 1618-19. Moreover, one can well wonder whether the board had indeed had a change of heart. It seems far more likely that the Solicitor, who now routinely reviews briefs on appeal to the Federal Circuit from decisions of the board in interferences, simply disagreed with the board's decision and proposed to order the board to vacate its previous judgment. If so, the question of whether the Solicitor (acting in the name of the Commissioner) has the authority to order the board to vacate its judgment would indeed be an interesting one. See generally Dunner & Gholz, Court of Appeals for the Federal Circuit: Practice and Procedure ¶ 2.02[b], "Discretion of the Boards re Reconsideration."

[45].15 F.3d at 1050, 29 USPQ2d at 1617; first interpolation by the court; second and third interpolations supplied.

[46].15 F.3d at 1050, 29 USPQ2d at 1617; both interpolations supplied.

[47].For some reason, the court does not give the names of involved administrative patent judges, although it always gives the names of involved district court judges.

[48].37 CFR 1.645(b) provides in relevant part that "Any paper belatedly filed, will not be considered except upon motion (§ 1.635) which shows sufficient cause why the paper was not timely filed."

[49].15 F.3d at 1052, 29 USPQ2d at 1618. The court's indication that one can "raise the . . . issue of . . . ownership . . . " at final hearing seem curious in view of the court's recent opinions in Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 26 USPQ2d 1572 (Fed. Cir. 1993), and Cedars-Sinai Medical Center v. Watkins, 11 F.3d 1573, 29 USPQ2d 1189 (Fed. Cir. 1993), discussed at Gholz, A Critique of Recent Opinions of the Federal Circuit in Patent Interferences, 76 JPTOS 649, 677-80, and 681-85 (1994). However, the facts of this case are so different from the facts of the two earlier cases that the court's off-hand statement quoted above probably does not call into question its prior statements in Beech and Cedars-Sinai.

[50].15 F.3d at 1050, 29 USPQ2d at 1617; emphasis supplied.

[51].15 F.3d at 1050, 29 USPQ2d at 1617, citing Gerritsen v. Shirai, 979 F.2d 1524, 1527-28, 24 USPQ2d 1912, 1915-16 (Fed. Cir. 1992).

[52].15 F.3d at 1050, 29 USPQ2d at 1617.

[53].15 F.3d at 1051, 29 USPQ2d at 1617.

[54].15 F.3d at 1051, 29 USPQ2d at 1617. As explained elsewhere in the opinion,

Because PTO records still indicated Wicken as the assignee, under the PTO rules STG was a non-party and the EIC could not 'communicate' with a non-party by granting STG an extension of time. Because the assignment of the Abrutyn patent from Wicken to Dow had not been effectively recorded in the PTO and because STG's attorneys were not of record, STG could not officially participate in the interferences until the situation was rectified.

15 F.3d at 1050, 29 USPQ at 1617.

[55].15 F.3d at 1051, 29 USPQ2d at 1618.

[56].15 F.3d at 1051, 29 USPQ2d at 1618.

[57].15 F.3d at 1051, 29 USPQ2d at 1618.

[58].15 F.3d at 1051, 29 USPQ3d at 1618. That is, the party Abrutyn et al. could have filed its preliminary statement accompanied by a 37 CFR 1.645(b)/1.635 motion as soon as it had corrected its chain-of-title problem, instead of waiting to file it in response to a 37 CFR 1.640(d)(2) show cause order.

[59].15 F.3d at 1051, 29 USPQ2d at 1618.

[60].15 F.3d at 1052, 29 USPQ3d at 1618.

[61].This practice is consistent with the strong public policy in favor of deciding "all issues that are fully and fairly raised during . . . interference proceeding[s], whether related to patentability or priority . . . " Perkins v. Kwon, 886 F.2d 325, 328, 12 USP2d 1308, 1310 (Fed. Cir. 1989) (emphasis supplied).

[62].See the vehement criticism of Price v. Symsek in Gholz, A Critique of Recent Opinions of the Federal Circuit in Patent Interferences, 76 JPTOS 649, 665-67 (1994).

[63].27 F.3d at 541-52, 30 USPQ2d at 1864, footnote omitted.

[64].27 F.3d at 543, 30 USPQ2d at 1865; first interpolation supplied; second interpolation by the court.

[65].27 F.3d at 543, 30 USPQ2d at 1865; first and second interpolations by the court; third interpolation supplied.

[66].Larson also holds that there is a presumption that every individual named as a joint inventor in a patent or application in interference is a joint inventor of the subject matter of every count and that an interferent that wants to use a named inventor as a corroborating witness with respect to a count has the burden or proving that the individual was not a joint inventor of the subject matter of that count.

[67].The opinion does not indicate who the "et al." in Credle et al. was or were, but it is important to note that it was not or did not include Boone.

[68].The court apparently found this surprising, noting that, "For reasons unstated on the record before this court, Boone was not independently declared a party to the interference based on her '322 application." 25 F.3d at 1568, 30 USPQ2d at 1912. The reason for what the court found so surprising can presumably be found in MPEP 2302, which states that:

Where applications by different inventive entities but of common ownership claim the same subject matter or subject matter that is not patentably different:

***

II. Where an interference with a third party is found to exist, the commonly-owned application having the earliest effective filing date will be placed in interference with the third party.

Since Boone's filing date was before Credle et al.'s filing date, it is inferable that the examiner concluded that Boone did not claim the same patentable invention as Bond within the meaning of 37 CFR 1.601(n) -- i.e., that the Credle et al. and the bond application interfered, but that the Boone application and the bond application did not interfere.

[69].25 F.3d at 1568, 30 USPQ2d at 1912. The reason that the court emphasized that the two sets of dates were non-overlapping will become apparent later.

[70].25 F.3d at 1568, 30 USPQ3d at 1913; interpolation by the court. Note that, whoever the "et al." was, the party Credle et al. did not allege that he, she, or they was or were inventor(s) of the subject matter of the count. That is, pursuant to Larson, the party Credle et al. alleged that, of the inventors named in the Credle et al. application, only Credle was the inventor of the subject matter of the count.

[71].25 F.2d at 1568, 30 USPQ2d at 1913.

[72].The propriety of the grant of that motion was apparently not an issue at final hearing. In any event, it was not an issue on appeal to the Federal Circuit.

[73].For some reason, the court does not give the names of involved examiners-in-chief (or, as they are now known, administrative patent judges) although it does not routinely give the names of involved district court judges.

[74].25 F.3d at 1569, 30 USPQ2d at 1913, interpolation by the court.

[75].25 F.3d at 1569, 30 USPQ2d at 1913.

[76].25 F.3d at 1570, 30 USPQ2d at 1914.

[77].25 F.3d at 1570, 30 USPQ2d at 1914.

[78].Cf. Lawson v. Enloe, 26 USPQ2d 1594 (PTOBPAI 1991), which contains a similar holding on somewhat different facts.

[79].25 F.3d at 1570, 30 USPQ2d at 1914; interpolation by the court.

[80].The court stated that "Bond was awarded priority." 25 F.3d at 1570, 30 USPQ2d at 1914; footnote omitted. However, the board has been entering judgments, not awarding priority, since the new rules came into effect in 1985!

[81].25 F.3d at 1570, 30 USPQ2d at 1914; interpolations by the court.

[82].25 F.3d at 1573, 30 USPQ2d at 1917.

[83].25 F.3d at 1573, 30 USPQ2d at 1917; emphasis by the court.

[84].25 F.3d at 1574, 30 USPQ2d at 1917.

[85].25 F.3d at 1574 USPQ2d at 1917; footnote omitted.

[86].25 F.3d at 1575 n. 19, 30 USPQ2d at 1918 n. 19.

[87].25 F.3d at 1574, 30 USPQ2d at 1918; footnote omitted.

[88].21 F.3d at 1103, 30 USPQ2d at 1630.

[89].According to the majority's opinion, "Widmayer amended his application to add claims 8-12, which were the same as claims 1-5 of the '569 patent [i.e., the party Hess's patent]." 21 F.3d at 1099-1100 n. 1, 30 USPQ2d at 1627 n. 1.

[90].21 F.3d at 1100, 30 USPQ2d at 1627. Of course, as any interference practitioner will recognize, those claims were not "designated to correspond exactly to the count"! Rather, the party Hess's claims 1-5 were designated as corresponding to the count, the party Widmayer's claims 8-12 were designated as corresponding to the count, and in fact the party Hess's claim 1 and the party Widmayer's claim 8 did correspond exactly to the count. However, there was no reason for the examiner-in-chief to indicate in the declaration of the interference whether or not any claim of either party "correspond[ed] exactly to the count."

[91].Unaccountably, the majority referred to that action as "award[ing] priority of invention to Widmayer," 21 F.3d at 1100, 30 USPQ2d at 1627, despite the fact that the board has been entering judgments rather than awarding priority since 1985!

[92].21 F.3d at 1100, 30 USPQ2d at 1627.

[93].21 F.3d at 1100, 30 USPQ2d at 1627; interpolations by the court.

[94].See, e.g., Newkirk v. Lulejian, 825 F.2d 1581, 1582-83, 3 USPQ2d 1793, 1794 (Fed. Cir. 1987; Correge v. Murphy, 705 F.2d 1326, 1329, 217 USPQ 753, 755 (Fed. Cir. 1983); Wetmore v. Quick, 537 F.2d 937, 190 USPQ 223 (CCPA 1976); and Szekely v. Metcalf, 455 F.2d 1393, 1396, 173 USPQ 116, 119 (CCPA 1972).

[95].21 F.3d at 1100, 30 USPQ2d at 1628; interpolation supplied.

[96].21 F.3d at 1102, 30 USPQ2d at 1629.

[97].21 F.3d at 1103, 30 USPQ2d at 1630.

[98].Counsel for Conservolite has confirmed that this was the case.

[99].As stated in 37 CFR 1.633(a):

A motion under this paragraph shall not be based on: (1) Priority of invention of the subject matter of a count by the moving party as against any opponent . . .

[100].See the author's discussion of the court's opinion in General Instrument in Gholz, "A Critique of Recent Opinions of the Federal Circuit in Patent Interferences," 76 JPTOS 649,672-77 (1994).