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

1993Journal of the Patent and Trademark Office Society, volume 75 (1993), pages 448-83

I. Introduction This article covers Federal Circuit precedential opinions[1] published since those covered in the author's previous article by the same title at 73 JPTOS 700 (1991) through December 31, 1992.[2]

The most welcome interference development of the year was the court's holding in In re Deckler that an interference judgment bars a party against which judgment was entered as to the or a count of an interference from obtaining or maintaining claims that are patentably indistinguishable from the lost count, thereby relegating In re McKellin to the status of a curious historical anomaly. On the other hand, the worst interference development of the year was the court's resurrection of the doctrine of ancillarity to priority in Kimberly-Clark Corp. v. Proctor & Gamble Distributing Co., in which it held (or, at least, said) that it reviewed the trial court's determination of an inequitable conduct charge in a patent-patent interference "because it is so closely intertwined with validity and priority, which are subject to review under Section 291, and [because?] inequitable conduct has otherwise been treated as ancillary to priority."

II. Substantive Interference Law

A. 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, DSL Dynamic Sciences Ltd. v. Union Switch & Signal, Inc., 928 F.2d 1122, 18 USPQ2d 1152 (Fed. Cir. 1991) (opinion delivered by Circuit Judge Rich for a panel that also consisted of Circuit Judges Plager and Clevenger), is a striking illustration of the maxim that an actual reduction to practice can be achieved by a device that is not yet in commercially acceptable condition.

This was an appeal in a 35 USC 146 quasi-de novo civil action to review the decision of the Board of Patent Appeals and Interferences in a patent-application interference. DSL's assignor (the party Schmid) was the patentee and the senior party. Union Switch's assignor (the party Blosnick) was the applicant and the junior party. The invention defined by the sole count was a "coupler mount assembly" used to attach equipment to a railway car coupler. The party Schmid stood on its September 1983 filing date,[1] and the party Blosnick relied on an asserted actual reduction to practice that had taken place in May 1983 on a caboose.[2]

Before the board, the party Schmid argued that the prototypes used by the party Blosnick in its asserted actual reduction to practice did not fall within the scope of the count and therefore were insufficient to reduce to practice the invention of the count. The board disagreed, and the party Schmid then filed a 35 USC 146 action. However, before the district court, the party Schmid entirely changed its theory of the case. It no longer contended that the prototypes were outside the scope of the count. Instead, it "argued that the tests were not performed in the intended environment of a coupler mount assembly, and therefore were not sufficient to establish reduction to practice."[3]

In support of its new theory, the party Schmid sought to rely on two categories of evidence not submitted to the board. First, the party Schmid offered the testimony of an expert witness[4] to the effect (1) "that the purpose of the equipment supported by a coupler mount assembly is to obviate the need for a caboose at the end of a train. . ."[5]; (2) "that, therefore, the coupler mount assemblies on the count would never in reality be attached to a caboose, but generally would be attached to the coupler of a freight car"[6]; and (3) "that the suspension system is much better on a caboose, which is intended to carry passengers, than that on a freight car, and that consequently while the devices tested by Union Switch in May of 1983 performed satisfactorily when attached to cabooses, those devices would have failed if attached to a freight car.[7] Second, the party Schmid offered the testimony of an employee of a railroad company that had subsequently bought coupler mount assemblies within the scope of the count from the assignee of the party Blosnick to the effect that those assemblies had failed and that "major modifications of those assemblies were required before they were found suitable for use."[8]

The district court excluded both categories of evidence proffered by the party Schmid.[9]

Having excluded the party Schmid's new evidence, the district court merely reviewed the board's decision on the evidence before the board. Not surprisingly (since the party Schmid was no longer relying on the theory that it has relied on before the board), it affirmed the board's decision, and the appeal to the Federal Circuit followed.

On appeal, the parties' arguments were addressed to the propriety of the exclusion of the two categories of new evidence proffered by the party Schmid. However, the court did not reach those issues. Instead, it held that, even if that evidence had been introduced, the party Blosnick would still have been entitled to judgment .[10]

The Federal Circuit's starting point was its holding that "The issue of reduction to practice is a question of law which this court reviews de novo."[11] It then turned to each category of evidence proffered by the party Schmid and ruled that, even if it had been introduced, it would not have effected the result reached by the district court.

With respect to the use-on-a-caboose versus use-on-a-freight-car issue, the court first offered a useful tutorial on when simulations can constitute actual reductions to practice:

It is true, as DSL points out, that proof of actual reduction to practice requires a showing that "the embodiment relied upon as evidence of priority actually worked for its intended purpose." Newkirk v. Lulejian, 825 F.2d 1581, 1582, 3 USPQ2d 1793, 1794 (Fed. Cir 1987). This is so even if the "intended purpose" is not explicitly set forth in the counts of the interference. See, e.g., Elmore v. Schmitt, 278 F.2d 510, 125 USPQ 653 (CCPA 1960); Burns v. Curtis, 172 F.2d 588, 80 USPQ 587 (CCPA 1949). On the other hand, tests performed outside the intended environment can be sufficient to show reduction to practice if the testing conditions are sufficiently similar to those of the intended environment. Tomecek v. Stimpson, 513 F.2d 614, 618, 185 USPQ 235, 239 (CCPA 1975).[12]

In this case, the court apparently agreed with the party Schmid that the tests relied on by the party Blosnick as constituting an actual reduction to practice were "outside their intended environment."[13] However, it held that they adequately simulated the intended environment because "The report for Test No. 4 indicates that the 'vibration equipment showed shocks of over 15 G's,' but that the coupler mount assembly still operated successfully,"[14] while a report authored by the inventor Schmid indicated that "a coupler mount assembly must be able to withstand "continuous shock and vibration at low frequencies and high amplitude with peak loads to 20 g'."[15] Thus, the answer to the key question of how good is good enough in this case was that peak loads of over 15 g's were "close enough" to peak loads of 20 g's.[16]

As for the proffered evidence to the effect that the commercial devices subsequently sold by the party Blosnick's assignee did not work in their intended environment, the court conceded that "some cases have held that events occurring after an alleged actual reduction to practice can call into question whether reduction to practice has in fact occurred."[17] However, the court relied on the maxim that "there is . . . no requirement that an invention, when tested, be in a commercially satisfactory stage of development in order to reduce the invention to practice."[18] Relying on that maxim, it held that "A failure of several commercial devices allegedly made according to the Blosnick application long after the reduction to practice is insufficient to convince us that a device, meeting the limitations of the count, was not adequately tested to establish a reduction to practice."[19]

B. The Testimony of a Technician Who Performed the Tests Relied Upon
as an Actual Reduction to Practice Is Not Necessary to Verify or Corroborate
the Testimony of the Non-Inventor Scientist Responsible for the Test

In Holmwood v. Sugavanam, 948 F.2d 1236, 20 USPQ2d 1712 (Fed. Cir. 1991) (opinion delivered by Circuit Judge Rader for a panel that also consisted of Circuit Judges Newman and Archer), the party Holmwood relied on evidence concerning an alleged actual reduction to practice to antedate the party Sugavanam's British priority date. The tests were conducted by two technicians (Mr. Tippin and Mr. Tillman) under the supervision and direction of a senior scientist (Dr. Zeck). The party Holmwood introduced the results of the tests performed by Messrs. Tippin and Tillman into evidence by way of Dr. Zeck's deposition testimony. Messrs. Tippin and Tillman did not testify, and the party Sugavanam objected to the test results and the related portions of Dr. Zeck's testimony as hearsay.

Curiously, the board admitted the reports prepared by Messrs. Tippin and Tillman into evidence, but then refused to give either the reports or Dr. Zeck's testimony based on those reports "any weight."[20] That resulted in a holding that the party Holmwood had failed to prove an actual reduction to practice before the party Sugavanam's priority date, and that in turn resulted in judgment for the party Sugavanam.

The Federal Circuit reversed. According to it, the "rule of reason" test applicable to evidence about alleged actual reductions to practice "requires the Patent and Trademark Office to examine, analyze, and evaluate reasonably all pertinent evidence when weighing the credibility of an inventor's story."[21] Moreover:

Under the rule of reason, this court cannot ignore the realities of technical operations in modern day research laboratories. Breuer v. DeMarinis, 558 F.2d 22, 29, 194 USPO 308, 314 (CCPA 1977). Recognizing these realities, a junior technician performing perfunctory tasks under the supervision of a senior scientist is not generally necessary to verify the reliability of evidence about scientific methods or data. In the absence of indicia calling into question the trustworthiness of the senior scientist's testimony, the rule of reason permits the Board to rely on the trained supervisor's testimony to ascertain scientific methods or results.[22]

Comment. Although the court said that the rule of reason "permits the Board" to rely on the supervisor's testimony in situations of this type, the fact that the court reversed the board's judgment suggests that the court is actually requiring the board to rely on the supervisor's testimony in such situations "In the absence of indicia calling into question the trustworthiness of the senior scientist's testimony. . . ." Moreover, even though Messrs. Tippin and Tillman had not testified, the court opined that, since they "operated as Dr. Zeck's 'blind hands' to conduct the tests and record the results . . . [, they] could testify to little more than that they followed Dr. Zeck's directions in handling the chemical samples and recording test results. . . [and that, therefore, their testimony] would have been cumulative or inferior to Dr. Zeck's testimony.[23] In view of the improbability that the supervisor's testimony will itself contain "indicia calling into question the trustworthiness of. . . [the supervisor's] testimony. . . .," and in view of the board's reluctance to authorize discovery depositions under 37 CFR 1.687, the court's holding will probably bias parties in the party Sugavanam's position towards calling technicians such as Messrs. Tippin and Tillman as hostile witnesses during their own cases -- in effect conducting discovery during their testimony periods.

C. The Description Requirement of 35 USC 112 Is the Same For a Claim Copied
for Purposes of Provoking an Interference as For a Claim Presented
During Ex Parte Prosecution of a Patent Application

In In re Spina, 975 F.2d 854, 24 USPQ2d 1142 (Fed. Cir. 1992) (opinion delivered by Circuit Judge Newman for a panel that also consisted of Senior Circuit Judge Cowen and Circuit Judge Lourie), the court continued the welcome trend initiated in Chester v. Miller, 906 F.2d 1574, 15 USPQ2d 1333 (Fed. Cir. 1990),[24] by holding that "The description requirement of 35 U.S.C. §112 is the same for a claim copied for purposes of instituting an interference as for a claim presented during ex parte prosecution of a patent application."[25] However, the court regrettably did not treat the issue of written description support totally independently of the pre-interference context in which it arose.[26] Although the court sensibly said that "A claim is not interpreted one way in light of the specification in which it originally was granted, and another way in light of the specification into which it is copied as a proposed interference count,"[27] it also said that:

When interpretation is required of a claim that is copied for interference purposes, the copied claim is viewed in the context of the patent from which it was copied. DeGeorge v. Bernier, 768 F.2d 1318, 1322, 226 USPQ 758, 761 (Fed. Cir. 1985) (if claim language is ambiguous "resort must be had to the specification of the patent from which the copied claim came").[28]

Thus, the view of this panel of the court seems to be that, if the language in a claim copied from a patent for the purpose of provoking an interference is non-ambiguous, the question of whether the application has written description support for the claim is decided independently of the disclosure of the patent from which the claim was copied, but, if the language in the claim is ambiguous, then the claim is first interpreted in light of the specification of the patent before turning to the applicant's specification to see if the applicant has written description support for the so-interpreted claim.

Comment: This opinion unfortunately prolongs the confusion engendered by the patent inconsistency between the court's holdings in DeGeorge v. Bernier and Woods v. Tsuchiya,[29] in which the court expressly refused to interpret count language in light of the specification from which it was taken despite the court's holding that the language of the count was ambiguous.[30] In addition, Spina seems to be flatly contrary to the court's better reasoned opinion in Hemstreet v. Rohland[31]:

If Rohland had intended to limit his claim. . . [in the manner for which he argued on appeal], it seems to us he would likely have . . . [written his claim more narrowly]. Having drawn a broader claim, he ran the risk that others might be able to support the language selected with specifically different structures, and he may not now urge that his language should only be read in light of his disclosure merely because the language originated with him. Kuppenbender v. Riszdorfer, 26 CCPA 1436, 1440-42, 104 F.2d 791, 795-96, 42 USPQ 127-131-32 (1939); Wirkler v. Perkins, 44 CCPA 1005, 1008-09, 245 F.2d 502, 504-05, 114 USPQ 284, 286 87 (1957).[32]


III. Interference Procedure

A. An Undefended Appeal from a Holding of Invalidity or Unpatentability
in an
Interference Is Treated Like an Appeal in an Ex Parte Case

In re Van Geuns, 946 F.2d 845, 20 USPQ2d 1291 (Fed. Cir. 1991) (opinion delivered by Circuit Judge Rader for a panel that also consisted of Circuit Judges Archer and Plager), started life as Van Geuns v. Brown. The appeal stemmed from a one-count interference in the PTO involving Van Geuns's application, Brown's patent, and Brown's reissue application. The board determined that the subject matter of the count was unpatentable over prior art available against both parties, and it accordingly held that all of the claims in Van Geuns's application and in Brown's reissue application corresponding to the count were unpatentable and that all of the claims in Brown's patent corresponding to the count were invalid.[33] Van Geuns then appealed to the Federal Circuit under 35 USC 141 naming Brown as the appellee, while Brown brought a quasi de novo civil action under 35 USC 146 against Van Geuns in the United States District for the District of Delaware.[34] Brown filed two motions (discussed below) as appellee in the Federal Circuit, but he did not file a notice of election under 35 USC 141, which would have required Van Geuns to file a 35 USC 146 quasi de novo civil action against him. For his part, Van Geuns not only entered an appearance in the quasi de novo civil action, he filed a counterclaim (the nature of which is not disclosed in the court's opinion) against Brown.

On appeal, Van Geuns moved to enjoin Brown's "parallel litigation"[35] in the district court. Brown opposed that motion and moved to remand Van Geuns's appeal to the PTO or, in the alternative, to stay the appeal pending completion of the district court litigation.[36] Not surprisingly, Van Geuns's motion was denied.[37] Very surprisingly, however, Brown's motions were denied, not on the merits, but on the ground that Brown was not a party to the appeal.[38]

The basis both for the court's decision denying Brown's motions and for its decision to change the caption of this appeal from Van Geuns v. Brown to In re Van Geuns was its assertion that:

Because his [i.e., Van Geuns's] appeal to this court contests only the Board's patentability determinations on claims corresponding to the interference count, Van Geuns' case takes the form of a traditional ex parte appeal to this court from a Board determination. Specifically, Van Geuns' appeal features no adverse entity other than the Commissioner. Brown does not oppose Van Geuns on the question of the interfering subject matter's patentability. Both contend that the interfering claims are patentable. As in all ex parte cases, the entity adverse to Van Geuns is the PTO Commissioner. The Commissioner refuses to grant Van Geuns a patent because the Board found Van Geuns' claims unpatentable in an interference. Thus, the Van Geuns' appeal presents the same issues with the same adverse entities as other ex parte appeals.[39]

From this basis the court reasoned that "Brown is not a party to Van Geuns' appeal in this court on patentability of Van Geuns' claims."[40] That led to the denial of Brown's motions, since "Brown may not move to remand a case to which he is not a party."[41] In addition, the court reasoned that, since the Commissioner, not Brown, was the true appellee in the case before it, not only should the caption of the case be changed, but "the Commissioner must furnish this court a brief justifying the Board's decision to deny Van Guens' application [sic; claims]."[42]

Comments: The court's action in recharacterizing the appeal as an ex parte appeal rather than an inter partes appeal raises some interesting questions.

First, the possibility of inconsistent results is more of a concern than the court seemed to realize. The court said that:

The district court complaint . . . features different issues . . . [than the appeal]. *** [T]he Delaware district court case raises issues beyond the purview of Van Geuns' case. In the first place, Brown's successor seeks district court review of the Board's determination that Brown's claims, not those of Van Geuns, are unpatentable. Further, Brown's successor contests the propriety of the Board's rejection of Brown's charges of inequitable conduct against Van Geuns."[43]

However, while the district court case may "feature" an issue in addition to the issue on appeal to the Federal Circuit, the patentability issue on appeal to the Federal Circuit will of necessity be very closely related to the patentability issue before the district court, since both parties' claims were grouped with the same count. Nevertheless, the Federal Circuit's predecessor had previously accepted the fact that the alternative routes of review of decisions in interferences can lead to inconsistent results,[44] and here the fact that Brown's successor will have the right to submit additional evidence not available to Van Geuns in his appeal could even justify the inconsistent results.

Second, there appears to be no question but that the appeal proceeds as a normal inter partes appeal where the parties disagree over the patentability of the appellant's claim(s) corresponding to the count(s) in the PTO. See, e.g., Chester v. Miller, 906 F.2d 1574, 15 USPQ2d 1333 (Fed. Cir. 1990). However, will the court now require the Commissioner to submit an additional brief,[45] either whenever patentability over the prior art is an issue or in special cases where there are other issues on appeal and the appellee does not contest the patentability over the prior art issue with sufficient vigor?

Third, will the court make its determination of whether or not an appeal from an interference decision "takes the form of a traditional ex parte appeal . . ." based on the parties' positions before the board or the parties' positions before it? In Chester v. Miller and in Van Geuns, the parties' positions below and before the court were the same.[46] However, suppose that, on appeal, Brown had indicated his intent to argue in support of the board's judgment?[47] Would that mean that the appeal would be an ordinary inter partes appeal, a la Chester v. Miller, rather than a galvanized ex parte appeal a la In re Van Geuns?

Fourth, in Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1328 (Fed. Cir. 1989), the board entered judgment against both parties, Perkins appealed, Kwon did not oppose the appeal, and the court did not recharacterize the appeal as an ex parte appeal.[48] In future cases, will the court follow the practice it followed in Van Geuns or will it follow the practice it followed in Perkins?[49]

Fifth, if Van Geuns's appeal is ex parte, isn't Brown's civil action equally ex parte?[50] Or does the fact that Brown's complaint in the civil action asserted issues in addition to the 36 USC 103 patentability issues mean that that action remains an inter partes action? However, if the civil action is properly recharacterizable as an ex parte action, shouldn't it have been brought in the United States District Court for the District of Columbia under 35 USC 145 rather than in the United States District Court for the District of Delaware under 35 USC 146?[51] Moreover, if it is an ex parte matter, doesn't it follow that the district court lacks jurisdiction to entertain Van Geuns's counterclaim. [52]

Sixth, 35 USC 141 covers two different types of appeals. The relevant sentence with respect to ordinary ex parte patent appeals is the first sentence, which reads as follows:

An applicant dissatisfied with the decision in an appeal to the Board of Patent Appeals and Interferences under section 134 of this title may appeal the decision to the United States Court of Appeals for the Federal Circuit.

However, although Van Geuns was an applicant, the court could not have thought that this sentence applied because a decision in an interference is not a "decision in an appeal to the Board of Patent Appeals and Interferences under. . . [35 USC 134]." The relevant sentence with respect to ordinary inter partes appeals is the third sentence, which reads in relevant part as follows:

A party to an interference dissatisfied with the decision of the Board of Patent Appeals and Interferences on the interference may appeal the decision to the United States Court of Appeals for the Federal Circuit. . . .

Since both applicant interferents (like Van Geuns) and patentee interferents (like Brown) are "part[ies] to an interference," that language, as construed by the court in this case, would seem to permit either a patentee interferent or an applicant interferent to take an ex parte appeal to the Federal Circuit in situations such as this one. However, the next part of the third sentence of 35 USC 141 dictates the removal procedure:

but such appeal shall be dismissed if any adverse party to such interference, within twenty days after the appellant has filed notice of appeal in accordance with section 142 of this title, files notice with the Commissioner that the party elects to have all further proceedings conducted as provided in section 146 of this title.

The court has now told us that the Commissioner is the adverse party in interference appeals such as this one. Does that mean that the Commissioner can file a notice of election (with himself!) -- which, in this case, would have required Van Geuns to file a civil action against the Commissioner under 35 USC 146 in either the United States District Court for the District of Columbia or the United States District Court for the Eastern District of Virginia? That would certainly seem to follow from the court's holding. However, the second paragraph of 35 USC 146 says that "The Commissioner shall not be a necessary party [to an action under 36 USC 146,] but he shall be notified of the filing of the suit by the clerk of the court in which it is filed and shall have the right to intervene." (Emphasis supplied.) That would mean that the Commissioner would have the right to intervene in a case in which he or she is already a party -- a result which is nonsensical. Since Congress could not have intended that nonsensical result, it is my opinion that the court's reading of 35 USC 141 could not have been intended by Congress.

B. "Good Cause" Excusing Failure to Present Evidence With an Initial Showing
Under 37 CFR 1.608(b)

Unlike most patent prosecution, an applicant's request for an interference with a patent can be a sudden death tactic -- at least for the applicant. In Huston v. Ladner, 973 F.2d 1564, 23 USPQ2d 1910 (Fed. Cir. 1992) (opinion delivered by Circuit Judge Lourie and joined by Circuit Judge Plager; dissent by Circuit Judge Newman), the examiner-in-chief held that the party Huston et al.'s initial 37 CFR 1.608(b) showing was defective and placed it under an order to show cause why judgment should not be entered against it. The assignee of the party Huston et al. thereupon retained new counsel who submitted a supplemental 37 CFR 1.608(b) showing and, pursuant to 37 CR 1.617(b),[53] "attempted to show 'good cause' why the additional evidence was not submitted with the initial priority showing by asserting that . . . [its] attorney misrepresented his competence and ability in interference matters and was grossly negligent in filing the original submission."[54] A panel of the board at final hearing "affirmed the Examiner's decision that the original showing was inadequate"[55] and "stated that it could not consider the additional evidence submitted in response to the Order because Huston had failed to show good cause why the evidence was not presented initially."[56] On appeal, the party Huston et al. did not argue that its initial showing was adequate, and of course whether its combined initial and supplemental showing was adequate was not an issue because the board had refused to let the supplemental showing in. The only issue was whether the board had abused its discretion[57] in holding that the party Huston et al. did not show the required "good cause" for failure to present the additional evidence with its initial 37 CFR 1.608(b) showing.[58]

This case gets downright nasty, at least from the perspective of the party Huston et al.'s prior counsel. According to the court, "Huston contends that he was entitled to supplement the original showing because the original attorney misrepresented to . . . [the party Huston et al.'s assignee] his competence and ability to present Huston's prima facie showing under 37 C.F.R. §1.608(b) and because he acted in a reckless and grossly negligent manner in filing the original evidence."[59] However, neither the board nor the majority of the panel of the court ruled that an attorney's misrepresentation of his or her competence to handle an interference and/or an attorney's acting in a reckless and grossly negligent manner could not constitute good cause permitting an initial 37 CFR 1.608(b) showing to be supplemented. Instead, "The Board specifically found that Huston's claim of misrepresentation by the attorney as to his ability to make a prima facie showing of priority was unsupported by the evidence,"[60] and the majority held that it could not say that that finding was an abuse of discretion.

After having set aside the misrepresentation issue for failure of proof, the board "held that this dispute was controlled by the rule set forth in Hahn v. Wong, 892 F.2d 1028, 13 USPQ2d 1313 (Fed. Cir. 1989)], where . . . [the court] stated, 'ignorance by a party or counsel of the provisions of the rules or the substantive requirements of the law does not constitute good cause' why the additional evidence was not presented initially."[61]

On appeal, the majority rejected the party Huston et al.'s argument that it "should not suffer the consequences of. . . [its] attorney's acts because Huston did not knowingly and freely acquiesce in his attorney's conduct"[62] on the ground that, under governing Supreme Court precedent,[63] "The [prior] attorney's conduct in this case was properly chargeable to Huston."[64]

In dissent, Circuit Judge Newman asserted that the board had indeed abused its discretion because:

There was no reasonable support for the Board's summary finding that there was no attorney misrepresentation. Thus the Board's finding of the absence of attorney misrepresentation is clearly erroneous.[65]

On that premise, she would have reversed the board's holding, relying on cases that hold that a specific misrepresentation by counsel to his or her client is good cause for relieving the client of the consequences of the attorney's misconduct.[66] Although those cases involve specific factual misrepresentations with respect to the involved cases rather than a more generalized representation of competence to handle the case, Judge Newman felt that their holdings were fairly extendible to the interference situation before the court.

Comment: It is unusual for a client to ask an attorney to represent specifically and in writing that he or she is competent to handle a matter. However, after Huston it might be a good idea for an interferent (or house counsel shopping for outside counsel) to do just that.

C. An Applicant That Copies a Claim From a Patent in Ipsis Verbis
for the Purpose of Provoking an Interference May Well Be Creating
Unnecessary Trouble for Itself

In re Spina, 975 F.2d 854, 24 USPQ2d 1142 (Fed. Cir. 1992) (opinion delivered by Circuit Judge Newman for a panel that also consisted of Senior Circuit Judge Cowen and Circuit Judge Lourie), is an excellent illustration of the point that an applicant who copies a claim from a patent in ipsis verbis for the purpose of provoking an interference may well be creating unnecessary trouble for itself. In this case, Spina had copied a claim from a patent to Barron et al. in ipsis verbis despite the fact that he had extremely questionable written description and enablement support for one limitation in the claim. The examiner rejected that claim, and the board affirmed the rejection.[67] On appeal, the court reversed (in what seems to have been an act of pure charity), thereby sending the case back for the declaration of an interference. In the interference, however, the court's ex parte holding will be binding on neither the party Barron et al. nor the board,[68] and its seems likely that the party Barron et al. will obtain an opposite result by filing an appropriate 37 CFR 1.633(a) motion unless the party Spina has amended its claim before the interference is declared.

Comment: The moral of this opinion, as well as many others to a like effect, is that neither 37 CFR 1.601(n) nor 37 CFR 1.607 requires an applicant to copy a patentee's claim in ipsis verbis in order to provoke an interference and that an applicant's attorney can save his or her client a great deal of unnecessary grief by slightly revising a copied claim to ensure that there is clear support for the copied claim in the specification of the application.

D. Sanctions Awarded Pursuant to 37 CFR 1. 616 Must Be Appropriate to the Offense

Some examiners-in-chief have been quick to impose severe 37 CFR 1.616 sanctions for fairly minor infraction of the rules. However, the court's opinion in Gerritsen v. Shirai, 979 F.2d 1524, 24 USPQ2d 1912 (Fed. Cir. 1992) (opinion delivered by Circuit Judge Michel for a panel that also consisted of Senior Circuit Judge Friedman and Circuit Judge Radar), may reign in that tendency somewhat.

In Gerritsen, the party Gerritsen was a patentee interferent that had filed a reissue application during the pendency of the interference but after the end of the period set for filing first round preliminary motions. It promptly filed a 37 CFR 1.660(b) notice,[69] but it did not file a belated 37 CFR 1.633(h) motion[70] to add the reissue application to the interference.[71] The reissue application matured into a reissue patent during the pendency of the interference, and when it issued the examiner-in-chief sua sponte added it to the interference pursuant to 37 CFR 1.642.[72] Of critical importance, the examiner -in chief's order adding the reissue patent to the interference also "determined that Gerritsen and Aerts had failed to comply with 37 C.F.R. § 1.662(b)73[73] and ordered them to show cause why an appropriate sanction should not be imposed under 37 C.F.R. § 1.616 (1991)."[74] Action on the sanction issue was deferred to final hearing, but at final hearing:

the Board concluded that as a sanction Gerritsen and Aerts were not entitled to claims 10-22 of the RE '592 patent although they obtained priority over Shirai, et al., to the subject matter of the interference count.[75]

That is, the board entered a judgment on the merits for the party Gerritsen (which meant that it got to keep the claims in its reissue patent that were identical to the claims in its original patent that had been designated as corresponding to the count), [76] but the board entered judgment against the party Gerritsen with respect to the claims that it had added in its reissue application, purely as a sanction!

The party Gerritsen appealed the judgment against it, but the party Shirai did not appeal the judgment against it and did not even file a brief opposing the party Gerritsen's appeal.[77] However, the solicitor stepped in, filing an amicus brief in support of the board's decision and arguing the appeal.[78]

The court first expressly "define[d], for the first time, our standard of review for the Board's decision to impose a sanction and for its choice of sanction under 37 C.F.R. § 1.616 against an interference party who allegedly failed to comply with an interference regulation."[79] Not surprisingly, the court decided that "The abuse of discretion standard is . . . appropriate . . . [for review of decisions in interferences imposing sanctions]."[80] However, one of the court's stated reasons for adopting that standard is worthy of brief comment:

This approach to appellate review of Board sanction decisions is consistent with the regulatory scheme for conducting interferences. The preamble to 37 C.F.R. §1.601 (1991) generally calls for the "just, speedy, and inexpensive determination of every interference." A narrow standard of review would promote the efficient determination of interferences.[81]


Of course, no court review at all of any of the board's decisions "would promote the efficient determination of interferences," but it arguably would not promote the just determination of interferences!

Next, the court considered whether the party Gerritsen's conduct had been sanctionable. The party Gerritsen argued that "the plain meaning of. . . [37 CFR 1.662(b)] indicates that the regulation directs a timely motion when a reissue is filed during the preliminary motions period.[82] Since the party Gerritsen had not filed its reissue application until after the motions period (actually, until after the period for filing first round preliminary motions had expired, but during the motions period, broadly construed), the party Gerritsen argued that 37 CFR 1.662(b) "is simply irrelevant in their case."[83] However, the court rejected that interpretation of 37 CFR 1.662(b):

Nowhere does the regulation limit its object to "a timely preliminary motion." Rather, it requires a preliminary motion, timely or otherwise, to add a reissue application to an interference when the reissue application is not for the purpose of avoiding the interference.[84]

***

Therefore, because appellants filed their reissue application after the close of the preliminary motions period, we conclude that 37 C.F.R. § 1.662(b) required them to file a belated preliminary motion and show good cause why a timely motion could not have been filed or why the belated motion would not be appropriate.[85]

* * *

Accordingly, the Board did not abuse its discretion in determining that appellants' failure to observe the regulation is sanctionable nonfeasance under 37 C.F.R. § 1.616.[86]

That, however, brought the court to the most difficult question: What to do about it. 37 CFR 1.616 says that "An examiner-in-chief or the Board may impose an appropriate sanction against a party who fails to comply with the regulations of this part of any order entered by an examiner-in-chief or the Board." (Emphasis supplied.) Was the board's sanction appropriate -- or, more accurately, was the board's sanction so wildly inappropriate that its imposition was an abuse of discretion?

The court held that it was: "Upon review of the record, we can only conclude [that] the Board has committed clear error in the . . . factual determinations that underlie its choice of sanctions."[87] In particular, the court held that "the appellants clearly did not intentionally violate 37 C.F.R. §1.662(b) in an effort to circumvent the Board's authority"[88] because "Gerritsen and Aerts sent copies of their reissue application to both the examiner-in-chief of the pending interference and Shirai, et al."[89] In effect, the party Gerritsen may have been misguided, but it certainly was not trying to slip one over on either the board or the opposing party. Accordingly, the court "vacate[d] the sanction imposed against. . . [the party Gerritsen] and remand[ed] to the Board for new fact findings relevant to the selection of an appropriate sanction and for imposition of the sanction."[90]

Comment: What can the board do now? In this, as in many cases, there really does not appear to be an "appropriate sanction."

IV. Post-Interference Practice

A. Non-Interference Claims in §146 Proceedings

35 USC 146 provides in relevant part that "Any party to an interference dissatisfied with the decision of the Board of Patent Appeals and Interferences, may have remedy [against the prevailing party] by civil action . . . unless he has appealed to the United States Court of Appeals for the Federal Circuit, and such appeal is pending or has been decided." Thus, 35 USC 146 provides for judicial review of board decisions in interferences in an appropriate district court in place of the more common judicial review by appeal to the Federal Circuit. However, the two forms of judicial review are not merely alternative; they are different in many fundamental respects.[91] One of those respects is that a §146 action can include claims (presented by either the plaintiff or the defendant) other than those that were before the PTO.

Abbott Laboratories v. Brennan, 952 F.2d 1346, 21 USPQ2d 1192 (Fed. Cir. 1991) (opinion delivered by Circuit Judge Newman for a panel that also consisted of Circuit Judges Mayer and Lourie), involved an extreme example of the presentation of other claims in a §146 action, and it established three very important points in such proceedings: (1) the Federal Circuit has jurisdiction over an appeal from the district court proceeding regardless of whether there are still patent issues in the case by the time of appeal, (2) "[a]bsent improper purpose," a losing interferent cannot be sanctioned under FRCP 11 for filing a §146 action, and (3) a state tort claim for abuse of process cannot be made a part of a §146 action.[92]

The underlying decision by the board is reported in Brennan v. Muetterties, 230 USPQ 145 (PTOBPAI 1986). In that opinion, the board held that the party Muetterties had made the invention first, but it awarded priority to the party Brennan[93] on the ground that counsel for the party Muetterties had committed inequitable conduct in (what use to be known as fraud on) the PTO.

Abbot Laboratories, the party Muetterties's assignee, then filed a civil action against Mr. Brennan, whose application was apparently unassigned. Brennan counterclaimed for fraudulent misrepresentation, abuse of process, tortuous interference with economic relations, antitrust violations under the Sherman and Clayton Acts, violation of the Racketeer Influenced and Corrupt Organizations Act, and the intentional infliction of emotional distress. The district court dismissed Brennan's claims for antitrust and RICO violations, intentional infliction of emotional distress, and fraudulent misrepresentation. However, it entered summary judgment for Brennan on the priority issue (i.e., it in effect "affirmed" the board's award of priority to the party Brennan on the basis that the party Muetterties's attorney had committed fraud), and it tried Brennan's counterclaims for tortuous interferences with economic relations and tortuous abuse of process to a jury. The jury returned a verdict in favor of Abbott on Brennan's tortuous interference claim and for Brennan on his abuse-of-process claim. Notably, the jury awarded Brennan damages of $1,350,000.00 for abuse of process -- consisting of $1,070,000.00 designated as compensation for emotional injuries, $250,000.00 designated as compensating Brennan for his attorney fees, and $30,000.00 designated as compensating Brennan for his "out of pocket costs."[94] The district court denied Abbott's motion for JNOV on the abuse-of-process issue and its motion for remittitur of the award of emotional damages, but it remitted the award of attorney fees to $89,439.75 and the award of costs to $11,951.38, which were the actual attorney fees and costs incurred by Brennan. In addition, the district court denied Brennan's motion for FRCP 11 sanctions.

Brennan appealed, i.e., the district court's denial of his motion for a new trial on his counterclaim of tortious interference with economic relations and the dismissal of his antitrust counterclaim. Abbott cross-appealed, i.e., the denial of its motion for JNOV on the abuse of process issue, but it did not appeal from the district court's entry of summary judgment against it on the priority issue. Thus, as stated by the Federal Circuit, "the remaining issues are either matters of state law based on pendent jurisdiction, or issues of federal law that are not within the exclusive assignment of the Federal Circuit, but that were properly included at trial of the case."[95]

In view of the absence of any remaining issue of patent law, the Federal Circuit sua sponte reviewed its jurisdiction over the appeal. Not surprisingly, however, in view of its precedent,[96] the Federal Circuit decided that it did have jurisdiction over the appeal:

The path of appeal is determined by the basis of jurisdiction in the district court, and is not controlled by the district court's decision or the substance of the issues that are appealed. The reasons are pragmatic: to avoid creating fresh opportunities for forum shopping; to avoid bifurcation of issues and cases at trial and on appeal; to remove uncertainty and the abuses of procedural maneuvering; and, ultimately, to facilitate resolution of disputes.
Thus, the direction of appeal to the Federal Circuit does not change during or after trial, even when the only issues remaining are not within our exclusive assignment.[97]

The appellate court then went on to affirm the district court's ruling with respect to the issues raised by Brennan, including Brennan's request for FRCP 11 sanctions against Abbott. According to the appellate court:

the district court's denial of [FRCP 11] sanctions . . . [was] well supported. The patent law authorizes any party to a patent interference to take civil action in the district court.[98] 35 U.S.C. §146. Such action is taken as of right. *** Absent improper purpose, a litigant's exercise of a statutory right of action can not be, of itself, a sanctionable offense.[99]

Abbott, however, was stunningly successful in its cross-appeal on the abuse-of-process issue. According to the appellate court:

the federal administrative process of examining and issuing patents, including proceedings before the PTO's boards, is not subject to collateral review in terms of the common law tort of abuse of process. The PTO procedures themselves provided a remedy for Abbott's malfeasance. An additional state action would be an inappropriate collateral intrusion on the regulatory procedures of the PTO . . . and is contrary to Congress' preemptive regulation in the area of patent law.[100]


Accordingly, the Federal Circuit reversed the district court's award of more than $1,000,000.00 in damages to Brennan on the abuse-of-process issue.

Comments: The Federal Circuit's holding on the abuse-of-process issue raises at least two questions.

First, is it really a good idea to leave a party that has prevailed in an interference with no possibility of a monetary recovery against the losing party no matter how outrageous the losing party's behavior? The court asserted that "The PTO procedures themselves provided a remedy for Abbott's malfeasance,"[101] but the purported "remedy" was only that "Brennan was awarded a patent although the PTO found that Brennan was not the first inventor of the subject matter."[102] Not only may that prove a singularly unrewarding remedy if Brennan's patent is held invalid under 35 USC 102(g) in an action against a third party on the basis that the party Muetterties was the first inventor of the subject matter (as stated by both the board and the Federal Circuit), but that "remedy" is not available at all in most cases. The Federal Circuit itself may have had some misgivings in this regard for, despite its seemingly clear cut holding, it earlier said that:

Th[e] reasoning [of the district court in Baker Driveaway Co. v. Bankhead Enterprises, Inc., 478 F. Supp. 857, 207 USPQ 365 (E.D. Mich. 1979)] supports the conclusion that an asserted abuse of process before the Patent and Trademark Office is not remediable by state action in tort, at least unless it is shown that the entire federal agency action was a "sham" . . . . Such a showing, or assertion, was not here made.[103]

Second, suppose Brennan had not raised the abuse-of-process issue by way of a counterclaim, but instead had followed the more conventional path of waiting to file a separate action for abuse of process until after the §146 proceeding was concluded. Would the result have been different? Or, of more interest to future litigants, suppose that they learn by Mr. Brennan's mistake and file a separate abuse-of-process action (preferably in a state court!) after final judgment is entered in an interference. Will the court (be it federal or state) handling the separate abuse-of process action (which is not appealable to the Federal Circuit) feel itself bound by the Federal Circuit's broad statements in this opinion, or will it follow pre-existing law on this point?

B. Notwithstanding McKellin, a Party That Lost an Interference
is Estopped to
Obtain Patentably Indistinguishable Claims
in Post-Interference Ex parte Practice

In In re McKellin [104] the appellant had lost an interference in which the winning party prevailed on the basis of foreign priority. In post-interference ex parte practice, McKellin presented patentably indistinguishable claims, and the PTO rejected them under 35 USC 103 on the theory that the lost count was statutory prior art under 35 USC 135(a). The court reversed, saying enigmatically that there was no "statutory basis for finding that either the subject matter of the lost counts or the disclosure of the [interfering] patent is prior art, in the sense of 35 U.S.C. § 103, to [McKellin]."[105]

McKellin was extremely controversial at the time,[106] but the board solved the practical problems presented by McKellin by holding in Ex parte Tytgat[107] that an appellant such as McKellin is precluded by judgment from obtaining a patent on subject matter that is not patentably distinct from the subject matter defined by a lost count. Now, sixteen years after McKellin and seven years after Tytgat, the court in In re Deckler, 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir. 1992), has, in essence, adopted the board's rationale in Tytgat,[108] relegating McKellin to the status of a curious historical anomaly.

In Deckler, the court held that:

The Board's decision that the interference judgment bars Deckler from obtaining a patent for claims that are patentably indistinguishable from the claim [sic; the count] on which Deckler lost the interference constituted a permissible application of settled principles of res judicata and collateral estoppel.[109]

***

The interference judgment conclusively determined that, as between Deckler and Grataloup, Grataloup was entitled to claim the patentable subject matter defined in the interference count. It is therefore proper, and consistent with the policies of finality and repose embodied in the doctrine of res judicata and collateral estoppel, to use that judgment as a basis for rejection of claims to the same patentable invention.[110]

It distinguished McKellin on the ground that the issue in that case was the validity of an obviousness rejection based on the board's holding that, pursuant to 35 USC 135(a), the lost count could be used as prior art for obviousness purposes:

In the present case, in contrast, there was no obviousness rejection. The Board's sole ground of rejection was that under [non-statutory] principles of res judicata and collateral estoppel, Deckler was not entitled to claims that were patentably indistinguishable from the claim on which he lost the interference.[111]

***

Unlike the situation in. . . [McKellin], here the Board did not use the interference count as prior art in making an obviousness determination, but based its decision on a wholly different theory.[112]

Comment: Perhaps the moral is that everything depends on how you say it, not on what you say. In any event, Deckler is certainly welcome news, for it would have been a disaster if the court had resurrected McKellin.

V. Relationship of Interference Proceedings
to Court Proceedings

A. Declaratory Judgment Action for Declaration of Non-Infringement
of the Patent in Interference

With interference dragging on for years, it is not uncommon for the assignees of the parties to become involved in related litigation during the pendency of an interference.[113] While the most common related litigation is undoubtedly an action for patent infringement brought by a patentee interferent against an applicant interferent, Minnesota Mining & Mfg. Co. v. Norton Co., 929 F.2d 670, 18 USPQ2d 1302 (Fed. Cir. 1991) (opinion delivered by Circuit Judge Lourie for a panel that also consisted of Circuit Judge Plager and Senior Circuit Judge Smith), involved an interesting variant: an action for a declaratory judgment of non-infringement brought by an applicant interferent against a patentee interferent.[114] The issue raised by this appeal was whether the district court should dismiss the declaratory judgment action pending disposition of the interference, and the Federal Circuit's holding was no, not in this case.

Minnesota Mining & Mfg. Co. ("3M") was the assignee of the junior party applicant, and Norton Co. ("Norton") was the assignee of the senior party patentee. Norton's patent disclosed and claimed a process using aluminum-based seeds to make abrasive grains. 3M's parent application disclosed and claimed processes using either aluminum-based seeds or iron-based seeds to make abrasive grains. 3M provoked an interference on a count limited to use of the aluminum-based seeds.[115]

Before Norton's patent issued, 3M had been commercializing the process employing the aluminum-based seeds, but, when Norton's patent issued, 3M switched over to the process employing the ironbased seeds. However, in negotiations between Norton and 3M, Norton asserted that the claims in its patent covered the process employing the iron-based seeds under the doctrine of equivalents. 3M disagreed.

At that point, Norton sent 3M's customers letters demanding that the customers "cease immediately all infringing sale or use of. . . [products incorporating the grain 3M had made using iron-based seeds] and account to Norton for all such sale or use. . . ."[116] Some (but not all) of the letters went on to assert that "Norton intends to vigorously enforce its patent rights against any such infringement."[117]

3M then sued Norton for a declaratory judgment that its process employing the iron-based seeds did not infringe Norton's claims under the doctrine of equivalents. Norton responded by moving to dismiss the action on the ground that the disposition of the pending interference might moot any declaratory judgment issued by the court,[118] and the district court granted the motion.

On appeal, Norton argued that the Federal Circuit's scope of review was very limited because its "review of the district court's action is limited to determining whether the district court abused its discretion."[119] The Federal Circuit agreed that "the very terms of the [Declaratory Judgment] Act[120] and its subsequent interpretation by the courts have made the exercise of declaratory judgment jurisdiction discretionary."[121] Nevertheless, it reversed.

The court started by recognizing that "This case involves the competing policy considerations of, on the one hand, conserving limited judicial resources by declining jurisdiction and, on the other hand, utilizing the services of a court by permitting a party threatened with legal action to obtain an early adjudication of its rights and liabilities."[122] It then stated its agreement with 3M's argument that "the district court erred in giving too little consideration to the harm which a delay in deciding the case will inflict on it."[123] That harm, in a nutshell, was that, "As 3M continues to sell products it believes do not infringe, its potential liability grows."[124]

In reaching its conclusion, the court relied on two factors. First, while the court recognized the possibility that a victory by 3M's assignor in the interference might moot the issue of whether Norton's claims were infringed under the doctrine of equivalents by 3M's iron -based seeding process, it relied heavily on the fact that the interference would never decide that issue:

An interference proceeding is principally declared to permit a determination of priority, to decide who among multiple patent applicants (or an applicant and a patentee) was the first to invent claimed subject matter. Issues of patentability can be considered, but infringement will not be.

***

The pending interference proceeding in this case will initially determine whether Norton is entitled to retain the claims of the '364 patent, but it will not determine whether those claims cover 3M's iron-based seeded gel process. It will not, therefore, decide the infringement issue that underlies 3M's complaints.[125]

Second, the court relied on the time that would likely pass before resolution of the interference, noting both that the infringement question might "continue unanswered through the appeal of the interference decision . . ."[126] and that "a district court . . . [might] ultimately review the interference decision de novo and further delay final decision in the matter."[127] It concluded categorically that "3M is entitled by the Declaratory Judgment Act to have a decision on the infringement question and not to have to wait until the interference is finally resolved."[128]

One factor that the court stated that it was not relying on bears special mention. 3M had sued Norton in the Minnesota District court (3M's home turf). After the decision by the Minnesota District Court dismissing 3M's suit, Norton sued 3M for patent infringement in the Massachusetts district court (Norton's home turf). The Federal Circuit took judicial notice of the pendency of the Massachusetts action, but it expressly stated that it was "not premising our decision in any way on the fact that Norton has taken action in Massachusetts."[129] Hence, the result would presumably be the same absent this factor.

The court did caution that:

There may well be situations in which a court should decline to exercise its discretion to assume Jurisdiction under the Declaratory Judgment Act when a PTO interference is underway. We do not attempt to anticipate or prejudge such situations not now before us.[130]

However, in view of the court's ringing endorsement of 3M's right to find out whether or not it is infringing Norton's patent, it will presumably be a rare case where an applicant interferent that has been charged with infringement of its patentee opponent's claims in interference will not be able to obtain a declaratory judgment of whether or not it is infringing those claims.

Query: Suppose that Norton had not sent threat letters to 3M's customers, but had sent a threat letter to 3M itself. Would that also have supported a non-dismissible declaratory judgment action, or was the fact that third parties were involved somehow outcome determinative?

VI. Patent-Patent Interferences

A. The District Court's Jurisdiction Under 35 USC 291
Does Not Depend on a Charge of Infringement

35 USC 291 patent-patent infringement counts are frequently coupled with cross-charges of patent infringement. Indeed, one can reasonably suspect that they are often afterthoughts and distinctly ancillary to the main charges of patent infringement. However, the court in Kimberly Clark Corp. v. Proctor & Gamble Distributing Co., 973 F.2d 911, 23 USPQ2d 1921 (Fed. Cir. 1992) (opinion delivered by Circuit Judge Lourie for a panel that also consisted of Circuit Judge Clevenger and Circuit Judge Rader), removed any possible suspicion that a 35 USC 291 action can be brought only in conjunction with an infringement action.

In Kimberly-Clark, Kimberly-Clark (K-C) sued P&G for infringement of its Enloe patent. In addition, K-C "sought a declaration, pursuant to 35 U.S.C. § 291, that the Enloe patent had priority over the Lawson patent [i.e., P&G's patent]."[131] P&G counter-claimed, alleging that K-C infringed the Lawson patent and that the Lawson had priority over the Enloe patent. The district court held that P&G did not infringe K-C's Enloe patent and that K-C's Enloe patent had priority over P&G's Lawson patent (i.e., that the involved claims of P&G's Lawson patent were invalid), which made the question of whether K-C infringed the Lawson patent moot.[132] K-C appealed, and P&G cross-appealed. However, after the appeals were filed, P&G and K-C entered into a settlement agreement by which each granted the other "a non-exclusive immunity from suit"[133] under its patent. That, of course, made the infringement issues moot, and the Federal Circuit therefore vacated that part of the district court's judgment dealing with infringement. However, the parties asserted that the "various validity (including priority) and enforceability issues arising under 35 U.S.C. § 291. . . [were] not moot. . . [because] the prevailing party on the validity and enforceability issues may be entitled to royalty payments [sic; why not 35 USC 284 damages?!] from third parties, and K-C and P&G disagree with respect to who is entitled to the patent rights that may give rise to such royalty payments."[134]

The Federal Circuit thereupon devoted six pages of its opinion to the question of whether a charge of infringement was necessary to give a district court jurisdiction under 35 USC 291, concluding ultimately that a charge of infringement is not necessary to give a district court jurisdiction under 35 USC 291[135] and that, accordingly, the settlement of the infringement issues did not render the appeal on the 35 USC 291 count moot. It indicated that it did so for several reasons.

First, each party's patent constituted "a serious impediment to the [other party's] enjoyment of . . . [its exclusionary rights]. . ., the presumption of validity provided by 35 U.S.C. § 282 having been eroded by the grant of an 'interfering' patent."[136] However, "Section 291 provides a means for resolving the contested issue of priority of invention solely between two patent owners, without involving third parties. Thus, there clearly is 'relief' which can be had under section 291 in the absence of infringement claims."[137]

Second:

by its very language, a cause of action under section 291 does not require that "the owner of an interfering patent" accuse "the owner of another" of infringement. Rather, section 291 gives patent owners a separate and distinct basis of jurisdiction if two patents interfere.[138]

Third:

If infringement of one party's patent by another patent owner were required to create jurisdiction under section 291, that section would be redundant with section 271, the basic infringement section of the statute. When one party accuses another of infringement, and the latter has an invalidity defense of prior invention by another, that defense can be raised and decided without the need for section 291.[139]

Having disposed of the jurisdiction issue, the court went on to decide a priority issue that is of no particular general concern to the interference bar and an enforceability issue that may be, depending on how the court follows up on it. The enforceability issue rose from P&G's contention that K-C's attorney had engaged in inequitable conduct by failing to bring the Lawson patent to the attention of the examiner handling the application that matured into the Enloe patent despite the fact that he became aware of the Lawson patent before issuance of the Enloe patent. The Federal Circuit reviewed that contention on the merits and ultimately affirmed the district court's finding that P&G had failed to prove intent to deceive. Before doing so, however, it may have resurrected the law of ancillarity, which had apparently been dead in new rule interferences since 1985 and which never had applied to patent-patent interferences under 35 USC 291 -- at least with respect to validity over the prior art, which was the archetypical example of a non-ancillary issue.[140] According to the Kimberly Clark court:

We review this matter [i.e., the inequitable conduct charge] because it is so closely intertwined with validity and priority, which are subject to review under Section 291, and inequitable conduct has otherwise been treated as ancillary to priority. Norton v. Curtiss, 433 F.2d 779, 783, 167 USPQ 532, 536 (CCPA 1970) ("[The] question [of fraud on the Patent Office] is clearly one which is ancillary to priority" which this court has jurisdiction to review on appeal).[141]


The implication is that, in order to obtain appellate review of the district court's decision on an issue in a 35 USC 291 action, one must persuade the Federal Circuit that the issue was one denominated as ancillary to priority under that otherwise thankfully defunct doctrine! Truly, this provides another reason to avoid 35 USC 291 patent-patent interferences whenever possible by filing an application to reissue one (or both) of the interfering patents,[142] thereby restoring jurisdiction to the Patent and Trademark Office to decide the interference issues (which now include validity and enforceability) in the context of a reissue application-patent interference or a reissue application-reissue application interference.

First published in the Journal of the Patent and Trademark Office Society, volume 75 (1993), pages 448-83.


Endnotes


*.Copyright 1991, 1992, and 1993 Charles L. Gholz; Oblon, Spivak, McClelland, Maier & Neustadt, P.C.; Arlington, Virginia. Portions of this article have been published previously by Patent Resources Group, Inc. in the chapter entitled "Interferences" of the materials for PRG's twice-a-year programs on Federal Circuit Patent Law.

**.Partner in Oblon, Spivak, McClelland, Maier & Neustadt, P.C.

[1].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.

[2].See also the author's previous articles by the same title at 71 JPTOS 439 (1989) and 69 JPTOS 657 (1987), covering the court's precedential interference opinions published during the previous two-year periods.

[1].According to the court, "Because the activity relating to conception and reduction to practice by Schmid was performed in Canada, DSL is prevented by 35 USC § 104 from establishing an invention date earlier than its filing date of September 9, 1983. . . ." 928 F.2d at 1123, 18 USPQ2d at 1153.

[2].The relevance of the fact that the asserted actual reduction to practice had taken place on a caboose will be explained below.

[3].928 F.2d at 1124, 18 USPQ2d at 1154. Interestingly, the court's opinion does not indicate that the party Blosnick argued that there was anything improper about the party Schmid's relying in the 37 USC 146 action on what the court called "a new theory." 928 F.2d at 1124, 18 USPQ2d at 1154. See Case v. CPC International, Inc., 730 F.2d 745, 752, 221 USPQ 196, 202 (Fed. Cir. 1984), cert. denied, 469 U.S. 872 (1984) (35 USC 146 "authorizes the district court to accept all proffered testimony on issues raised by the parties during the proceedings below or by the board's decision"; emphasis supplied.) Compare American Cyanamid Co. v. Ethicon, Inc. F. Supp. , 13 USPQ2d 1550 (D.N.J. 1989), with Allied-Signal Inc. v. Allegheny, Ludlum Corp., F. Supp. , 18 USPQ2d 1080 (D. Conn. 1990).

[4].The party Schmid's expert witness was the inventor Schmid -- a tactic which ultimately might have detracted from his credibility if the testimony had been admitted.

[5].928 F.2d at 1124, 18 USPQ2d at 1154.

[6].928 F.2d at 1124, 18 USPQ2d at 1154; emphasis in the original.

[7].928 F.2d at 1124, 18 USPQ2d at 1154.

[8].928 F.2d at 1124, 18 USPQ2d at 1154.

[9].It excluded the first category of evidence on the ground that "35 U.S.C. § 146 only allows for the introduction of evidence not presented to the Board if that evidence was unavailable despite diligence by the proponent of the evidence in obtaining it," 928 F.2d at 1124, 18 USPQ2d at 1154, and that the expert testimony of the inventor Schmid was clearly available to the party Schmid during the administrative proceeding. It excluded the second category of evidence on the ground that it was "irrelevant because, in the district court's opinion, such evidence concerning commercial failures two years after reduction to practice was not relevant as to reduction to practice." 928 F.2d at 1124, 18 USPQ2d at 1154. As to the former point, see Case v. CPC International, Inc., 730 F.2d 745, 221 USPQ 196 (Fed. Cir. 1984), cert. denied, 469 U.S. 872 (1984).

[10].Actually, the court used the obsolete phrase "entitled to the award of priority of invention." 928 F.2d at 1124, 18 USPQ2d at 1154. Under the new rules, all interferences are terminated by judgments, and priority of invention is simply one basis for the entry of a judgment.

[11].928 F.2d at 1125, 18 USPQ2d at 1154, citing Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376, 231 USPQ 81, 87 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987).

[12].928 F.2d at 1125, 18 USPQ2d at 1154.

[13].The court did not expressly so hold. However, it said that, "even accepting DSL's argument that coupler mount assemblies are not intended for use on cabooses, we are convinced that the train test were sufficient to reduce the invention to practice." 928 F.2d at 1125, USPQ2d at 1155; footnote omitted.

[14].928 F.2d at 1125, 18 USPQ2d at 1155.

[15].928 F.2d at 1125, 18 USPQ2d at 1155.

[16].Lest the reader think that I am exaggerating, I will quote the court's specific holding: "We are of the opinion that Union Switch's train tests, which applied forces 'in excess of 15 G's,' sufficiently approximated the condition of 'loads to 20 g' which Schmid indicates a coupler mount assembly must withstand on a non-cushioned rail car such as a freight car." 928 F.2d at 1125, 18 USPQ2d at 1155.

[17].928 F.2d at 1126, 18 USPQ2d at 1155, citing Brown-Bridge Mills, Inc. v. Eastern Fine Paper, Inc., 700 F.2d 759, 765-66, 217 USPQ 651, 657 (1st Cir. 1983).

[18].928 F.2d at 1126, 18 USPQ2d at 1155, citing 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), and Randolph v. Shoberg, 590 F.2d 923, 926, 200 USPQ 647, 649-50 (CCPA 1979).

[19].928 F.2d at 1126, 18 USPQ2D at 1155. The use of the adverb "allegedly" seems gratuitous, since the party Blosnick apparently did not argue that those commercial embodiments were outside the scope of the count.

[20].948 F.2d at 1238, 20 USPQ2d at 1713.

[21].948 F.2d at 1239, 20 USPQ2d at 1714. Note that Dr. Zeck was not one of the inventors. He was simply in charge of the testing.

[22].948 F.2d at 1239, 20 USPQ2d at 1714.

[23].948 F.2d at 1239, 20 USPQ2d at 1714.

[24].In Chester the court handled issues of patentability over the prior art just as it would have in an ex parte appeal, creating no troublesome distinctions between how such issues are handled in ex parte and inter partes appeals from the PTO. See Gholz, A Critique of Recent Opinions of the Federal Circuit in Patent Interferences, 73 JPTOS 700, 703-05 (1991).

[25].975 F.2d at 857, 24 USPQ2d at 1144, citing In re Smith, 481 F.2d 910, 914, 178 USPQ 620, 623-24 (CCPA 1973).

[26].The applicant had copied the claim in ipsis verbis from a patent for the purpose of provoking an interference. As to the wisdom of this common tactic, see the discussion of this opinion in the section of this chapter devoted to interference procedure.

[27].975 F.2d at 858, 24 USPQ2d at 1145. The court cited no authority for this proposition, although it might have cited Woods v. Tsuchiya, 754 F.2d 1571, 1578, 225 USPQ 11, 15 (Fed. Cir. 1985).

[28].975 F.2d at 856, 24 USPQ2d at 1144.

[29].754 F.2d 1571, 225 USPQ 11 (Fed. Cir. 1985).

[30].See Gholz, A Critique of Recent Opinions of the Federal Circuit in Patent Interferences, 69 JPTOS 657, 663-64 (1987).

[31].433 F.2d 1403, 167 USPQ 761 (CCPA 1970) (Rich, J.).

[32].433 F.2d at 1406-07, 167 USPQ at 763.

[33].The court's opinion does not expressly indicate that this holding was based on a sua sponte action taken by the examiner-in-chief under 37 CFR 1.641, but that is the fair inference to be drawn from the fact that both interferents sought judicial review of the board's decision. 37 CFR 1.641 reads as follows:

§ 1.641 Unpatentability discovered by examiner-in-chief.

During the pendency of an interference, if the examiner-in-chief becomes aware of a reason why a claim corresponding to a count may not be patentable, the examiner-in-chief may notify the parties of the reason and set a time within which each party may present its views. After considering any timely filed views, the examiner-in-chief shall decide how the interference shall proceed.

[34].The court's opinion does not indicate whether the appeal or the civil action was filed first. Some of the case law in similar situations involved arguments turning on which party requested judicial review first, but apparently the court attached no significance to that kind of priority in this case. However, counsel for Van Geuns has informed me that "Van Geuns filed the Federal Circuit Appeal first. Brown waited almost two months [from the decision of the board] before filing in the District Court."

[35].946 F.2d at 846, 20 USPQ2d at 1292. According to counsel for Van Geuns, "Van Geuns' Motion to Enjoin was based on an election theory since the 20 day period in 35 USC 141 had elapsed."

[36].The appeal from the district court will also lie to the Federal Circuit under 28 USC 1295 (a) (4) (C), and presumably Brown's idea was that, if the loser in the district court then appealed to the Federal circuit, the two appeals would be consolidated -- regardless of who won in the district court.

[37].Cf. Dunner & Gholz, Court of Appeals for the Federal Circuit: Practice & Procedure § 7.04, "The Law Applicable to Separate Appeals from the Same Decision in Multi-Party Situations." For instance, in Nelson v. Berry, 59 F.2d 351, 14 USPQ 57 (CCPA 1932), the court held that the filing of a quasi de novo civil action under the predecessor of 35 USC 146 by one losing party did not prevent another losing party from filing a notice of appeal under the predecessor of 35 USC 141 and that the appeal and the civil action could proceed concurrently with no guarantee that the resolution of the two proceedings would be consistent.

[38].If in fact Brown was not a party to the appeal, then it would seem to me that Brown's motions should have been dismissed, not denied. However, for the reasons advanced below, I think that Brown was a party to the appeal.

[39].946 F.2d at 849, 20 USPQ2d at 1295.

[40].F.2d at 849, 20 USPQ2d at 1295.

[41].946 F.2d at 849, 20 USPQ2d at 1295.

[42].946 F.2d at 850, 20 USPQ2d at 1295; emphasis supplied. In the past, it has been the Commissioner's practice to voluntarily file an amicus curaie brief in such situations. See, e.g., Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir. 1989).

[43].946 F.2d at 849-50, 20 USPQ2d at 1295. According to counsel for Van Geuns, "In addition to the 35 USC 103 patentability issues, Brown's complaint also asserted claims which were clearly inter partes (i.e., Van Geuns' right to make the count and alleged Rule 56 violations)."

[44].See footnote 37, supra.

[45].Cf. footnote 42, supra.

[46].In Chester v. Miller, Miller argued below and before the court that Chester et al.'s claims were unpatentable. In Van Geuns, Brown had apparently argued below that the subject matter of the count (and hence of both parties' claims corresponding to the count) was patentable over the prior art, and the reason that the court found that he was not a proper party to the appeal was that, on appeal, he apparently was going to take the same position.

[47].Such a "change in position" could be easily justified on the basis that a factual determination made by the board was "not clearly erroneous" and that, accordingly, while he had argued for patentability before the board, the board's contrary holding was not reversible on appeal. In essence, that was then, and this is now.

[48].Perkins is distinguishable on the ground that judgment was entered against Perkins under 35 USC 102(g), whereas judgment was entered against Van Geuns on the ground that "the subject matter of the count was unpatentable for obviousness in light of a German reference and a Japanese reference," 946 F.2d at 846, 20 USPQ2d at 1292, which means that the basis of the judgment was 35 USC 102(a) or (b).

[49].Unless the court distinguishes Perkins on the rather unpersuasive basis suggested in the previous footnote, Perkins should be the controlling authority under the authority of Newell Companies, Inc. v. Kenny Mfg. Co., 864 F.2d 757, 765, 7 USPQ2d 1417, 1423 (Fed. Cir. 1989) ("Where there is direct conflict, the precedential decision is the first.")

[50].The court stated that:

The district court complaint . . . features . . . different parties [than the appeal]. Brown is not a party to Van Geuns' appeal in this court on patentability of Van Geuns' claims. Brown's successor is a party in the Delaware district court case. Therefore, the parties in the two cases are different.


946 F.2d at 849, 20 USPQ2d at 1295. However, Brown was initially the appellee in the appeal to the Federal Circuit, just as Van Geuns (and/or his assignee) was initially the defendant in the quasi de novo civil action in the District Court for the District of Delaware. If Brown was not properly named as an appellee in the Federal Circuit, it would seem to follow that Van Geuns (and/or his assignee) was not properly named as a defendant in the district court.

[51].If so, Brown could presumably move to transfer the civil action to the United States District Court for the District of Columbia under 28 USC 1631, which reads in relevant part as follows:

Whenever a civil action is filed in a court as defined in section 610 of this title . . . and that court finds that there is a want of jurisdiction, the court shall, if it is in the interest of justice, transfer such action . . . to any other such court in which the action . . . could have been brought at the time it was filed . . . , and the action . . . shall proceed as if it has been filed in . . . the court to which it is transferred on the date upon which it was actually filed in . . . the court from which it is transferred.


[52].In a private communication to me, counsel for Van Geuns asks: "Since the Commissioner is not a necessary party to a 35 USC 146 action, does Brown have to maintain two separate district court actions?"

[53].37 CFR 1.617(b) provides in pertinent part that:

The applicant may file a response to the order [to show cause why judgment should not be entered against it] and state any reasons why summary judgment should not be entered. . . . Additional evidence shall not be presented by the applicant or considered by the Board unless the applicant shows good cause why any additional evidence was not initially presented with the evidence filed under §1.608(b). [Emphasis supplied.]


[54].973 F.2d at 1565, 23 USPQ2d at 1912.

[55].973 F.2d at 1565, 23 USPQ2d at 1912. Actually, the decision that the original showing was inadequate was made by the examiner-in chief, not by the examiner. 37 CFR 1.617(a).

[56].973 F.2d at 1565-66, 23 USPQ2d at 1912.

[57].The court ruled in Hahn v. Wong, 892 F.2d 1028, 1034, 13 USPQ2d 1313, 1318 (Fed. Cir. 1989), that such rulings are reviewed on an abuse of discretion standard.

[58].If the court had reversed on this issue, it would have remanded the case to the board to decide whether or not the party Huston et al.'s total showing was sufficient to make the prima facie case required by 37 CFR 1.608(b).

[59].973 F.2d at 1566, 23 USPQ2d at 1912.

[60].973 F.2d at 1566, 23 USPQ2d at 1912.

[61].973 F.2d at 1566, 23 USPQ2d at 1912, quoting from Hahn, 892 F.2d at 1034, 13 USPQ2d at 1319.

[62].973 F.2d at 1566, 23 USPQ2d at 1913.

[63].The precedent is Link v. Wabash R.R. Co., 370 U.S. 626, 633-34 (1962).

[64].973 F.2d at 1567, 23 USPQ2d at 1913.

[65].973 F.2d at 1570, 23 USPQ2d at 1916.

[66].Two of those cases are actually PTO cases, albeit neither is from the PTOBPAI: In re Lonardo, 17 USPQ2d 1455 (Comm'r 1990) (revival of abandoned application), and General Motors Corp. v. Cadillac Club Fashions, Inc., 22 USPQ2d 1933 (TTAB 1992) (relief from default judgment). The majority dealt with those cases by noting that "[t]hese cases do not bind us," 973 F.2d at 1567, 23 USPQ2d at 1913, and that, "Even if we were inclined to follow them, the record evidence here does not bring this case within their holdings," 973 F.2d at 1567, 23 USPQ2d at 1913, because it held that the board's finding that the prior counsel had not misrepresented his competence was not an abuse of discretion.

[67].The board's rejection was apparently based only on the written description requirement, although the enablement requirement would have seemed to have been equally applicable.

[68].Sze v. Bloch, 458 F.2d 137, 173 USPQ 498 (CCPA 1972).

[69].37 CFR 1.660(b) reads as follows: "When an application for reissue is filed by a patentee involved in an interference, the patentee shall notify the Board within 10 days of the day the application for reissue is filed."

[70].37 CFR 1.633 reads in relevant part as follows:

A party may file the following preliminary motions:

* * *

(h) When a patent is involved in an interference and the patentee has on file or files an application for reissue under §1.171, a motion to add the application for reissue to the interference.


[71].Since the period for filing first round preliminary motions had expired, the party Gerritsen would have had to file a 37 CFR 1.635 motion for leave to file the 37 CFR 1.633(h) motion, and in the 37 CFR 1.636 it would have had to show 37 CFR 1.645(b) "sufficient cause" for why it had not filed the 37 CFR 1.633(h) motion before the expiration of the period for filing first round preliminary motions.

[72].37 CFR 1.642 reads as follows: "During the pendency of an interference, if the examiner-in-chief becomes aware of an application or a patent not involved in the interference which claims the same patentable invention as a count in the interference, the examiner-in-chief may add the application or patent to the interference on such terms as may be fair to all parties."

According to the opinion:

the examiner-in-chief redeclared the interference when Gerritsen and Aerts surrendered the '279 patent in exchange for the RE '592 patent. The examiner-in chief designated the new reissue claims 10-22 as additional claims corresponding to the interference count. [979 F.2d at 1526, 24 USPQ2d at 1914.]

However, there is no reason why the act of surrendering the original patent (which usually occurs after the claims have been allowed and before the examiner will issue the notice of allowance) should have triggered that action. In fact, counsel for the party Gerritsen has informed me that, when the RE '592 patent issued, opposing counsel brought its issuance to the examiner-in-chief's attention, and the examiner-in-chief thereupon redeclared the interference at that time.

[73].37 CFR 1.662(b) reads as follows: "If a patentee involved in an interference files an application for reissue during the interference and omits all claims of the patent corresponding to the counts of the interference for the purpose of avoiding the interference, judgment may be entered against the patentee. A patentee who files an application for reissue other than for the purpose of avoiding the interference shall timely file a preliminary motion under § 1.633(h), or show good cause why the motion could not have been timely filed or would not be appropriate.

[74].979 F.2d at 1526, 24 USPQ2d at 1914. 37 CFR 1.616 reads in relevant part as follows:

An examiner-in-chief or the Board may impose an appropriate sanction against a party who fails to comply with the regulations of this part or any order entered by an examiner-in-chief of the Board.


[75].979 F.2d at 1526, 24 USPQ2d at 1914.

[76].According to counsel for the party Gerritsen, all nine of its original claims were designated as corresponding to the count.

[77].The party Gerritsen filed a "MOTION FOR JUDGMENT ON THE RECORD," arguing that the board's decision should be reversed because the appellee's failure to file a brief meant that "there is 'no longer any controversy between the parties'." 979 F.2d at 1527, 24 USPQ2d at 1914. Predictably, that argument did not fly. It is not unusual for an appellee to submit on the record, and that does not mean that the appellant automatically wins! See generally Dunner & Gholz, Court of Appeals for the Federal Circuit: Practice & Procedure § 403, "Effect of Failure to File Brief."

[78].The solicitor has taken to doing that with some frequency. See Gholz, A Critique of Recent Opinions of the Federal Circuit in Interferences, 73 JPTOS 700, 706 n. 21 (1991) and accompanying text.

[79].979 F.2d at 1527, 24 USPQ2d at 1915. Note that this was not the first time that the court had reviewed a decision by the board imposing a sanction. See, e.g., Woods v. Tsuchiya, 754 F.2d 1571, 225 USPQ 11 (Fed. Cir. 1985), discussed in Gholz, A Critique of Recent Opinions of the Federal Circuit in Interferences, 69 JPTOS 657, 677-81 (1987). However, the court did so without any explicit determination of its standard of review.

[80].979 F.2d at 1528, 24 USPQ2d at 1915. Compare the court's decision to review decisions by the board to exclude additional evidence submitted under 37 CFR 1.617(b) under the same standard. Hahn v. Wong, 892 F.2d 1028, 1034, 13 USPQ2d 1313, 1318 (1990), discussed at Gholz, A Critique of Recent Decisions of the Court of Appeals for the Federal Circuit in Interferences, 73 JPTOS 700, 707-08 (1991).

[81].979 F.2d at 1528, 24 USPQ2d at 1915.

[82].979 F.2d at 1519, 24 USPQ2d at 1916; emphasis supplied.

[83].979 F.2d at 1529, 24 USPQ2d at 1917.

[84].979 F.2d at 1530, 24 USPQ2d at 1917. There was no contention that the party Gerritsen had filed its reissue application "for the purpose of avoiding the interference."

[85].979 F.2d at 1530, 24 USPQ2d at 1917.

[86].979 F.2d at 1531, 24 USPQ2d at 1918.

[87].979 F.2d at 1531, 24 USPQ2d at 1918.

[88].979 F.2d at 1531, 24 USPQ2d at 1918.

[89].979 F.2d at 1531, 24 USPQ2d at 1918.

[90].979 F.2d at 1532, 24 USPQ2d at 1919.

[91].See Gillette Co. v. "42" Products Ltd., 435 F.2d 1114, 168 USPQ 197 (9th Cir. 1970), which makes this point emphatically in the analogous trademark context, and see generally Dunner & Gholz, Court of Appeals for the Federal Circuit: Practice & Procedure §10.03, which contains a comparative analysis of some of the more important differences between the two procedures.

[92].The Federal Circuit stated its holding more broadly than this. However, as discussed below, this may be the actual practical effect of its holding.

[93].This is one of the rapidly dwindling number of "old rule" interferences remaining active, so the board awarded priority to the party Brennan rather than entering judgment for it.

[94].The attorney fees and the out-of-pocket costs were for the PTO proceeding, not for the §146 action.

[95].952 F.2d at 1349, 21 USPQ2d at 1195.

[96].See generally Dunner & Gholz, Court of Appeals for the Federal Circuit: Practice & Procedure §6.03.

[97].952 F.2d at 1349-50, 21 USPQ2d at 1195, citing Technicon Instruments Corp. v. Alpkem Corp., 866 F.2d 417, 419-20, 9 USPQ2d 1540, 1541-42 (Fed. Cir. 1989) (antitrust counterclaim sole issue on appeal); Atari, Inc. v. JS & A Group, Inc. 747 F.2d 1422, 1427, 223 USPQ 1074, 1077 (Fed. Cir. 1984) (en banc) (copyright issue appealed separately); and Aerojet-General Corp. v. Machine Tool Works, 895 F.2d 736, 741-45, 13 USPQ2d 1670, 1675-77 (Fed. Cir. 1990) (en banc) (discussing the well-pleaded complaint rule in the context of Federal Circuit jurisdiction), and noting an exception to the general rule "when the patent claim is merely 'transient,' Schwarzkopf Development Corp. v. Ti-Coating, Inc., 800 F.2d 240, 245, 231 USPQ 47, 51 (Fed. Cir. 1986) (patent counterclaim dismissed without opposition during pleading stage)." 952 F.2d at 1350, 21 USPQ2d at 1195.

[98].Actually, the patent law only authorizes a party that was dissatisfied with the decision of the board to bring a civil action in the district court -- an important point in view of the fact that the party Brennan won in the PTO and hence could not have made its various claims as counterclaims unless the assignee of the party Muetterties had filed the §146 action.

[99].952 F.2d at 1350, 21 USPQ2d at 1196, citing Cooter & Gell v. Hartmarx Corp., 110 S. Ct. 2447, 2462 (1990).

[100].952 F.2d at 1357, 21 USPQ2d at 1201; footnote omitted, citing Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 9 USPQ2d 1847 (1989). The court "note[d]. . . the holding in Neumann v. Vidal, 710 F.2d 856 (D. C. Cir. 1983), wherein the court refused to dismiss a claim for abuse of process in the PTO when the basis was an anticompetitive motive," 952 F.2d at 1356-57, 21 USPQ2d at 1200-01, but it stated that "We believe that the better general rule is that based on judicial disfavor of collateral attack, under the common law, on proceedings before the PTO." 952 F.2d at 1357, 21 USPQ2d at 1201.

[101].952 F.2d at 1357, 21 USPQ2d at 1201; footnote omitted.

[102].952 F.2d at 1357 n. 5, 21 USPQ2d at 1201 n.5.

[103].952 F.2d 1356, 21 USPQ2d at 1200, citing Eastern Railroad Presidents Conference v.
Noerr Motor Freight, Inc., 365 U.S. 127, 144 (1961).

[104].529 F.2d 1324, 188 USPQ 428 (CCPA 1976).

[105].529 F.2d at 1329, 188 USPQ at 434; emphasis in the original; as quoted by the court in Deckler, 977 F.2d at 1453, 24 USPQ2d at 1450.

[106].The practical problems with the result seemingly dictated by McKellin are horrendous. In essence, an interference won on the basis of foreign priority need never die as long as the losing party had the resources to keep coming back with patentably indistinguishable claims. The PTO would not allow the patentably indistinguishable claims, but the only way that it could prevent their issuance was by the declaration of a new interference.

[107].225 USPQ 907 (PTOBAI 1985) (expanded panel; opinion by Examiner-in-Chief McKelvey).

[108].Interestingly, the PTO's position in Deckler was argued by Solicitor Fred E. McKelvey, the author of the board's opinion in Tytgat.

[109].977 F.2d at 1452, 24 USPQ2d at 1449.

[110].977 F.2d at 1452, 24 USPQ2d at 1449.

[111].977 F.2d at 1453, 24 USPQ2d at 1450.

[112].977 F.2d at 1453, 24 USPQ2d at 1450.

[113].This fact is recognized by 37 CFR 1.660(d), which provides that "A party in an interference shall notify the Board promptly of any litigation related to any patent or application involved in an interference, including any civil action commenced under 35 U.S.C. 146."

[114].Another variant is an action for theft of a trade secret brought by one applicant interferent against another interferent presenting issues very similar to the first interferent's charge of derivation in the interference.

[115].3M's claims to the process using the iron based seeds issued in a patent not involved in the interference.

[116].929 F.2d at 672, 18 USPQ2d at 1304.

[117].929 F.2d at 672, 18 USPQ2d at 1304.

[118].That is, if 3M's assignor won the interference on the ground of priority, all of Norton's claims corresponding to the count would be canceled pursuant to 35 USC 135(a).

[119].929 F.2d at 672, 18 USPQ2d at 1304.

[120].The Declaratory Judgment Act, 28 USC 2201, provides in relevant part as follows: "In a case of actual controversy within its jurisdiction, . . . any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought." (Emphasis supplied.)

[121].929 F.2d at 672, 18 USPQ2d at 1304.

[122].929 F.2d at 673, 18 USPQ2d at 1305.

[123].929 F.2d at 673, 18 USPQ2d at 1305.

[124].929 F.2d at 673, 18 USPQ2d at 1305. Actually, 3M is selling products made by a process that it believes does not infringe. That is, Norton's claims are process claims, not product claims.

[125].929 F.2d at 674, 18 USPQ2d at 1306.

[126].929 F.2d at 674, 18 USPQ2d at 1306.

[127].929 F.2d at 674, 18 USPQ2d at 1306.

[128].929 F.2d at 674, 18 USPQ2d at 1306.

[129].929 F.2d at 675, 18 USPQ2d at 1307.

[130].929 F.2d at 675, 18 USPQ2d at 1306.

[131].973 F.2d at 913, 23 USPQ2d at 1922. This is an odd pleading. Normally a 35 USC 291 plaintiff seeks a judgment that the defendant's patent is (or, at least, selected claims in the defendant's patent are) invalid because the plaintiff has priority over the defendant and/or because the defendant's patent is invalid and/or unenforceable for other reasons.

[132].There is no indication that the district court decided the question of whether K-C infringed the Lawson patent. If it did not, that would have been contrary to the Federal Circuit's frequent admonitions that the district courts should decide both validity and infringement questions, in order to avoid remands. See, e.g., Medtronic, Inc. v. Cardiac Pacemakers, Inc., 421 F.2d 1563, 1578, 220 USPQ 97, 111 (Fed. Cir. 1983).

[133].973 F.2d at 913, 23 USPQ2d at 1923.

[134].973 F.2d at 913, 23 USPQ2d at 1923; emphasis in the original.

[135].Specifically, the court stated that:

The jurisdictional question we must resolve, before evaluating the question of priority, is whether two patent owners, who once did but are no longer accusing each other of patent infringement under section 271, may still be entitled to "relief" under section 291. We conclude that jurisdiction does exist, that a declaration of priority and the subsequent elimination of an invalid patent that claims the same subject matter as claimed in one's patent are "relief" under the statute. [973 F.2d at 914, 23 USPQ2d at 1924.]


[136].973 F.2d at 914, 23 USPQ2d at 1924. The reference to an "eroded" presumption of validity is curious in light of the court's normal insistence that the presumption of validity continues undiminished and unaffected by such things as the examiner's failure to consider material prior art.

[137].973 F.2d at 914, 23 USPQ2d at 1924; emphasis in the original.

[138].973 F.2d at 914, 23 USPQ2d at 1924. One might inquire why this second consideration was not outcome-determinative. As the court said elsewhere in the same opinion concerning a different point:

As with any question of statutory interpretation, analysis of section 116 must begin with its language. Mallard v. U.S. District Court for Southern District, 490 U.S. 296, 300 (1989). Reference to legislative history or other extrinsic evidence of the meaning of a statute is necessary if the statute's language is ambiguous, Burlington N.R.R., Co. v. Oklahoma Tax Comm'n, 481 U.S. 454, 461 (1987), or if the legislative history expresses a clear intent that is not reflected in the statute. Consumer Prod. Safety Comm'n v. GTE Sylvania, Inc., 447 U.S. 102, 108 (1980). [973 F.2d at 915-16, 23 USPQ2d at 1925.]

Here, 35 USC 291 is not ambiguous, and the court gave no indication that "the legislative history [of 35 USC 291] expresses a clear intent that is not reflected in the statute."

[139].973 F.2d at 914-15, 23 USPQ2d at 1924.

[140].35 USC 291 expressly recites that "the court [handling a 35 USC 291 action] may adjudge the question of the validity of any of the interfering patents, in whole or in part."

[141].973 F.2d at 918, 23 USPQ2d at 1926.

[142].See Gholz, A Critique of Recent Opinions of the Federal Circuit in Patent Interferences, 71 JPTOS 439, 445-46 (1989).