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

1994Journal of the Patent and Trademark Office Society, volume 76 (1994), pages 649-85

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 75 JPTOS 448 (1993) through December 31, 1993.[2]

The most welcome interference development of the year was the court's "clarification" of which party bears the burden of proof on preliminary motions in Kubota v. Shibuya[3] ‹ a clarification which limited its prior holding in Martin v. Mayer[4] to old rule interferences. On the other hand, the worst interference development of the year was the court's cavalier disregard of decades of CCPA precedent as to the weight of the burden of proof as to priority in patentee/applicant interferences where the applicant's effective filing date is after the patentee's issue data on the ground that "The issue of the quantum of proof required to establish priority in an interference with an issued patent, is one of first impression in the Federal Circuit."[5]

II. Substantive Interference Law

A. Conception of a Method for Preparing a Compound Does Not Establish Conception of the Compound

In Fiers v. Sugano, 984 F.2d 1164, 25 USPQ2d 1601 (Fed. Cir. 1993) (opinion delivered by Circuit Judge Lourie for a panel that also consisted of Circuit Judge Michel and Senior Circuit Judge Cowen), the court held that conception of a method for preparing a compound does not establish conception of the compound itself.[6]

In this three way interference, the count was drawn to a DNA compound.[7] The party Fiers was a foreign applicant that had been accorded the benefit of its foreign priority application but that was seeking to establish priority by reliance on the prefiling date introduction into this country of a conception of a method of producing that compound coupled with diligence leading to the date of its foreign priority application.[8] The party Fiers "devoted a considerable portion of his briefs to arguing that his method was enabling."[9] However, the court did not decide that issue, saying that "The issue here . . . is conception of the DNA of the count, not enablement."[10] Instead, it rejected the party Fiers's argument as a matter of law, saying that:

We also reject Fiers' argument that the existence of a workable method for preparing a DNA establishes conception of that material. Our statement in Amgen [Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991)] that conception may occur, inter alia, when one is able to define a chemical by its method of preparation requires that the DNA be claimed by its method of preparation.[11]

The court recognized, of course, that, "in addition to being claimable by structure or physical properties, a chemical material can be claimed by means of a process,"[12] but the party Fiers had apparently not attempted to do that,[13] and the court held that "Conception of a substance claimed per se without reference to a process requires conception of its structure, name, formula, or definitive chemical or physical properties."[14] Since the party Fiers could not prove a conception in the United States by that standard, it lost.

Comment: Suppose the party Fiers had presented a product-by-process claim. It seems quite probable that the examiner-in-chief would have designated that claim as corresponding to the count under the test enunciated in 37 CFR 1.601(n)[15] and defined (or redefined on motion under 37 CFR 1.633(c) (1)) the interference on the basis of a count reciting the compound in conventional form or in product-by-process form.[16] If the examiner-in-chief had done that, the result might well have been different.

Unfortunately for our edification, however, the party Fiers did not propose such a count or, apparently, present such a claim, and since it could have moved to do so under 37 CFR 1.633(c) (1) and 37 CFR 1.633(c) (2),[17] it is presumably too late for it to do so now under 37 CFR 1.658(c)[18] and Quadri v. Chu.[19]

B. To Have a Written Description of a Compound Adequate for Priority Purposes, One Must Have a Written Description of the Compound Itself, Not Merely of a Method for Making It

In Fiers v. Sugano, 984 F.2d 1164, 25 USPQ2d 1601 (Fed. Cir. 1993) (opinion delivered by Circuit Judge Lourie for a panel that also consisted of Circuit Judge Michel and Senior Circuit Judge Cowen), which was a consolidated appeal by the two losers in an old rule, three-party interference,[20] the party Revel et al. had been denied the benefit of its foreign priority application on the ground that it did not contain a written description of subject matter within the scope of the count, which read as follows:

A DNA which consists essentially of a DNA which codes for a human fibroblast interferon-beta polypeptide.[21]


The court affirmed, holding that the board's decision was not clearly erroneous.[22] In doing so, it said two very interesting things.

First, the court said that:

An adequate written description of a DNA requires more than a mere statement that it is part of the invention and reference to a potential method for isolating it; what is required is a description of the DNA itself. Revel's specification does not do that. Revel's application does not even demonstrate that the disclosed method actually leads to the DNA, and thus that he had possession of the invention. . . . [23]

Query: Does the court really mean that an application (whether the application in issue or an alleged priority application) has to "demonstrate" that a disclosed method actually leads to a claimed compound? This seems very odd, particularly if the party demonstrates (for instance, in a 37 CFR 1.639(b) declaration) that the disclosed method does in fact inherently lead to the claimed compound.

Of course, in this case, the party Revel et al. had submitted no evidence that the disclosed method would inherently lead to the claimed compound,[24] and the court apparently assumed that the method only might (i.e., could) be used to obtain the claimed compound. Nevertheless, the court's language is troubling.

Second, the court said that:

Because the count at issue purports to cover all DNA's that code for ß-IF, it is also analogous to a single means claim, which has been held not to comply with the first paragraph of section 112. See In re Hyatt, 708 F.2d 712, 218 USPQ 195, 197 (Fed. Cir. 1983) ("the enabling disclosure of the specification [must] be commensurate in scope with the claim under consideration.")[25] Claiming all DNA's that achieve a result without defining what means will do so is not in compliance with the description requirement; it is an attempt to preempt the future before it has arrived.
The Board's determination that the Israeli application does not contain a written description of a DNA coding for ß-IF was thus not clearly erroneous. The Board correctly determined that Revel is not entitled to the benefit of his November 1979 Israeli application since it fails to satisfy the written description requirement of section 112.[26]

Query: What does the court mean by "defining what means will . . . [achieve a result]"? The count was drawn to a DNA compound, but here the court is apparently saying that, to have a written description of a compound, the priority document must contain an enabling disclosure of how to obtain the compound.[27] That is, even if the party Revel et al.'s foreign priority application had had a description of the compound that was word-for-word identical to the count,[28] it would not have had a written description of subject matter within the scope of the count unless it had disclosed a method for making that subject matter. This, it seems to me, confuses the enablement requirement with the written description requirement.[29]

In any event, the court concluded that:

If a conception of a DNA requires a precise definition, such as by structure, formula, chemical name, or physical properties, as we have held [in Amgen Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991)], then a [written] description also requires that degree of specificity. To paraphrase the Board, one cannot describe what one has not conceived.[30]

Comment: The court has apparently held that, to have a written description of a compound (at least for priority purposes) the priority document must have both an enabling disclosure of how to obtain the compound and a "precise definition" of the compound. However, how precise the precise definition must be will no doubt be decided on a case-by-base basis.

C. Claims Designated as Corresponding to a Count Fall with the Count If the Count is Anticipated by the Prior Art; if the Count is Unpatentable Over the Prior Art, the Patentability of the Claims Designated as Corresponding to the Count Must Be Determined on a Claim-By-Claim Basis

In In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993) (opinion delivered by Circuit Archer for a panel that also consisted of Circuit Judges Plager and Rader), the court imposed a bizarre limitation on the PTO's well settled rule that, if a count is held to be unpatentable over the prior art, all of each party's claims designated as corresponding to the count against which the prior art is available time wise are consequently likewise unpatentable over that prior art.[31]

The board's rule is founded on administrative convenience. Based on the requirement of 37 CFR 1.601(f) that "each count shall define a separate patentable invention," the statement in 37 CFR 1.601(f) that "A claim of a patent or application which is not identical to a count, but which defines the same patentable invention as the count, is said to 'correspond substantially' to the count," and the definition of same patentable invention in 37 CFR 1.601(n),[32] the board reasoned that, if a count is unpatentable over the prior art, every claim designated as corresponding to that count against which that prior art is available time wise is likewise unpatentable over that prior art. Thus, 37 CFR 1.633(a) motions for judgments that an opponent's claims designated as corresponding to a count are unpatentable over the prior art typically argue that the count, considered as a claim, is unpatentable over the prior art and that, accordingly, all of the opponent's claims designated as corresponding to the count are unpatentable over the prior art.[33] The opponent can respond to such a motion by traversing it (i.e., by arguing either that the alleged prior art is not in fact available as a reference against it or that the count, considered as a claim, is patentable over the prior art); by moving under 37 CFR 1.633(i) and 37 CFR 1.633(c) (1) to substitute a narrower count that is patentable over the prior art; and/or by moving under 37 CFR 1.633(i) and 37 CFR 1.633(c) (4) to designate one or more of its claims as not corresponding to the imperiled count [34] (i.e., as patentable even if the count is not).[35]

The bizarre limitation that the court has now placed on this administratively convenient procedure is that the board can rely on this strategy if the count is anticipated by the prior art, but not if the count is merely unpatentable over the prior art. According to the court:

As a general proposition, the position of the Commissioner that claims designated as corresponding to a count stand or fall with the patentability of the subject matter of the count is overbroad.[36]

***

[I]f the . . . prior art reference anticipates the subject matter of the count (i.e., the prior art reference has elements corresponding to each and every limitation in the count), all claims that have been designated as corresponding to that count would be unpatentable for anticipation or obviousness. See 37 C.F.R. § 1.601(n). [37]

***

Where the rejection [sic; the rationale of the 37 CFR 1.633(a) motion] is for obviousness, however, the prior art and the subject matter of the count are not the same (i.e., the prior art reference does not have elements corresponding to each and every limitation in the count). In such case, the claims designated as corresponding substantially to the count are not necessarily the same invention as the prior art (i.e., anticipated or made obvious by that art) even though they are conceded to be the same invention as the count. * * * [Accordingly?] The PTO must determine, based on the actual prior art reference or references, whether claims not corresponding exactly to the count are unpatentable. [38]

Comments: The distinction made by the court makes no sense. Whether the count is anticipated by the prior art or only unpatentable over the prior art, the claims that do not correspond exactly to the count are, by definition, different from the count. That is, they each contain at least one limitation that is not contained in the count. The situation can be illustrated in Venn diagram form as follows, with the big circle being the count, the small circles being claims designated as corresponding to the count, R1, being a reference that anticipates the count, and R2, being a reference that only makes subject matter within the scope of the count obvious:

-- see printed publication for this image --

If the board can infer that those additional limitations contained in the claims but not in the count would not have made the subject matter of those claims patentable over R1, why can it not make that same inference with respect to R2? In each case, the respondent has the ability to try to pull its claims that do not correspond exactly to the count out of harm's way by filing appropriate 37 CFR 1.633(i)/1.633(c) (1) and/ or 37 CFR 1.633(i)/1.633(c) (4) motions.

On a more practical note, there are many pending interferences in which the parties (both movants and respondents) have relied on the rule that the court has now overturned. Presumably the board will not be able to apply the old rule to those cases, but will it permit the parties to rebrief pending 37 CFR 1.633(a) motions and/or pending unpatentability-over-the-prior-art issues at final hearing where one or both of the parties has relied on the old rule?[39]

D. There is a Corroboration Requirement, But It Is Interpreted Under the Rule of Reason, Which Requires That All of the Inventor's Evidence Be Considered

In Price v. Symsek, 988 F.2d 1187, 26 USPQ2d 1031 (Fed. Cir. 1993) (opinion delivered by Chief Circuit Judge Nies for a panel that also consisted of Circuit Judges Archer and Mayer), the court reaffirmed that there is a corroboration requirement,[40] but it interpreted that requirement exceedingly liberally.

According to the court, "an inventor's testimony, standing alone, is insufficient to prove conception -- some form of corroboration must be shown,"[41] and, "As with the conception element of Price's case, corroboration is required to support his testimony regarding communication [the party Price had charged that the party Symsek had derived the invention from it] and reasonable diligence."[42] However, the court explained that "A 'rule of reason' analysis is applied to determine whether the inventor's prior conception testimony [and, presumably, his or her communication, diligence, and actual reduction to practice testimony] has been corroborated."[43]

So far, the court's analysis is neither novel nor startling. However, the court went on in a fashion that arguably weakens the corroboration requirement still further. The issue was whether a drawing by the inventor submitted to show conception of the invention had been adequately corroborated by a declaration which stated in relevant part that:

Exhibit [13] attached hereto is a true and accurate copy of Drawing No. PI 578-795 dated March 20, 1982. It is the regular practice of Price Industries to make and maintain drawings such as Exhibit [13]. I recall seeing Exhibit [13] on or around March 20, 1982.[44]


The board held that the declaration did not corroborate Exhibit 13 because Ms. Price did "not attribute the drawing to the applicant Price . . ."[45] (i.e., there was only Mr. Price's testimony that the drawing reflected his conception of the invention) or "indicate that she had any understanding of its content . . ."[46] (i.e., Ms. Price had no basis for believing that the drawing was unchanged from the time that she saw it "on or around March 20, 1982" to the time that it was introduced into evidence).

However, the court reversed the board's holding on corroboration,[47] reasoning that:

The board erred in its understanding that what a drawing discloses invariably needs to be supported by corroborating evidence. ***
Exhibit 13 is [sic; was] before the board for the board to make its own determination as to what this piece of evidence discloses.[48]


Moreover:

Only the inventor's testimony requires corroboration before it can be considered. * * * While evidence as to what the drawing would mean to one of skill in the art may assist the board in evaluating the drawing, the content of Exhibit 13 does not itself require corroboration.[49]

Comment: If the court really meant to say that an inventor's writing that allegedly dates from the time of his alleged inventive acts does not have to be corroborated, but only the testimony that the inventor gives during the interference itself, that will work a major change in interference law. Moreover, even if the court only meant that the existence of a writing as of a given date can be corroborated by one who has not been shown capable of understanding the writing (and therefore has no way of knowing whether the writing has been modified between the time that he or she saw it and the time that it is offered into evidence), that too will work quite a change in interference law. For one thing, it will mean that the standard advice that getting a laboratory notebook witnessed by someone on the night cleaning crew is inadequate corroboration is now obsolete!

However, it should be borne in mind that, even if the court does eventually do away with the mandatory corroboration requirement altogether, such things as the relationship between a corroborating witness and the inventor and the corroborating witness's ability to understand the evidence that he or she is corroborating will still go to the weight that the board should give to the corroborating witness's testimony. As the court said in this case:

The board did not reject . . . [Ms. Price's] testimony for lack of credibility but for lack of sufficiency. Secretary Price's affidavit, if believed, corroborates that Exhibit 13 was prepared before Symsek's date of conceptional.[50]


Thus, it will apparently still be open to the board on remand to say that, apart from the requirement for corroboration, it simply does not believe that the party Price established with Ms. Price's affidavit that Exhibit 13 existed in the form in which it was offered into evidence prior to the party Symsek's date of conception.

E. An Interferent's Claims Can Be Unpatentable Under 35 USC 102(e) Over a Patent That Matured From a Parent of Its Opponent's Application in Interference

In Davis v. Loesch, 998 F.2d 963, 27 USPQ2d 1440 (Fed. Cir. 1993) (opinion delivered by Circuit Judge Schall for a panel that also consisted of Circuit Judge Plager and Senior District Judge Curtin), the court affirmed a holding that the party Davis's claims designated as corresponding to the count were unpatentable under 35 USC 102(e) as anticipated by or under 35 USC 102(e)/103 as obvious over a patent not involved in the interference that had matured from the parent of the party Loesch's application in interference. The relevant dates were as follows:

The Party Loesch The Party Davis
March 31, 1980: parent application filed.  
  July 16, 1983: application filed.
  December 20, 1983: patent in interference issued.
March 14, 1984: continuation application (the application in interference) filed.  
March 27, 1987: patent issued on parent application.  

The interference was between the party Loesch's continuation application and the party Davis's patent (and an application to reissue the party Davis's patent); the party Loesch's patent was not involved in the interference. [51]

In the declaration of the interference, the party Loesch was given the benefit of the filing date of its parent application, which made it the senior party. The party Davis filed a 37 CFR 1.633(g) motion attacking the party Loesch's entitlement to the benefit of the filing date of its parent application, but, curiously, it did not file a 37 CFR 1.633(a) motion attacking the patentability of any of the party Loesch's claims on the ground that they were not supported by the party Loesch's application in interference.[52] For its part, the party Loesch filed a 37 CFR 1.633(a) motion for a judgment that the party Davis's claims designated as corresponding to the count were either anticipated by or unpatentable over the party Loesch's patent, which of course was a 35 USC 102(e) reference against the party Davis's claims. The party Davis made no attempt to antedate the party Loesch's patent. Instead it argued that its claims were patentable over the party Loesch's patent. In addition, it filed a 37 CFR 1.633(c) (4) motion[53] for a judgment that its claims 43-55 were patentably distinct from the count -- i.e., that it was entitled to those claims even if the party Loesch obtained a judgment of priority as to the count.

The party Davis lost as to every issue.

As to the priority issue, the examiner-in-chief held that the party Loesch was entitled to the benefit of the filing date of its parent application. Since the party Davis's preliminary statement did not allege an invention date before the party Loesch's priority date, that meant that the party Davis was placed under a 37 CFR 1.640(d) order to show cause why judgment should not be entered against it.[54] The parties' disclosures were quite different, and the party Davis argued that the count did not read on the disclosure of the party Loesch's priority application. However, the broad language of the count had originated as broad language in the party Davis's claim 1. The board accordingly entered judgment against the party Davis at final hearing, and the court affirmed the board, applying the familiar maxim that, "when an applicant selects language which is somewhat broad in scope, he takes the risk that others with specifically different structures may be able to meet the language selected. . . ."[55]

The examiner-in-chief also denied the party Davis's 37 CFR 1.633(c) (4) motion, the board affirmed the examiner-in-chief, and the court at least impliedly affirmed the board. The reason that I say that the court "at least impliedly affirmed the board" on this issue is that the court's opinion does not discuss this issue separately, and it is arguable that the court did not realize that it was a separate issue from the question of whether those claims were patentable over the Loesch patent. However, the board had so held, and the court's opinion concludes that "we affirm the decision of the Board."[56]

Finally, the examiner-in-chief held that all of the party Davis's claims designated as corresponding to the count were unpatentable over the Loesch patent, the board affirmed the examiner-in-chief, and the court affirmed the board, using some amazing logic. According to the court:

The Board's finding of anticipation [of the party Davis's claims 1, 4, 5, 41, 42, 50, 53, and 54] was dictated by its determination that the Loesch patent sufficiently discloses all elements of the interference count, to which the referenced claims correspond.[57]


The reason that this logic is amazing is that, although the fact that the Loesch patent disclosed subject matter within the scope of the count meant that it disclosed subject matter within the scope of the party Davis's claim 1 (which was identical to the count), it did not necessarily mean that the Loesch patent disclosed subject matter within the scope of the party Davis's claims 4, 5, 41, 42, 50, 53, and 54![58] Moreover, the court did not rely on the all-claims-designated-as-corresponding-to-a-count-anticipated-by-the-prior-art stand-or-fall-together rationale of In re Van Geuns.[59] Instead, it seems to have simply failed to appreciate that the party Davis's claims 4, 5, 41, 42, 50, 53, and 54 recite different subject matter than the count!

III. Interference Procedure

A. Once the Examiner-In-Chief Grants a Motion for the Benefit of the Filing Date of a Priority Application, the Movant Has No Further Burden to Prove By Extrinsic Evidence that Its Priority Application Is Enabling

In Fiers v. Sugano, 984 F.2d 1164, 25 USPQ2d 1601 (Fed. Cir. 1993) (opinion delivered by Circuit Judge Lourie for a panel that also consisted of Circuit Judge Michel and Senior Circuit Judge Cowen), the party Sugano et al. sought and obtained the benefit of the filing date of its Japanese priority application by way of a motion filed during the motions period.[60] The motion for benefit was accompanied by a certified translation of the party Sugano's priority application, but, as is usually the case, it was not accompanied by an evidentiary declaration. Both of the other parties in this three party interference opposed the party Sugano et al.'s motion,[61] but neither of them filed an evidentiary declaration in opposition to the motion. During the testimony period, none of the parties offered testimony on the issue of the party Sugano's entitlement to its priority date,[62] and neither Mr. Sugano nor either of his co-inventors testified.

At final hearing, the board held that the parties Fiers and Revel et al. had failed to persuade it that the primary examiner's decision[63] on the motion for benefit was erroneous.[64] On appeal, the party Fiers:

argue[d] that Sugano failed to prove that his application is enabling because he did not produce extrinsic evidence showing enablement. Fiers also argue[d] that the Board erroneously imposed a burden on him to show that Sugano's application is not enabling when, in fact, Fiers had no right to submit rebuttal evidence once Sugano elected to rely solely on his Japanese application.[65]
However, the Federal Circuit rejected both arguments, reasoning as follows:

"[A][U.S.] specification disclosure which contains a teaching of the manner and process of making and using the invention in terms which correspond in scope to those used in describing and defining the subject matter sought to be patented must be taken as in compliance with the enabling requirement of the first paragraph of § 112 unless there is reason to doubt the objective truth of the statements contained therein which must be relied on for enabling support." In re Marzocchi, 439 F.2d 220, 223, 169 USPQ2d 367, 369 (CCPA 1971). "[A]ny party making the assertion that a U.S. patent specification or claims fails, for one reason or another, to comply with § 112 bears the burden of persuasion in showing said lack of compliance." Weil v. Fritz, 601 F.2d. 551, 555, 202 USPQ 447, 450 (CCPA 1979). Thus, once the examiner[66] accepted the sufficiency of Sugano's specification [query: The U.S. specification or the Japanese specification?], Sugano had no further burden to prove by extrinsic evidence that his [Japanese] application was enabling; the Board correctly determined that it was Fiers (or Revel) who then had to prove that Sugano's [Japanese] application was not enabling. Even if Fiers had no opportunity to cross-examine Sugano because Sugano elected to stand on his filing date, Fiers had other opportunities, including during the motion period, to challenge Sugano's entitlement to his Japanese application filing date. Thus, he did not lack opportunity to challenge.[67]
Comment: In re Marzocchi dealt with a U.S. application, not a foreign priority application. Hence, it does not seem to be relevant to the point in issue -- namely, whether the party Sugano et al. was entitled to the benefit of the filing date of its Japanese priority application.

B. The Burden of Proof as to Priority Issues on a Junior Party Applicant Whose Effective Filing Date Is After a Senior Party Patentee's Issue Date Is Clear and Convincing Evidence, Not Beyond a Reasonable Doubt

It has been the law time out of mind that a junior party applicant whose effective filing date is after a senior party's issue date has to prove priority issues beyond a reasonable doubt.[68] The logic, apparently, is that a junior party that did not even get around to filing its application until after the senior party's patent issued is probably trying to steal the invention from the senior party (since the senior party's disclosure was available to the junior party before it filed its application) and is therefore to be presumed a liar and a horse thief until it establishes otherwise.

In Price v. Symsek, 988 F.2d 1187, 26 USPQ2d 1031 (Fed. Cir. 1993) (opinion delivered by Chief Circuit Judge Nies for a panel that also consisted of Circuit Judges Archer and Mayer), however, the court overturned decades of prior law, saying that:

the core thought or value running through . . . [the patent cases in which "beyond a reasonable doubt" statements have been made] is that the proof which establishes another's priority of invention over the patentee's must be highly persuasive and lead to a thorough conviction in one's mind of the truth of the challenger's position. However, the evidentiary standard usually used in civil cases, clear and convincing evidence, is sufficient for this purpose. *** An interference involving an already issued patent embraces the societal interests derived from the statutory presumption that an issued patent is valid.[69] These interests require a standard of proof higher than a mere, or dubious, preponderance of the evidence.[70]


Moreover, according to the court, "The patent cases in which 'beyond a reasonable doubt' statements have been made were not in the context of a reasoned analysis that a societal value was at stake requiring the highest degree of proof,"[71] and "We see no reasonable justification for extending a criminal standard into the field of patent law or using verbiage which can only lead to confusion."[72]

Comment: If the court had been writing in the context of a case of first impression,[73] the parts of its analysis relating to patent application interferences in which the applicant's filing date is after the patentee's issue date would have made considerable sense. However, contrary to what the court said, the appellee was not asking the court to "extend[ ] a criminal standard into the field of patent law. . . ." Instead, the appellant was asking the court to overtum an extremely well settled rule of patent law. Also, that rule had not "[led] to confusion." It had, no doubt, led to junior parties' losing interferences in this situation where they would have won under the new standard set by the court in this case, but the board and (at least in most cases) counsel for the parties clearly understood what the law was. Thus, it seems to me that the court's stated reasons for changing the law are not persuasive.

Moreover, the court's opinion itself introduces a major source of confusion into the law. The CCPA's precedent requiring a higher quantum of proof applied only where the applicant interferent's filing date was after the patentee interferent's issue date -- not in every interference between an application and an issued patent. In the far more common situation in patent application interferences where the applicant interferent's filing date is before the patentee interferent's issue date, the CCPA's precedent required of the applicant only that it meet the normal preponderance-of-the-evidence standard, which is also applicable in application-application interferences. Now the $64 question is whether, by its broad language concerning "[a]n interference involving an already issued patent," the court has sought to raise the standard in those interferences to the intermediate level at the same time that it lowered the standard to the intermediate level in the relatively rare situation that was actually before it.[74]

C. The Burden of Proof is On the Party Attacking an Interlocutory Order -- Including an Interlocutory Order Contained in the Declaration of an Interference

In Kubota v. Shibuya, 999 F.2d 517, 27 USPQ2d 1418 (Fed. Cir. 1993) (opinion delivered by Circuit Judge Lourie for a panel that also consisted of Circuit Judge Plager and Senior Circuit Judge Cowen), the court ruled that, in contrast to practice under the old rules,[75] in new rule interferences the burden of proof is always on the party attacking an interlocutory order -- including an interlocutory order contained in the declaration of the interference, whether or not one of the parties had copied claims from the other.

The party Kubota was a patentee, and the party Shibuya had copied claims from it. In the declaration of the interference, the party Shibuya was accorded the benefit of its Japanese priority date, making it the senior party. However, the party Kubota filed a 37 CFR 1.633(g) motion[76] attacking that benefit, and the examiner-in chief granted that motion, which resulted in the reversal of the order of the parties.[77] Neither party submitted evidence of priority prior to its filing date,[78] and the case went to final hearing with the sole issue being the propriety of the examiner-in-chief's interlocutory order granting the party Kubota's 37 CFR 1.633(g) motion.

The count recited a mixture of two components. The sole disclosure in the party Shibuya's priority application of how to make one of those two components was that it was "disclosed in Japanese Patent Application No. 171765/1983 filed by the present applicant."[79] However, that Japanese patent application was unpublished at the time that the party Shibuya's Japanese priority application was filed, and the examiner-in chief agreed with the party Kubota that "Shibuya had improperly relied on the referenced 1983 application to incorporate essential material because that application was not within the category of documents that could be permissibly incorporated by reference. MPEP 608.01(p)."[80] That is, whether or not the incorporation by reference was proper under Japanese law, it was not recognized under U.S. law. That meant that, according to the party Kubota and the examiner-in-chief, the disclosure of the Japanese priority application was inadequate under 35 USC 119 to entitle the party Shibuya to the benefit of its Japanese priority date.[81]

At final hearing, the board reversed the examiner-in-chief on the ground that the party Kubota had failed to submit "any credible evidence to . . . establish that one skilled in the art could not practice the invention in issue upon reading Shibuya's priority document without resort to the Japanese application . . . which is incorporated-by-reference in the priority document."[82] That is, the panel of the board did not disagree with the examiner-in-chief on the inadequacy of the incorporation by reference under U.S. law, but it did rule that the burden of proof had been on the party Kubota to negative the possibility that the disclosure of the party Shibuya's priority document was adequate even without the incorporation by reference and that the party Kubota had failed to carry that burden.[83] The reason that this opinion is of particular interest is that the board ruled that the burden of proof on this point was on the party Kubota despite the facts that it was a patentee and that the party Shibuya had copied claims from the party Kubota's patent.[84]

On appeal, the court indicated that the first issue before it was whether "the Board correctly determined that Kubota bore the burden of proof on his section 1.633(g) motion . . ."[85] The board had ruled that, "under section 1.633 of the rules, a party filing a preliminary motion, including a motion attacking the benefit accorded another party under subsection (g), bears the burden of proof as to the requested relief,"[86] and the Commissioner filed a brief amicus curiae urging the court to affirm the board's interpretation of the new rules. (It should be noted here that this point was controversial only because the court had held that this was not the case under the old rules,[87] and the Commissioner was urging that the new rules required a different result even though they did not expressly say so.[88])

Apparently somewhat dubious of the Commissioner's logic,[89] the court stated that it "accept[ed] the Commissioner's reading of these rules because it is entitled to deference . . . ,[90] and because it is consistent with the language of the rules."[91] Thus,

while the burden initially may be on a party seeking to provoke an interference, or seeking to obtain entitlement to a priority date, once an interference has been declared and a party seeks to change the status of the parties by motion, the burden is then on the movant under the new rules, rather than on the party originally provoking the interference or obtaining entitlement.[92]

Comment: The practical significance of this opinion is to emphasize the importance of 37 CFR 1.604 requests (for interferences between applications) and 37 CFR 1.607 requests (for interferences between an application and a patent). In both cases, the party seeking to provoke an interference is required to propose (1) at least one count, (2) which of its claims should be designated as corresponding to the or each proposed count, and (3) which of its prospective opponent's claims should be designated as corresponding to the or each proposed count. While the examiner is not bound to adopt the suggestions in a 37 CFR 1.604 or 37 CFR 1.608 request in filling out the form in which he or she recommends initiation of an interference, practically speaking the examiner usually does adopt those suggestions if they are reasonable. Similarly, while the administrative patent judge to whom the case is assigned pursuant to 37 CFR 1.610 is not bound to adopt the examiner's suggestions in declaring the interference, practically speaking the administrative patent judge usually does adopt those suggestions if they are reasonable. Accordingly, if 37 CFR 1.604 and 37 CFR 1.608 requests are done right, they can have enormous impact on the course of the resulting interference.

D. A Significant Change in the Law Entitles a Party, to a Reopened Testimony Period

In Kubota v. Shibuya, 999 F.2d 517, 27 USPQ2d 1418 (Fed. Cir. 1993) (opinion delivered by Circuit Judge Lourie for a panel that also consisted of Circuit Judge Plager and Senior Circuit Judge Cowen), the court affirmed a holding by the board that, contrary to a considerable body of precedent under the old rules and a few cases under the new rules, the burden of proof is always on the party attacking an interlocutory order -- including an interlocutory order contained in the declaration of an interferences.[93] Under the circumstances, the party Kubota argued that, if the court affirmed the board's determination that it bore the burden of proof, the court should remand the case for a limited testimony period so that it could present evidence relevant to meeting that burden. Somewhat surprisingly, the Commissioner (who appeared as an amicus curiae) took the same position:

Both Kubota and the Commissioner argue that the Board's reapportionment of the burden of proof constitutes a significant change in the law and that remand for purposes of a limited testimony period is thus appropriate. The Commissioner acknowledges confusion within the PTO and the practicing bar as to the proper allocation of the burden of proof in preliminary motions attacking the benefit accorded another party, and [he] believes that remand is the appropriate course.[94]

The court stated that it agreed with the party Kubota and with the Commissioner.[95] However, its opinion is far from clear as to exactly what the board should do on remand. First the court stated that it "conclude[d] that the Board should have followed the same course [as in Behr v. Talbott[96]] in the instant case."[97] In Behr, the board remanded the interference to the examiner-in-chief with instructions to permit the party Talbott to refile its 37 CFR 1.633(a) and 37 CFR 1.633(g) motions in accordance with the new rules on burden of proof established in that case. Later in its opinion, however, the court said that,

although we uphold the Board's determination that Kubota bears the burden of proof on its section 1.633(g) motion, we remand for a limited testimony period so that Kubota, now fully informed of his burden, can present any relevant evidence.[98]


Thus, what is the board to do? Is it to order a limited testimony period, after which the issue will again be briefed for determination by a panel of three examiners-in-chief at final hearing? Or, when it receives the remand from the court, is it to in turn remand the interference to the examiner in-chief with instructions to permit the party Kubota to file a revised 37 CFR 1.633(g) motion?[99]

Furthermore, if the board simply reopens testimony, will that restore the effect of the examiner-in-chief's original decision granting the party Kubota's 37 CFR 1.633(g) motion, meaning that, at the second round final hearing the burden will be on the party Shibuya to persuade the board that the examiner-in-chief's decision was in error? Or, if the board does remand the interference to the examiner-in-chief with instructions to permit the party Kubota to file a revised 37 CFR 1.633(g) motion, will the burden be on the party Kubota to persuade the examiner-in-chief that the interlocutory decision embodied in the notice declaring the interference (i.e., the order giving the party Shibuya the benefit of the filing date of its Japanese priority application) was erroneous?

IV. Post-Interference Practice

A. District Court in a 35 USC 146 Proceeding Has Discretion to Admit or to Refuse to Admit Testimony Concerning Issues Not Raised Before the Board

General Instrument Corp. v. Scientific-Atlanta, Inc., 995 F.2d 209, 27 USPQ2d 1145 (Fed. Cir. 1993) (opinion delivered by Circuit Judge Clevenger for a panel that also consisted of Chief Circuit Judge Nies and Circuit Judge Rader), answers two of the questions left open in Case v. CPC Int'l, Inc.[100] As summarized by the court in General Instrument:

Case left open three questions. . . . The court explicitly stated that "[w]hether under some circumstances a district court may properly restrict the admission of testimony on an issue raised before the board is not before us." Id., 221 USPQ at 202. Similarly, the court in Case did not determine how one demonstrates that an issue has been raised before the Board in a manner sufficient to qualify it for testimonial admission in a section 146 proceeding. Finally, Case left undecided the question of whether a district court may admit testimony in a section 146 proceeding on an issue concededly not raised in any fashion before the Board.[101]


In General Instrument, the court again specifically left open the first question,[102] but it inferentially decided the second question by reviewing the record before the board and affirming the holding of the district court that the issue in question "was not raised before the Board for purposes of a section 146 proceeding."[103] As for the third question left open by the court in Case, the Federal Circuit specifically held that whether or not the district court in a 35 USC 146 proceeding should admit evidence on an issue not raised before the board[104] is an equitable question and that the district court has discretion either to admit the evidence or to refuse to admit the evidence:

we need pause only briefly to consider whether the district court has the authority to admit such evidence in a section 146 proceeding. District court review of an interference proceeding under section 146 is an equitable remedy of long standing. Standard Oil Co. v. Montedison S.p.A[.], 540 F.2d 611, 616-17, 191 USPQ 657, 660-61 (3d Cir. 1976). As such, the district court may, in appropriate circumstances, exercise its discretion and admit testimony on issues even though they were not raised before the Board. See id. (fraud relating to the interference proceeding itself may be one such issue).[105]

The issue in question in General Instrument was the existence of "an allegedly invalidating public use more than one year before the filing date of Scientific-Atlanta's patent application."[106] Scientific-Atlanta's assignor (the party Lowry) filed a preliminary statement alleging an actual reduction to practice more than a year before its filing date. According to the court:

Upon reading Scientific-Atlanta's preliminary statement, someone familiar with Scientific-Atlanta's patent application would note that Scientific-Atlanta's reduction to practice date corresponded to the date the inventor demonstrated his product at the 1982 National Cable Television Association meeting and that this public demonstration had taken place more than one year before the June 24, 1983 patent application date. If the product publicly demonstrated had been Scientific-Atlanta's claimed invention, its showing would render the claims covering the invention invalid because an inventor is not entitled to a patent if the invention was in public use more than one year prior to the date of the U.S. patent application.[107]


Of course, that preliminary statement remained sealed to General Instrument's assignor (the party Romao) until after the preliminary motions were decided.[108] However, concurrently with the service of its preliminary statement, the party Lowry sent the party Romao a copy of a 37 CFR 1.56(a) information disclosure statement in which it stated that:

[s]ince the filing of the Preliminary Statement, the Party [Scientific-Atlanta] and its attorney have come to understand that the circumstances of the 1982 reduction to practice may also be material with regard to issues under 35 U.S.C. § 102(b). Now that the circumstances and dates raised in [Scientific-Atlanta's] Preliminary Statement have been served on [General Instrument], it is appropriate also for the Examiner [sic; examiner-in-chief?] to consider these circumstances in connection with § 102(b).[109]

At that point, the party Romao plainly could have filed a 37 CFR 1.635 motion for leave to file a belated 37 CFR 1.633(a) motion charging that the actual reduction to practice was actually an invalidating public use and asking for testimony pursuant to 37 CFR 1.639(c)[110] and discovery pursuant to 37 CFR 1.687(c).[111] However, the party Romao did not do that.

Moreover:

A year later, in June 1989, Scientific-Atlanta filed a second information disclosure statement accompanied by several affidavits supporting its contention that the invention claimed in Scientific-Atlanta's application had not actually been reduced to practice at the public trade show; rather the inventor merely had demonstrated a simulated device. At that time, General Instrument affirmatively chose not to cross examine the affiants supporting Scientific-Atlanta's information disclosure statement on the question of patentability.[112]

At this point, the court's opinion becomes a little difficult to follow. According to it:

The examiner-in-chief construed General Instrument's submission to eschew further pursuit of any patentability issue. Without addressing Scientific-Atlanta's possible prior public use, the Board determined that the Scientific-Atlanta application had priority over the General Instrument patent and, thus, that General Instrument was not entitled to its patent.[113]


However, regardless of what the court meant by "General Instrument's submission to eschew further pursuit of any patentability issue," it seems clear that General Instrument did in fact fail to pursue the patentability issue before the board.

Nevertheless, after it lost before the board and filed a 35 USC 146 action against the party Lowry's assignor, the patentability issue was the only issue that General Instrument wanted to try.[114] Scientific-Atlanta moved in limine to preclude all testimony on that issue, and the district court granted that motion and consequently entered judgment in favor of Scientific-Atlanta. This appeal followed.

Having decided that the district court had discretion to refuse to permit General Instrument to raise before it an issue that General Instrument had not raised before the board, the Federal Circuit had no difficulty at all in deciding that the district court had not abused its discretion:

Upon careful review of the history of the Scientific-Atlanta (Lowry)/General Instrument (Romao) interference proceeding, the district court concluded that General Instrument's abject failure properly to raise the [patentability] issue in the interference proceeding warrranted the court's discretionary decision to deny admission of testimony on the [patentability] issue at trial. By no means can we find that the district court abused its discretion on this matter.[115]

The Federal Circuit did, however, conclude with a cautionary note:

Lest the parties or the public be concerned that Scientific-Atlanta may now return to the PTO and immediately be granted a patent of questionable validity based on the Lowry application, counsel for Scientific-Atlanta has assured this court that it will ensure that the PTO fully considers the allegation of public use before any patent issues.[116]

Comment: There is, no doubt, a public interest in minimizing the risk of issuance of invalid patents. However, there is also a public interest in ensuring that all issues between or among the parties relating to the subject matter of the interference are raised before the board,[117] which is an expert forum specifically constituted to deal with patent interferences, rather than being reserved for decision by a district court -- which is certainly not an expert forum when it comes to dealing with patent issues. Thus, it is to be hoped that the Federal Circuit, if it will not simply rule that interferents cannot raise in 35 USC 146 proceedings issues that they did not raise during the administrative proceeding, will at least limit the issues that can be raised in 35 USC 146 proceedings despite the fact that they were not raised below to issues such as the one that it mentioned in its opinion -- namely, "fraud relating to the interference proceeding itself. . . ."[118]

V. Relation of Interference Proceedings to Court Proceedings

A. There is a Difference Between Determining Which of Two Rival Company Claimants Owns an Invention and Determining Which of Two Rival Inventive Entities Made the Invention First, and the Board Has Jurisdiction to Decide the Priority Issue Despite the Pendency of District Court Litigation Over Title Between the Assignees of the Parties Before It

Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 26 USPQ2d 1572 (Fed. Cir. 1993) (opinion delivered by Circuit Judge Rich for a panel that also consisted of Circuit Judges Archer and Lourie), involved parallel district court litigation between Beech and EDO over title to an invention and an interference between Beech's assignor (the party Jonas) and EDO's assignor (the party Abildskov) over who made the invention first. That is, in the district court litigation, Beech argued that it owned the invention regardless of whether the party Jonas or the party Abildskov had made the invention first, and in the interference Beech had apparently at least originally asserted that the party Jonas had made the invention first.[119] However, when the party Jonas (which was the junior party) failed to take testimony, the examiner-in-chief issued it a show cause order under 37 CFR 1.652.[120] The party Jonas failed to file a timely response to the show cause order, and the board consequently entered judgment against the party Jonas.[121]

Beech then filed a 35 USC 146 action in the United States District Court for the District of Columbia to review the decision in the interference.[122] In 35 USC 146 actions, both parties can request relief other than review of the board's decision,[123] and Beech's Count IV in the 35 USC 146 action "requested that the court order EDO to assign . . . [its patent and application] to BEECH."[124]

Beech later filed yet another suit against EDO in Kansas, the 35 USC 146 action was transferred to Kansas pursuant to 28 USC 1404(a),[125] the two cases were consolidated, and the parties filed cross-motions for summary judgment on the assignment issue. In an opinion that the Federal Circuit repeatedly criticized as confusing (or, more accurately, confused), the district court denied both parties' motions for summary judgment and vacated the decision of the board. As explained by Judge Rich:

The district court apparently believed that vacating the Board's interference decision on "priority," i.e., who was the first inventor in law, somehow rendered the assignment issue . . . moot, as to the ABILDSKOV-2 application. Inventorship and ownership, however, are different questions.[126]

On appeal, the Federal Circuit reversed the district court's vacatur of the board's decision. According to the Federal Circuit:

The district court clearly engaged in faulty legal analysis when it concluded that any ownership interests that BEECH possessed in the technology claimed in the ABILDSKOV-2 application could serve as a basis for vacating the PTO's interference decision. The district court apparently misunderstood not only the differences between ownership and inventorship, but also the function of the Board.[127]

***

It is elementary that inventorship and ownership are separate issues. An application for a patent must be made by or on behalf of the actual inventor or inventors of the subject matter claimed therein. *** Thus, inventorship is a question of who actually invented the subject matter claimed in a patent. Ownership, however, is a question of who owns legal title to the subject matter claimed in a patent. . . .[128]

However, the court's opinion is chiefly interesting for its bearing on 37 CFR 1.602(a), which reads as follows:

Unless good cause is shown, an interference shall not be declared or continued between (1) applications owned by a single party or (2) applications and an unexpired patent owned by a single party.


In the portion of its opinion before it reached the vacatur issue, the court had found that, because of a series of development contracts between Beech and EDO, Beech actually owned (or would have owned if it had filed a timely counterclaim) the invention claimed in both parties' cases in interference. Nevertheless, the court apparently found nothing strange either about the fact that the PTO had conducted an interference between two cases owned (or potentially owned) by the same party or the fact that, at the end, it remanded the case to the district court to decide the 35 USC 146 action on the merits[129] -- despite the fact that, but for failure to file a timely counterclaim, Beech would have owned the party Abildskov's application in interference:

An interference is a proceeding which the Board conducts to determine questions of priority, i.e., who was the first to invent the common subject matter claimed in two or more applications or in one or more applications and an issued patent. *** In making such priority determinations, the Board has no interest whatsoever in who may or may not have ownership rights in the subject matter at issue, and[,] therefore, such information has no bearing on the Board's ultimate decision regarding inventorship and priority.
In the present case, the only issue before the Board during the interference was whether Jonas or Abildskov was the first to invent the subject matter encompassed by Counts 1 and 2 of the interference. *** The Board was not concerned at all with who owned the invention defined by the counts or covered by the resulting patent.[130]

Comment: Apparently, due to Beech's failure to file a timely counterclaim, EDO still owns the Abildskov application in interference and will have standing to contest the 35 USC 146 action. However, if it prevails in the 35 USC 146 action and a patent eventually issues to it, whether it would be able to enforce that patent against a third party seems dubious in view of the court's decision in Filmtec Corp. v. Hydranautics, 982 F.2d 1546, 25 USPQ2d 1283 (Fed. Cir. 1992).[131]

B. An Interference Between a Case Owned by the Department of Energy and a Case Owned by a Private Entity Can be Continued Despite a Determination by the Department of Energy Under 42 USC 5908 That It Owns the Private Entity's Case

37 CFR 1.602(a) states that:

Unless good cause is shown, an interference shall not be declared or continued between (1) applications owned by a single party or (2) applications and an unexpired patent owned by a single party.


Nevertheless, Cedars-Sinai Medical Center v. Watkins, 11 F.3d 1573, 29 USPQ2d 1189 (Fed. Cir. 1993) (opinion delivered by Circuit Judge Clevenger for a panel that also consisted of Circuit Judge Archer and Circuit Judge Michel), indicates that the board has continued an interference between a patent owned by the United States and an application assigned to the Cedars-Sinai Medical Center (hereinafter referred to as "Cedars") despite the fact that, after declaration of the interference, the Department of Energy notified the board that it had made a final determination under 42 USC 5908 that it owned Cedars' application. The facts in the case were as follows.

During the course of a three-way interference involving, inter alia, the party Grundfest et al. (assignor to Cedars) and the party Gruen (assignor to the United States, and represented by the Department of Energy in this case -- James D. Watkins having been the Secretary of Energy at the time that the complaint was filed), the Department of Energy served upon Cedars a document entitled "Determination Under 42 U.S.C. § 5908" in which it asserted title to any invention that the party Grundfest et al. might have made.[132] Cedars had the right to request reconsideration of that initial determination, but it did not do so.[133] After the time for requesting reconsideration had passed, the Department of Energy "issued a declaration of finality . . . informing the Board [of Patent Appeals and Interferences] that the Determination was a final agency action."[134] Amazingly, the board nevertheless continued the interference.[135]

Although Cedars did not request reconsideration of the Department of Energy's initial determination, it did file suit against the Department of Energy in the United States District Court for the Central District of California (i.e., in Cedars' home court) attacking the validity of the determination on numerous theories and basing jurisdiction on the Administrative Procedure Act, 5 USC 701-706, and the Declaratory Judgment Act, 28 USC 2201. However, the district court granted the Department of Energy's motion to dismiss for lack of subject matter jurisdiction under FRCP 12(b) (1).[136] According to the Federal Circuit:

The [district] court concluded that the entire controversy between the parties was not ripe for adjudication, reasoning that the Board [of Patent Appeals and Interferences] could reach a result in the pending Interference that would eliminate any need to address Cedars' arguments:
[T]he issues are not fit for judicial decision since the interference action is still pending and the Board has not yet issued an opinion. . . .
. . . It is possible that the Board could decide that the patent belongs to the Gruen group, which currently holds the patent. . . . [or to] Linsker [i.e., to the third party in the three-way interference]. . . . [in which case Energy's] Determination would be of absolutely no consequence because it only says that in the event the Board awards the patent to the Grundfest group, the United States would still own the patent. . . .[137]

Cedars appealed the district court's dismissal of its complaint to the Federal Circuit, and the Department of Energy "filed a motion to dismiss the appeal for lack of subject matter jurisdiction, arguing that the appeal belonged in the United States Court of Appeals for the Ninth Circuit."[138] That motion called into question the Federal Circuit's jurisdiction under 28 USC 1295(a),[139] which in turn required the Federal Circuit to decide whether the district court's jurisdiction arose under 28 USC 1338(a), as construed by the Supreme Court in Christianson v. Colt Indus. Operating Corp., 486 U.S. 800, 7 USPQ2d 1109 (1988):

[Section] 1338 jurisdiction . . . extend[s] only to those cases in which a well pleaded complaint establishes either that federal patent law creates the cause of action or that the plaintiff's right to relief necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims.[140]

The Department of Energy "argue[d] that section 5908 cannot 'relat[e] to' patents because it is concerned solely with title, ownership, and assignment issues which are merely contract issues over which . . . [the Federal Circuit] lacks exclusive jurisdiction."[141] In response, the Federal Circuit stated that it "agree[d] that this court [and, inferentially, the district court] generally lacks jurisdiction over a simple contractual dispute involving construction of contract terms familiar to the patent law. . . . "[142] However, it concluded that:

the Act of Congress in the present case clearly "relat[es] to" patents. 42 U.S.C. § 5908(a) is entitled "Vesting of title to invention and issuance of patents to United States; prerequisites," and may only be invoked "whenever any invention is made or conceived in the course of . . . any contract of the Secretary [of Energy]." See also 42 U.S.C. § 5908(m) (3), (4) (respectively defining "made" and "invention"). Further, once either of the statutory requirements in section 5908(a) (1) & (2) are [sic; is] satisfied, "title to such invention shall vest in the United States, and if patents on such invention are issued they shall be issued to the United States. . . ." We must reject any argument to the effect that a statute that in essence instructs the Commissioner to issue a patent to the United States, rather than to the named inventor, and thus concerns the administrative functioning of the Commissioner and the Patent & Trademark Office (PTO), is not "relat[ed] to" patents.[143]


Accordingly, the Federal Circuit held that the district court did have 28 USC 1338(a) jurisdiction over Cedars's complaint and that, accordingly, it had 28 USC 1295(a) jurisdiction over Cedars's appeal.

Nevertheless, the Federal Circuit dismissed the appeal as unripe because:

As of this moment . . . , the effects of the Determination have yet to be felt in any concrete sense. *** [D]ue to the pending Interference, judicial resolution of the issues presented would not in any way alleviate the current cloud over Cedars' domestic patent rights, since the overarching question of which party to the Interference will eventually have the right to exclude others from making, using, or selling the technique of laser angioplasty would remain. Were the Board [of Patent Appeals and Interferences] to conclude that a party other than Grundfest should prevail in the Interference, any decision by the federal courts regarding the efficacy of the Determination would have absolutely no effect with respect to Cedars' domestic patent rights. On the record before this court, we must conclude that[,] based on Cedars' domestic patent rights alone, review of the present case is barred by both Article III [of the Constitution] and the discretionary prudential consideration of conservation of judicial resources.[144]

Comment: What did the court mean by saying that "the effects of the Determination have yet to be felt in any concrete sense"?! Cedars is no doubt spending hundreds of thousands of dollars litigating an interference despite the fact that it may not own its case in interference! It would be strange indeed if Cedars is not concretely and acutely feeling the risk that all of the money that it is spending on the interference may be a waste of its resources.[145]

However, it is true that the fundamental problem that has led to this seemingly idiotic result is the PTO's wrong-headed insistence that the board has no jurisdiction to decide title disputes involving cases in interference. See generally Gholz, How the United States Currently Handles the Interference Issues that Will Remain in a First-to-File World, 18 AIPLAQJ 1 (1990) at 8-9, and contrast Judge Rich's more realistic approach in Knickerbocker Toy Co. v. Faultless Starch Co., 467 F.2d 501, 175 USPQ 417 (CCPA 1972). In Knickerbocker, the CCPA indicated that, while the Trademark Trial and Appeal Board does not have jurisdiction over issues of copyright infringement as such, the board is not "precluded from passing on the validity of a copyright if it is necessary to do so in the course of the exercise of its statutory jurisdiction. . . . " Similarly, while it is true that the Board of Patent Appeals and Interferences does not have jurisdiction over disputes over title to patents and patent applications as such, it should not consider itself as "precluded from passing on . . . [title to a case in interference] if it is necessary to do so in the course of the exercise of its statutory jurisdiction. . . ."

First published in the Journal of the Patent and Trademark Office Society, volume 76 (1994), pages 649-85.


Endnotes



*.Copyright 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.; Arlington, VA.

[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 "nonprecedential" (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 73 JPTOS 700 (1991), 71 JPTOS 439 (1989), and 69 JPTOS 657 (1987).

[3].999 F.2d 517, 27 USPQ2d 1418 (Fed. Cir. 1993).

[4].823 F.2d 500, 3 USPQ2d 1333 (Fed. Cir. 1987).

[5].Price v. Symsek, 988 F.2d 1187, 1191, 26 USPQ2d 1031, 1034 (Fed. Cir. 1993).

[6].Fiers is one of the last of the old rule interferences. (This information is not given in the court's opinion, but it was communicated to me by counsel for the party Revel et al.) However, that fact is presumably irrelevant to the point discussed here.

[7].Although this case was a so called "biotech case," DNA is a chemical compound, not a living creature, and there is no apparent reason why the court's holding would not apply to a more conventional chemical compound.

[8].The party Fiers obviously had a problem in proving continuous diligence in light of In re Mulder, 716 F.2d 1542, 219 USPQ 189 (Fed. Cir. 1983), since all of its substantive work was done abroad. However, it was relying on evidence of attorney diligence in the United States (again, according to counsel for the party Revel et al.). In any event, the court did not reach the diligence issue, and it gave no indication that the board had either.

[9].984 F.2d at 1169, 25 USPQ2d at 1605.

[10].984 F.2d at 1169, 25 USPQ2d at 1605.

[11].984 F.2d at 1169, 25 USPQ2d at 1604-05.

[12].984 F.2d at 1169, 25 USPQ2d at 1605.

[13].The court's opinion does not so state. However, that seems a reasonable inference from what the court said.

[14].984 F.2d at 1169, 25 USPQ2d at 1605.

[15].Although this was an old rule interference, counsel for the party Revel et al. told me that the parties stipulated that some of the new rules would apply.

[16].That is, the examiner-in-chief might have employed a count in the format A or B, which is quite common in chemical cases where the parties define their inventions differently. See Orikasa v. Oonishi, 10 USPQ2d 1996, 2003 (Comm'r 1989).

[17].37 CFR 1.633 reads in relevant part as follows:

A party may file the following preliminary motions:
***

(c) A motion to redefine the interfering subject matter by (1) . . . substituting a count . . ., (2) . . . adding a claim in the moving party's application to be designated to correspond to a count. . . .


[18].37 CFR 1.658(c) reads as follows:

A judgment in an interference settles all issues which (1) were raised and decided in the interference, (2) could have been properly raised and decided in the interference by a motion under § 1.633(a) through (d) and (f) through (j) or § 1.634 and (3) could have been properly raised and decided in an additional interference with a motion under § 1.633(e). A losing party who could have properly moved, but failed to move, under §§ 1.633 or 1.634, shall be estopped to take ex parte or inter partes action in the Patent and Trademark Office after the interference which is inconsistent with that party's failure to properly move, except that a losing party shall not be estopped with respect to any claims which correspond, or properly could have corresponded, to a count as to which that party was awarded a favorable judgment.


[19].18 USPQ2d 1254, 1256 (PTOBPAI 1990).

[20].The fact that this was an old rule interference is not given in the court's opinion, but it was communicated to me by counsel for the party Revel et al. However, that fact is presumably irrelevant in the point discussed here.

[21].984 F.2d at 1166, 25 USPQ2d at 1603. Although this case was a so called "bio-tech case," DNA is a chemical compound, not a living creature, and there is no apparent reason why the court's holding would not apply to a more conventional chemical compound.

[22].This case is another illustration of the truism that whether the court labels a given issue a question of fact or a question of law is often outcome determinative. The court has held that compliance with the written description requirement (either with respect to a claim in the case in issue or with respect to a count and an alleged priority application) is a question of fact. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991), and Utter v. Hiraga, 845 F.2d 993, 998, 6 USPQ2d 1709, 1714 (Fed. Cir. 1988). Accordingly, it reviews the board's determinations on this issue only for clear error. 984 F.2d at 1170, 25 USPQ2d at 1606.

[23].984 F.2d at 1170-71, 25 USPQ2d at 1606.

[24].Counsel for the party Revel et al. informed me that he submitted no evidence at all in order to prevent the party Fiers from having an opportunity to submit rebuttal evidence.

[25].This statement is, of course, patently untrue outside the peculiarities of chemical practice -- and applied at the whim of the examiner or tribunal even there. See, e.g., In re Hogan, 559 F.2d 595, 194 USPQ 527 (CCPA 1977). Moreover, it seems to me that there are two separate doctrines that are arguably relevant here -- the judicial rejection of "single means" claims on enablement grounds and the judicial antipathy to claims that are so broad that they cover (or "preempt") an entire scientific principle. Both doctrines are hostile to allegedly encompassing all possible future uses of a function or principle. However, given the Federal Circuit's present very narrow interpretation of "means for" claims (at least for infringement purposes), the former doctrine is of less persuasive force than it used to be.

[26].984 F.2d at 1171, 25 USPQ2d at 1606; interpolation by the court; footnote omitted.

[27].Of course, the first paragraph of 35 USC 112 requires "a written description . . . of the manner and process of making and using . . . [the invention] . . ." as well as "a written description of the invention. . . . " However, here the court seemed to be focusing on the requirement for a written description of the invention, not on the requirement for a written description of the manner and process of making the invention.

[28].In fact, the party Revel et al.'s foreign priority application contained a claim that was very close to the count. See 984 F.2d at 1170 n. 10, 25 USPQ2d at 1606 n. 10.

[29].The footnote that I omitted from the foregoing quotation states that, "In light of our disposition of the written description requirement question, we do not address whether Revel's Israeli application satisfies the enablement requirement." 984 F.2d at 1171 n. 12, 25 USPQ2d at 1606 n. 12. It is possible that that footnote is supposed to mean that the passage quoted in the text is addressed to the enablement requirement and should be regarded as dicta. However, the plain meaning of the footnote is that the court did not address the enablement requirement, which means that the quoted paragraph must have been intended to address the written description requirement.

[30].984 F.2d at 1171, 25 USPQ2d at 1606.

[31].The PTO's rule is set forth in Kwon v. Perkins, 6 USPQ2d 1747, 1751 (PTOBPAI 1988), aff'd on other grounds, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir. 1989); Flehmig v. Giesa, 13 USPQ2d 1052, 1054 (PTOBPAI 1989); and Brooks v. Street, 16 USPQ2d 1374, 1378 (PTOBPAI 1990), which were cited by the court; in L'Esperance v. Nishimoto, 18 USPQ2d 1534, 1538 (PTOBPAI 1991), which was not cited by the court; and, no doubt, in many, many, unpublished opinions.

[32].37 CFR 1.601(n) reads as follows:

Invention A is the "same patentable invention" as an invention "B" when invention "A" is the same as (35 U.S.C. 102) or is obvious (35 U.S.C. 103) in view of invention "B" assuming invention "B" is prior art with respect to invention "A." Invention "A" is a "separate patentable invention" with respect to invention "B" when invention "A" is new (35 U.S.C. 102) and nonobvious (35 U.S.C. 103) in view of invention "B" assuming invention "B" is prior art with respect to invention "A."


[33].That contention may or may not imperil the movant's own claims designated as corresponding to the count, depending on whether or not the prior art on which the movant relies is available time wise against the movant. If the movant is the senior party, it may well be that the prior art on which it relies is available time wise against the junior party but not against the senior party. However, whether a movant is a senior party or a junior party, if the prior art is available time wise against the movant and if the board holds that the count is unpatentable over the prior art, then a judgment is entered that both the movant's and the respondent's claims designated as corresponding to the count are unpatentable over the prior art. However, if the board holds that the count is not unpatentable over the prior art, then the movant's having filed the motion does not operate as a binding admission that its claims designated as corresponding to the count are unpatentable over the prior art. See generally the notice of the chairman of the board entitled "Interferences -- Preliminary Motions for Judgment," dated August 10, 1990, and published at 1118 OG 19 (Sept. 11, 1990).

[34].37 CFR 1.633 reads in relevant part as follows:

A party may file the following preliminary motions:

***

(c) A motion to redefine the interfering subject matter by (1) . . . substituting a count . . . [or] (4) designating an application or patent claim as not corresponding to a count. . . .

* * *

(i) When a motion is filed under paragraph (a), (b), or (g) of this section, an opponent, in addition to opposing the motion, may file a motion to redefine the interfering subject matter under paragraph (c) of this section or a motion to substitute a different application under paragraph (d) of this section.


[35].See generally L'Esperance v. Nishimoto, 18 USPQ2d 1534 (PTOBPAI 1991), which makes this point emphatically.

[36].988 F.2d at 1185, 26 USPQ2d at 1060.

[37].988 F.2d at 1185-86, 26 USPQ2d at 1060.

[38].988 F.2d at 1186, 26 USPQ2d at 1060.

[39].The PTO has published a proposed rule change designed to "overcome" the court's ruling. 1153 O.G. 59 (August 17, 1993). However, the proposed rule change encountered a great deal of opposition, and, as of the date of this writing, the PTO has taken no further action on the matter.

[40].It had been suggested, by the author among others, that there no longer was a corroboration requirement in view of the facts (1) that 37 CFR 1.671 specifies that (with exceptions not relevant here) the Federal Rules of Evidence govern interferences and (2) the Federal Rules of Evidence do not impose a corroboration requirement.

[41].988 F.2d at 1194, 26 USPQ2d at 1036, citing Amax Fly Ash Corp. v. United States, 514 F.2d 1041, 1047, 182 USPQ 210, 215 (Ct. Cl. 1975).

[42].988 F.2d at 1196, 26 USPQ2d at 1038, citing Davis v. Reddy, 620 F.2d 885, 889, 205 USPQ 1065, 1068 (CCPA 1980) (communication), and Kendall v. Searles, 173 F.2d 986, 993, 81 USPQ 363, 368-69 (CCPA 1949) (diligence).

[43].988 F.2d at 1195, 26 USPQ2d at 1037, citing Coleman v. Dines, 754 F.2d 353, 360, 224, USPQ 857, 862 (Fed. Cir. 1985).

[44].988 F.2d at 1195, 26 USPQ2d at 1037. It is also worth noting that the inventor was named Richard C. Price, that the assignee of the Price application was named Price Industries, and that the declarant whose testimony was relied on for corroboration was a secretary named Christine Cargnoni Price. However, the court does not indicate whether Ms. Price was related to Mr. Price or whether Price Industries was a family business.

[45].988 F.2d at 1195, 26 USPQ2d at 1037.

[46].988 F.2d at 1195, 26 USPQ2d at 1037.

[47].The court also held that the board applied the wrong burden of proof to the party Symsek. That issue is discussed infra in section III.

[48].988 F.2d at 1195, 26 USPQ2d at 1037.

[49].988 F.2d at 1195-96, 26 USPQ2d at 1037.

[50].988 F.2d at 1196, 26 USPQ2d at 1038. The court did not explain what it meant by the novel phrase "lack of sufficiency."

[51].It is the author's opinion that the same result would have been obtained if the party Loesch's patent had been involved in the interference. However, that was not the fact pattern before the court.

[52].The opinion does not so state. This was Judge Schall's first opinion in an interference, and it is an extremely difficult opinion to follow. However, counsel for the party Davis confirmed that his predecessor as counsel had not filed such a motion.

The reason that it is curious that the party Davis filed a 37 CFR 1.633(g) motion but no 37 CFR 1.633(a) motion is that the count was identical to claim 1 in the party Davis's patent, which the party Loesch has copied identically into its application in interference. Accordingly, if the party Loesch was not entitled to the benefit of the filing date of its parent application for priority purposes, its application in interference surely lacked support for its claim 1 for purposes of the first paragraph of 35 USC 112! This is because the party Loesch lacked first paragraph of 35 USC 112 support for claim 1 in its application in interference unless it had support for the full scope of that claim, whereas it was entitled to the benefit of the filing date of its parent application for priority purposes if it disclosed a single embodiment within the scope of the claim. Hence, practically speaking, it was more likely that the party Loesch was entitled to the benefit of its asserted priority date than that it had support for its claim 1.

[53].37 CFR 1.633 reads in relevant part as follows:

A party may file the following preliminary motions:
***

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


[54].37 CFR 1.640 (d) reads as follows:

(d) An examiner-in-chief may issue an order to show cause why judgment should not be entered against a party when:
(1) A decision on a motion is entered which is dispositive of the interference against the party as to any count;
(2) The party is a junior party who fails to file a preliminary statement; or
(3) The party is a junior party whose preliminary statement fails to overcome the earlier of the filing date or effective filing date of another party.


[55].998 F.2d at 969, 27 USPQ2d at 1445, quoting from Woods v. Tsuchiya, 754 F.2d 1571, 1578 n. 5, 225 USPQ 11, 15 n. 5 (Fed. Cir. 1985), cert. den., 474 U.S. 825 (1985), which relies on Hemstreet v. Rohland, 433 F.2d 1403, 1406, 167 USPQ 761, 763 (CCPA 1970) (Rich, J.).

[56].988 F.2d at 970, 27 USPQ2d at 1446.

[57].F.2d at 969, 27 USPQ2d at 1445. Of course, the party Davis had filed a 37 CFR 1.633(c) (4) motion for a judgment that its claims 44-55 did not correspond to the count, and the court did not clearly affirm the board's holding that they did correspond to the count.

[58].Those claims were presumably narrower than the party Davis's claim 1. However, whether or not they were narrower than the party Davis's claim 1, they were certainly different than the party Davis's claim 1. This possible relationship can be illustrated as follows, with the larger circle representing the count, the X representing the prior art that anticipated the count, and the smaller circle representing, e.g., claim 4:

-- see printed publication for this image --

[59].988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993), discussed supra.

[60].Fiers is one of the last of the old rule interferences. This information is not given in the court's opinion, but it was communicated to me by counsel for the party Revel et al.) Hence, the motion for benefit was filed under 37 CFR 1.231(a) (4), not 37 CFR 1.633(f).

[61].The oppositions were based on allegations that the party Sugano et al.'s foreign priority application failed to contain either an enabling disclosure or a written description of subject matter within the scope of the count.

[62].The opinion does not say any of this, but counsel for the party Revel et al. so informed me.

[63].Remember, this was an old rule interference, so the preliminary motions were decided by a primary examiner, not by an examiner-in-chief.

[64].According to counsel for the party Revel et al., the board did not indicate who it thought had the burden of persuasion on this issue at the board level. See the discussion of Kubota v. Shibuya, infra, on this point.

[65].984 F.2d at 1171, 25 USPQ2d at 1607.

[66].See footnote 63, supra.

[67].984 F.2d at 1171-72, 25 USPQ2d at 1607; all interpolations except the capitalizations supplied.

[68].See, e.g., Walker v. Altorfer, 111 F.2d 164, 45 USPQ 317 (CCPA 1940); Conner v. Joris, 241 F.2d 944,113 USPQ 56 (CCPA 1957); Paivinen v. Sands, 339 F.2d 217,144 USPQ 1 (CCPA 1964); Egnot v. Looker, 387 F.2d 680, 156 USPQ 136 (CCPA 1967); Myers v. Feigelman, 455 F.2d 596, 172 USPQ 580 (CCPA 1972) (Rich, J.); Silvestri v. Grant, 496 F.2d 593, 181 USPQ 706 (CCPA 1974), cert. denied, 420 U.S. 928, 184 USPQ 641 (1975); Horwath v. Lee, 564 F.2d 948, 195 USPQ 701 (CCPA 1977); Hollins v. De Petris, 201 USPQ 871 (PTOBPI 1977); Baukus v. Saito, 203 USPQ 155 (PTOBPI 1979); and Latimer v. Wetmore, 231 USPQ 131 (PTOBPAI 1985); and see also III Rivise & Caesar, Interference Law and Practice §467 (Michie Co. 1947).

[69].Note that it is the PTO's view that the presumption of validity does not apply to patents involved in interferences. Lamont v. Berguer, 7 USPQ2d 1580, 1582 (PTOBPAI 1988) (expanded panel).

[70].988 F.2d at 1193, 26 USPQ2d at 1036.

[71].988 F.2d at 1193, 26 USPQ2d at 1036. This language is, of course, very reminiscent of the majority's language in Atlantic Thermoplastics Co. v. Faytex Corp., 970 F.2d, 824, 23 USPQ2d 1481 (Fed. Cir. 1992), on request for reconsideration, 974 F.2d 1279, 23 USPQ2d 1801 (Fed. Cir. 1992), and 974 F.2d 1299, 24 USPQ2d 1138 (Fed. Cir. 1992).

[72].988 F.2d at 1193, 26 USPQ2d at 1036.

[73].According to the court, "The issue of the quantum of proof required to establish priority in an interference with an issued patent, is one of first impression in the Federal Circuit." 988 F.2d at 1191, 26 USPQ2d at 1034. However, that issue was very well established by precedent of the CCPA, and the precedent of the CCPA is supposedly binding on panels of the Federal Circuit absent in banc overruling. South Corp. v. United States, 690 F.2d 1368, 215 USPQ2d 657 (Fed. Cir. 1982) (in banc). Accordingly, this statement is akin to saying that the issue of the quantum of proof required to establish priority in an interference with an issued patent was one of first impression for the particular panel involved!

[74].In its non-precedential opinion in Larson v. Nurney (May 17, 1993), the court held exactly that.

[75].See, e.g., Martin v. Mayer, 823 F.2d 500, 3 USPQ2d 1333 (Fed. Cir. 1987), which held that the burden of proof to demonstrate support for claims that it had copied from the party Martin's patent remained on the party Mayer at final hearing despite a previous interlocutory order ruling that the party Mayer did have such support. Martin v. Mayer is criticized in Gholz, A Critique of Recent Opinions of the Federal Circuit in Patent Interferences, 71 JPTOS 439, 450-53 (1989).

[76].37 CFR 1.633 reads in relevant part as follows:

A party may file the following preliminary motions:

***

(g) A motion to attack the benefit accorded an opponent in the notice declaring the interference of the filing date of an earlier application filed in the United States or abroad. See § 1.637 (a) and (g).


[77].That is, the party Kubota became the senior party, and the party Shibuya became the junior party.

[78].The court's opinion does not so indicate, but I have been so informed by counsel for the
party Kubota.

[79].999 F.2d at 519, 27 USPQ2d at 1420; emphasis omitted.

[80].999 F.2d at 519, 27 USPQ2d at 1420.

[81].Cf. Kawai v. Metlesics, 480 F.2d 880, 178 USPQ 158 (CCPA 1973), which held that an interferent is not entitled to the benefit of the priority date of a foreign application unless the foreign application discloses subject matter within the scope of the count in the manner required by the first paragraph of 35 USC 112.

[82].999 F.2d at 519, 27 USPQ2d at 1420 (quoting from the board's opinion).

[83].According to counsel for the party Kubota, the party Shibuya had not raised that rather novel theory (since there was concededly no disclosure of how to make the component in question except the incorporation by reference). However, the panel of the board raised this issue sua sponte.

[84].Under Martin v. Mayer, supra n. 75, the burden would have been on the party Shibuya at every stage in the proceeding to prove that it had support for the copied claims. The party Kubota argued that, by a small extension of that rule, the burden should also have been on the party Shibuya at every stage in the proceeding to prove that it was entitled to the benefit of the filing date of its priority application.

[85].999 F.2d at 519, 27 USPQ2d at 1420; footnote omitted. According to the footnote omitted from the text:

The term "burden of proof" as used herein, and as we understand it to be used in § 1.633, means the burden to establish the proposition at issue by a preponderance of the evidence. [999 F.2d at 519 n. 2, 27 USPQ2d at 1420 n. 2.]


[86].999 F.2d at 520, 27 USPQ2d at 1420.

[87].Martin v. Mayer, supra n. 75.

[88].The court pointedly noted that "The Commissioner [had] state[d] his intention to amend the rules to explicitly place the burden of proof under section 1.633 on the moving party and [to] provide that a notice declaring an interference is an interlocutory order for purposes of section 1.655(a)." 999 F2d at 520 n. 4, 27 USPQ2d at 1420 n.4.

[89].After all, the Commissioner's predecessor was responsible for promulgation of the new rules. If he had intended to overrule the earlier cases on which Martin v. Mayer was based, he could easily have done so explicitly -- as his successor was promising to do.

[90].The court cited Morganroth v. Quigg, 885 F.2d 843, 848, 12 USPQ2d 1125, 1128 (Fed. Cir. 1989), in support of this proposition. But see Moy, Judicial Deference to the PTO's Interpretations of the Patent Law, 74 JPTOS 406 (1992), and Gholz, Exception to "Deference," 74 JPTOS 768 (1992).

[91].999 F.2d at 521, 27 USPQ2d at 1421; emphasis added.

[92].999 F.2d at 522, 27 USPQ2d at 1421.

[93].The board had followed the prior holding of an expanded panel in Behr v. Talbott, 27 USPQ2d 1401 (PTOBPAI 1992). However, that opinion had not yet been published and hence was not citable as precedent, Ex parte Holt, 19 USPQ2d 1211, 1214 (PTOBPAI 1991). Furthermore, Behr had not yet been decided when the party Kubota filed its 37 CFR 1.633 motion in issue.

[94].999 F.2d at 522, 27 USPQ2d at 1423.

[95].For a similar holding under the old rules, see Paulik v. Rizkalla, 796 F.2d 456, 230 USPQ 434 (Fed. Cir. 1986).

[96].27 USPQ2d 1401 (PTOBPAI 1992) (expanded panel).

[97].999 F.2d at 523, 27 USPQ2d at 1423.

[98].999 F.2d at 523, 27 USPQ2d at 1423.

[99].1 have been informed by counsel for the party Kubota that what the board in fact did was to reopen the testimony periods for both parties to permit them to submit evidence directed to the issue of the "appropriate disposition" of the party Kubota's 37 CFR 1.633(g) motion. The party Kubota was not given the opportunity to file a new 37 CFR 1.633(g) motion.

[100].730 F.2d 745, 221 USPQ 196 (Fed. Cir. 1984).

[101].995 F.2d at 211, 27 USPQ2d at 1146.

[102].In General Instrument, the court said that:

the district court correctly decided that the issue of Scientific-Atlanta's allegedly invalidating public use was not raised before the Board for purposes of a section 146 proceeding. Having reached this conclusion, we again have no occasion to decide whether "a district court may properly restrict the admission of testimony on an issue raised before the board." Case, 730 F.2d at 752, 221 USPQ at 202. [995 F.2d at 214, 27 USPQ2d at 114-49.]


[103].995 F.2d at 214, 27 USPQ2d at 1148. Actually, the second question "left open" by the court in Case never did seem a very exciting question. How else could one "demonstrate[ ] that an issue has been [or has not been] raised before the Board in a manner sufficient to qualify it for testimonial admission in a section 146 proceeding" except by going through the record before the board and seeing what the parties argued?

[104].As to the standards employed in admitting evidence on an issue that was raised before the board, see Dunner & Gholz, Court of Appeals for the Federal Circuit: Practice & Procedure §10.03[b], "The 'De Novo' Proceeding, the Introduction of New Evidence, and the Raising of New Issues."

[105].995 F.2d at 214, 27 USPQ2d at 1149.

[106].995 F.2d at 210, 27 USPQ2d at 1145 46.

[107].995 F.2d at 212-13, 27 USPQ2d at 1147. The court did not explain how "someone familiar with Scientific-Atlanta's patent application" would know that the date of the alleged actual reduction to practice "corresponded to the date the inventor demonstrated his product at the 1982 National Cable Television Association meeting. . . ." Most patent applications do not give such information.

[108].According to 37 CFR 1.631(a):

Unless otherwise ordered by an examiner-in-chief, concurrently with entry of a decision by the examiner-in-chief on preliminary motions filed under § 1.633, any preliminary motions filed under § 1.633, any preliminary statement filed under § 1.621(a) shall be opened to inspection by the senior party and any junior party who filed a preliminary statement. Within a time set by the examiner-in-chief, a party shall serve a copy of its preliminary statement on each opponent who served a notice under § 1.621(b).


[109].995 F.2d at 213, 27 USPQ2d at 1147; all but the last interpolation by the court.

[110].37 CFR 1.639(c) reads as follows:

When a party believes that testimony is necessary to support or oppose a preliminary motion under § 1.633 or a motion to correct inventorship under § 1.634, the party shall describe the nature of the testimony needed. If the examiner in-chief finds that testimony is needed to decide the motion, the examiner-in-chief may grant appropriate interlocutory relief and enter an order authorizing the taking of testimony and deferring a decision on the motion to final hearing.


[111].37 CFR 1.687(c) reads as follows:

Upon a motion (§ 1.635) brought by a party within the time set by an examiner-in chief under § 1.651 or thereafter as authorized by § 1.645 and upon a showing that the interest of justice so requires, an examiner-in-chief may order additional discovery, as to matters under the control of a party within the scope of the Federal Rules of Civil Procedure, specifying the terms and conditions of such additional discovery.


[112].995 F.2d at 213, 27 USPQ2d at 1148.

[113].995 F.2d at 213, 27 USPQ2d at 1148.

[114].According to the court, "Before trial, General Instrument restricted its appeal [sic; quasi-de novo civil action for review] of the Board's priority decision to the single ground that Scientific-Atlanta's invention was unpatentable under 35 U.S.C. § 102(b) (1988) due to an allegedly invalidating public use more than one year before the filing date of Scientific-Atlanta's patent application." 995 F.2d at 210, 27 USPQ2d at 1145-46.

[115].995 F.2d at 214, 27 USPQ2d at 1149.

[116].995 F.2d at 214, 27 USPQ2d at 1149.

[117].See the discussion of Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir. 1989), in Gholz, A Critique of Recent Opinions of the Federal Circuit in Patent Interferences, 73 JPTOS 700, 705-07 (1991).

[118].995 F.2d at 214, 27 USPQ2d at 1149.

[119].Apparently Beech concluded along the way that its assignor was not a true inventor after all:

Of interest, BEECH does not assert that its ownership rights arise from Jonas' participation, if any, as an inventor in the development of the technology in dispute. We note in this regard EDO's allegation that both Jonas admitted and BEECH stipulated that "Jonas did not invent one single individual element of the claims in the Beech patent." [990 F.2d at 1246 n. 21, 26 USPQ2d at 1580 n. 21.]

This led Judge Rich to comment acidly on the folly of Beech's position:

Although not directly at issue here, we feel compelled to comment that a corporation's ownership rights in patentable subject matter do not entitle that corporation to file a patent application claiming that subject matter and listing as the inventor one of its own employees, when that employee did not actually invent any of the subject matter claimed therein. [990 F.2d at 1246, n. 21, 26 USPQ2d at 1580 n. 21.]


[120].37 CFR 1.652 reads as followed:

If a junior party fails to timely take testimony authorized under §1.651, or file a record under §1.653(c), an examiner-in-chief, with or without a motion (§1.635) by another party, may issue an order to show cause, why judgment should not be entered against the junior party. When an order is issued under this section, the Board shall enter judgment in accordance with the order unless, within 15 days after the date of the order, the junior party files a paper which shows good cause why judgment should not be entered in accordance with the order. Any other party may file a response to the paper within 15 days of the date of service of the paper. If the party against whom the order was issued fails to show good cause, the Board shall enter judgment against the party.

The court's opinion erroneously states that "the Board issued to Jonas an order in the interference to show cause within twenty days as to why judgment should not be entered against him for failure to take testimony." 990 F.2d at 1241, 26 USPQ2d at 1576. The court seems incapable of understanding the difference between orders entered by a single examiner-in-chief pursuant to his or her authority under 37 CFR 1.610 and a judgment entered by a panel of the board pursuant to its authority under 37 CFR 1.658!

[121].The court's opinion erroneously indicates that:

Because Jonas failed to file a timely response to the show cause order, the Board decided priority of invention as to Counts 1 and 2 and rendered judgment in favor of Abildskov . . . pursuant to 37 C.F.R. §1.652. [990 F.2d at 1241, 26 USPQ2d at 1576.]

Under the procedure set forth in 37 CFR 1.652, the panel of the board entered judgment against the party Jonas because it failed to respond to the show cause order, not because the board "decided priority of invention as to. . . . [the counts]"!

[122].It is one of the minor mysteries of the case why counsel for Beech thought that the District Court for the District of Columbia had jurisdiction over the 35 USC 146 action. The second paragraph of 35 USC 146 provides in relevant part as follows.

Such suit may be instituted against the party in interest as shown by the records of the Patent and Trademark Office at the time of the decision complained of, but any party in interest may become a party to the action. If there be adverse parties residing in a plurality of districts not embraced within the same state, or an adverse party residing in a foreign country, the United States District Court for the District of Columbia shall jurisdiction and may issue summons against the adverse parties directed to the marshal of any district in which any adverse party resides.


EDO was the only adverse party, and it resided neither in the District of Columbia nor in a foreign country.

[123].See, e.g., Abbot Laboratories v. Brennan, 952 F.2d 1346, 21 USPQ2d 1192 (Fed. Cir. 1991), discussed at Gholz, A Critique of Recent Opinions of the Federal Circuit in Patent Interferences, 75 JPTOS 448, 470-75 (1993).

[124].990 F.2d at 1242, 26 USPQ2d at 1577.

[125].28 USC 1404(a) reads as follows:

For the convenience of parties and witnesses, in the interest of justice, a district, court may transfer any civil action to any other district or division where it might have been brought.

Query: why wasn't the 35 USC 146 action transferred to Kansas pursuant to 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 had 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.

As pointed out in footnote supra, there was clearly "a want of jurisdiction" in the District Court for the District of Columbia!

[126].990 F.2d at 1244, 26 USPQ2d at 1579.

[127].990 F.2d at 1248, 26 USPQ2d at 1582.

[128].990 F.2d at 1248, 26 USPQ2d at 1582; footnote omitted.

[129].When the district court does that, and when and if the Federal Circuit reviews that decision on appeal, it will presumably have to resolve the split in pre-Federal Circuit regional circuit law over whether a plaintiff in a 35 USC 146 action that lost by default before the board is entitled to be heard on any issue other than the propriety of the entry of the default judgement --i.e., whether the party Jonas can submit priority and derivation testimony to the court when it submitted no testimony to the board.

[130].990 F.2d at 1248-49, 26 USPQ2d at 1582.

[131].Counsel for EDO has informed me that he believes that my "comments go too far in assuming: (a) an identity of subject matter between the technology in the first case and the subject of the patent applications; (b) that had Beech filed a timely counterclaim, it would have prevailed; and (c) that Filmtec will have applicability if not control the remand." Apparently the remand is going to result in further vigorous litigation -- and perhaps in another interesting opinion.

[132].The party Grundfest et al. and the party Gruen had jointly performed the experiments described in their individual applications.

[133].The court noted that "neither party addresses the potential effect of Cedars' failure to exhaust its available administrative remedies on the federal courts' authority to entertain this appeal, nor did the district court address this issue." 11 F.3d at 1576 n.5, 29 USPQ2d at 1190 n.5. However, the Federal Circuit concluded that it "need not address this issue . . . in light of . . . [its] conclusion that this case fails to satisfy the strict requirements of Article III, § 2 of the U.S. Constitution." 11 F.3d at 1576 n.5, 29 USPQ2d at 1190 n.5.

[134].11 F.3d at 1576, 29 USPQ2d at 1190.

[135].Counsel for the Department of Energy sent me copies of (1) the board's decision on reconsideration of the examiner-in-chief's dismissal of the party Gruen's motion "seek[ing] to have any patent that issues on the involved Grundfest et al. application issued to DOE on behalf of the United States pursuant to 42 U.S.C. § 5908" and (2) the Commissioner's decision on the party Gruen's petition from that decision.

The board dismissed the motion on the ground, inter alia, that:

We are. . . not persuaded that the EIC overlooked or misapprehended any point in holding that this Board lacks the authority to decide the particular ownership issue raised in the motion. As the EIC correctly noted in his decision, 35 U.S.C. § 7 confers no such authority on the Board.

***

In the absence of specific statutory authority, this Board cannot and will not decide this ownership question. (Slip opinion at 8.)

(The reference to "the particular ownership issue raised in the motion" was to distinguish ownership issues arising under 42 USC 2181 and 42 USC 2457, which the board is specifically authorized by statute to decide.)

In denying the party Gruen's petition, the Commissioner stated that:
The Board is an administrative body having limited statutory jurisdiction. No statute authorizes the Board to make ownership determinations under 42 U.S.C. § 5908. The Board's statutory jurisdiction in interference cases is set out in 35 U.S.C. § 135(a). The Board has authority to decide priority and patentability. It does not have statutory authority to decide ownership in an interference. Beech Aircraft Corp. v. Edo Corp., . . . [990 F.2d 1237, 26 USPQ2d 1572 (Fed. Cir. 1993)]. [Slip opinion at 7.]


[136].FRCP 12(b) reads in pertinent part as follows:

Every defense, in law or fact, to a claim for relief in any pleading, whether a claim, counterclaim, cross-claim, or third-party claim, shall be asserted in the responsive pleading thereto if one is required, except that the following defenses may at the option of the pleader to be made by motion: (1) lack of jurisdiction over the subject matter, . . . .


[137].11 F.3d at 1577, 29 USPQ2d at 1191; all interpolations by the court except for the interpolations after "Board" and "Linsker".

[138].F.3d at 1577, 29 USPQ2d at 1191. One of the minor mysteries of the case is why the Department of Energy did not file a 28 USC 1631 motion to transfer the appeal to the Ninth Circuit.

[139].28 USC 1295(a) reads in pertinent part as follows:

(a) The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction --
(1) of an appeal from a final decision of a district court of the United States . . ., if the jurisdiction of that court was based, in whole or in part, on section 1338 of this title. . . .


[140].486 U.S. at 808-09, 7 USPQ2d at 1113, as quoted by the Federal Circuit, 11 F.3d at 1577-78, 29 USPQ2d at 1191; interpolations by the Federal Circuit.

[141].11 F.3d at 1579, 29 USPQ2d at 1193.

[142].11 F.3d at 1579, 29 USPQ2d at 1193, citing American Tel. & Tel. Co. v. Integrated Network Corp., 972 F.2d 1321, 23 USPQ2d 1918 (Fed. Cir. 1992); Ballard Medical Prods. v. Wright, 823 F.2d 527, 530, 3 USPQ2d 1337, 1339 (Fed. Cir. 1987); and Beghin-Say Int'l Inc. v. Ole-Bendt Rasmussen 733 F.2d 1568, 1570-71, 221 USPQ 1121, 1123 (Fed. Cir. 1984).

[143].11 F.3d at 1579, 29 USPQ2d at 1193, footnote omitted, citing Morganroth v. Quigg, 885 F.2d 843, 12 USPQ2d 1125 (Fed. Cir. 1989); Wyden v. Commissioner of Patents & Trademarks, 807 F.2d 934, 231 USPQ 918 (Fed. Cir. 1986); and Dubost v. United States Patent & Trademark Office, 777 F.2d 1561, 227 USPQ 977 (Fed. Cir. 1985).

[144].11 F.3d at 1581-82, 29 USPQ2d at 1195, citing 13A Charles Wright et al., Federal Practice & Procedure § 3532.1, at 115, 118 n. 9; § 3532.2, at 146-47, and Minnesota Mining & Mg. Co. v. Norton Co., 929 F.2d 670, 674, 18 USPQ2d 1302, 1305-06 (Fed. Cir. 1991). The Minnesota Mining & Mfg. Co. opinion is discussed at Gholz, "A Critique of Recent Opinions of the Federal Circuit in Patent Interferences," 75 JPTOS 448, 477-80 (1993).

[145].According to counsel for the Department of Energy, "this issue was never raised at the trial level and, therefore, was properly ignored by the Court." On the other hand, according to counsel for Cedars, "the expense of the interference was repeatedly raised by Cedars."