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

I. Introduction

This article covers Federal Circuit precedential interference opinions^[1] published since those covered in the author's previous article by the same title at 71 JPTOS 439 (1989) through December 31, 1990.^[2]

The Federal Circuit is now regularly deciding appeals in new rule interferences. The most welcome interference development of the last two years was how the court handled the patentability-over-the-prior-art issues in Chester v. Miller, its first new rule interference appeal centering on such issues. The good news is that it handled the patentability issues arising in the interference context no differently than it handles patentability issues arising in any other context.^[3] On the other hand, in Hahn v. Wong the court gave the board free rein to dispose of a substantial portion of its interference docket at the very outset of the interferences by giving applicants seeking to provoke interferences with patentees having filing dates more than three months senior to the applicants' filing dates effectively only one chance to get their 37 CFR 1.608(b) showings right.

II. Substantive Interference Law

A. Evidence Required to Prove an Actual Reduction to Practice

Laboratory notebooks commonly require a witness to certify that he or she has "read and understood" a colleague's description of what he or she has done or conceived of doing. How much does such a certification buy you? According to Hahn v. Wong, 892 F.2d 1028, 13 USPQ2d 1313 (Fed. Cir. 1990) (opinion delivered by Senior Circuit Judge Friedman for a panel that also consisted of Senior Circuit Judge Baldwin and Circuit Judge Mayer), aff'g 13 USPQ2d 1211 (PTOBPAI 1989) (expanded panel), the answer is "not very much" when the issue is actual reduction to practice.^[4]

In Hahn, the applicant Hahn et al. had filed three 37 CFR 1.608(b) affidavits^[5] in order to provoke an interference with the patentee Wong. One affidavit was by co-inventor Hahn describing experiments that he had allegedly done. The other two affidavits were corroborating affidavits of the "read and understood" variety referring to pages from Hahn's laboratory notebook. Unfortunately:

Neither of . . . [the corroborating] affidavits stated that the experiments described by Stephen Hahn were actually performed at all or on any particular date, explained the meaning of the analyses graphs, or stated that they were what they purported to be.^[6]

According to the court, those corroborating affidavits "established only that those pages existed on a certain date; they did not independently corroborate the statements made on those pages."^[7]

The party Hahn et al. also argued that the "analyses graphs" (which were copies of spectrographic analyses and the like) were evidence independent of the inventor proving the existence of a compound within the scope of the count prior to the patentee's filing date. It relied on Berges v. Gottstein, 618 F. 2d 771, 205 USPQ 691 (CCPA 1980), in which the applicant interferent had successfully relied on such evidence as independently proving the existence of an actual reduction to practice. However, in Berges there was no issue whether the analyses showed a compound within the scope of the count. Here there was such an issue, and the court ruled that "facts independent of the inventor's own assertions were needed to interpret the graphs"^[8] and that "The two corroborative affidavits did not supply the missing information."^[9] In sum, such graphs do not "speak for themselves"; a corroborating witness has to explain what they mean.

B. Patentability Issues in Interferences

Chester v. Miller, 906 F.2d 1574, 15 USPQ2d 1333 (Fed. Cir. 1990) (opinion delivered by Circuit Judge Michel for a panel that also consisted of Senior Circuit Judge Baldwin and Senior District Judge Will of the Northern District of Illinois), aff'g 13 USPQ2d 1387 (PTOBPAI 1989), is important chiefly as the first published Federal Circuit opinion in a new rule interference that is primarily devoted to patentability over the prior art.^[10] Gratifyingly, the court handled the patentability issues just as it would have in an ex parte appeal, creating no troublesome distinctions between how such issues are handled in ex parte and inter partes appeals from the PTO.^[11]

The Chester et al. application in interference was a CIP of two chains of earlier U.S. applications. One of the parent applications had matured into a patent ("the '280 patent") on which the party Miller relied in a 37 CFR 1.633(a) motion for judgment that certain of the party Chester et al.'s claims were unpatentable. The 37 CFR 1.610 EIC granted that motion, and a panel of the board affirmed that decision at final hearing. The holding of both the EIC and the panel of the board were, of course, based on subsidiary holdings that the party Chester et al. was not entitled to the benefit of the filing date of the application that matured into the '280 patent.

On appeal to the Federal Circuit, the party Chester et al. argued that "it is legally anomalous for the EIC first to assert that the '280 patent [sic; the application that matured into the '280 patent] fails to provide sufficient written description to support his CIP claims and then find that the '280 patent anticipates those very claims."^[12] However, the court properly pointed out that, "although a patent might contain a disclosure satisfying the written description requirement with respect to the claims in that patent, it could still be section 102(b) prior art as to broader claims of a subsequent application although not containing a disclosure satisfying the section 112 description requirement with respect to the anticipated broader claims."^[13] According to the court:

This apparent anomaly is most likely to occur when the prior art reference discloses a species of a genus sought to be claimed. ***That is exactly what happened in the instant case, and accordingly we see no impermissible anomaly or logical inconsistency in the EIC's rejection.^[14]

The 37 CFR 1.610 EIC also sua sponte entered a new rejection of others of the party Chester et al.'s claims under 37 CFR 1.641.^[15] Specifically, the 37 CFR 1.610 EIC held that those claims were anticipated by a different patent, and the panel of the board also affirmed that holding.

On appeal, the party Chester et al. argued that the 37 CFR 1.610 EIC had not satisfied 35 USC 132^[16] by sufficiently articulating his basis for the 37 CFR 1.641 rejection. However, the court rejected that argument as follows:

We are unpersuaded that section 132 supports the proposition suggested by Chester -- that the PTO is required to state specifically that a prior art reference describes and enables claims rejected as anticipated. That section does not mandate that in order to establish prima facie anticipation, the PTO must explicitly preempt every possible response to a section 102 rejection. Section 132 merely insures that an applicant "at least be informed of the broad statutory basis for [the rejection of] his claims, so that he may determine what the issues are on which he can or should produce evidence." In re Hughes, 345 F.2d 184, 185, 145 USPQ 467, 468 (CCPA 1965). Section 132 is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection. See, e.g., In re Wilke, 314 F.2d 558, 562, 136 USPQ 435, 439 (CCPA 1963). In the instant case, the reasons supporting the prima facie case of anticipation did put Chester on notice. The EIC specified exactly which claims read on exactly what prior art. The burden thus properly was shifted to Chester to rebut the prima facie case.^[17]

The court went on to hold that the party Chester et al. had not rebutted that prima facie case. The interesting thing about the court's opinion in this respect, however, is that the court did not treat a 37 CFR 1.610 EIC acting under 37 CFR 1.641 any differently than it treats ordinary examiners acting under 35 USC 132.

III. Interference Procedure

A. Disposition of Cases Involving Both Priority and Patentability Issues

Some panels of the board used to take the filing of a 37 CFR 1.633(a) motion based on prior art available against the movant as a concession of the unpatentability of all the movant's claims corresponding to the same count as the respondent's challenged claims and would enter judgments of invalidity of all of the movant's claims without ruling on the validity of the respondent's claims.^[18]

In Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir. 1989) (opinion delivered by Circuit Judge Newman for a panel that also consisted of Chief Circuit Judge Markey and Senior Circuit Judge Cowen), aff'g Kwon v. Perkins, 6 USPQ2d 1747 (PTOBPAI 1988) (expanded panel), the court went a long way towards quieting the uproar caused by that practice.^[19] However, the facts in Perkins were quite unusual, and the $64 question now is whether the court will apply the broad language of the Perkins opinion to garden variety situations.

In Perkins, the party Perkins (which was a senior party and a patentee^[20]) filed a 37 CFR 1.633(a) motion for a judgment that the party Kwon's claims were invalid over the party Perkins's prior sale and public use of the subject matter of the count. Note particularly that the alleged prior sale/public use was early enough to be a 35 USC 102(b) bar against the junior party, but not early enough to be a 35 USC 102(b) bar against the senior party. The 37 CFR 1.610 EIC deferred the on sale/public use issue to final hearing.

During the testimony period, the party Perkins proved its barring on sale/public use, but the party Kwon proved that it was the first inventor of the subject matter of the count. Accordingly, the board entered judgment against both parties -- i.e., it held that neither party was entitled to a patent.

The party Perkins appealed from the board's decision, but the party Kwon not only did not appeal, it did not oppose the party Perkins's appeal. However, the solicitor not only filed an amicus brief in support of the board's decision, he actually argued the appeal in personam.^[21]

The party Perkins argued that, once the board had held the party Kwon's claims to be unpatentable, it should have terminated the interference without deciding priority. However, the court emphatically rejected that contention, using broad language which facially applies to the more common situation where one party has filed a 37 CFR 1.633(a) motion based on prior art available timewise against both parties. According to the court:

decision by the Board of all issues that are fully and fairly raised during the interference proceeding, whether related to patentability or priority, is in full accord with Congressional intent that PTO procedures be simplified as well as improved. . . .^[22]

***

The legislative history . . . shows that Congress intended that if patentability is fairly placed at issue in the proceeding, it will be determined.^[23]

Finally, and most tellingly, the court concluded as follows:

The Board, by resolving both priority and patentability when these questions are fully presented, settles not only the rights between the parties but also rights of concern to the public. The public interest in the benefits of a patent system is best met by procedures that resolve administratively questions affecting patent validity that arise before the PTO. To do otherwise is contrary to the PTO's mission to grant presumptively valid patents, 35 U.S.C. § 282, and thus disserves the public interest.^[24]

Comment

Obviously this opinion will be of only limited benefit if it is confined (1) to cases where the prior art is available against one party but not the other and/or (2) to cases where the prior art is not proved until the testimony period.^[25] However, if the logic of Perkins is applied broadly, it will be a landmark case.

B. "Good Cause" Excusing Failure to Present Evidence With an Initial Showing Under 37 CFR 1. 608(b)

One of the most basic rules of interference practice is that ignorance of counsel is seldom an excuse. Hahn v. Wong, 892 F.2d 1028, 13 USPQ2d 1313 (Fed. Cir. 1990) (opinion delivered by Senior Circuit Judge Friedman for a panel that also consisted of Senior Circuit Judge Baldwin and Circuit Judge Mayer), aff'g 13 USPQ2d 1211 (PTOBPAI 1989) (expanded panel), is further evidence of that hoary rule.

The party Hahn et al. had submitted inadequate 37 CFR 1.608(b) affidavits.^[26] In response to a show cause order, the party Hahn et al. had submitted additional evidence pursuant to 37 CFR 1.167(b).^[27] However, its showing in excuse was of the ignorance-of counsel variety.^[28] Not surprisingly, that excuse was accepted by neither the board nor the court.^[29]

Indeed, the most interesting aspect of this part of the court's opinion is the court's threshold holding concerning the standard to be applied by the court in reviewing a decision by the board to exclude additional evidence submitted under 37 CFR 1.617(b)^[30]:

The determination whether a party seeking to initiate an interference has shown "good cause" for his failure to present the additional evidence at the time of his initial submission is a matter within the discretion of the Board. Cf. Womack v. Merit Sys. Protection Bd., 798 F.2d 453, 456 (Fed. Cir. 1986) (Board has "broad discretion to decide whether" the appellant has shown "good cause" "to waive the time for appeal.").^[31]

Thus, there is apparently going to be very little hope of obtaining reversal of a decision by the board refusing to consider additional evidence submitted under 37 CFR 1.617(b).

C. Time Periods for Taking Actions in Response to a 37 CFR 1. 610 EICs
Decisions on Motions

37 CFR 1.640(c) and 1.640(e) clearly set different time periods for two different possible responses to two different possible types of decisions on 37 CFR 1.633 motions. In Chester v. Miller, 906 F.2d 1574, 15 USPQ2d 1333 (Fed. Cir. 1990) (opinion delivered by Circuit Judge Michel for a panel that also consisted of Senior Court Judge Baldwin and Senior District Judge Will of the Northern District of Illinois), aff'g 13 USPQ2d 1387 (PTOBPAI 1989), the court held that the board is entitled to read those rules literally and that a party cannot take advantage of the longer period specified in 37 CFR 1.640(e) to take an action that it should have taken during the shorter period specified in 37 CFR 1.640(c). ^[32]

If the 37 CFR 1.610 EIC's decision on a 37 CFR 1.633 motion results in the issuance of an order to show cause, the party to whom the show cause order is issued has twenty days to "file[ ] a paper which shows good cause why judgment should not be entered in accordance with the order." If the 37 CFR 1.610 EIC's decision on a 37 CFR 1.633 motion does not result in the issuance of an order to show cause, a party unhappy with that decision has fourteen days to "file a request for reconsideration. . . ."

In Chester v. Miller, each party had filed a 37 CFR 1.633(a) motion for judgment against the other party. However, the 37 CFR 1.610 EIC had granted the party Miller et al.'s motion and denied the party Chester et al.'s motion. The party Chester et al. then filed a paper that traversed both holdings more than fourteen days but less than twenty days after the decisions on the motions. The 37 CFR 1.610 EIC dismissed that paper as untimely insofar as it attacked his denial of the party Chester et al.'s 37 CFR 1.633(a) motion, a panel of the board affirmed the 37 CFR 1.610 EIC at final hearing, and the court affirmed that dismissal on appeal:

We can discern nothing in the rules that mandates that the EIC or the Board reconsider all matters raised by prior motions that have not resulted in a show cause order merely because a party has noted them in a show cause paper. Nor has Chester provided any authority for such a proposition. We do agree with Chester that the interference rules permit further consideration of the patentability of Miller's claims after denial of Chester's motion for judgment, but only if proper procedures are followed. Here, Chester failed to initiate the proper procedures. Accordingly, we also hold the Board's refusal to consider his untimely motion [sic; request] for reconsideration was correct.^[33]

Comment.

Ordinarily, the filing of a request for reconsideration of a decision on a motion is optional. For instance, if both parties' 37 CFR 1.633(a) motions had been denied, and if the party Chester et al. had not requested reconsideration of the 37 CFR 1.610 EIC's decision denying its motion, the party Chester et al. would have been entitled to argue in its brief at final hearing that the denial of its 37 CFR 1.633(a) motion was improper. However, in this case the 37 CFR 1.610 EIC granted the party Miller et al.'s 37 CFR 1.633(a) motion and put the party Chester et al. under an order to show cause why judgment should not be entered against it. When the party Chester et al. responded to that order with a lengthy traversal rather than a simple request to have the case set for final hearing, that was treated as a waiver of an oral final hearing, and the board proceeded to review the propriety of the 37 CFR 1.610 EIC's order on the basis of the parties' written submissions.^[34] That is, the board treated the party Chester et al.'s traversal as its brief at final hearing. Since it did that, it is difficult to see why it did not treat the portion of the party Chester et al.'s traversal that was directed to the 37 CFR 1.610 EIC's denial of the party Chester et al.'s 37 CFR 1.633(a) motion as a brief at final hearing rather than as an untimely request for reconsideration.^[35]

IV. Post-Interference Practice

A. Presenting Broader Claims After Losing An Interference

In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989) (opinion delivered by Circuit Judge Newman for a panel that also consisted of Chief Circuit Judge Markey and Circuit Judge Michel), unsettles the law of interference estoppel^[36] by suggesting that, in post-interference practice, a losing interferent can obtain claims dominating a lost count. Moreover, it does so without discussion of the court's recent opinion in In re Kroekel, 830 F.2d 705, 231 USPQ 640 (Fed. Cir 1986),^[37] in which the court resoundingly rejected the very same idea.

Zletz was another post-interference chapter of the fabled polypropylene interference. Standard Oil Co. (Indiana) v. Montedison S.p.A., 494 F. Supp. 370, 206 USPQ 676 (D. Del. 1980), aff'd, 664 F.2d 356, 212 USPQ 327 (3d Cir. 1981), cert. den., 456 U.S. 915, 215 USPQ 95 (1982).^[38] The single count of that interference was:

Normally solid polypropylene, consisting essentially of recurring propylene units, having a substantial crystalline polypropylene content.

Dr. Zletz was a losing party in the polypropylene interference. However, after having lost in the polypropylene interference, Dr. Zletz returned to ex parte prosecution and presented the following two claims, involved on this appeal:

13.Normally solid polypropylene having a crystalline polypropylene content. <br> 14.Normally solid polypropylene. <br>

Dr. Zletz argued that those claims were broader than the lost count,^[39] and he sought to antedate the lost count by reliance on 37 CFR 1.131 evidence of an actual reduction to practice within the scope of his broader claims but outside the scope of the count.

The court started its surprisingly brief analysis with the following bedrock principle:

A losing party to an interference is entitled to claim subject matter other than that of the interference count, provided the requirements of patentability are met, and subject to those constraints that flow from the adverse decision in the interference.^[40]

However, Dr. Zletz was not claiming a species (or a subgenus) that was patentably distinct from the lost count; he was claiming two genuses, both which encompassed the lost count. On the basis of In re Kroekel, supra, that should have ended the matter. Dr. Zletz could have moved in the polypropylene interference to substitute a broader count corresponding to one or the other of the claims on appeal and, if successful on that motion, he could have relied in the interference on the actual reduction to practice on which he sought to rely in post-interference ex parte practice. Not having done so, he should have been precluded by simple interference estoppel from presenting the broader claims in post-interference ex parte practice.

Unfortunately, the court did not rely on simple interference estoppel. Instead, it strongly implied that Dr. Zletz would have been entitled to the dominant claims he presented in post interference ex parte practice if he had conceived the generic invention (and not just the species that he relied on in his 37 CFR 1.131 declaration) before the date to which the lost count was entitled.^[41] Thus, the court affirmed the rejection of claims 13 and 14, but only on the basis that "Zletz has not shown that he made an invention generic to both the copolymers of his early experiments and the subject matter of the lost count,"^[42] implying that he might have been entitled to the dominant claims if he had had a clear generic conception despite his failure to move to broaden the count of the polypropylene interference. This implication (which is arguably a holding) cannot be reconciled with such earlier cases as In re Kroekel, cited at USPQ2d outset.^[43]

First published in the Journal of the Patent and Trademark Office Society, volume 73 (1991), pages 700-12.

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Endnotes

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*.Copyright 1990, 1991 by Charles L. Gholz; OBLON, SPIVAK, McCLELLAND, MAIER & NEUSTADT, P.C.; Arlington, Virginia. Portions of this article have been published previously by Patent Resources Institute, Inc. in the chapter entitled "Interferences" of the materials for PRI's twice-a-year programs on Federal Circuit Patent Law.

**.Partner in OBLON, SPIVAK, McCLELLAND, MAIER & NEUSTADT, P.C.

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

[2].See also the author's previous article by the same title at 69 JPTOS 657 (1987), covering the court's precedential interference opinions published during the previous two years.

[3].Those with long memories will recall that, before Judge Rich's landmark opinion in Squires v. Corbett, 560 F.2d 424, 194 USPQ 513 (CCPA 1977), the CCPA used to handle first paragraph of 35 USC 112 issues arising in the interference context differently than it handled first paragraph of 35 USC 112 issues arising in other contexts. Fortunately, we apparently will not be faced with a similar dichotomy on patentability-over-the prior-art issues.

[4].It should be noted that the answer would have been very different if the issue had been conception. Such "read and understood" endorsing of a colleague's conception document commonly provides perfectly good corroboration of conception.

[5].37 CFR 1.608(b) reads in relevant part as follows:

When the earlier of the filing date or the effective filing date of an application is more than three months after the earlier of the filing date or the effective filing date under 35 U.S.C. 120 of a patent, the applicant, before an interference will be declared, shall file (1) evidence which may consist of patents or printed publications, other documents, and one or more affidavits which demonstrate that applicant is prima facie entitled to a judgment relative to the patentee and (2) an explanation stating with particularity the basis upon which the applicant is prima facie entitled to the judgment. Where the basis upon which an applicant is entitled to judgment relative to a patentee is priority of invention, the evidence shall include affidavits by the applicant, if possible, and one or more corroborating witnesses, supported by documentary evidence, if available, each setting out a factual description of acts and circumstances performed or observed by the affiant, which collectively would prima facie entitle the applicant to judgment on priority with respect to the earlier of the filing date or effective filing date of the patent.

[6].892 F.2d at 1031, 13 USPQ2d at 1316.

[7].892 F.2d at 1033, 13 USPQ2d at 1317.

[8].892 F.2d at 1033-34, 13 USPQ2d at 1318.

[9].892 F.2d at 1034, 13 USPQ2d at 1318.

[10].Chester also involved a procedural issue that is discussed in section III of this article.

[11].See footnote 3, supra.

[12].906 F.2d at 1577, 15 USPQ2d at 1336.

[13].906 F.2d at 1577, 15 USPQ2d at 1336. The reason for the court's apparent concern with whether the disclosure of the '280 patent supported the claims in that patent is unclear. The validity of the claims in the '280 patent was not an issue in the interference.

[14].906 F.2d at 1577, 15 USPQ2d at 1336. Technically, the 37 CFR 1.610 EIC did not make a rejection of these claims. (He did make a rejection of the party Chester et al.'s other claims, discussed below.) What he did was to grant the party Miller et al.'s 37 CFR 1.633(a) motion for a judgment that those claims were unpatentable under 35 USC 102.

[15].37 CFR 1.641 reads as follows:

§1.641 Unpatentability discovered by examiner-in-chief.

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

[16].35 USC 132 reads as follows:

§ 132. Notice of rejection; reexamination

Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Commissioner shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention.

[17].906 F.2d at 1577-78, 15 UPQ2d at 1337.

[18].See, e.g., Guglielmino v. Winkler, 11 USPQ2d 1389 (PTOBPAI 1989). In Guglielmino the movant was a jumor party applicant, and it was at least arguable that the holding in Guglielmino did not apply (1) where the moving party was a patentee (whether or not the junior party) and (2) where the moving party was senior party (whether or not an applicant).

[19].In addition, the Federal Circuit reversed the board's decision in Guglielmino, albeit in a nonprecedential opinion. Winkler v. Guglielmino, 17 USPQ2d 1175 (Fed. Cir. 1990) (per curiam).

[20].Since Perkins was a patentee, Perkins v. Kwon should at least clearly end any debate over the board's jurisdiction to decide the validity over the prior art of claims in issued patents.

[21].The author believes that giving an amicus leave to argue is unprecedented in the Federal Circuit. Similarly, while it is not unprecedented for