Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
VALENTINI ET AL.
Patent Interference No. 101,925
December 23, 1991
Caroff and Martin
Pursuant to 37 CFR 1.658(b), the party Gustavsson requests reconsideration of that part of our July 30, 1991, decision wherein we reversed the Examiner-in-Chief's (EIC's) dismissal of Valentini et al.'s (Valentini's) preliminary motions (1)-(9) collectively as moot as a result of Valentini's failure to comply with 35 U.S.C. § 135(b). [FN1] More particularly, at pages 16-18 of our opinion we held that the dismissal of Valentini's motions (1)-(9) collectively as moot was "manifestly erroneous" under 37 CFR 1.655(a) as contrary to the object of interferences conducted in accordance with the new interference rules:
The object of the interference will be to resolve all controversies as to all interfering subject matter defined by one or more counts. A final decision in the interference will determine who, if anyone, is entitled to claims which correspond to the count. [Our emphasis.]
Patent Interference Proceedings; Final Rule, 49 Fed.Reg. 48416, 48416 (Dec. 12, 1984), reprinted in 1050 O.G. 385, 385 (Jan. 29, 1985) (hereinafter Final Rule Notice). [FN2] In addition, we observed that a determination of Gustavsson's right to a patent containing claims corresponding to the count is consistent with the public interest identified in Perkins v. Kwon, 886 F.2d 325, 328-29, 12 USPQ2d 1308, 1311 (Fed.Cir.1989): [FN3]
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.
Accordingly, we reversed the EIC's dismissal of Valentini's motions (1)-(9) collectively as moot and remanded the case to the EIC for further proceedings.
Gustavsson asks that we vacate our reversal of the EIC's dismissal of the Valentini motions, arguing that 35 U.S.C. § 135(b) compels termination of this interference by entry of judgment against Valentini without consideration of these motions. Alternatively, Gustavsson requests that we certify that part of our decision for petition to the Commissioner pursuant to 37 CFR 1.644(a)(1). Finally, in the event we do not vacate that part of our decision and terminate the interference by entering judgment against Valentini, Gustavsson requests clarification and/or modification of our decision so as to also reverse the EIC's summary dismissal of its motions (11)-(14) and (16), which dismissal was also based on Valentini's § 135(b) violation, and to have the EIC consider these motions together with Valentini's motions (1)-(9).
*2 Although authorized to do so by 37 CFR 1.658(b), Valentini did not file a reply to Gustavsson's request for reconsideration.
Regarding the effect of 35 U.S.C. § 135(b), we agree with Gustavsson that this interference would not have been declared had the PTO detected Valentini's § 135(b) violation prior to declaring the interference. Manual of Patent Examining Procedure (5th ed., rev. 13, Nov. 1989) § 2307.02. In fact, the vast majority of § 135(b) violations are discovered prior to declaration of an interference. This case is therefore unusual in that Valentini's § 135(b) violation was not discovered until after the interference was declared, when it was raised in Gustavsson's motion (10) under 37 CFR 1.633(a). Nevertheless, for the reasons given in our initial opinion, we remain of the view the EIC manifestly erred in dismissing Valentini motions (1)-(9) collectively as moot on account of this § 135(b) violation.
Furthermore, for the reasons given below we believe the EIC's dismissal of Valentini's motions (1) and (3)-(5), which allege that Gustavsson's patent claims 1-17 are unpatentable, [FN4] as moot is also manifestly erroneous for being contrary to Perkins, supra, which rejected the argument that the term "may" in 35 U.S.C. § 135(a) [FN5] gives the board discretion to consider or not to consider patentability issues that have been fully developed in an interference:
The legislative history ... shows that Congress intended that if patentability is fairly placed at issue in the [interference] proceeding, it will be determined.... The word "may" in § 135(a) accommodates the situation when patentability is not placed at issue during the priority contest, but it would contradict the remedial purpose of the legislation if the Board could refuse to decide questions of patentability for which there had been adduced an appropriate record.
886 F.2d at 328, 12 USPQ2d at 1311. The patentability of Gustavsson's patent claims 1-17 has been fairly placed at issue by Valentini's motions (1) and (3)- (5), which together with the associated oppositions and replies form an "appropriate record" for consideration of these patentability issues. Consequently, § 135(a) as interpreted by Perkins requires that these patentability issues be considered. Gustavsson's argument that these issues were not "fairly" placed at issue because Valentini failed to comply with § 135(b) misconstrues the term "fairly," which in the context of Perkins appears to mean clearly or distinctly. [FN6]
As Gustavsson correctly notes, neither § 135(b) nor its relationship to § 135(a) is discussed in Perkins. Nevertheless, we do not agree with Gustavsson that the presence of § 135(b) violation relieves the board of its obligation under § 135(a) (as amended in 1984) and Perkins to consider patentability issues that have been fairly raised in an interference. In the first place, it is readily apparent that the express language of § 135(b) does not compel such a result. Although this language places a time limit on the right of applicants to add claims which are the same as, or for the same or substantially the same subject matter as, a claim of an issued patent, [FN7] it does not expressly restrict the authority of the board in any manner, let alone preclude it from considering allegations made during an interference that involved patent claims are unpatentable.
*3 Furthermore, although § 135(b) has been construed as estopping an applicant who is in violation thereof from proving priority with respect to the patentee, [FN8] we are aware of no decision holding that a § 135(b) violation should also estop the applicant from demonstrating, or the board from considering, the unpatentability of involved patent claims under §§ 102, 103 or 112. Although, as Gustavsson correctly notes (p. 6), "[t]he Federal Circuit [in Parks v. Fine, supra] has precluded [a party who failed to satisfy § 135(b) ] from establishing priority as against a challenged patent under the old interference rules," it does not necessarily follow that a party who fails to satisfy § 135(b) "must likewise be precluded from establishing priority and/or unpatentability against a challenged patent under the new interference rules" (Gustavsson's emphasis). While it is true that Switzer v. Sockman, 333 F.2d 935, 939, 142 USPQ 226, 229 (CCPA 1964), cert. denied, 380 U.S. 906 (1965), states that the Congressional intent underlying § 135(b) is "to leave a [patentee], whose right might otherwise be challenged, undisturbed after a reasonable period, fixed at one year," this statement obviously must be construed in the context of the authority of the former Board of Patent Interferences, which could only consider priority issues and patentability issues which were ancillary to priority, rather than in the context of the authority of the current board, which can consider patentability issues without regard to whether they are ancillary to priority. When so construed, it is clear that the Switzer does not mean Congress intended to preclude a board having the broader powers of the current board from considering patentability issues arising during an interference where an applicant has violated § 135(b).
Nor is there support for such an interpretation in the legislative history of § 135(b). As explained in Corbett v. Chisholm, 568 F.2d 759, 196 USPQ 337, 342 (CCPA1977), R.S. 4903 was amended in 1939 to include the following paragraph, which is the predecessor of 35 U.S.C. § 135(b):
No amendment for the first time presenting or asserting a claim which is the same as, or for substantially the same subject matter as, a claim of an issued patent may be made in any application unless such amendment is filed within one year from the date on which said patent was granted.
(Court's emphasis.) 568 F.2d at 765, 196 USPQ at 342. According to the court, "the intent of Congress, as expressed in H.R.Rep. No. 970, 76th Cong., 1st Sess. (1939), was clearly to enact a statute of repose. R.S. 4903, as amended, was to be a statute of limitations, so to speak, on interferences so that the patentee might be more secure in his property right." Id. Pages 1 and 2 of this report include the following passages, on which Gustavsson specifically relies:
*4 The purpose of this bill is to curtail the time within which an interference with an issued patent may be instituted.
... A patent may be out and in use for several years and the patentee feel secure in his property, yet at any time he may have the burden and expense of an interference thrust upon him, with the possibility that he may even lose his patent.
In some cases an interference with a patent is justified and consequently such interferences cannot be eliminated altogether without the possibility of injustice to some inventor. The proposed change places a period of limitation of 1 year after which an interference cannot be sought with a granted patent.
The court also observed, 568 F.2d at 765, 196 USPQ at 342, that the second paragraph of R.S. 4903, as amended, was codified in its present form in 1952 as the second paragraph of § 135 (66 Stat. 801-02 (1952)), later designated as paragraph (b) (76 Stat. 958 (1962)), and that no substantial change was intended by the changes in language, citing In re Tanke, 213 F.2d 551, 102 USPQ 83 (CCPA1954).
Nothing in the foregoing legislative history suggests any Congressional intent to preclude the previous Board of Patent Interferences, if it determined during an interference that an applicant was in violation of § 135(b), from addressing patentability issues raised by the applicant. In fact, the previous board had the authority to consider patentability issues which were ancillary to priority, such as an opponent's right to make a claim, an issue which is raised in Valentini's motion (5) (paper No. 14, e.g., p. 3). Interference Law and Practice, supra at § 252, p. 1021. [FN9]
Nor did Congress, in passing the Patent Law Amendments Act of 1984, indicate that a § 135(b) violation should preclude the current board from considering allegations that involved patent claims are unpatentable under 35 U.S.C. §§ 102, 103 or 112. No House or Senate report was submitted with this legislation. However, it is discussed in "Section-By-Section Analysis: Patent Law Amendments of 1984," 130 Cong.Rec. 10525 (Oct. 1, 1984), reprinted in 1984 U.S.Code Cong. & Admin.News 5827-40, of which pages 5836-37 discuss the jurisdiction of the newly formed Board of Patent Appeals and Interferences. [FN10] These and the other pages of this analysis is silent regarding § 135(b) and its intended effect, if any, on the board's broadened authority under amended § 135(a) to consider all patentability issues arising in interferences. Unlike Gustavsson, we are not prepared to infer from this silence a Congressional intent to preclude the board, during an interference, from considering an applicant's allegations that involved patent claims are unpatentable under §§ 102, 103 or 112 where there has been a § 135(b) violation. Moreover, such an inference would run counter to, and be outweighed by, the public interest in "resolv[ing] administratively questions affecting patent validity that arise before the PTO." Perkins, 886 F.2d at 329, 12 USPQ2d at 1311. [FN11] Consequently, while it is true, as Gustavsson emphasizes, that Perkins did not involve an alleged violation of § 135(b), we believe the foregoing public interest must be taken into account whether or not § 135(b) has been satisfied.
*5 There is also no merit to Gustavsson's argument that our position is contrary to the stated purpose of the Patent Law Amendments Act of 1984 of making interferences simpler, more expeditious, and less costly. As explained in Perkins, these objects were achieved by merging the two previous boards and authorizing the combined board to consider patentability issues which arise during interferences:
[D]ecision 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:
By combining the two Boards into a single Board having jurisdiction to consider priority and patentability, it is expected that interferences will become simpler, more expeditious, and less costly. Under the bill all issues of patentability and priority which arise in an interference can be decided in a single proceeding rather than in a series of complicated inter partes and ex parte proceedings.
["Section-by-Section Analysis, Patent Law Amendments of 1984,"] 130 Cong.Rec. 28,065, 28,072 (1984), reprinted in 1984 U.S.Code Cong. & Admin.News 5827, 5837.
886 F.2d at 328, 12 USPQ2d at 1310-11.
Gustavsson also argues that consideration of the patentability of its claims in this proceeding is improper because there are other forums available in which Valentini can challenge the patentability of Gustavsson's claims, including reexamination and a civil action in a federal district court. [FN12] While the existence of alternative forums for determining the patentability of Gustavsson's claims might be relevant if the EIC had the discretion to consider or not consider allegations of unpatentability, Perkins makes it clear that the EIC has no such discretion.
Gustavsson also charges that our position unfairly rewards an applicant who intentionally violates § 135(b) in order to use an interference proceeding as a forum to attack the patentability of patent claims. [FN13] Intentional violations of § 135(b) are probably infrequent and in any event would be difficult to prove. A more typical situation involves an applicant who copied a patent claim in good faith to provoke an interference, during the course of which it was determined that he or she did not in fact satisfy § 135(b). Consequently, in our view, the possibility that the PTO, prior to declaring an interference, will fail to detect a deliberate violation of § 135(b) is outweighed by the greater public interest in having the PTO "resolve administratively questions affecting patent validity that arise before [it]." Perkins, 886 F.2d at 329, 12 USPQ2d at 1311.
There is also no merit to Gustavsson's argument that our decision is contrary to 37 CFR 1.601, which indicates that the new interference rules "shall be construed to secure the just, speedy and inexpensive determination of every interference." On the contrary, justice to the general public is obviously served when the board considers whether the patentee is entitled to its claims which correspond to the count. As for speed, requiring an EIC to wait for a final decision on a 1.633(a) motion alleging a § 135(b) violation before he or she can consider a 1.633(a) motion alleging that involved patent claims are unpatentable would unduly prolong the interference.
*6 Gustavsson's argument (p. 5, n. 3) that this interference can be terminated in accordance with the rules merely by entering judgment against Valentini is also incorrect. As explained in 37 CFR 1.658(a), "[a] judgment as to a count shall state whether or not each party is entitled to a patent containing the claims in the party's patent or application which corresponds to the count" (our emphasis).
In summary, we will not vacate our decision reversing the EIC's dismissal of Valentini's motions (1)-(9) collectively as moot in view of Valentini's failure to comply with § 135(b). Since Valentini's motions (1) and (3)-(5) raise patentability issues, the EIC must decide these motions on the merits. On the other hand, since the EIC correctly dismissed Valentini's motions (2), (7) and (8) on the alternative ground that the board was not authorized at that time to consider allegations of fraud or inequitable conduct, the EIC is not required to consider these motions. [FN14] As for the remaining two Valentini motions, i.e., motions (6) and (9), our reversal of the EIC's collective dismissal of motions (1)-(9) does not preclude the EIC, if appropriate, from dismissing motions (6) and/or (9) individually on grounds stemming from Valentini's failure to comply with § 135(b), such as the elimination of priority as an issue in this interference.
Gustavsson's request that we certify our decision for petition to the Commissioner pursuant to 37 CFR 1.644(a)(1) is denied because the rules do not authorize a request for certification as part of a request for reconsideration. 37 CFR 1.658(b). Instead, the reasons for certifying the decision for petition must appear in or accompany the petition itself, which must be filed no more than 15 days after the decision which is the subject of the petition. We would also note that since the EIC is required by § 135(a) and Perkins to consider the merits of motions (1) and (3)-(5), which raise patentability issues, our decision reversing the dismissal of these four motions does not involve "a controlling question of procedure or an interpretation of a rule," which is a requirement for a petition under 37 CFR 1.644(a)(1).
Gustavsson's request that we reverse the EIC's dismissal of its motions (11)- (14) and (16) collectively as moot in view of Valentini's failure to comply with § 135(b) is granted. As Gustavsson has correctly surmised, our failure to address the EIC's dismissal of these Gustavsson motions in our initial opinion was an oversight. However, as with Valentini's motions (6) and (9), this does not preclude the EIC, if appropriate, from dismissing one or more of these Gustavsson motions individually on grounds stemming from Valentini's failure to comply with § 135(b).
BOARD OF PATENT APPEALS AND INTERFERENCES
Ian A. Calvert
Marc L. Caroff
John C. Martin
FN1. Section 135(b) reads as follows: "A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted."
FN2. The above quoted passage was not affected by the corrections to the Final Rule Notice published at 50 Fed.Reg. 23122 (May 31, 1985), reprinted in 1059 O.G. 27 (Oct. 22, 1985).
FN3. This decision followed enactment of the Patent Law Amendments Act of 1984 (Public Law 98-622, 98 Stat. 3383), which created the current Board of Patent Appeals and Interferences by merging the former Board of Patent Interferences and Board of Appeals and which amended 35 U.S.C. § 135(a) to authorize the new board to consider priority and patentability issues arising in interferences.
FN4. Specifically, motion (1) alleges that Gustavsson's claims 1 and 2, currently the only Gustavsson claims designated as corresponding to the count, are unpatentable under 35 U.S.C. §§ 102 and 103; motion (3) requests that Gustavsson's claims 3-17 be designated as corresponding to the count; motion (4) alleges that claims 3-17 are unpatentable under § 103; and motion (5) alleges that claims 4-17 are unpatentable under the first and second paragraphs of § 112.
FN5. Section 135(a) reads in pertinent part as follows: "The Board of Patent Appeals and Interferences shall determine questions of priority of the inventions and may determine questions of patentability."
FN6. See, e.g., The American Heritage Dictionary of the English Language (1975 ed.), which at page 471 gives "[c]learly; distinctly" as one of the definitions of "fairly."
FN7. As explained in In re Sasse, 629 F.2d 675, 207 USPQ 107, 110 (CCPA1980), "[e]ssentially, this section [135(b) ] operates as a statute of limitations on copying claims for the purpose of instigating interferences" and thus operates as a "procedural statutory bar ... proscribing the instigation of an interference after a specified interval" (emphasis omitted).
FN8. See Emerson v. Beach, 215 F.2d 290, 293, 103 USPQ 45, 47 (CCPA1954) (Emerson's failure to comply with R.S. 4903, the predecessor of 35 U.S.C. § 135(b), estopped Emerson from making any of the counts and compelled an award of priority to Beach); Andrews v. Wickenden, 194 F.2d 729, 93 USPQ 27 (CCPA1952); Jenks v. Knight, 90 F.2d 654, 33 USPQ 601 (CCPA1937). See also Parks v. Fine, 773 F.2d 1577, 227 USPQ 432, modified, 783 F.2d 1036, 1037, 228 USPQ 677, 678 (Fed.Cir.1986), wherein the court agreed with Parks that Fine had not satisfied the requirements of § 135(b) and reversed the board's award of priority to Fine.
As a result of the foregoing estoppel effect, the question of whether an applicant had complied with § 135(b) was considered "ancillary to priority" under the old interference rules (37 CFR 1.201 et seq.). C. Rivise and A. Caesar, Interference Law and Practice (1943) § 252.
The foregoing decisions also demonstrate that § 135(b) and its predecessor R.S. 4903 have not been treated as jurisdictional in nature, i.e., the failure of a party to comply with these statutory provisions has not been held to render the interference void ab initio. In any event, Gustavsson no longer contends that Valentini's § 135(b) violation rendered this interference void ab initio.
FN9. However, the alleged unpatentability of patent claims in view of prior art, such as alleged in Valentini's motions (1), (3) and (4), could not have been considered by the previous board because it was not ancillary to priority. Id. at § 251, p. 1016.
FN10. Copies of pages 5827, 5836 and 5837 constitute Exhibit 2 with Gustavsson's request for reconsideration.
FN11. Though not an issue in the present case, it would be incorrect for the same reason to infer a Congressional intent to preclude the board, where an applicant has failed to satisfy § 135(b), from sua sponte holding involved patent claims unpatentable for reasons not advanced by the applicant.
FN12. However, Gustavsson concedes (pp. 16-17 n. 10) that the alleged unpatentability of its patent claims 4-17 under 35 U.S.C. § 112, which is alleged in Valentini's motion (5), cannot be considered in a reexamination proceeding. See 37 CFR 1.552(a).
FN13. This argument obviously would not apply where the board, after determining during an interference that an applicant has not complied with § 135(b), sua sponte holds involved patent claims unpatentable for reasons not advanced by the applicant.
FN14. As noted by Valentini in paper No. 99, the Commissioner's October 24, 1991, Notice (1132 O.G. 33, Nov. 19, 1991) authorizes the board to consider allegations of fraud when properly raised in an interference. The two conditions under which such allegations will be considered are described in Chairman Serota's November 14, 1991, notice entitled "Interference Practice: Consideration of Fraud and Inequitable Conduct," published at 1133 O.G. 21 (Dec. 10, 1991). Neither of these conditions permits consideration of allegations of fraud or inequitable conduct which were initially raised in preliminary motions that were properly dismissed on the ground that the board at that time was not authorized to consider these issues.
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