Conservolite, Inc. v. Widmayer

• Decision Date: 21 April 1994
• Docket Number: No. 93-1280,93-1280
• Citation: 30 USPQ2d 1626,21 F.3d 1098
• Parties: CONSERVOLITE, INC., Plaintiff-Appellee, v. Don F. WIDMAYER, Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1098

21 F.3d 1098

30 U.S.P.Q.2d 1626

CONSERVOLITE, INC., Plaintiff-Appellee, v. Don F. WIDMAYER, Defendant-Appellant.

No. 93-1280.

United States Court of Appeals, Federal Circuit.

April 21, 1994.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

June 21, 1994.

William K. Wells, Jr., Kenyon & Kenyon, Washington, DC, argued, for plaintiff-appellee.

Ross F. Hunt, Jr., Larson & Larson, Arlington, VA, argued, for defendant-appellant.

Before ARCHER ^*, Chief Judge, NEWMAN and LOURIE, Circuit Judges.

LOURIE, Circuit Judge.

Don F. Widmayer appeals from a decision of the United States District Court for the District of Maryland reversing the decision of the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences and awarding priority of invention in Interference No. 101,516 to Conservolite, Inc. Conservolite, Inc. v. Widmayer, No. K-90-2524 (D. Md. Feb. 24, 1993). Because the district court's decision was based on an issue not raised with or decided by the Board in the interference, and because the court's underlying factual findings supporting the award of priority are not challenged here, we reverse.

BACKGROUND

This case involves an interference between U.S. patent application serial number 571,830, filed by Widmayer, and U.S. Patent 4,507,569 to Hess, assigned to Conservolite. ¹ At trial, the court found that "Widmayer did reduce to practice the invention named in the account [sic ] of the interference proceeding," that "Widmayer's reduction to practice came first," and that "Widmayer did not abandon, conceal, or suppress[ ] his invention." The court further opined that if the inventions of Widmayer and Hess had been "sufficiently similar," Hess would have derived the invention from Widmayer. However, relying upon testimony given during trial by an expert witness, the court found that the invention reduced to practice by Widmayer was not "sufficiently similar to the invention described in the count." Based on this finding, the court awarded priority of invention to Conservolite. Widmayer appealed to this court.

Both specifications are directed to control systems for regulating a power supply. The interference was declared on April 4, 1986, with one count; claim 1 of the '569 patent and claim 8 of the '830 application were designated to correspond exactly to the count. The Board awarded priority of invention to Widmayer, finding that Widmayer reduced the invention to practice prior to Hess; that Widmayer had not abandoned, suppressed, or concealed the invention; and that Hess derived the invention from Widmayer. Conservolite sought remedy in the district court pursuant to 35 U.S.C. Sec. 146 (1988).

DISCUSSION

What has occurred in this case is an award of priority to the party who was found to be second to invent because the parties were found not to be claiming the same invention. Such a case is ripe for reversal. See Squires v. Corbett, 560 F.2d 424, 433, 194 USPQ 513, 519 (CCPA 1977) (if the inventions at issue are either unpatentable to the parties or are not the same invention, no contest of priority as contemplated by 35 U.S.C. Sec. 135 exists).

Our jurisdiction to entertain this appeal is based on 28 U.S.C. Sec. 1295(a)(4)(C) (1988). Priority is a question of law which is to be determined based upon underlying factual determinations. Price v. Symsek, 988 F.2d 1187, 1190, 26 USPQ2d 1031, 1033 (Fed.Cir.1993). As with any bench trial, we review the district court's judgment for clearly erroneous findings of fact and errors of law. See Fregeau v. Mossinghoff, 776 F.2d 1034, 1038, 227 USPQ 848, 851 (Fed.Cir.1985); Fed.R.Civ.P. 52.

The arguments presented in the district court and on appeal have focused almost exclusively on whether Widmayer's invention "met the count" or was "sufficiently similar" to the invention of the interference count. Specifically, Widmayer, who acted pro se in the interference and in the district court, now claims that the court's judgment rests on the clearly erroneous finding that "the Widmayer circuit does not make the count," while Conservolite argues that Widmayer did not prove a reduction to practice of the invention of the count because Widmayer's invention is structurally different from the invention disclosed in the Hess patent. Much effort was spent by both parties concerning interpretation of the opinion of an expert witness and whether he changed his opinion at trial. However, the fate of this appeal does not turn on the merits. The issues presented by the parties were not raised during the interference; therefore, they were not properly before the district court. The legal error in the judgment below resulted from the fact that the district court rested its decision on a ground not properly before it. Thus, we must reverse the court's judgment of priority.

Interference practice is highly arcane and specialized, and complicating the situation is the fact that the PTO changed its rules fairly recently. ² One result of this change is that the issues raised in this appeal cannot be appropriately analyzed in terms of a party's The current rules do not require "copying" claims. 37 C.F.R. Secs. 1.603-.607. As a prerequisite to the declaration of an interference between an application and an issued patent, the PTO must determine that the subject matter of the application claim, whether or not the language of the claim is identical to that of the patent claim, is patentable, and whether the claims are drawn to the same invention. ³ See 37 C.F.R. Secs. 1.601, 1.606. The declaration of an interference thus prima facie establishes those prerequisite conditions. While the burden of establishing prima facie priority rests initially on a party seeking to provoke an interference, see 37 C.F.R. Sec. 1.608, once an interference has been declared, the burden is on a party who seeks to change the nature of the interference to take action by means of a suitable motion to persuade the examiner-in-chief or the Board of the merits of his or her position. Kubota, 999 F.2d at 522, 27 USPQ2d at 1422.

"right to make" a count. Under the PTO's old interference rules, "a party copying claims for the purpose of provoking an interference bore the burden of proving by clear and convincing evidence that it had the 'right to make' the claim." Kubota v. Shibuya, 999 F.2d 517, 521, 27 USPQ2d 1418, 1422 (Fed.Cir.1993) (emphasis added). This "right to make the claim" turned on whether an applicant's disclosure supported the full scope of the claim under 35 U.S.C. Sec. 112, p 1. Squires, 560 F.2d at 435, 194 USPQ at 520. However, this "right to make" analysis is largely inapposite in the context of the PTO's new interference rules. See Kubota, 999 F.2d at 522, 27 USPQ2d at 1422-23.

The PTO rules specifically permit parties in an interference to file motions contesting, for example, the patentability of an opponent's claim, see 37 C.F.R. Sec. 1.633(a), the existence of an interference in fact, see id. Sec. 1.633(b), and the designation of particular claims as corresponding to a count in order to redefine the interfering subject matter, see id. Sec. 1.633(c). Section 1.655 of the PTO's interference rules provides that a party shall not be entitled to raise for consideration at final hearing a matter which properly could have been raised by a motion or opposition, unless the party shows good cause why the issue was not timely raised and except to prevent manifest injustice. 37 C.F.R. Sec. 1.655(b); see General Instrument Corp. v. Scientific-Atlanta, Inc., 995 F.2d 209, 212, 27 USPQ2d 1145, 1147 (Fed.Cir.1993) ("[T]he preliminary motions which a party files or does not file under Sec. 1.633 can have far reaching consequences for both the outcome of the interference and subsequent ex parte prosecution."); accord Kwon v. Perkins, 6 USPQ2d 1747, 1751 (Bd.Pat.App. & Interfer.1988) (party who did not raise an issue by motion under Sec. 1.633 was not entitled to do so at Board), aff'd, 886 F.2d 325, 12 USPQ2d 1308 (Fed.Cir.1989). The fact that Conservolite did not contest that the parties were claiming the same patentable invention by way of a suitable motion not only precluded Conservolite from doing so at the Board's final hearing, it also precluded Conservolite from raising this issue in an action brought pursuant to Sec. 146. ⁴

Judicial review of the Board's determinations in an interference is provided for by 35 U.S.C. Sec. 146. ⁵ While Sec. 146 provides In order for an issue to have been raised adequately so that it qualifies for consideration in a Sec. 146 proceeding, the issue should have been raised as specified in the PTO's interference rules, for example, through preliminary motions, motions to correct inventorship, miscellaneous motions, belated motions delayed for good cause, or opposition to these motions. See General Instrument, 995 F.2d at 214, 27 USPQ2d at 1148. In this case, Conservolite failed to raise the "same patentable invention" issue in the manner specified by the interference rules.

that the administrative record developed at the PTO may be admitted "without prejudice to the right of the parties to take further testimony," the right to offer new evidence is not unlimited. Rather, an action under Sec. 146 is essentially a proceeding to review the action of the Board. While the expression "de novo" is often used to describe a Sec. 146 action, the statute does not use this language or state that new issues can freely be raised. Section 146 authorizes the district court on review to accept new testimony, but normally only as to issues raised by the parties during the proceedings below or by the Board's decision. Case v. CPC Int'l, Inc., 730 F.2d 745, 752, 221 USPQ 196, 202 (Fed.Cir.), cert. denied, 469 U.S. 872, 105 S.Ct. 223, 83 L.Ed.2d 152, 224 USPQ 736 (1984). Thus, the parties to an interference must make a complete presentation of the issues at the Board level so that the interference is efficient and not wasteful of...