Cragg v. Martin
| Decision Date | 27 July 2001 |
| Docket Number | Patent Interference 104,192 |
| Parties | ANDREW H. CRAGG and MICHAEL D. DAKE, Junior Party, (Application 08/461, 402), [1] v. ERIC C. MARTIN, Junior Party, (Application 5, 575, 817), [2] v. THOMAS J. FOGARTY, JAY A. LENKER, TIMOTHY J. RYAN and KIRSTEN FREISLINGER, Senior Party, (Application 08/463, 836). |
| Court | Patent Trial and Appeal Board |
This Opinion is Not binding Precedent of the Board.
Attorney for party Cragg: Paul F. Prestia RATHER & PRESTIA
Attorney for party Fogarty: Bruce M. Collins MATHEWS COLLINS, SHEPHERD & GOULD, P.A.
Attorney for party Martin: Robert J. Koch FULBRIGHT & JAWORSKI
Before McKELVEY, Senior Administrative Patent Judge, and SCHAFER LEE and MEDLEY, Administrative Patent Judges.
LEE, Administrative Patent Judge.
When this interference was declared on April 23, 1998, current junior party Cragg was then senior party Goicoechea. Because of the granting of a motion to correct inventorship in related Interference No. 104, 083 for application 08/461, 402, the same application that is involved in this interference, co-inventors George Goicoechea, John Hudson, and Claude Mialhe were deleted and the only remaining inventors in that application are Andrew H. Cragg and Michael D. Dake. Thus, party Goicoechea became party Cragg. Any reference to party Goicoechea should be understood as a reference to party Cragg.
A decision on the parties' preliminary motions was rendered on February 11, 2000 (Paper No. 108), after which party Fogarty filed a miscellaneous motion (Paper No. 112) for leave to file, out of time, a preliminary motion 12 to attack the benefit accorded party Cragg of European Applications EP94400284.9 and EP94401306.9. The motion for leave as well as the preliminary motion 12 (Paper No. 113) were granted by a panel consisting of administrative patent judges Schafer and Lee (Paper No. 130). The decision on Fogarty's preliminary motion 12 was adhered to on reconsideration (Paper No. 138) by a panel consisting of Senior Administrative Patent Judge McKelvey, and Administrative Patent Judges Schafer and Lee. This interference was re-declared in Paper No. 131 to change the junior/senior status of parties Cragg and Fogarty, with Cragg now being junior party.
Junior party Martin did not file a preliminary statement. It has indicated to the administrative patent judge to which this case was assigned that it did not want to participate in this interference except to "ride along" for the possibility that (1) the only interference-in-fact is determined to be between parties Cragg and Martin (a Cragg contention), and (2) that party Cragg will be deprived of its accorded benefit date (a Fogarty contention) and cannot demonstrate a sufficiently early date to prevail over Martin.
Because junior party Cragg filed no case-in-chief during the priority phase of this proceeding, it was placed under an order to show cause why judgment should not be entered against Cragg. Party Cragg requested final hearing for review of the Board's decision on Cragg's preliminary motions 1 and 2 and on Fogarty's preliminary motion 12. According to party Cragg it should not have been made a junior party and thus need not have had to put on a priority case in the first instance. Party Fogarty requested review of the Board's decision on its preliminary motions 8 and 10. Oral argument was made on February 28, 2001, before administrative patent judges Schafer, Lee and Medley.
The below-listed findings as well as those contained in the discussion portion of this opinion are supported by a preponderance of the evidence:
1. This interference was declared on April 23, 1998, between three parties, Martin, Fogarty, and Goicoechea (now Cragg).
2. The involved patent of Martin is Patent No. 5, 575, 817, based on application 08/293, 541, filed August 19, 1994.
3. The involved application of Cragg is application 08/461, 402, filed June 5, 1995.
4. The involved application of Fogarty is application 08/463, 836, filed June 5, 1995.
5. At the time of declaration of this interference, the named inventors of Cragg's involved application 08/461, 402 were George Goicoechea, John Hudson, Claude Mialhe, Andrew H. Cragg, and Michael D. Dake.
6. Cragg's application 08/461, 402, was also involved in a related interference, Interference No. 104, 083, between parties Cragg and Martin but not Fogarty, wherein a motion to correct inventorship was granted, deleting George Goicoechea, John Hudson, and Claude Mialhe as co-inventors, and leaving only Andrew H. Cragg and Michael D. Dake.
7. This interference was re-declared on June 2, 1999 (Paper No. 106) to reflect that only Andrew H. Cragg and Michael D. Dake are named inventors in Cragg's involved application.
8. Independent claim 1 of Martin's involved patent reads identically as the count in related Interference No. 104, 083, and judgment was entered against party Martin in that interference on March 10, 1999.
9. Claim 2 of Martin's involved patent depends from claim 1, and if re-written in independent form it would read the same as the count in this interference.
10. The count of this interference reads as follows (Paper No. 16):
11. Cragg's preliminary statement identifies only Michael D. Dake as the inventor of the subject matter of the count.
12. After the rendering of the Board's decision on preliminary motions (Paper No. 108) and subsequent service of the preliminary statement of party Cragg, Cragg filed a miscellaneous motion to amend or correct its preliminary statement to identify Andrew H. Cragg and Michael D. Dake as co-inventors of the subject matter of the count. (Paper No. 117).
13. Cragg's motion to amend was denied. (Paper No. 130). A written opinion explaining the basis of that denial followed. (Paper No. 140). Cragg requested reconsideration. The original decision was adhered to on reconsideration. (Paper No. 146).
14. Cragg has not sought review of the Board's denial of Cragg's motion to amend or correct its preliminary statement to name both Andrew H. Cragg and Michael D. Dake as inventors.
15. Upon declaration of this interference, Cragg was accorded benefit of U.S. application 08/317, 763, filed October 4, 1994, European application EP94400284.9, filed February 9, 1994, and European application EP94401306.9, filed June 10, 1994. The European applications did not identify any inventor and were filed by the entity MINTEC SARL.
16. Based on representations from individuals associated with party Cragg, party Fogarty regarded as true, until the service of party Cragg's preliminary statement, that European applications EP94400284.9 and EP94401306.9 were filed by MINTEC SARL on behalf of inventors Goicoechea, Hudson, Mialhe, and Cragg. (Fogarty Preliminary Motion 12, Fact No. 5 - not disputed by Cragg).
17. Michael D. Dake made an assignment of rights, including his interests in the invention covered by Cragg's involved application relating to a bifurcated stent-graft, to MinTec, Inc., for a one time payment of eight hundred thousand U.S. dollars (U.S. $800, 000) and other considerations, on May 6, 1996, with a stated effective date of April 30, 1996. (Cragg Exhibit 1025, CE-1025). The date of assignment was nearly two years and three months from the date of filing of EP94400284.9 on February 9, 1994, and nearly two years from the date of filing of EP94401306.9 on June 10, 1994.
18. Parties Cragg and Fogarty evidently treat, without dispute, that MinTec, Inc. and MINTEC SARL are related entities such that an assignment of interest to the former means the latter is an "assign."
19. Andrew H. Cragg made an assignment of rights, including his interests in the invention covered by Cragg's involved application relating to a bifurcated endoluminal prosthesis, to MINTEC, INC. on August 22, 1994. (Cragg Exhibit 1021, CE-1021). The date of assignment was six months after the date of filing of EP94400284.9 on February 9, 1994, and two months after the date of filing of EP94401306.9 on June 10, 1994.
In the "Relief Requested" portion of Fogarty's preliminary motion 12, it is stated:
Fogarty moves under 37 CFR § 1.633(g) to deny the senior party the benefit of EP94400284.9 and EP94401306.9 on the grounds that neither application was filed by (i) the individual now identified as the inventor or (ii) on his behalf by his legal representatives or assigns.
The statutory basis of Fogarty's preliminary motion 12 is 35 U.S.C. § 119, which states, in pertinent part:
(a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO...
To continue reading
Request your trial