Gerritsen v. Shirai, 91-1480

• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
• Writing for the Court: Before MICHEL, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and RADER; MICHEL
• Citation: 24 USPQ2d 1912,979 F.2d 1524
• Parties: Jan GERRITSEN and Johannes C.J. Aerts, Appellants, v. Shoji SHIRAI, Masakzu Fukushima, Satoru Miyamoto and Masahiro Miyazaki, Appellees. Federal Circuit
• Docket Number: No. 91-1480,91-1480
• Decision Date: 19 November 1992

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979 F.2d 1524 24 U.S.P.Q.2d 1912 Jan GERRITSEN and Johannes C.J. Aerts, Appellants,
v.
Shoji SHIRAI, Masakzu Fukushima, Satoru Miyamoto and
Masahiro Miyazaki, Appellees. No. 91-1480. United States Court of Appeals, Federal Circuit. Nov. 19, 1992.

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Jack E. Haken, U.S. Philips Corp., Tarrytown, N.Y., argued, for appellants.

Fred E. McKelvey, Sol., U.S. Patent & Trademark Office, Arlington, Va., argued, for amicus curiae, Com'r of Patents & Trademarks. With him on the brief was Murriel E. Crawford, Associate Sol. Of counsel was James T. Carmichael.

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Before MICHEL, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and RADER, Circuit Judge.

MICHEL, Circuit Judge.

Jan Gerritsen and Johannes C. J. Aerts are the named inventors in United States Patent No. RE 33,592 (the RE '592 patent), which is directed to a color display tube comprising an in-line electron gun. Gerritsen and Aerts appeal that portion of the August 6, 1991 decision of the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board), Interference No. 102,103, concluding that they did not comply with 37 C.F.R. § 1.662(b) (1991) and that as a sanction they are not entitled to claims 10-22 of the RE '592 patent. Because we agree that appellants failed to follow 37 C.F.R. § 1.662(b), we affirm the Board's decision to the extent it holds Gerritsen and Aerts are sanctionable. However, because the Board's choice of sanction is based on clearly erroneous findings of fact constituting an abuse of discretion, we vacate the sanction and remand.

BACKGROUND

Shirai, et al., provoked the underlying interference by copying claim 1 of Gerritsen and Aerts' U.S. Patent No. 4,742,279 (the '279 patent) in their application. The examiner-in-chief had set the period for filing preliminary motions to expire on July 19, 1989, but later postponed the deadline to August 19, 1989 after granting Shirai, et al.'s, motion to extend. Gerritsen and Aerts filed an application with the PTO on August 31, 1989 ¹ to reissue their '279 patent, adding thirteen claims to the original patent. This reissue application matured into the RE '592 patent with new claims 10-22.

By letter dated August 31, 1989, Gerritsen and Aerts notified the examiner-in-chief and Shirai, et al., that appellants sought reissuance of the '279 patent and also enclosed a copy of the reissue application. But the appellants did not move to add the reissue application to the ongoing interference. Instead, the examiner-in-chief redeclared the interference when Gerritsen and Aerts surrendered the '279 patent in exchange for the RE '592 patent. The examiner-in-chief designated the new reissue claims 10-22 as additional claims corresponding to the interference count.

As a result of appellants' failure to move to add their reissue application to the interference proceeding, the examiner-in-chief determined that Gerritsen and Aerts had failed to comply with 37 C.F.R. § 1.662(b) and ordered them to show cause why an appropriate sanction should not be imposed under 37 C.F.R. § 1.616 (1991). In reply, Gerritsen and Aerts contended that a timely preliminary motion, i.e., a motion made during the preliminary motions period, could not have been filed because they did not determine the need to file for reissue until after the close of the preliminary motions period. The examiner-in-chief found their reply largely nonresponsive, but deferred the decision on the type of sanction to final hearing. And upon final hearing, the Board concluded that as a sanction Gerritsen and Aerts were not entitled to claims 10-22 of the RE '592 patent although they obtained priority over Shirai, et al., to the subject matter of the interference count.

Gerritsen and Aerts appeal the sanction decision of the Board. Although Shirai, et al., have entered an appearance, the appellees have not filed a brief supporting the Board. The Commissioner of Patents and Trademarks appears as amicus curiae and argues for affirmance of both the Board's decision to sanction and choice of sanction. We have jurisdiction pursuant to 35 U.S.C. § 141 (1988) and 28 U.S.C. § 1295(a)(4)(A) (1988).

I.

Prior to oral argument in this court, Gerritsen and Aerts made a "MOTION FOR JUDGMENT ON THE RECORD," which was filed as their reply brief. The basis for the motion is Shirai, et al.'s, failure to submit a responsive brief. Gerritsen and

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Aerts infer that Shirai, et al., "no longer believes that the sanctions imposed were appropriate or necessary." Consequently, appellants conclude that this court should enter judgment reversing the Board's sanction decision because there is "no longer any controversy between the parties." ²

This position rings hollow. Gerritsen and Aerts have not cited any authority, and we are aware of none, for the proposition that we are required to reverse the Board whenever appellees do not file a responsive brief urging affirmance. Such a position is inconsistent with appellate practice and case law. See Fed.R.App.P. 31(c) (denying an appellee who failed to file a brief the right to be heard at oral argument); Pink Lady Corp. v. L.N. Renault & Sons, Inc., 265 F.2d 951, 121 USPQ 465 (CCPA 1959) (considering issue of likelihood of confusion on the merits even when appellee filed no brief). See also Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 143, 109 S.Ct. 971, 973, 103 L.Ed.2d 118 (1989) (deciding appeal when only amici curiae submitted briefs in support of judgment below); Perkins v. Kwon, 886 F.2d 325, 326, 12 USPQ2d 1308, 1309 (Fed.Cir.1989) (reviewing appropriateness of Board's priority determination when appellee did not participate and Commissioner appeared as amicus curiae). Our duty to review the case for reversible error does not turn on whether the appellees have filed a brief. Having invoked our jurisdiction, appellants cannot now be heard to say that we need not carry out our appellate function solely because Shirai, et al., have not responded.

Gerritsen and Aerts also apparently take exception to the Commissioner proceeding in this appeal without Shirai, et al. To the extent appellants are challenging the Commissioner's standing, the argument is without merit since the Commissioner is appearing as amicus curiae. See id.

II.

We define, for the first time, our standard of review for the Board's decision to impose a sanction and for its choice of sanction under 37 C.F.R. § 1.616 against an interference party who allegedly failed to comply with an interference regulation. We begin by turning to the agency's regulations. According to 37 C.F.R. § 1.616 ³:

An examiner-in-chief or the Board may impose an appropriate sanction against a party who fails to comply with the regulations of this part or any order entered by an examiner-in-chief or the Board. An appropriate sanction may include among others entry of an order:

(a) Holding certain facts to have been established in the interference;

(b) Precluding a party from filing a motion or a preliminary statement;

(c) Precluding a party from presenting or contesting a particular issue;

(d) Precluding a party from requesting, obtaining, or opposing discovery; or

(e) Granting judgment in the interference.

(Emphasis added.) Therefore, the PTO regulation gives the examiner-in-chief and the Board discretionary authority to decide both whether to impose a sanction and what sanction to impose.

When a decision pursuant to a permissive statute concerns only PTO practice, we review the decision for abuse of

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discretion. Schenley Indus., Inc. v. E. Martinoni Co., 408 F.2d 1049, 1052, 161 USPQ 279, 281 (CCPA 1969) (refusal to accept substitute verifications under 35 U.S.C. § 26 found not to be an abuse of discretion). The abuse of discretion standard is also appropriate in the present case. As the Commissioner established 37 C.F.R. § 1.616 under the authority of 35 U.S.C. § 6(a), we see no reason in law or logic to apply a different standard of review to the Board's decision merely because it acted directly under a permissive regulation, rather than a permissive statute. Congress granted the Commissioner broad powers over PTO practice. By imposing an unduly expansive standard of review, which in effect limits that discretion, we would be acting contrary to the statute and congressional intent. This is particularly so here, where the issue is the application of a sanction on record facts in an individual case, not the construction of a regulation allowing sanctions in appropriate cases.

This approach to appellate review of Board sanction decisions is consistent with the regulatory scheme for conducting interferences. The preamble to 37 C.F.R. § 1.601 (1991) generally calls for the "just, speedy, and inexpensive determination of every interference." A narrow standard of review would promote the efficient determination of interferences. Moreover, the abuse of discretion standard gives proper recognition to the interest of the Board and the examiner-in-chief in maintaining control over the management of interference proceedings.

Nor is the standard we adopt today extraordinary in an administrative context; rather, it adheres to settled law on judicial review of discretionary agency actions. In Butz v. Glover Livestock Comm'n Co., 411 U.S. 182, 93 S.Ct. 1455, 36 L.Ed.2d 142, reh'g denied, 412 U.S. 933, 93 S.Ct. 2746, 37 L.Ed.2d 162 (1973), the Supreme Court held that the Secretary of Agriculture's choice of sanction may not be overturned unless it was "unwarranted in law" or so "without justification in fact" as to constitute an abuse of discretion. Id. at 185-86, 188, 93 S.Ct. at 1458, 1459 (quoting American Power & Light Co. v. Securities & Exch. Comm'n, 329 U.S. 90, 112-13, 115, 67 S.Ct. 133, 145-46, 147, 91 L.Ed. 103 (1946)). We use the same standard to review disciplinary sanctions in government employment cases. See, e.g., Weston v. United States Dep't of Housing & Urban Dev., 724 F.2d...