Hilborn v. Dann
| Decision Date | 30 March 1977 |
| Docket Number | Patent Appeal No. 77-504. |
| Citation | 546 F.2d 401 |
| Parties | William Harold HILBORN v. C. Marshall DANN, Commissioner of Patents and Trademarks and Robert M. Cuthbert. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Robert W. Beach, Seattle, Wash., attorney of record, for appellant.
William R. Hinds, Arlington, Va., Larson, Taylor & Hinds, Arlington, Va., attorney of record, for appellees.
Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
This petition, filed October 4, 1976, is for a writ of mandamus by the junior party Hilborn in Interference No. 99,137 directing the Commissioner of Patents and Trademarks and the Chairman of the Board of Patent Interferences to investigate and decide an allegation of fraud as the threshold issue in the interference proceeding, instead of referring the interference to the Primary Examiner for reconsideration of the patentability of the interference count under 37 CFR 1.237, so that the decision of the Board of Patent Interferences on the question of fraud can be appealed to this court.
Petitioner also seeks, by supplemental petition filed November 2, 1976, a writ of prohibition to prevent the Chairman of the Board of Patent Interferences and the Patent Interference Examiner "from attempting to continue proceedings in Interference No. 99,137, prior to a decision being rendered by this Honorable Court on petitioner's Petition for a Writ of Mandamus, and specifically that respondent Sofocleous the Patent Interference Examiner be prohibited from proceeding with the interference under Rule 237, 37 CFR 1.237 * * *."
The events leading up to these petitions are not in dispute. The interference was declared when petitioner Hilborn copied claim 1 of Cuthbert's United States patent No. 3,859,522 under 37 CFR 1.205 and filed certain affidavits required by 37 CFR 1.204(c). The interference was declared, but, because the affidavits were found insufficient, petitioner was placed under an order to show cause why summary judgment should not be entered against him, in accordance with 37 CFR 1.228. In his response to that order petitioner asserted that an award of priority should be made against the senior party patentee, Cuthbert, because he had been guilty of inequitable conduct or fraud in not citing a certain Norwegian patent during the prosecution of the application for the patent involved in the interference. The matter ultimately came to the attention of the Primary Examiner, who, in accordance with 37 CFR 1.237, held the sole count in the interference to be unpatentable. The Patent Interference Examiner then suspended the interference, indicating that reconsideration of the Primary Examiner's decision could be had. Petitioner then filed a motion to have the issue of fraud considered, contending that it was a "threshold" question that should have been determined prior to the question of patentability. The Patent Interference Examiner denied this motion because the action of the Primary Examiner under 37 CFR 1.237, "if adhered to upon a request for reconsideration by any of the parties, both terminates this proceeding and removes jurisdiction of this case from...
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Case v. CPC Intern., Inc.
...a threshold issue in an interference. In support of this position appellant makes an elliptic quotation from Hilborn v. Dann, 546 F.2d 401, 403, 192 USPQ 132, 134 (CCPA 1976), for the proposition "[T]he 'threshold' question .... is patentability of the count." The quotation merely illustrat......
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Brunswick Corp. v. Riegel Textile Corp.
...patent was valid, Riegel might still have committed a fraud against Brunswick by applying for the patent itself. Cf. Hilborn v. Dann, 546 F.2d 401, 403 (C.C.P.A.1976). True, the Patent Office might find, to the contrary, that Riegel's patent was invalid and Brunswick's patent application va......