Loughlin v. Ling

• Decision Date: 11 July 2012
• Docket Number: No. 2011–1432.,2011–1432.
• Citation: 684 F.3d 1289,103 U.S.P.Q.2d 1413
• Parties: Robert LOUGHLIN and John Loughlin, Appellants, v. Renny Tse–Haw LING and Chun–Sheng Wu, Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

684 F.3d 1289

103 U.S.P.Q.2d 1413

Robert LOUGHLIN and John Loughlin, Appellants,

v.Renny Tse–Haw LING and Chun–Sheng Wu, Appellees.

No. 2011–1432.

United States Court of Appeals,Federal Circuit.

July 11, 2012.

Glen M. Diehl, Diehl Servilla LLC, of Iselin, NJ, argued for appellant.

Todd R. Walters, Buchanan Ingersoll & Rooney P.C., of Alexandria, VA, argued for appellee. With him on the brief was Erin M. Dunston. Of counsel on the brief was Todd P. Blakely, Sheridan Ross PC, of Denver, CO.

Before RADER, Chief Judge, and LOURIE and MOORE, Circuit Judges.

LOURIE, Circuit Judge.

Robert Loughlin and John Loughlin (together, “Loughlin”) appeal from the judgment of the Board of Patent Appeals and Interferences (the “Board”) canceling claim 1 of U.S. Patent 7,434,426 (the “'426 patent”) pursuant to their request for adverse judgment in light of the Board's decision on the relationship between 35 U.S.C. § 135(b)(2) and 35 U.S.C. § 120. Because we agree with the Board that the interfering claims of Renny Tse–Haw Ling and Chun–Sheng Wu (together, “Ling”) are not barred by 35 U.S.C. § 135(b)(2), and hence that the Board correctly canceled claim 1, we affirm.

Background

This appeal arises from an interference proceeding under 35 U.S.C. § 135(a) between Loughlin's '426 patent and Ling's Application No. 11/671,404 (the “'404 application”), both of which claim a “multiple function lock.”

On May 13, 2004, Loughlin filed Application No. 10/845,624 (the “'624 application”). The '624 application was published on November 18, 2004, as Publication No.2004/0226324. On October 14, 2008, the '624 application issued as the '426 patent.

On February 5, 2007, Ling filed the '404 application, which was granted priority benefit under § 120 from Application No. 10/759,413 (the “'413 application”), filed January 16, 2004. On February 21, 2007, Ling, seeking to provoke an interference, copied claims from Loughlin's pending '624 application. Relevant to the issue on appeal, Ling added to the '404 application new claim 31, which was identical to claim 42 of Loughlin's '624 application. Loughlin's claim 42 later issued as claim 1 of Loughlin's '426 patent.

In September 2010, the United States Patent and Trademark Office (“PTO”) declared an interference between claim 1 of Loughlin's '426 patent and claim 31 of Ling's '404 application. Shortly thereafter, Loughlin moved for judgment under § 135(b)(2), which provides that:

A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published under section 122(b) of this title may be made in an application filed after the application is published only if the claim is made before 1 year after the date on which the application is published.

35 U.S.C. § 135(b)(2) (emphasis added).^* Loughlin asserted that Ling was barred by § 135(b)(2) from provoking an interference because Ling's attempt to copy the claim from Loughlin's published application was untimely, i.e., Ling's '404 application is “an application filed” after the publication date of Loughlin's '624 application and Ling copied Loughlin's claim more than one year after its publication date.

The Board denied Loughlin's motion. Loughlin v. Ling, Interference No. 105,766, slip op. at 7 (B.P.A.I. Feb. 17, 2011) (“ Decision on Motion ”). The Board concluded that the bar imposed by § 135(b)(2) does not apply to an application filed before a published application. Id. at 4. Noting that Loughlin's motion raised the issue whether Ling's '404 application is “an application filed” after the date on which Loughlin's '624 application was published, the Board observed that it “has consistently determined that § 120 is applicable when considering whether ‘an application filed’ is after the date on which another application is published.” Id. The Board thus held that, “since Ling was granted § 120 priority benefit of its '413 Application [ ], then Ling's involved '404 application, having an effective filing date of 16 January 2004, is not an application filed after Loughlin's Application published on 18 November 2004.” Id.

On March 8, 2011, Loughlin requested adverse judgment under 37 C.F.R. § 41.127(b) (“Board Rule 127(b)”), in essence conceding that his entire case hinged on the Board's interpretation of § 135(b)(2). A day later, the Board entered judgment against Loughlin, canceling claim 1 of the '426 patent and observing that “[Loughlin's counsel] represented that Loughlin intends to appeal the decision denying [the motion for judgment under § 135(b)(2) ].” Loughlin v. Ling, Interference No. 105,766, 2011 WL 841189 (B.P.A.I. Mar. 9, 2011) (“Judgment ”). Loughlin appealed.

Discussion

In an appeal from the Board, we review factual findings for substantial evidence and legal conclusions, including statutory interpretation, de novo. Stevens v. Tamai, 366 F.3d 1325, 1330 (Fed.Cir.2004). When interpreting a statute, “we give effect to the intent of Congress by ‘look[ing] not only to the particular statutory language, but to the design of the statute as a whole and to its object and policy.’ ” In re Swanson, 540 F.3d 1368, 1375 (Fed.Cir.2008) (alteration in original) (quoting Crandon v. United States, 494 U.S. 152, 158, 110 S.Ct. 997, 108 L.Ed.2d 132 (1990)). We review the Board's application of its interference rules for an abuse of discretion. Stevens, 366 F.3d at 1330.

Loughlin argues on appeal that the Board incorrectly determined that § 120 applies when considering the date of “an application filed” under § 135(b)(2). According to Loughlin, because the actual (not effective) filing date of Ling's '404 application was more than one year after the publication of Loughlin's '624 application, Ling was barred by § 135(b)(2) from copying Loughlin's claims. Because Ling waited more than one year after the publication of Loughlin's '624 application to copy the claims, Loughlin argues, the Board should have dissolved the interference.

In response, Ling argues that the Board correctly construed “an application filed” in § 135(b)(2) as including an application filed earlier and benefiting from the provisions of § 120. Ling points out that the ordinary understanding of “an application filed” refers to the application's effective filing date under § 120, as the Board has held in three prior interference decisions. Thus, Ling argues, the Board correctly held that Ling was not time-barred under § 135(b)(2) from copying claims from Loughlin's '624 application to provoke an interference.

In the alternative, Ling contends that we should dismiss the appeal for lack of jurisdiction. According to Ling, Loughlin conceded priority by requesting entry of adverse judgment, so there was no final adverse decision from which Loughlin could appeal. Ling further contends that Loughlin failed to exhaust his administrative remedies by prematurely requesting adverse judgment. Finally, Ling asks us to dismiss Loughlin's appeal as an impermissible interlocutory appeal.

We first address Ling's jurisdictional arguments. “It is axiomatic that the initial inquiry in any appeal is whether the court to which appeal is taken has jurisdiction to hear the appeal.” Woodard v. Sage Prods., Inc., 818 F.2d 841, 844 (Fed.Cir.1987) (en banc). Under 28 U.S.C. § 1295(a)(4)(A), we have exclusive jurisdiction over an appeal from “a decision” of the Board. We have held that § 1295(a)(4) should be read to incorporate a finality requirement. See Copelands' Enters., Inc. v. CNV, Inc., 887 F.2d 1065, 1067–68 (Fed.Cir.1989) (en banc). This requirement of finality, which is based on prudential considerations, id. at 1067, serves the important purposes of “emphasiz[ing] the deference that appellate courts owe to the trial judge,” avoiding “piecemeal appeals,” and “promoting efficient judicial administration,” Firestone Tire & Rubber Co. v. Risjord, 449 U.S. 368, 374, 101 S.Ct. 669, 66 L.Ed.2d 571 (1981).

Appeals from interference actions are governed by 35 U.S.C. § 141, which provides in relevant part that “[a] party to an interference dissatisfied with the decision of the Board of Patent Appeals and Interferences on the interference may appeal the decision to the United States Court of Appeals for the Federal Circuit....” Moreover, Board Rule 127(b) expressly permits a party to request adverse judgment in an interference:

(b) Request for adverse judgment. A party may at any time in the proceeding request judgment against itself. Actions construed to be a request for adverse judgment include:

....

(3) Concession of priority or unpatentability of the contested subject matter[.]

We conclude that the Board's decision on priority is a final, adverse judgment over which we have jurisdiction. Loughlin appropriately availed himself of Board Rule 127(b) in requesting adverse judgment. Furthermore, Loughlin represented to the Board that he intended to appeal the decision denying his motion under § 135(b)(2), and the Board noted that representation in granting the request for adverse judgment. Judgment, 2011 WL 841189, at *1. Judicial economy is promoted, not frustrated, by permitting Loughlin to request adverse judgment and seek review under § 141 of the dispositive legal issue in this appeal. Moreover, there is no question that Loughlin is “dissatisfied with the [Board's] decision” to deny his motion under § 135(b)(2). See35 U.S.C. § 141. In view of the expansive statutory language governing appeals from interference actions and the Board's rule permitting such requests for adverse judgment, we conclude that we possess jurisdiction over Loughlin's appeal.

Ling's jurisdictional arguments rely primarily on two district court cases, Human Genome Sciences, Inc. v. Amgen, Inc., 552 F.Supp.2d 466 (D.Del.2008) ( “HGS I ”), and Human Genome Sciences, Inc. v. Genentech, Inc., 589 F.Supp.2d 512 (D.Del.2008) (“HGS II ”). Those cases, however, do not compel the result sought by Ling. HGS I and HGS II were civil actions filed under § 146 following a request for...