Perkins v. Kwon

• Decision Date: 22 September 1989
• Parties: , 12 U.S.P.Q.2d 1308 Sonnie J. PERKINS, Appellant, v. Phil KWON, Appellee. 89-1003.
• Court: U.S. Court of Appeals — Federal Circuit

Page 325

886 F.2d 325

58 USLW 2211, 12 U.S.P.Q.2d 1308

Sonnie J. PERKINS, Appellant, v. Phil KWON, Appellee.

89-1003.

United States Court of Appeals, Federal Circuit.

Sept. 22, 1989.

Watson T. Scott, Cushman, Darby & Cushman, Washington, D.C., argued, for appellant. With him on the brief was Nancy J. Linck, Washington, D.C.

Fred E. McKelvey, Sol., Office of the Sol., Arlington, Va., argued for amicus curiae, Commissioner of Patents and Trademarks.

Before MARKEY, Chief Judge, COWEN, Senior Circuit Judge, and NEWMAN, Circuit Judge.

PAULINE NEWMAN, Circuit Judge.

Sonnie J. Perkins appeals the decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences ("the Board"), which held that neither party to an interference proceeding between Perkins and Phil Kwon was entitled to a patent. ¹ The Board held Kwon to be the prior inventor, and cancelled the claims of Perkins' previously granted patent. 35 U.S.C. Secs. 102(g) and 135(a) (1982 & Supp. V 1987). The Board also held that the count was unpatentable to Kwon because of an on-sale bar. 35 U.S.C. Sec. 102(b) (1982).

There is no challenge on this appeal to the correctness of the Board's decisions in terms of Secs. 102(b) and 102(b)/103, 102(g), and 135(a), on the evidence adduced. Perkins' challenge is to the authority of the Board to have decided the question of priority of invention and cancelled Perkins' claims, when it was determined by the Board that the invention of the count was unpatentable to Kwon.

Kwon has not participated in this appeal. The Commissioner of Patents and Trademarks has appeared as amicus curiae, and has argued for affirmance of the Board's authority to have made these decisions and performed these acts.

Background

Sonnie J. Perkins is the inventor of United States Patent No. 4,456,257, filed on September 16, 1982 and issued on June 26, 1984. The patent describes and claims a golf swing plane sensor, used to improve a golfer's swing. Phil Kwon filed patent application Serial No. 631,294 on July 16, 1984 with twenty-five claims, all designated as corresponding to the interference count.

Following declaration of the interference Perkins moved for judgment pursuant to 37 C.F.R. Sec. 1.633(a) (1985) on the ground that the invention of the count was unpatentable to Kwon based on Perkins' publication, sale, and the public use, of the claimed golf swing sensor at least as early as June 16, 1982. Perkins offered to supply proof thereof, and requested that this issue be deferred to final hearing before the Board. The examiner deferred the issue, stating that testimony was necessary to establish these allegations.

An expanded Board of nine members acted at final hearing. The Board was unanimous in its grant of priority of invention of the interference count to Kwon. The Board also unanimously agreed that the count was unpatentable to Kwon under Sec. 102(b)/103, the Sec. 102(b) prior art being Perkins' device that was sold some two years before Kwon's filing date.

Six of the nine Board members held that it was proper for the Board to determine priority of invention as between Kwon and Perkins, despite the Board's having also determined that the count was unpatentable to Kwon:

[I]t shall be the policy of the Board to decide the question of priority when that question is before us at final hearing even though the subject matter in issue is concurrently held to be unpatentable to one of the parties under 35 USC 102 or 103.

Kwon v. Perkins, 6 USPQ2d at 1750. Three Board members believed that the Board's authority ended when it determined that the count was unpatentable to Kwon, and that the question of priority should not be decided when the invention is not patentable to both parties to the interference. A further minority view, favoring reformation of the interference, is not pressed by Perkins on this appeal.

The Issue

The question on appeal is whether it was appropriate for the Board to determine priority of invention in the interference, and to enforce the consequences thereof against Perkins, when the Board held that the count was not patentable to Kwon, a party to the interference.

Discussion

This issue arises out of the consolidation of the two tribunals within the Patent and Trademark Office that had previously dealt separately with patentability (the Board of Appeals) and with priority (the Board of Patent Interferences), and the accompanying changes in interference practice. The statute that created the consolidated Board includes the provision, at 35 U.S.C. Sec. 7(b):

The Board of Patent Appeals and Interferences shall ... determine priority and patentability of invention in interferences declared under section 135(a) of this title.

35 U.S.C. Sec. 135(a) was concurrently amended to include the provision:

The Board of Patent Appeals and Interferences shall determine questions of priority of the inventions and may determine questions of patentability.

Patent Law Amendments Act of 1984, Pub.L. No. 98-622, Secs. 201-207, 98 Stat. 3383, 3386-89 (1984), enacted November 8, 1984.

Perkins argues that because Kwon was not entitled to a patent there was no basis for an interference between them, and therefore that Perkins' patent should stand as originally issued. Perkins objects to the Board's decision of the question of priority of invention, arguing that the Board should simply have dissolved the interference when the count was determined to be unpatentable to Kwon. Perkins states that patentability to both parties is a long-standing condition precedent to the continuation, as well as the declaration, of an interference, and that it was improper for the Board to continue the interference and decide the question of priority. Perkins states that the decision of unpatentability as to Kwon resolved the entire controversy between the parties to the interference.

The determination that Kwon's application contained patentable subject matter was made, in the first instance, ex parte before the interference was declared. That was the practice before the consolidation of the two boards and other changes in interference rules, 37 C.F.R. Secs. 1.201 et seq. (1984), and continues to be the practice. 37 C.F.R. Secs. 1.601 et seq. (1985). ² In this case, however, the reason for unpatentability of the subject matter to Kwon was not known to the examiner until it was raised by Perkins' motion after the interference was declared.

The implementing rules provide not only for the threshold determination under 37 C.F.R. Sec. 1.603 or Sec. 1.606 that the interfering subject matter is patentable to both parties, but that after an interference is declared a party may move for judgment on the ground that the interfering subject matter is not patentable to the opponent. 37 C.F.R. Sec. 1.633(a). The rules contemplate that the issue will be decided on the motion, by the examiner-in-chief, 37 C.F.R. Sec. 1.640(b), but also authorize "such other action which will secure the just, speedy, and inexpensive determination of the interference." Id. In the case before us, the grant of Perkins' request that determination of the issue of patentability be delayed to final hearing was within this authority.

Perkins, and the minority of the Board, state that once Kwon had been found at final hearing to have no right to a patent on the invention of the count, the Board should have simply declined to decide the question of priority--or if decided, the Board should have treated this decision as conditional, to be given effect only if Kwon's claims met the criteria of patentability. It is pointed out that the deferral of the threshold question of patentability did not change the traditional requirement of patentability to both parties, and that when it was determined that the count was not patentable to Kwon, priority was no longer at issue.

The Commissioner, in support of the Board's decision, points out the expediency of resolution of all issues by the Board, on the possibility of appellate reversal of some but not all of the Board's rulings. The Commissioner emphasizes that the time-consuming delays inherent in the prior practice of piece-meal decisions in consecutive proceedings before separate tribunals contributed to this legislative change.

It appears from the legislative history that Congress established the new Board structure, whereby all issues of patentability and priority that arise in an interference proceeding can be decided in one proceeding, not to enable priority to be decided in a patentability dispute, but to enable patentability to be decided in a priority dispute. ³ However, decision by the Board of all issues that are fully and fairly raised during the interference proceeding, whether related to patentability or priority, is in full accord with Congressional intent that PTO procedures be simplified as well as improved:

By combining the two...