Van Geuns, In re

• Decision Date: 02 October 1991
• Docket Number: No. 91-1088,91-1088
• Citation: 20 USPQ2d 1291,946 F.2d 845
• Parties: , 20 U.S.P.Q.2d 1291 In re VAN GEUNS.
• Court: U.S. Court of Appeals — Federal Circuit

Page 845

946 F.2d 845

60 USLW 2283, 20 U.S.P.Q.2d 1291

In re VAN GEUNS.

No. 91-1088.

United States Court of Appeals, Federal Circuit.

Oct. 2, 1991.

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

James H. Marsh, Jr., Staas & Halsey, Washington, D.C., argued for appellee. With him on the brief was James Randall Beckers.

Fred E. McKelvey, Office of the Sol., Arlington, Va., argued for amicus curiae.

Before ARCHER, PLAGER, and RADER, Circuit Judges.

ORDER

RADER, Circuit Judge.

After an interference in the Patent and Trademark Office (PTO), in which claims corresponding to the interference count were held unpatentable, Johannes R. Van Geuns appealed to this court naming Brown, the other party to the interference, as appellee. The successor in interest to Brown, the other party in the interference, filed a civil action in the United States District Court for the District of Delaware under 35 U.S.C. § 146 (1988). Van Geuns moved this court to enjoin parallel litigation in the district court. Brown opposed Van Geuns' motion and moved to remand Van Geuns' appeal to the PTO. In the alternative, Brown moved to stay this appeal until completion of the district court litigation. Because the Patent Law Amendments Act of 1984 specifically authorized both routes of review, Pub.L. No. 98-622, §§ 201-07, 98 Stat. 3383, 3386-89 (1984), this court denies both motions.

BACKGROUND

This matter stems from PTO Interference No. 101,855, Brown v. Van Geuns. See 35 U.S.C. § 135 (1988). The interference involved Van Geuns' patent application, Brown's patent, and Brown's reissue application. In his application, Van Geuns copied some of the claims of Brown's patent and thus provoked the interference.

The interference count concerned a magnetic superconducting coil apparatus. Each party claimed "[a] magnet assembly comprising a first superconducting coil assembly ... and a second superconducting coil assembly...." The Board of Patent Appeals and Interferences (Board) determined that Van Geuns' application claims 22-47, Brown's patent claims 1-10, and Brown's reissue claims 1-16 corresponded to the count.

On September 25, 1990, the Board determined that the subject matter of the count was unpatentable for obviousness in light of a German reference and a Japanese reference. Therefore, the Board entered "judgment against the parties" on the unpatentable claims. The Board also rejected several other challenges by Brown to the propriety and accuracy of the Board's decision.

Van Geuns appealed to this court under 35 U.S.C. § 141 (1988). Van Geuns' appeal alleges that the Board "erred in finding that the Count of the Interference" and Van Geuns' claims 22-47 are unpatentable under 35 U.S.C. § 103 (1988). Brown, however, did not appeal to this court. Rather Brown's assignee, Oxford Advanced Technology, Ltd., filed suit against Van Geuns' assignee, U.S. Philips Corporation, in the Delaware district court under 35 U.S.C. § 146. Oxford Advanced Technology Ltd. v. Philips Corp., No. 90-680 (D.Del. filed Nov. 20, 1990).

Brown's district court complaint alleges that the Board incorrectly held Brown's patent claims 1-10 and reissue application claims 1-16 unpatentable. The complaint also alleges that the Board improperly: (1) declined to reconsider the examiner's decisions, (2) held that Van Geuns' application disclosure satisfied 35 U.S.C. § 112, and (3) rejected Brown's allegation that Van Geuns acted inequitably during prosecution of the Van Geuns application. The district court action seeks entitlement to Brown's claims 1-10 and issuance of claims 1-16 of Brown's reissue application as a patent. At oral argument, this court learned that Van Geuns has asserted a counterclaim in the Delaware district court.

HISTORY OF INTERFERENCE PRACTICE

The history of interference practice puts this matter in perspective. See, e.g., Rivise & Caesar, Interference Law and Practice, Vol. 1, § 2 (Michie Co.1940); Klitzman, Patent Interference Law and Practice (1984) and Supplement (1985). In the decade before 1939, a single examiner made the initial decision in an interference proceeding. This examiner decided questions of both patentability and priority. A party could appeal the examiner's decision to the Board of Appeals. The party could then appeal the Board's decision to the Court of Customs and Patent Appeals (CCPA), see, e.g., A} In 1939, Congress changed this procedure. The 1939 Act instructed the Commissioner of Patents to "direct a board of three examiners of interferences to proceed to determine the question of priority of invention." Act of Aug. 5, 1939, Ch. 451, § 1, 53 Stat. 1212. This new procedure created a separate board to consider priority questions. Moreover, an appeal from this interference board went directly to the CCPA, rather than to the Board of Appeals. Id., §§ 3-4; 35 U.S.C. § 59(a) (1939). This change abolished the Board of Appeals' jurisdiction over interference appeals. The Board of Appeals' sole function after 1939 was to decide ex parte appeals on patentability. Thus, the Board of Patent Interferences decided priority; the Board of Appeals decided patentability.

Rudolph v. Gawiler, 88 F.2d 993, 24 C.C.P.A. 1121, 33 USPQ 225 (1937), or sue in equity in a district court, see, e.g., Wettlaufer v. Robins, 92 F.2d 573, 575-76, 35 USPQ 254, 256 (2d Cir.1937).

The 1952 Patent Act maintained the distinction between the Board of Appeals and "a board of patent interferences." Act of July 19, 1952, Pub.L. No. 593, § 135, 66 Stat. 801-02. Two separate boards continued to operate within the PTO.

PTO policy gave precedence to the patentability question. 37 C.F.R. § 1.201(a) (1984). An application could create an interference only when its claims were patentable to the applicant. See, e.g., Brenner v. Manson, 383 U.S. 519, 86 S.Ct. 1033, 16 L.Ed.2d 69 (1966). Therefore, if interference proceedings uncovered information raising questions about the patentability over prior art of the interference count, the interference board would step aside pending resolution of the question. The interferences board could resolve some patentability issues designated as "ancillary to priority," DeGeorge v. Bernier, 768 F.2d 1318, 1325 n. 4, 226 USPQ 758, 763 n. 4 (Fed.Cir.1985), but questions of patentability over prior art were never "ancillary to priority." Case v. CPC Int'l, Inc., 730 F.2d 745, 748, 221 USPQ 196, 199 (Fed.Cir.), cert. denied, 469 U.S. 872, 105 S.Ct. 223, 83 L.Ed.2d 152 (1984). This distinction further complicated the interface between the two boards.

Thus, an interference proceeding might follow a circuitous path. Specifically, a party could move to "dissolve" an interference because an applicant's claims corresponding to the count raised questions of patentability over prior art. 37 C.F.R. § 1.231(a)(1) (1984). The motion to dissolve was then transmitted to a primary examiner. The primary examiner decided the patentability question. 37 C.F.R. § 1.231(d) (1984); see also, 37 C.F.R. § 1.237 (1984).

By denying the motion, the primary examiner would return the application to the Board of Patent Interferences for a priority determination. By granting the motion, the primary examiner would dissolve the interference and reject the application as unpatentable. The applicant could then appeal this final ex parte rejection to the Board of Appeals. 35 U.S.C. § 134. An adverse decision of the Board of Appeals was subject to judicial review in the CCPA, 35 U.S.C. §§ 141-44, or in the district court, 35 U.S.C. § 145. If the applicant overcame the rejection on appeal, the interference proceedings would be reinstated for a determination of priority.

Under this practice, both priority and patentability proceedings could spring from an interference. The Board of Patent Interferences, however, could not enter a final decision on patentability over prior art. CPC Int'l, 730 F.2d at 748, 221 USPQ at 199; Glass v. DeRoo, 239 F.2d 402, 44 C.C.P.A. 723, 112 USPQ 62 (1956). The Board of Appeals reviewed questions of patentability.

This split in jurisdiction delayed interferences. An applicant might prosecute a patentability question through several appeals before returning to the Board of Patent Interferences for a determination of priority. See 130 Cong.Rec. 28065, 28072, reprinted in 1984 U.S.Code Cong. & Admin.News 5836-37.

In 1984, the Patent Law Amendments Act addressed this delay problem. Title II of this Act changed interference procedures. First, Title II combined the Board of Appeals and the Board of Patent Interferences into one Board, the Board of Patent The language of the 1984 amendments left no doubt about Congress's intent to streamline interference procedures. The legislative history confirms this intent. In its report on S. 1535, the Senate Judiciary Committee stated:

                Appeals and Interferences.   Next this Act amended 35 U.S.C. § 135(a) to authorize the new Board to determine both questions of patentability and priority.   Finally, the Act gave this court jurisdiction over all appeals from the new Board.  35 U.S.C. § 141-146.   This court could, therefore, review any matter decided by the Board in an interference
                

[D]elays in issuing a patent due to lengthy interference proceedings are harmful to both applicants and the public. ... The Committee finds, however, that one of the reasons for the lengthy proceedings in the PTO is a jurisdictional problem. By statute, the tribunal responsible for determining patentability is the Board of Appeals. The statutory tribunal for determining priority in an interference proceeding is the Board of Patent Interferences. The Board of Patent Interferences is not authorized to address questions of patentability of the invention. This statutory jurisdictional problem is eliminated through the merger of these two boards.

S.Rep. No. 98-663, 98th Cong., 2d Sess., 18 (1984).

In the House, H.R. 6286 was introduced on September 20, 1984, a short time before it passed the...