Wu v. Wang, 96-1492

• Decision Date: 06 November 1997
• Docket Number: No. 96-1492,96-1492
• Citation: 129 F.3d 1237,44 USPQ2d 1641
• Parties: Jinn F. WU, Appellant, v. Ching-Rong WANG, Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1237

129 F.3d 1237

44 U.S.P.Q.2d 1641

Jinn F. WU, Appellant, v. Ching-Rong WANG, Appellee.

No. 96-1492.

United States Court of Appeals Federal Circuit.

Nov. 6, 1997.

Robert V. Vickers, Vickers, Daniels & Young, Cleveland, OH, argued for plaintiff-appellant.

Richard E. Fitcher, Bacon & Thomas, of Alexandria, VA, for appellee. Of counsel was Charles R. Wolfe, Jr.

Nancy J. Linck, Solicitor, U.S. Patent and Trademark Office, Arlington, VA, for the Commissioner of Patents and Trademarks. Of counsel were Albin F. Drost, Deputy Solicitor, Linda Moncys Isacson and Craig R. Kaufman, Associate Solicitors.

Before MICHEL, LOURIE and BRYSON, Circuit Judges.

ON MOTION

LOURIE, Circuit Judge.

ORDER

This order decides motions made in an appeal from a decision of the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences. Wang v. Wu, Interference No. 102,654 (July 19, 1996). The Board held that both Chin-Rong Wang's sole claim and all but two of Jinn F. Wu's claims corresponding to the count in the interference were unpatentable. The Board also held that Wu's two remaining claims corresponding to the count were patentable. Wu appealed the Board's decision as to his disallowed claims to this court. Wang chose not to appeal or cross-appeal in this court, opting to file a notice with the Commissioner that he elected to have all further proceedings conducted in a district court as provided for in section 146. See 35 U.S.C. § 141 (1994) (providing for election by an "adverse party" to an interference). Wang then himself sought remedy by civil action in the United States District Court for the Central District of California under 35 U.S.C. § 146 (1994), challenging, inter alia, the Board's conclusion that Wu is entitled to the two claims the Board held to be patentable. Wu now has moved this court to "Refuse Dismissal of this Appeal and to Vacate Improper Notice of Election Under 35 USC § 141." Additionally, Wu has filed a suit in the United States District Court for the District of Columbia, see 35 U.S.C. § 141 (requiring the appellant to file a civil action under section 146 within thirty days of an adverse party's notice of election), and has moved here to enjoin Wang from proceeding with his section 146 action in the California district court. Wang opposes both motions.

The dispositive issue in Wu's motions is whether Wang, who effectively conceded before the Board that he is not entitled to a patent on the subject matter of the count in the interference, is nonetheless an "adverse party" within the meaning of 35 U.S.C. § 141 in an appeal limited to the patentability of Wu's claims. We conclude that Wang is an "adverse party" within the meaning of the statute. Accordingly, we deny Wu's motion to vacate Wang's notice of election. In light of Wang's election, and because jurisdiction exists in a district court for actions under 35 U.S.C. § 146, we dismiss Wu's appeal. Because Wu has chosen the United States District Court for the District of Columbia as the venue for the elected proceedings, we grant Wu's motion to enjoin Wang from proceeding with the California action.

BACKGROUND

Because this appeal arises from a long and complicated interference, we set forth only the facts necessary for the disposition of Wu's motions. Wang received U.S. Patent 4,887,443, which issued from an application filed on April 14, 1989. After learning of Wang's patent, Wu provoked an interference by filing a continuation application, 07/627,975, which contained a claim copied from Wang's patent. On August 8, 1991, an Administrative Patent Judge (APJ) declared an interference between claim 12 of Wu's '975 application and claim 1 of Wang's '443 patent. Wu was recognized as the senior party to the interference because his '975 application was entitled to an earlier filing date than that available to Wang based on Wu's grandparent application, 07/287,105, filed on December 20, 1988.

During the preliminary motions period, Wu and Wang filed motions addressing patentability. See 37 C.F.R. § 1.633(a) (1997). Wang alleged that both parties' claims were unpatentable over prior art of third parties. Wu alleged that Wang's claim was unpatentable in light of a Wu patent, U.S. Patent 4,935,047, which issued from a continuation of a divisional of Wu's first-filed '105 application.

In 1992, pursuant to 37 C.F.R. § 1.640(d)(1), the APJ ordered Wang to show cause why judgment should not be entered against him on the ground that Wang's claim was unpatentable over the subject matter of Wu's patent. Wang did not do so. Instead, Wang responded that he

does not wish to request final hearing on the issues of patentability of Wang's claims over prior art at final hearing, nor does Wang wish to take testimony on these issues, unless such action is necessary in order for Wang to remain a party to this interference. It is Wang's desire to be able to present rebuttal to any testimony which the party Wu is permitted to take, and to be able to fully reply to any brief, memorandum, motion or any other paper filed, or any action taken, by the party Wu.

Thus, Wang did not contest priority or argue that the subject matter of his claim was patentable. Instead, he asked to remain in the interference so that he could challenge any patentability arguments made by Wu with regard to Wu's claims. Although the show cause order was later withdrawn as premature, the APJ indicated that when final judgment was entered in the interference, judgment would be entered against Wang due to his failure to respond to the issue raised in the show cause order. See 37 C.F.R. § 1.640(e)(4) (1997). Because Wang did not respond to the merits of the patentability issue, Wang is now estopped from asserting that his claims are patentable. See Conservolite, Inc. v. Widmayer, 21 F.3d 1098, 1102, 30 USPQ2d 1626, 1628-29 (Fed.Cir.1994).

After numerous motions and rulings, an additional Wu application, 07/478,411, and Wu's '047 patent, both tracing their lineage to Wu's '105 application, were added to the interference. Subsequently, the interference was redeclared to broaden the count and add additional claims. The claims corresponding to the count of the redeclared interference included claim 1 of Wang's '443 patent, claim 12 of Wu's '975 application, claims 9-11 of Wu's '411 application, and claims 1-4 of Wu's '047 patent. A final hearing before the Board was held on November 17, 1995.

The Board ultimately issued its final judgment on July 19, 1996, entering judgment against Wang, concluding that his sole claim was unpatentable on the ground of anticipation or obviousness in view of Wu's '047 patent, and entered judgment against Wu, concluding that his claim 12, copied from Wang, was unpatentable for failure to comply with the written description requirement of 35 U.S.C. § 112, and also concluding that all of Wu's claims corresponding to the count with the exception of two claims in the '047 patent were unpatentable for obviousness. The Board held that Wu was accordingly entitled to the two surviving claims, claims 1 and 3, of the '047 patent.

On July 25, 1996, Wu appealed to this court, challenging the Board's decision that certain of his claims were found not to be patentable. On August 13, 1996, pursuant to the election provision of section 141, Wang filed a notice to have all further proceedings conducted in a district court under section 146. Additionally, on September 6, 1996, Wang sought remedy in the United States District Court for the Southern District of California under section 146, challenging, inter alia, the Board's decision that Wu was entitled to claims 1 and 3 of the '047 patent.

Subsequently, pursuant to Wang's election, and despite Wu's view that his appeal belonged in this court, Wu filed a "protective" civil action in the United States District Court for the District of Columbia on September 11, 1996, to ensure that he would have a forum in which to challenge the Board's final judgment in the event that we were to dismiss his appeal pursuant to Wang's election. See 35 U.S.C. § 141 (stating that if the appellant does not file a section 146 action, "the decision appealed from shall govern the further proceedings in the case").

DISCUSSION

Prior to the 1984 amendments to the patent statutes, the Board of Patent Interferences determined questions of priority, but did not decide issues of patentability; these issues were decided by the Board of Appeals. See generally In re Van Geuns, 946 F.2d 845, 20 USPQ2d 1291 (Fed.Cir.1991); 3 Donald S. Chisum, Chisum on Patents §§ 10.02-, 10.09[b] (1997). Because the resolution of a patentability question took precedence over a priority determination, if issues concerning patentability were raised during an interference, the interference would be stayed and its resolution deferred. Examination would resume ex parte, and the applicant could even appeal any ex parte rejection to the Board of Appeals. An unfavorable decision of the Board of Appeals was further reviewable either in this court or in a district court. If the matter was resolved in favor of the applicant, only then would the interference resume.

The Patent Law Amendments Act of 1984 was designed in part to streamline these procedures. See 130 Cong. Rec. 28,065, 28,072 (1984), reprinted in 1984 U.S.C.C.A.N. 5827, 5836-37. The Act consolidated the two boards into the Board of Patent Appeals and Interferences, which now has authority to determine questions of patentability and priority. See 35 U.S.C. § 135(a) (1994) (stating that the "Board of Patent Appeals and Interferences shall determine questions of priority of the inventions and may determine questions of patentability"). Thus, under the 1984 Act, the new Board gained authority to resolve patentability issues within an interference. In re Van Geuns, 946 F.2d at 848, 20 USPQ2d at 1294; see 37 C.F.R. § 1.633(a) (1997); see also 37 C.F.R. § 1.641 (1997). When resolving such issues, the...