Han v. Livak

The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 68
Filed by: Trial Section Merits Panel
Box Interference Filed
Washington, D.C. 20231 26 March 2002
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
MYUN KI HAN, S. PAUL LEE
and JACK G. CHIRKJIAN,
Junior Party,
(Application 09/069,847),
v.
KENNETH J. LIVAK, SUSAN J.A. FLOOD
and JEFFREY MARMARO,
Senior Party
(Patent 5,538,848).
_______________
Patent Interference 104,670 (CAS)
_______________
Before: McKELVEY, Senior Administrative Patent Judge, and
SPIEGEL and GARDNER-LANE, Administrative Patent Judges.
McKELVEY, Senior Administrative Patent Judge.
FINAL DECISION
In this interference, Livak successfully dodged an attack on
its patent. However, Livak declines to quietly walk away happy
that its patent is still intact. Instead, Livak invites us to
look into allegations that certain claims in the Han application
are unpatentable. Livak further invites us to take other action

1 "Whenever an application is made for a patent which, in the opinion of
the Director, would interfere *** with any unexpired patent, an interference may
be declared ***." 35 U.S.C. § 135(a) (bold added).
2 An interference is declared on behalf of the Director at the board by an
administrative patent judge. 37 CFR § 1.610(a).
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which presumably would make it harder for Han to obtain a patent.
We decline both invitations.
A. Findings of fact
1. There came a time when the Director of the U.S.
Patent and Trademark Office ("Director"), through the Board of
Patent Appeals and Interferences ("board"), was of "the opinion"
that claims 102-108 of Han application 09/069,847 "would
interfere" with claims 1, 3, 14 and 24 of Livak patent
5,538,848.1
2. Accordingly, an interference was declared between
Han and Livak.2
3. As declared, the interference involved a single
count.
4. The Han application contains claims 66-100 and
102-108. Only Han claims 102-108 were designated as
corresponding to the count and therefore were "involved" in
the interference within the meaning of 35 U.S.C. § 135(a).
5. The Livak patent contains claims 1-24. Only Livak
claims 1, 3, 14 and 24 were designated as corresponding to the
count and therefore were involved in the interference.
6. At the time it was initially declared, one
possible outcome of the interference was that Livak claims 1, 3,

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14 and 24 might be cancelled if Livak lost on the issue of
priority. 35 U.S.C. § 135(a).
7. Accordingly, Livak had a reason to seek to avoid
an interference with Han.
8. In an attempt to avoid the interference, Livak
filed Livak Preliminary Motion 2 (Paper 29) seeking entry of
a judgment that there is no "interference-in-fact" between
(1) Han claims 102-108 and (2) Livak claims 1, 3, 14 or 24.
9. Livak Preliminary Motion 1 further sought entry of
a judgment that involved Han claims 102-108 are unpatentable
under 35 U.S.C. § 135(b) (Paper 28). Livak bottomed Livak
Preliminary Motion 1 on the proposition that Han did not timely
present a claim to the same or substantially the same invention
as the invention defined by the involved Livak patent claims.
Han opposed (Paper 34) and Livak filed a reply (Paper 45).
10. Sometime after preliminary motions had been filed,
Livak found it convenient to file Livak Miscellaneous Motion 1
seeking to "strike" a preliminary statement filed by Han "or
otherwise confine" Han to its effective filing date" (Paper 55,
page 1).
11. In due course, a Trial Section 3-judge motions
panel considered Livak Preliminary Motion 2.
12. The 3-judge motions panel, agreeing with Livak,
granted Livak Preliminary Motion 2 holding that indeed there is
no "interference-in-fact" between (1) Han claims 102-108 and
(2) Livak claims 1, 3, 14 and 24 (Paper 60, page 26). Since no

3 Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir. 1989), and
Schulze v. Green, 136 F.3d 786, 45 USPQ2d 1769 (Fed. Cir. 1998).
4 Gustavsson v. Valentini, 25 USPQ2d 1401 (Bd. Pat. App. & Int. 1991), and
Fiddes v. Baird, 30 USPQ2d 1481 (Bd. Pat. App. and Int. 1993).
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other Han or Livak claims were involved in the interference, a
judgment that there is no interference-in-fact became
appropriate.
13. An order (Paper 61) was entered requiring the
parties to show cause why the interference "should not be
terminated with a judgment that there is no interference-in-
fact". The purpose of the order to show cause was to invite the
parties to explain to the board why it should consider any other
motion filed by the parties, including Livak Preliminary Motion 1
and Livak Miscellaneous Motion 1.
14. Livak accepted the invitation by timely filing a
response (Paper 62). As one might expect, Livak was in full
agreement that any final decision should include a judgment
terminating the interference on the basis of a lack of an
interference-in-fact. However, Livak also requested that the
board decide on the merits Livak Preliminary Motion 1 and Livak
Miscellaneous Motion 1. Relying on Federal Circuit3 and board
precedent,4 Livak maintains that the board has no discretion in
the matter and must decide both of the Livak motions.
15. Han initially did not accept the board's
invitation.

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16. Wishing to have Han's views, an order (Paper 64)
was entered inviting Han to reply to Livak's response to the
order to show cause (Paper 61 ).
17. This time Han accepted the invitation and filed a
reply setting out its views (Paper 65).
B. Discussion
1. Introduction
The issue raised by (1) the order to show cause, (2) Livak's
response and (3) Han's reply is significant to the administration
of interference cases before the board.
We take this opportunity to explain in some detail why
we think it is appropriate, in this case, to exercise discretion
by declining to consider on the merits both (1) Livak Preliminary
Motion 1 and (2) Livak Miscellaneous Motion 1.
2. Need for interferences
Interferences exist for only two related reasons.
The first reason arises when the Director finds that two
applicants claim the same patentable invention. Since, the
United States has a first-to-invent system, the Director needs a
vehicle for determining which of the two applicants first made
the invention. The vehicle is an interference proceeding before
the board under 35 U.S.C. § 135(a). The interference proceeding
generally determines who is not entitled to a patent to claims
involved in the interference and the Director is then in a

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position to determine whether to issue a patent to the party who
did not lose the interference.
A second reason, which is similar to the first reason,
arises when the Director finds that an applicant claims the same
patentable invention as a patentee owning an "unexpired" patent.
Since two patents are not issued for the same patentable
invention, the Director needs a vehicle to determine whether the
applicant or the patentee first made the invention. Again, that
vehicle is an interference before the board under 35 U.S.C.
§ 135(a). If the applicant loses the interference, its involved
claims stand rejected by the agency. Id. On the other hand, if
the patentee loses, its involved claims are cancelled and the
Director may issue a patent to the applicant. Id.
3. Initiating (i.e., declaring) an interference
The triggering mechanism for initiating (i.e., declaring,)
an interference is the formation of an opinion by the Director
that (1) the claims of two applications or (2) the claims of an
application and an unexpired patent "interfere". In the words of
35 U.S.C. § 135(a) (emphasis added):
Whenever an application is made for a patent which in
the opinion of the Director, would interfere with any
pending application, or with any unexpired patent, an
interference may be declared ***.
How does the "Director" become of "the opinion" that claims
of different parties "interfere"? First, an examiner must
determine that two parties are claiming the same patentable

5 Binding and other precedent reveals that a decision made ex parte is not
binding in a subsequent inter partes interference proceeding. Sze v. Bloch, 458
F.2d 137, 173 USPQ 498 (CCPA 1972); Switzer v. Sockman, 333 F.2d 935, 142 USPQ
226 (CCPA 1964); Turchan v. Bailey Meter Co., 167 F. Supp. 58, 63-64, 119 USPQ
165, 169 (D. Del. 1958).
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invention. 37 CFR § 1.603; 37 CFR § 1.606. If the examiner
makes the determination, then files and other useful information
are forwarded to the board for review. If an administrative
patent judge agrees that an interference is necessary, the
requisite "opinion" exists and an interference is declared by the
administrative patent judge. 37 CFR § 1.610(a). A notice
declaring interference is entered and forwarded to the parties.
The order declaring an interference is an interlocutory order
which is presumed to be correct. 37 CFR § 1.655(a).
4. Reconsidering whether interference is needed
At least initially, the "opinion" that claims of different
parties "interfere" is made ex parte. In the case where an
applicant attempts to institute an interference with a patent,
neither an examiner nor the board seeks input from the patentee
as to whether an interference should be declared. Thus, the
first opportunity for a patentee to express any views on whether
the Director should have been of the opinion that the claims of
an application and the claims of its patent interfere is after
the interference is declared.
The rules recognize that the "opinion" of the Director,
made through the board, is based on having heard but one side of
the story.5 The rules therefore authorize the filing of a
preliminary motion for judgment of no interference-in-fact to

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test whether an interference exists. 37 CFR § 1.633(b). The
rules define an interference-in-fact (37 CFR § 1.601(j))
(emphasis in original):
An interference-in-fact exists when at least one claim
of a party that is designated to correspond to a count
and at least one claim of an opponent that is
designated to correspond to the count define the same
patentable invention.
The rules also define "the same patentable invention"
(37 CFR § 1.601(n)):
Invention "A" is the same patentable invention as
an invention "B" when invention "A" is the same as
(35 U.S.C. 102) or is obvious (35 U.S.C. 103) in view
of invention "B" assuming invention "B" is prior art
with respect to invention "A". Invention "A" is a
separate patentable invention with respect to invention
"B" when invention "A" is new (35 U.S.C. 102) and
non-obvious (35 U.S.C. 103) in view of invention "B"
assuming invention "B" is prior art with respect to
invention "A".
A party seeking to establish that there is no interference-
in-fact has the burden of proof (37 CFR § 1.637(a)). As applied
to the facts of this case, Livak was under a burden to establish
that the subject matter of its claims designated as corresponding
to the count (Livak claims 1, 3, 14 and 24) does not anticipate
(35 U.S.C. § 102) or render obvious (35 U.S.C. § 103) the subject
matter of any Han claim that is designated as corresponding to
the count (Han claims 102-108). For this purpose, the subject

6 Judicial review of "no interference-in-fact" issues has been relatively
rare. In Aelony v. Arni, 547 F.2d 566, 192 USPQ 486 (CCPA 1977), the CCPA held
that the board correctly determined that an interference-in-fact existed
notwithstanding the fact that there was no "overlapping" claimed subject matter.
Thus, an interference-in-fact was held to exist between a claim to a method of
using cyclopentadiene and a claim to a method using butadiene, isoprene,
dimethylbutadiene, piperylene, anthracene, perylene, furan and sorbic acid. In
Nitz v. Ehrenreich, 537 F.2d 539, 190 USPQ 413 (CCPA 1976), a two-count
interference, the CCPA held that there was an interference-in-fact as to one
count but not as to a second count.
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matter of Livak's claims are presumed to be prior art vis-a-vis
Han. If the party establishes, as Livak has done in this case,
that its patent claims do not interfere with the claims of its
applicant opponent, what becomes apparent is that the Director no
longer needs to conduct an interference to determine whether a
patent can be issued to the applicant. Why? Because, the
subject matter of the patentee's claims neither anticipates nor
renders obvious the subject matter claimed by the applicant even
if it is assumed that the patentee made its invention first. The
patent no longer constitutes an impediment to granting a patent
to applicant. Cf. Case v. CPC International, Inc., 730 F.2d 745,
749, 221 USPQ 196, 200 (Fed. Cir. 1984) (no interference-in-fact
means that there is no interfering subject matter and that Case's
patent is no impediment to granting CPC the claims of its
application).6
What manifests itself through the procedural tool of 37 CFR
§ 1.633(b) is that the Director, through the board, offers a
patentee an opportunity to present (1) evidence, including
affidavit evidence subject to cross-examination by the applicant,
and (2) views on the issue of whether the Director should have
been of the opinion that claims "interfere". In short, 37 CFR

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§ 1.633(b) offers a party an opportunity to request
reconsideration of whether claims interfere.
5. Other issues which can be raised in interferences
In addition to authorizing a party to file a preliminary
motion alleging no interference-in-fact, the rules authorize the
parties to file other preliminary motions. One preliminary
motion authorized by the rules is a preliminary motion for
judgment against an opponent based on unpatentability. 37 CFR
§ 1.633(a). The preliminary motion may be based on any ground of
patentability, including unpatentability under 35 U.S.C.
§ 135(b).
In this particular interference, in addition to filing Livak
Preliminary Motion 2 seeking a judgment of no interference-in-
fact, Livak also filed Livak Preliminary Motion 1 seeking
judgment against Han based on an alleged failure to comply with
35 U.S.C. § 135(b). Notwithstanding that there is no
interference-in-fact, Livak wants its preliminary motion for
judgment and its miscellaneous motion decided. Han does not.
Hence, the issue before the board is what to do with the Livak
motions. Must they be decided on the merits or does the board
have discretion to dismiss them?

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6. The board has discretion to dismiss the motions
a.
Section 135(a), on its face, would appear to give the board
discretion on whether it may decide a patentability issue in an
interference (bold added):
The Board of Patent Appeals and Interferences shall
determine questions of priority of the inventions and
may determine questions of patentability.
If priority and patentability are to be determined in an
interference, only the board has jurisdiction to decide those
issues. See 35 U.S.C. § 6(b), which allocates jurisdiction over
some matters in the Director and jurisdiction in other matters in
the board.
Section 135(a), of course, presupposes that an interference
exists and priority of invention is in need of resolution. Once
the board determines that there is no interference-in-fact, then
(1) the Director is no longer of the opinion that claims
interfere and (2) an interference is no longer needed for the
Director, through a patent examiner, to accomplish any further ex
parte examination of any application involved in the
interference.
Based on too broad a reading of dicta in the Federal
Circuit's decision in Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d
1308 (Fed. Cir. 1989), parties involved in interferences,
including now Livak, have continually told us that we have to

7 Patent Law Amendments Act of 1984, Pub. L. No. 98-622, §§ 201-207, 98
Stat. 3383, 3386-89 (1984).
8 Reported by Senator Thurmond on June 26, 1984.
9 Reported by Senator Thurmond on October 5, 1984.
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decide patentability when it (1) is raised, (2) fully briefed and
(3) evidence has been submitted.
Section § 135(a) itself says that the board "may" determine
questions of patentability. A review of legislative activity
leading up to the 1984 amendment7 to § 135(a) should convincingly
demonstrate that "may" does not mean "shall".
H.R. 6286, 98th Cong., 2d Sess., § 202 (Sept. 20, 1984), as
introduced by then Congressman Kastenmeier, sought to amend
§ 135(a) and provided that "The Board of Patent Appeals and
Interferences shall determine questions of priority of the
inventions and may determine questions of patentability."
(Emphasis added). On the other hand, S. 1538, 98th Cong., 2d
Sess., § 14(a) (Calendar No. 1016) (June 23, 1983), as introduced
by then Senator Mathias,8 also sought to amend § 135(a) and
provided that "The Board of Patent Appeals and Interferences
shall determine the priority and patentability of invention in
interferences." (Emphasis added). A similar provision appeared
in S. 1535, 98th Cong., 1st Sess., § 19(a) (Calendar No. 1330)
(June 23, 1983).9 Ultimately, the House, as opposed to the
Senate, version of the amendment to § 135(a) became law.

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b.
According to Livak, Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d
1308 (Fed. Cir. 1989), precludes our exercise of discretion to
decline to consider Livak Preliminary Motion 1. We disagree.
Perkins involved an interference between (1) patentee
Perkins and (2) applicant Kwon. Before the board, Perkins filed
a preliminary motion for judgment seeking entry of an order that
all of Kwon's claims corresponding to the count were unpatentable
over the prior art. At final hearing, the board determined on
the evidence that Kwon was the first inventor. Hence, Perkins
was not entitled to a patent to its claims involved in the
interference. 35 U.S.C. § 102(g). The board also determined on
the evidence that the Kwon claims corresponding to the count were
unpatentable over the prior art.
Patentee Perkins was dissatisfied with the board's
determination that it should lose on the issue of priority.
According to patentee Perkins, once the board determined that
applicant Kwon's claims were unpatentable over the prior art, the
board should not have reached priority. The board disagreed and
on appeal the Federal Circuit affirmed.
The Federal Circuit held "that issues of patentability and
priority that have been fully developed before the Board should
be resolved by the Board." 886 F.2d at 328, 12 USPQ2d at 1311.
The Federal Circuit went on to note that "[t]he legislative
history *** shows that Congress intended that if patentability is
fairly placed at issue in the [interference] proceeding, it will

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be determined [by the board]." Id. In dicta, the Federal
Circuit further stated that "[t]he word 'may' in § 135(a)
accommodates the situation when patentability is not placed at
issue during the priority contest, but it would contradict the
remedial purpose of the legislation if the Board could refuse to
decide questions of patentability for which there had been
adduced an appropriate record." Id.
The facts in this case differ in significant respects from
the facts in Perkins. To be sure, a similarity is that the issue
of whether Han timely presented claims within the meaning of
35 U.S.C. § 135(b) can be said to have been "fairly raised"
within the meaning of Perkins. Livak filed a preliminary motion
raising a patentability issue, Han opposed and Livak replied;
evidence was presented.
A significant difference, however, is that here there is no
interference-in-fact. In Perkins, on the other hand, patentee
Perkins and applicant Kwon were claiming, and had an interest in,
what had been determined to be the same patentable invention, a
matter never questioned in the interference by either Perkins or
Kwon. Thus, while there was an interference-in-fact in Perkins,
it turned out the invention was not patentable to either party.
In this interference, it has been determined inter partes
that the parties are not claiming the same patentable invention.
An interference is no longer needed because, given the 3-judge
motions panel's determination with respect to Livak Preliminary
Motion 2, the Livak patent is no longer an impediment to granting

1 0 Livak may take advantage of the provisions of 37 CFR § 1.291. Nothing
in Rule 291 gives Livak standing to participate as a party in any protest
proceeding before the examiner.
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a patent to Han. At this point, having asked for and received
a favorable ruling of no interference-in-fact, it is not apparent
how Livak now has standing as a party under the patent law to
seek to preclude issuance of a patent to Han containing Han
claims 102-108. Livak is now nothing more than a third-party
seeking to protest the grant of a patent to Han and is therefore
not entitled to participate in an inter partes pre-grant
opposition with respect to Han claims 102-108. Animal Legal
Defense Fund v. Quigg, 932 F.2d 920, 936-37, 18 USPQ2d 1677, 1691
(Fed. Cir. 1991) (a third-party may not protest grant of a
patent); Godtfredsen v. Banner, 503 F. Supp. 642, 207 USPQ 202
(D.D.C. 1980) (it is well-established in the patent system that
an individual does not have standing to challenge the decision of
the PTO to grant a patent to a third party).10
We have not overlooked the Federal Circuit's observation
that "[t]he word 'may' in § 135(a) accommodates the situation
when patentability is not placed at issue during the priority
contest, but it would contradict the remedial purpose of the
legislation if the Board could refuse to decide questions of
patentability for which there had been adduced an appropriate
record." Moreover, we follow the established rule of law "that,
if a controlling precedent is determined to be on point, it must
be followed." Hart v. Massanari, 266 F.3d 1155, 1172 (9th Cir.
2001), approved in Symbol Technologies, Inc. v. Lemelson Medical,

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Education & Research Foundation, Limited Partnership, 277 F.3d
1361, 61 USPQ2d 1515 (Fed. Cir. 2002). Dicta, of course, is not
precedent which must be followed. Cf. In re McGrew, 120 F.3d
1236, 43 USPQ2d 1632 (Fed. Cir. 1997); See also United States v.
Crawley, 837 F.2d 291 (7th Cir. 1988), cited in McGrew, and King
v. Erickson, 89 F.3d 1575, 1581 (Fed. Cir. 1996).
In our view, the Federal Circuit's observation is dicta to
the extent that it would require the board to decide
patentability in every instance merely because it can be said to
have been "fairly raised" during the course of an interference.
The Federal Circuit's observation was made in the context of the
case before it and is dicta because in Perkins the board had
decided both priority and patentability. Hence, the issue was
not whether there might be circumstances where the board might
not reach patentability, but whether the board in that case had
authority under § 135(a) to reach patentability notwithstanding
it had resolved priority. Perkins was not a case where there was
no interference-in-fact. Just because a party manages to file a
preliminary motion and evidence, thus "fairly raising" an issue,
does not mean that it would always be appropriate to decide the
issue where the underlying basis for the interference no longer
exists.
Nitz v. Ehrenreich, 537 F.2d 539, 190 USPQ 413 (CCPA 1976),
establishes the authority of the board to determine with respect
to a count that there is no interference in fact. Upon a
determination that there is no interference in fact, the

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interference--at least as to the count and claims corresponding
to that count--is over. No judgment of priority can be entered,
because the Director cannot be of the opinion that claims of
different parties "interfere". In Nitz with respect to Count 1,
where no interference-in-fact was held to exist, the CCPA vacated
the board's award of priority. 537 at 545, 190 USPQ at 418.
Nothing in § 135(a), or the legislative history leading up to
patentability being an issue which could be considered in an
interference, converted an interference proceeding into a pre-
grant opposition where a patentee can freely "oppose" the grant
of a patent to an applicant where it turns out that there is no
interference-in-fact . Accordingly, it is our view that under
§ 135(a) we "may" decline to consider on its merits an issue of
patentability, albeit raised in an interference, when our
ultimate determination is that there is no interference-in-fact.
As applied to the facts of this case, we "may" properly exercise
discretion to decline to consider on its merits Livak Preliminary
Motion 1 and Livak Miscellaneous Motion 1 because at this point
Livak is nothing more than a third-party protester vis-a-vis Han
and a third-party traditionally has no standing to participate
before the USPTO in an inter partes opposition to the grant of a
patent to an applicant. Animal Legal Defense Fund and
Godtfredsen v. Banner, supra.

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c.
Livak also relies on Schulze v. Green, 136 F.3d 786, 45
USPQ2d 1769 (Fed. Cir. 1998). Schulze involved an interference
between (1) applicant Schulze and (2) patentee Green. All of
applicant Schulze's claims and all of patentee Green's claims
were designated as corresponding to the count. Upon opening of
preliminary statements in the interference, it became manifest
that patentee Green could not prevail on priority. Applicant
Schulze attempted to correct inventorship in the interference.
37 CFR § 1.634. Patentee Green filed a preliminary motion for
judgment based on alleged unpatentability under 35 U.S.C.
§ 102(f). Ultimately, the board declined to decide whether the
inventorship of the Schulze application was correct
notwithstanding the fact that the issue had been fairly placed in
issue. Instead, the board entered a judgment against Schulze.
Schulze appealed contending that it was entitled to pursue its
attempt to correct inventorship after ex parte proceedings
resumed. Patentee Green disagreed and so did the Federal
Circuit, holding that the issue of inventorship should be
considered inter partes.
The Federal Circuit observed, citing the Manual of Patent
Examining Procedure (MPEP), that the USPTO had implemented the
intent of Congress in amending § 135(a) by noting that "[T]he
object of the interference will be to resolve all controversies
as to all interfering subject matter defined by one or more

1 1 The material quoted from the MPEP comes directly from the Notice
of Final Rule, Patent Interference Proceedings, 49 Fed. Reg. 48416 (col. 3)
(Dec. 12, 1984) ("The object of the interference will be to resolve all
controversies as to all interfering subject matter defined by one or more
counts.").
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counts."11 The Federal Circuit also noted that in Wu v. Wang,
129 F.3d 1237, 1241, 44 USPQ2d 1641, 1644-45 (Fed. Cir. 1997), it
had observed:
Despite having lost the right to his patent as a result
of an adverse decision on patentability, Wang still had
an interest in seeing that Wu was likewise not entitled
to the subject matter of the interference, albeit on
patentability, not priority grounds.
In Schulze and Wu, and for that matter Perkins, both parties
were claiming, and had an interest in, the same patentable
invention. In this interference, Livak and Han are not claiming
the same patentable invention. Thus, for essentially the reasons
given in connection with our discussion of Perkins, it follows
that Schulze likewise would not compel us to decide patentability
motions in an interference where it had been determined that
there is no interference-in-fact. To use the words of Wu, there
is no "subject matter of the interference". To use the words of
the Notice of Final Rule, there are no "controversies as to all
interfering subject matter defined by one or more counts" because
there is no interfering subject matter.
d.
Livak calls our attention to two decisions of the board.
Fiddes v. Baird, 30 USPQ2d 1481 (Bd. Pat. App. & Int. 1993),

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involved an interference between (1) an application of Fiddes
versus (2) an application of Baird. While it is somewhat
difficult to determine from the opinion, it appears that Fiddes
claims 43-46, 50-54 and 57-69 and Baird claims 11-12 and 23-28
were designated as corresponding to a count. Thus, the noted
claims were "involved" in the interference within the meaning of
35 U.S.C. § 135(a).
Fiddes filed a preliminary motion seeking judgment against
Baird claims 11-21, 23-25 and 27 as being unpatentable under
35 U.S.C. §§ 102(b) and 103. 37 CFR § 1.633(a). Fiddes also
filed a preliminary motion seeking entry of a judgment of no
interference-in-fact. 37 CFR § 1.633(b).
Upon consideration of the Fiddes preliminary motion for
judgment based on the prior art, the board held that all of
Baird's claims were unpatentable except for Baird claims 26
and 28. The board then took up the issue of whether there was an
interference-in-fact. "We now turn to the parties' claims to
determine whether [the subject matter of] Fiddes' claims 43 to
46, 50 to 54 and 57 to 69 *** [is] new and nonobvious over [the
subject matter of] Baird's claims 11 to 21 and 23 to 28, assuming
that [the subject matter of] Baird's claims *** [is] prior with
respect to Fiddes' claims." 30 USPQ2d at 1485, col. 1. The
board held that there was no interference-in-fact.
The board considered patentability notwithstanding there was
no interference-in-fact. However, a close review of the facts
would show that the board properly exercised discretion to

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consider the patentability of Baird claims 11-21, 23-25 and 27
prior to determining whether there was an interference-in-fact
between (1) the patentable Fiddes claims and (2) patentable Baird
claims 26 and 28. We disagree with the Fiddes panel to the
extent that it considered the subject matter of unpatentable
Baird claims 11-21, 23-25 and 27 in its determination of whether
there was an interference-in-fact between the "involved" Fiddes
and patentable Baird claims 26 and 28. What manifests itself
from the discussion of the no interference-in-fact issue is that
the panel felt that there was no interference-in-fact between any
Fiddes claim and any Baird claim. The significant determination,
insofar as the board's "judgment" was concerned, however, is that
there was no interference-in-fact between (1) patentable Fiddes
claims 43 to 46, 50 to 54 and 57 to 69 and (2) patentable Baird
claims 26 and 28. The rationale in support of the panel's no
interference-in-fact determination applies to Baird claims 26
and 28.
Fiddes v. Baird illustrates a situation where the board
exercised discretion by determining unpatentability so that it
could properly determine how to resolve a no interference-in-fact
issue which had been properly presented to it. In the
interference before us, it was not necessary to determine whether
any Han claim was unpatentable before making a proper no
interference-in-fact analysis.

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e.
Livak also relies on Gustavsson v. Valentini, 25 USPQ2d 1401
(Bd. Pat. App. & Int. 1991). Gustavsson, which did not involve
a no interference-in-fact issue, was an interference between
(1) claims 1-17 of a Gustavsson patent versus (2) a Valentini
application. Gustavsson filed a preliminary motion for judgment
(37 CFR § 1.633(a)) alleging that Valentini's involved claims did
not comply with 35 U.S.C. § 135(b). The motion was granted. In
the meantime, Valentini had filed numerous preliminary motions,
identified as motions (1)-(9), attacking the claims of
Gustavsson's involved patent. Gustavsson, however, argued that
35 U.S.C. § 135(b) "compels termination of this interference by
entry of judgment against Valentini without consideration of
these motions." 25 USPQ2d 1409, col. 2. However, the board
determined, relying on Perkins, that an administrative patent
judge should consider Valentini motions (1)-(9). According to
the panel, "the possibility that the PTO, prior to declaring an
interference, will fail to detect a deliberate violation of
§ 135(b) is outweighed by the greater public interest in having
the PTO 'resolve administratively questions affecting patent
validity that arise before [it].'" 25 USPQ2d 1412, col. 2. The
panel held that it was "required by § 135(a) and Perkins to
consider the merits of [Valentini] motions (1) and (3)-(5), which
raise patentability issues ***." 25 USPQ2d at 1413, col. 2.
At this point in time, we need not address on its merits the
correctness of what appears to be a per se rule announced by the

- 23 -
panel in its Gustavsson opinion. Rather, we believe that a
subsequent and binding Federal Circuit event has overtaken the
rationale upon which Gustavsson is based. The event was In re
McGrew, 120 F.3d 1236, 43 USPQ2d 1632 (Fed. Cir. 1997), in which
the Federal Circuit made it crystal clear that § 135(b) is a
statute of repose. 120 F.3d at 1237, col. 2, 43 USPQ2d at 1634,
col. 1. See also In re Berger, 279 F.3d 975, 61 USPQ2d 1523
(Fed. Cir. 2002). Section 135(b) cannot be much of a statute of
repose if (1) an interference is inadvertently declared contrary
to § 135(b), (2) a preliminary motion by a patentee for judgment
based on § 135(b) against an applicant is granted, but
(3) nevertheless the patentee's claims may be subject to an inter
partes priority or patentability attack. Given the McGrew event,
were Gustavsson being decided today, we believe that the result,
should, and would, not be the same.
f.
As noted earlier, in dicta the Federal Circuit has stated
that "[t]he word 'may' in § 135(a) accommodates the situation
when patentability is not placed at issue during the priority
contest, but it would contradict the remedial purpose of the
legislation if the Board could refuse to decide questions of
patentability for which there had been adduced an appropriate
record." 886 F.2d at 328, 12 USPQ2d at 1311. We agree with the
Federal Circuit's dicta observation. But, we respectfully
suggest that there are other circumstances, consistent with the
purpose of Congress' amendments to 35 U.S.C. § 135(a), and its

- 24 -
legislative history which would permit the board to properly
exercise discretion by declining to consider a patentability
issue inter partes--even if "fairly raised."
A principal problem with interference practice prior to the
1984 amendment to § 135(a) was that the then Board of Patent
Interferences did not have jurisdiction over patentability based
on the prior art. Glass v. DeRoo, 239 F.2d 402, 112 USPQ 62
(CCPA 1956) (patentability over prior art not ancillary to
priority). Patentability could be raised in a pre-1985
interference. 37 CFR § 1.231(a)(1) (1984). An examiner (not the
board) would determine patentability. 37 CFR § 1.231(d) (1984).
If the examiner determined that an applicant's claims were
unpatentable, the interference was "dissolved" and ex parte
prosecution of the application was resumed. If at some later
date, the applicant was able to establish ex parte that its
claims were patentable, the interference was "reinstated." Under
these circumstances, the opponent was held in limbo pending
outcome of ex parte proceedings in which it had no right to
participate, or for that matter to even monitor. See 1984
U.S.C.C.A.N. 5827, 5836-37 and Sze v. Bloch, 458 F.2d 137, 173
USPQ 498 (CCPA 1972), and Switzer v. Sockman, 333 F.2d 935, 142
USPQ 226 (CCPA 1964), cited therein. Hence, one purpose of the
amendments to § 135(a) was to avoid ex parte consideration of a
party's application "mid-way" through an interference while
leaving the opponent in the dark and subject to future
interference proceedings at some unknown time. Thus, a patentee

1 2 By "fairly" we mean that a preliminary or miscellaneous motion was filed
and served and that an opponent had an full opportunity to oppose the motion.
1 3 By "timely" we mean that the motion was filed at a time when the board
had authorized motions to be filed. Thus, a party who files a preliminary motion
before times are set for filing preliminary motions or after the time has expired
for filing a preliminary motion has not "timely" filed the motion.
1 4 By "properly raised" we mean that the preliminary motion complies
(1) procedurally with the rules and the requirements of the Trial Section's
STANDING ORDER and (2) substantively with the requirements of law.
1 5 See In re Gartside, 203 F.3d 1305, 53 USPQ2d 1769 (Fed. Cir. 2000).
- 25 -
involved in a "dissolved" interference could never be certain
when the interference might be "reinstated." A patent could
therefore, in effect, be held hostage indefinitely.
The exercise of the "may" discretion vested by Congress in
the board to determine when to decide patentability in an
interference should be exercised consistent with the objective of
Congress in amending § 135(a). Accordingly, and without
attempting to set down rigid rules for all time and all cases,
and as long as two parties are claiming the same patentable
invention, we agree with the Federal Circuit's Perkins dicta that
patentability generally should be decided--provided, of course,
the issue is fairly,12 timely13 and otherwise properly raised14 by
the parties (37 CFR § 1.633(a)) or the board itself (37 CFR
§ 1.641).15
On the other hand, in a case like the one before us today,
i.e., where there is no interference-in-fact, the problem
Congress sought to overcome with the amendments to § 135(a)
cannot, and does not, exist. Livak and Han claim separate
patentable inventions. The Livak patent is no impediment to the

- 26 -
granting of a patent to Han. The Han application provides no
basis for holding Livak's claims unpatentable. Thus, if there is
some basis for rejecting claims in the Han application, and even
if one assumes that Han somehow overcomes any rejection, the
Livak patent cannot again be held hostage to events which might
occur in any future ex parte prosecution of the Han application.
Prompt issuance of patents to patentable inventions is
consistent with the public interest. In re Pritchard, 481 F.2d
1359, 179 USPQ 103 (CCPA 1972) (there is an obvious public
interest in unnecessary postponement of the beginning of the
running of the term of a patent resulting from an application in
interference proceedings). Issuing a patent to Han as soon as
possible assuming that Han, in fact, is entitled to a patent
would therefore be in the public interest. There is no apparent
reason, on the facts before us, why we should delay the day when
ex parte prosecution of the Han application resumes just to let
Livak oppose a grant of a patent to Han with respect to an
invention which is not the same patentable invention as that
claimed by Livak. We note that prompt action in terminating
interferences, at least in the future, may obviate the need to
grant patent term extension to patents resulting from examination
of applications involved in interference. Lastly, we observe
that Han no longer wants to be involved in the interference.
Having been told that its claims do not interfere-in-fact with
Livak claims, there is no apparent reason why Han should have to
continue to pay the higher expenses involved in inter partes

1 6 This expanded panel has not considered or reconsidered the 3-judge
motions panel's no interference-in-fact determination. The 3-judge motions
panel's no interference-in-fact determination governs proceedings in this
interference.
- 27 -
proceedings compared to those associated with ex parte
proceedings.
As indicated earlier, we decline to announce a rule as to
how discretion might be exercised in all cases. Two situations
in which it might be appropriate to decline consideration of
other patentability or priority issues are where an applicant
presents a claim and it turns out in an interference that the
applicant does not comply with (1) 35 U.S.C. § 135(b) or (2) the
written description requirement of the first paragraph of
35 U.S.C. § 112. We can decide how discretion should be
exercised when, and if, we have before us an appropriate case.
C. Order
Upon consideration of the record, and for the reasons given,
it is
ORDERED that Livak Preliminary Motion 1 and Livak
Miscellaneous Motion 1 are dismissed.
FURTHER ORDERED, in view of the 3-judge motions panel
decision holding that there is no interference-in-fact,16 that a
final judgment is entered that there is no interference-in-fact
between (1) Han claims 102-108 and (2) Livak claims 1, 3, 14
or 24.

- 28 -
FURTHER ORDERED that the subject matter of Livak claims
1, 3, 14 and 24 is no impediment under the law to the issuance of
a patent to Han.
FURTHER ORDERED that the subject matter of Han claims
102-108 is no basis for cancellation of Livak claims 1, 3, 14
or 24.
FURTHER ORDERED that if there is a settlement agreement
between the parties, attention is directed to 35 U.S.C. § 135(c).
FURTHER ORDERED that the examiner's attention is
directed to Paper 60, page 27 ("VI. Recommendation under 37 CFR
§ 1.659(a)), wherein the motions panel stated:.
[W]e recommend that upon resumption of ex parte
prosecution, the examiner reject at least Han
claims 102, 103 and 105-108 as unpatentable over
Lee (Ex 1020) under 35 U.S.C. § 102.
Specifically, the double stranded nucleic acid
sequence of Han claim 102(i) is anticipated by the
hybridized Lee probe. The examiner may also
consider whether Han claims 102-108 fully satisfy
the requirements of 35 U.S.C. § 112, first
(enablement and written description) and second
(definiteness) paragraphs.
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
) TRIAL SECTION
CAROL A. SPIEGEL )
Administrative Patent Judge ) BOARD OF PATENT
) APPEALS AND
SALLY GARDNER-LANE ) INTERFERENCES
Administrative Patent Judge )

- 29 -
104,670
Attorney for Han
(real party in interest
Georgetown University):
Robin L. Teskin, Esq.
Attorney for Livak
(real party in interest
Applied Biosystems Division):
Steven B. Kelber, Esq.