Rodriguez Rilo v Benedict

BoxInterferences@uspto.gov 	Paper 17
Telephone: 571-272-4683 	ENTERED: 23 March 2009
UNITED STATES PATENT AND TRADEMARK OFFICE
BOARD OF PATENT APPEALS AND INTERFERENCES
Patent Interference No. 105,684 (RT)
Horacio L. RODRIGUEZ RILO
and Arthor J. Helmicki
(11/748,735),
Junior Party,
v.
Daniel J. BENEDICT
and Lorna S. Mosse
(US 7,045,349),
Senior Party.
DECISION
Bd. R. 121
on suggestion for show-cause order
RICHARD TORCZON, Administrative Patent Judge.
Today there was a telephonic hearing to consider whether the junior
party (Rilo) should be placed under an order to show cause. According to
the senior party (Benedict), Rilo failed to demonstrate the existence of
interfering subject matter between the parties. John Garred and Susan Mizer
(with Charles Gholz) appeared for Rilo, while Robert Hahl appeared for
Benedict. The suggestion is DECLINED.

Interference No. 105,684 	2
As a junior-party applicant seeking an interference, Rilo was obliged
to file a statement under Bd.R. 202 explaining what it thought the scope of
the interference should be and why it would be entitled to prevail. The rule
expressly provides for an order to show cause if the applicant fails to
demonstrate facially why it would prevail on priority. Bd.R. 202(d)(2).
There is no corresponding express authority for an order to show cause when
there are other defects in the Bd.R. 202 statement. An administrative patent
judge has authority, however, to enter non-final orders for the administration
of the interference. Bd.R. 104(a). Orders under both rules are committed to
the discretion of the administrative patent judge.
The Director of the United States Patent and Trademark Office has
plenary authority to declare an interference between an application and an
unexpired patent, provided the Director is of the opinion that they interfere.
35 U.S.C. 135(a). The requirements of Bd.R. 202 serve at least three
purposes. The first two are somewhat like a complaint in that they, first,
provide applicants with an opportunity to explain where they think the
interference lies and, second, commit the applicant to certain facts necessary
for the efficient administration of an interference. A third consideration is
the aid they provide to the examiner and Board in evaluating the possibility
of an interference. 1 Since the examiner may propose an interference without
any applicant assistance, defects in the Bd.R. 202 showing do not prevent an
administrative patent judge from provisionally determining that the Director
1 Interferences form a miniscule fraction of the cases most examiners see.
Consequently, few examiners are expert in interference practice. The Board,
while technically qualified, 35 U.S.C. 6(a), does not necessarily have
specific expertise in the subject matter of the interference.

Interference No. 105,684 	3
is of the opinion that an interference exists. 2 In the present case, Rilo's
sparse showing on how the claims interfere operates as an admission from
Rilo that the differences would have been obvious. Admissions only bind
the party making the admission.
An interference declaration is presumed to be correct. Bilstad v.
Wakalopulos, 386 F.3d 1116, 1120-21 (Fed. Cir. 2004) (affirming placement
of burden on threshold movant). Benedict's remedy is to seek authorization
to file a motion for judgment of no interference-in-fact. Bd.R. 121(a)(1);
Bd.R. 201, "Threshold issue". Under Board practice, a no interference-in-
fact motion may be expedited. When Benedict seeks authorization, it may
also suggest expediting the motion.
cc:
John Garred, Susan Mizer, and Michael Hudzinski, Tucker Ellis & West
LLP, of Cleveland, Ohio
Robert Hahl and Rick Neifeld, Neifeld IP Law, PC, of Alexandria, Virginia
2 Ample precedent demonstrates that Office rules are for the Office to
enforce and create no rights of enforcement in third parties. E.g., Exxon
Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 1254 (Fed. Cir. 2001) (no
third-party enforcement of interference-estoppel rule).