Interference No. 105,678) YASUHIRO OMURA v. David Shafer, Wilhelm Ulrich, Aurelian Dodoc, Rudolf Von Buenau, Hans-Juergen Mann,…

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
(Interference No. 105,678)
YASUHIRO OMURA,
Appellant,
v.
DAVID SHAFER, WILHELM ULRICH, AURELIAN
DODOC, RUDOLF VON BUENAU, HANS-JUERGEN
MANN, ALEXANDER EPPLE, SUSANNE BEDER,
AND WOLFGANG SINGER,
Appellees.
__________________________
2010-1357
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
_________________________
Decided: April 8, 2011
_________________________
BARRY E. BRETSCHNEIDER , Morrison & Foerster, LLP,
of McLean, Virginia, argued for appellant. With him on
the brief were ADAM K ESER ; and DEANNE E. M AYNARD , of
Washington, DC.

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OMURA v. SHAFER 2
K URT L. G LITZENSTEIN , Fish & Richardson, P.C., of
Boston, Massachusetts, argued for appellees. With him
on the brief were MARC M. W EFERS and ADAM J. K ESSEL.
Of counsel was O LIVER R. ASHE , JR., Ashe, P.C., of Reston,
Virginia.
__________________________
Before BRYSON , SCHALL, and MOORE, Circuit Judges.
SCHALL, Circuit Judge.
D ECISION
Yasuhiro Omura (“Omura”)1 appeals the decision of
the Board of Patent Appeals and Interferences (“Board”)
directing entry of judgment against Omura as to the
subject matter of Count 1 of Interference No. 105,678
involving U.S. Patent No. 7,309,870 (“the '870 patent”) to
Omura and U.S. Patent Application No. 11/653,366 to
David Shafer et al. (“Shafer”).2 See Shafer v. Omura,
Interference No. 105,678 (B.P.A.I. Feb. 5, 2010) (Decision
on Request for Rehearing). Omura requests that the
Board’s decision be reversed and that the case be re-
manded to the Board for entry of a corrected judgment
terminating the interference without entry of judgment as
to the count against Omura. We affirm.
D ISCUSSION
I.
On January 30, 2009, the Board declared an interfer-
ence between Shafer’s application and the '870 patent. In
the interference, Shafer was designated the Junior Party
and Omura the Senior Party. Shafer’s application and
1 The real party in interest is Nikon Corporation.
2 The real party in interest is Carl Zeiss SMT
GmbH.

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OMURA v. SHAFER 3
the '870 patent relate to catadioptric projection objectives
for imaging a pattern arranged in an object surface onto
an image surface. The Board defined the count of the
interference to be claim 23 of Shafer’s application or claim
23 of the '870 patent. The involved claims are claims 21-
24 of Shafer’s application and claims 21-24 of the '870
patent.
On June 2, 2009, Shafer filed Shafer Substantive Mo-
tion 1 (“Shafer Motion 1”). In its motion, Shafer sought
judgment against Omura on the ground that claims 21-24
of the '870 patent lacked adequate written description
under 35 U.S.C. § 112. Shafer identified three claim
limitations as not adequately described in the specifica-
tion. Shafer also moved to have the motion treated as
raising a threshold issue depriving Omura of standing in
the interference. On June 16, 2009, the Administrative
Patent Judge (“APJ”) managing the case held a confer-
ence call with the parties to discuss Omura’s requests for
leave to file responsive motions (1) to add a reissue appli-
cation to the interference, (2) to substitute a count for the
current count, and (3) to be accorded benefit of Omura’s
applications for the substitute count. The Board granted
Omura’s requests, but on June 23, 2009, Omura filed a
Notice explaining that he had decided not to file the
responsive motions.
On August 18, 2009, at the request of Omura’s coun-
sel, counsel for Omura and Shafer held a second tele-
phone conference with the APJ. According to Omura,
during the conference, his counsel advised the Board that
he would not oppose Shafer Motion 1, agreed that it was a
threshold motion, and indicated that Omura intended to
file a paper requesting that the Board grant Shafer Mo-
tion 1 and terminate the interference. Omura states that
the APJ indicated that she would consider Shafer Motion
1 and Omura’s response on an expedited basis. In a

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OMURA v. SHAFER 4
subsequent filing (“Omura Response 1”), Omura acknowl-
edged (1) that the '870 patent does not provide written
description support for one of the limitations of the in-
volved claims that Shafer identified; and (2) that Shafer
Motion 1 raised a threshold issue that deprived Omura of
standing in the interference. Omura requested that the
Board grant Shafer’s motion without making a determi-
nation of priority.
On August 31, 2009, the Board issued an order stat-
ing:
On 26 August 2009, Omura filed “OMURA
RESPONSE 1 (to Shafer Substantive Motion No.
1)” (Paper 47), in which Omura concedes that
Omura’s involved patent does not provide written
description support for certain claim terms found
in all of Omura’s involved claims. (Paper 47 at
2:4-10). Omura also does not seek to add new
claims. The concession is construed as a request
for entry of adverse judgment. 37 C.F.R.
§ 41.127(b)(3). The request is granted.
Accordingly, it is
ORDERED that judgment as to the subject
matter of Count 1 . . . is entered against
Omura; . . . .
Shafer v. Omura, Interference No. 105,678 (B.P.A.I. Aug.
31, 2009) (Judgment).
Omura requested rehearing, arguing that the Board
should have granted Shafer Motion 1 and entered judg-
ment that Omura’s claims are unpatentable to Omura
without entering judgment on the count against Omura.
Omura contended that if the Board had granted Shafer
Motion 1 and then terminated the interference by enter-
ing judgment on claims 21-24 due to lack of standing, the

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OMURA v. SHAFER 5
judgment would not create any estoppel against Omura
under Bd. R. 127(a)3 as to the subject matter of the count.
The Board denied Omura’s request for rehearing. See
Decision on Request for Rehearing. The Board stated
that, in Omura Response 1, Omura did not request that
estoppel not apply, or that judgment not be entered
against the count. The Board also stated that Omura’s
request that no determination of priority be made did not
constitute a request that the Board enter judgment with-
out doing so under Bd. R. 127. Further, the Board noted
that the judgment was not based on a concession of prior-
ity over the count but instead was based on Omura’s
concession of unpatentability. The Board also noted that
Omura had had an opportunity to stay in the interference
by adding a claim through a reissue application, but had
chosen not to do so.
II.
We have jurisdiction over Omura’s appeal pursuant to
28 U.S.C. § 1295(a)(4). We review decisions of the Board
using the standard set forth in the Administrative Proce-
dure Act, 5 U.S.C. § 706. Dickinson v. Zurko, 527 U.S.
150, 154 (1999). Under that statute, we set aside actions
of the Board that are arbitrary, capricious, an abuse of
discretion, or otherwise not in accordance with law, and
set aside factual findings that are unsupported by sub-
stantial evidence. In re McDaniel, 293 F.3d 1379, 1382
(Fed. Cir. 2002). This court accepts the Board’s interpre-
tation of Patent and Trademark Office regulations unless
that interpretation is “plainly erroneous or inconsistent
with the regulation.” Eli Lilly & Co. v. Bd. of Regents of
the Univ. of Wash., 334 F.3d 1264, 1266 (Fed. Cir. 2003)
(citing Auer v. Robbins, 519 U.S. 452, 461-62 (1997);
3 Bd. R. 127 is set forth at 37 C.F.R. § 41.127.

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OMURA v. SHAFER 6
Bowles v. Seminole Rock & Sand Co., 325 U.S. 410, 414
(1945); Am. Express Co. v. United States, 262 F.3d 1376,
1382 (Fed. Cir. 2001)).
III.
Omura argues that there is not substantial evidence
to support the Board’s determination that his concession
was a request for adverse judgment. According to Omura,
his concession that he lacked written description support
for his claims was not a “[c]oncession of . . . unpatentabil-
ity of the contested subject matter” under Bd. R. 127
because “contested subject matter” in the rule refers to
the count. 37 C.F.R. § 41.127; see Appellant’s Br. 32-39.
Omura urges that an interference is a priority contest
between the parties as to the subject matter of the inter-
ference, which is the count, not the involved claims. See
Reply Br. 6-7. Omura contends that under Bd. R. 201, 37
C.F.R. § 41.201, he did not have standing to proceed in
the interference because his claims were not patentable
due to lack of written description and that, therefore, the
issue of standing should have been addressed before
proceeding to the merits. See Appellant’s Br. 28-31.
Omura thus argues that the Board improperly entered
judgment against him as to the count. In Omura’s view,
the effect of the Board’s judgment was an improper judg-
ment adverse to him on the issue of priority even though
the Board did not decide priority.
Responding, Shafer points to the provision of Bd. R.
127 that a party who concedes the “unpatentability of the
contested subject matter” is subject to adverse judgment.
See 37 C.F.R. § 41.127(b)(3). Shafer contends that be-
cause Omura conceded that all of his involved claims were
unpatentable, and did not seek to add any new claims,
Omura no longer had any “subject matter” to contest, and
that the Board was well within its discretion in entering

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OMURA v. SHAFER 7
the judgment it did. Shafer also argues that Bd. R. 100,
37 C.F.R. § 41.100, requires that “contested subject mat-
ter” in Bd. R. 127 means the parties’ claims, because it
defines the term “involved” to “mean[] the Board has
declared the patent application, patent, or claim so de-
scribed to be a subject of the contested case.” 37 C.F.R.
§ 41.100 (emphasis added).
IV.
In our view, there is substantial evidence that
Omura’s actions constituted a request for an adverse
judgment. We therefore do not think that the Board
abused its discretion when it interpreted Omura’s conces-
sion as to the unpatentability of claims 21-24 in that
manner. Even though unpatentability under 35 U.S.C.
§ 112 can be considered a threshold issue under Bd. R.
201, Bd. R. 127(b)(3) does not distinguish between unpat-
entability under different statutory sections (i.e. 35 U.S.C.
§ 112 as compared to 35 U.S.C. §§ 101-103). The rule
states:
(b) Request for adverse judgment. A party may at
any time in the proceeding request judgment
against itself. Actions construed to be a request
for adverse judgment include: . . .
(3) Concession of priority or unpatentability of
the contested subject matter, . . . .
Bd. R. 127(b)(3). Under these circumstances, we believe
that Omura’s admission that “involved claims 21-24 are
unpatentable under 35 USC 112, first paragraph, as
lacking written description support,” J.A. 168, could fairly
and reasonably be read as a “[c]oncession of . . . unpat-
entability of the contested subject matter” under Bd. R.
127(b)(3). It seems to us that this is particularly so in
view of the fact there are effectively no differences be-

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OMURA v. SHAFER 8
tween the count of the interference and Omura’s involved
claim 23.
Finally, as noted above, on June 16, 2009, the APJ
held a conference call to discuss Omura’s pending re-
quests (1) to add a reissue application to the interference,
(2) to substitute a count for the current count, and (3) to
be accorded benefit of Omura’s applications for the substi-
tute count. However, Omura decided not to pursue any of
these courses. Thus, Omura could have taken action that
might have avoided the problem that Omura sees in the
present judgment. He chose not to do so, however. In our
view, this fact further undermines Omura’s attack on the
present judgment.
V.
For the foregoing reasons, we affirm the Decision of
the Board on Request for Rehearing and decline to disturb
the judgment entered against Omura under Bd. R. 127.
Each party shall bear its own costs.
AFFIRMED

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