Interference No. 105,653) UNIVERSITY OF SOUTHERN CALIFORNIA v. Depuy Spine, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
(Interference No. 105,653)
UNIVERSITY OF SOUTHERN CALIFORNIA
AND AMPAC BIOTECHNOLOGY, INC.,
Appellants,
v.
DEPUY SPINE, INC.,
Appellee.
__________________________
2011-1422
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
___________________________
Decided: March 22, 2012
___________________________
ROBERT B ERLINER , Berliner & Associates, of Los Ange-
les, California, argued for appellant. With him on the
brief was SARAH SILBERT.
BARRY E. BRETSCHNEIDER , Morrison & Foerster LLP,
of McLean, Virginia, argued for appellee.
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UNIV SOUTHERN CAL v. DEPUY SPINE 2
Before BRYSON , D YK , and M OORE, Circuit Judges.
M OORE, Circuit Judge.
The University of Southern California and Ampac
Biotechnology, Inc. (collectively, USC) appeal from a
decision of the Board of Patent Appeals and Interferences
(Board) awarding priority to DePuy Spine, Inc. (DePuy) in
an interference between USC and DePuy. For the rea-
sons set forth below, we vacate and remand.
BACKGROUND
This case involves an interference between USC’s U.S.
Patent Application No. 10/230,671 (’671 application), filed
on August 29, 2002, and DePuy’s U.S. Patent No.
6,812,211 (’211 patent), filed on March 19, 2002. In 2005,
USC copied claims into the ’671 application from DePuy’s
’211 patent. The Board declared an interference and
defined Count 1, the sole count, as claim 1 of the ’211
patent.
The Board initially designated USC as the senior
party in the interference because it accorded the ’671
application the benefit of the August 31, 2001 filing date
of USC’s provisional application 60/316,287. The Board,
however, subsequently held that the specification of
USC’s provisional application did not expressly disclose
one of the limitations in Count 1, and thus granted
DePuy’s motion to deny USC the benefit of the provisional
application’s filing date. In response, USC filed a motion
to substitute a new count. USC argued that the Board
should modify Count 1 to permit USC to rely on its best
proof of priority, namely its provisional application. USC
proposed a count (Count 2) that omitted the limitation the
Board held was not disclosed in the provisional applica-

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UNIV SOUTHERN CAL v. DEPUY SPINE 3
tion. The Board rejected the broader count USC pro-
posed, which it held was invalid over a prior art patent.
The Board next rejected several of DePuy’s involved
claims, including claim 1, as obvious over the prior art.
Because DePuy’s claim 1 defined Count 1, the Board
redeclared the interference and proposed a new count
(Count 3), which it defined as claim 24 of USC’s ’671
application. The Board authorized the parties to file
comments on proposed Count 3. USC pointed out that
Count 3 would still prevent it from relying on its provi-
sional application as proof of priority because the count
included the same limitation that the Board found was
missing in the provisional application’s specification.
USC proposed claim 7 from the ’671 application as an
alternative count.
The Board again declined to modify the count. It con-
cluded that it did not need to modify the count because
USC’s concerns were “strictly hypothetical.” Board Deci-
sion (Dec. 23, 2009). The Board then rejected USC’s
request for authorization to file a motion to change the
count. After rejecting DePuy’s remaining claims as
obvious over prior art, the Board awarded priority to
DePuy and refused USC’s claims corresponding to the
count. USC now appeals the Board’s denial of its motion
for a broader count1 and denial of authorization to file a
motion to change the count. We have jurisdiction under
28 U.S.C. § 1295(a)(4).
D ISCUSSION
We see no error with two aspects of the Board’s deci-
sion. First, the Board correctly construed the language
“in a living being” from the preamble of Count 3 as a
1 On appeal, USC does not argue that Count 2 is
not rendered anticipated or obvious over Aksan.

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UNIV SOUTHERN CAL v. DEPUY SPINE 4
limitation. Second, we reject USC’s argument that all of
its claims corresponding to the count do not stand or fall
together based on the priority decision. For the reasons
stated below, however, we vacate the Board’s decision.
The Board has recognized that allowing a party to
rely on its best proofs of priority “is an accepted reason in
interference practice for granting” a motion to modify the
count. Grose v. Plank, 15 U.S.P.Q.2d 1338, 1341 (B.P.A.I.
1990). In this case, the Board adopted a count that pre-
vented USC from relying on its provisional application—
which USC argues is its best proof of priority—and re-
peatedly rejected USC’s requests to modify the count.
When the Board redeclared the interference and pro-
posed Count 3, it sought comments from the parties. USC
pointed out potential problems with Count 3 and proposed
claim 7 of its ’671 application as an alternative that would
allow it to rely on its provisional application as proof of
priority. USC also noted that claim 7 was found to be
patentable over the same prior art reference the Board
used to reject USC’s proposed Count 2. Despite soliciting
this feedback on Count 3, the Board did not respond in a
meaningful way to any of USC’s comments, stating only
that:
In general, a count should not encompass prior
art; otherwise, a “priority proof” might simply be a
replication of someone else’s work. On the record
developed so far, however, it appears that each
party will have work of its own on which it will
rely. Since, in this case, the concern is strictly
hypothetical, there is insufficient reason at pre-
sent to change the count further.
Board Decision (Dec. 23, 2009). This passage does not
offer any coherent justification for declining to modify the
count so USC could rely on its provisional application.

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UNIV SOUTHERN CAL v. DEPUY SPINE 5
The Board similarly ignored this issue in its decision
denying USC authorization to file a motion to modify the
count.
The Board’s subsequent decision on USC’s request for
rehearing did not clarify its reasoning. Once again, the
Board offered no explanation for its decision to continue
using a count that prevented USC from relying on its
provisional application. Moreover, the Board perplexingly
stated that USC “only suggested a new count in a com-
ment, but never actually moved for the new count,” de-
spite the fact that the Board denied USC authorization to
file such a motion.
“[A] Board opinion must contain sufficient findings
and reasoning to permit meaningful appellate scrutiny.”
Gechter v. Davidson, 116 F.3d 1454, 1458 (Fed. Cir. 1997).
A Board decision that does not articulate sufficient rea-
soning must be vacated. Id. at 1457-58. The Board erred
by insufficiently explaining its decision not to modify
Count 3 to allow USC to claim priority to its provisional
application. This failure is particularly troublesome
because a party typically should be allowed to rely on its
best priority proofs. The Board compounded its error by
denying USC authorization to file a motion to modify the
count.
On remand, USC should be afforded the opportunity
to file a motion to change the count. The Board’s decision
must, at the very least, squarely address the issues USC
raises and set out the reasoning supporting the Board’s
conclusions in sufficient detail to permit meaningful
review.
VACATED AND REMANDED
COSTS
Costs to appellants.

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