Davis v. Hendron

INTERFERENCE TRIAL SECTION PRECEDENTIAL OPINION
Section “1" of this opinion in support of the decision
being entered today, discussing a miscellaneous motion
under 37 CFR § 1.635 to add an additional patent to the
interference under 37 CFR § 1.642, is binding precedent
of the Interference Trial Section of the Board of
Patent Appeals and Interferences. The opinion is
otherwise not binding precedent. The decision was
entered on November 1, 1999.
Paper No. 55
Filed by: Trial Section Merits Panel
Box Interference
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
JD
Junior Party
(Application 08/XXX,XXX)
v.
SH
Senior Party
(Patent No. 5,YYY,YYY)
_______________
Patent Interference No. 104,044
_______________
Before McKELVEY, Senior Administrative Patent Judge, SCHAFER, LEE
and TORCZON, Administrative Patent Judges.
LEE, Administrative Patent Judge.
Opinion in Support of
Decision on Preliminary
and Miscellaneous Motions

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This interference was declared on February 26, 1999. Time
Period 8 for taking action during the preliminary motion phase of
the interference (Paper Nos. 38 and 45) expired on October 31,
1999. Preliminary and miscellaneous motions have been filed by
the parties. Section 1 of this opinion concerns a miscellaneous
motion under 37 CFR § 1.635 for a patent to be added to the
interference under 37 CFR § 1.642, and is adopted as binding
precedent of the Interference Trial Section. The entire opinion
will be posted in due course at the Website address:
(http//:www.uspto.gov/web/offices/dcom/bpai/its/104044.pdf).
In this opinion, the names of the parties and their
corresponding application and patent numbers have been changed to
preserve the confidentiality of the involved parties and their
cases.
Senior party SH has filed the following three motions:
1. Miscellaneous motion 1 under 37 CFR § 1.635 to have
junior party’s Patent 5,XXX,XXX added to this interference under
37 CFR § 1.642;
DENIED
2. Preliminary motion 2 for judgment against claims 1 and
5-7 of junior party’s Patent 5,XXX,XXX; and

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DISMISSED
3. Preliminary motion 3 to redefine the count by adopting
claim 2 of Patent 5,XXX,XXX as the count.
DISMISSED
Junior party AD filed a single motion and a request for oral
argument:
4. Miscellaneous motion 1 (Paper No. 49) to suppress the
declaration of Mr. R.B. (SH’s Exhibit 2005) which was relied on
by the senior party in connection with senior party’s
miscellaneous motion 1 and preliminary motions 2 and 3.
DENIED
5. Request (Paper No. 50) for oral argument on senior
party’s miscellaneous motion 1 and senior party’s preliminary
motions 2 and 3, and junior party’s miscellaneous motion 1.
DENIED
1.
Senior party patentee’s motion
filed under 37 CFR § 1.635 to add
junior party’s uninvolved patent to
this interference under 37 CFR § 1.642
Senior party SH filed a miscellaneous motion (Paper No. 34)
under 37 CFR § 1.635 to have an uninvolved junior party patent
added to this interference under 37 CFR § 1.642. The patent

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sought to be added issued from the parent application of the
junior party’s involved application, names the same inventors as
the junior party’s involved application, and is assigned to the
same real party in interest as is the junior party’s involved
application. At the time of declaration of this interference,
the junior party was already accorded benefit of the earlier
filing date of this parent application.
This motion is joined by the junior party. See the junior
party’s responsive submission in Paper No. 42.
As declared, this interference is between the junior party’s
involved application and the senior party’s involved patent. The
U.S. Patent and Trademark Office issues only a single patent for
the same patentable invention. See 35 U.S.C. § 102(g).
The Patent Statute (35 U.S.C. § 135(a)) provides for
interferences as follows:
Whenever an application is made for a patent which, in
the opinion of the Commissioner, would interfere with
any pending application, or with any unexpired patent,
an interference may be declared and the Commissioner
shall give notice of such declaration to the
applicants, or applicant and patentee, as the case may
be.

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The purpose of having interferences is to assist an examiner
in the examination of a patent application. When two applicants
claim the same patentable invention, a patent is issued only to
the applicant who is the first inventor. When an applicant
claims the same patentable invention as a patent, the examiner
cannot issue a patent to the applicant until interference
proceedings are conducted and it is determined that the applicant
is the first inventor vis-a-vis the patentee. An "interference"
is defined in the rules. 37 CFR § 1.601(i). The definition
permits an interference with two patents under limited
circumstances. The following appears in the Notice of Final
Rule, Patent Interference Proceedings, 49 Fed. Reg. 48416, 48419
(col. 2) (Dec. 12, 1984):
The definition of "interference" permits an
interference between one or more applications and one
or more patents. Thus, these new rules follow the
policy of Wilson v. Yakel, 1876 Dec. Comm'r. Pat. 245
(Comm'r. Pat. 1876) and, to the extent inconsistent
therewith, do not follow the policy announced in Touval
v. Newcombe, 194 USPQ 509 (Comm'r. Pat. 1976).
However, in view of the statutory requirement for the
presence of at least one application in an
interference, if an applicant were to concede priority
or otherwise be terminated from an interference

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involving only one application and more than one
patent, the interference would have to be terminated
for lack of subject matter jurisdiction unless one or
more of the patentees filed an application for reissue
which could be added to the interference under
§ 1.633(h).
When a patentee loses the interference, the Commissioner may
issue a patent to the applicant notwithstanding the prior
issuance of a patent to the patentee. Section 135(a) states:
A final judgment adverse to a patentee from which no
appeal or other review has been or can be taken or had
shall constitute cancellation of the claims involved in
the patent ***.
After an interference is concluded, the examiner knows which
applicant among interfering applicants is entitled to a patent.
Likewise, the examiner knows, when an applicant defeats a
patentee, that a patent may be issued to an applicant.
Section 135(a) does not authorize the Commissioner to
declare an interference between interfering patents. Compare
35 U.S.C. § 291, which authorizes a civil action to resolve
priority between interfering patents.
Rule 642 (37 CFR § 1.642) authorizes an administrative
patent judge to add an applicant or patent to an interference:

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During the pendency of an interference, if the
administrative patent judge becomes aware of an
application or a patent not involved in the
interference which claims the same patentable invention
as a count in the interference, the administrative
patent judge may add the application or patent to the
interference on such terms as may be fair to all
parties (emphasis added).
There may be a situation where an application and two
patents (not owned by the applicant) claim the same patentable
invention. If so, an examiner cannot issue a patent to the
applicant until the applicant establishes that it is the first
inventor vis-a-vis both patentees. If the interference was
initially declared as an application versus patent interference,
the second patent may be added to the interference. But, the
interference is still one where the applicant seeks to establish
priority vis-a-vis both patentees. If the applicant were to drop
out of the interference, there no longer would be jurisdiction to
resolve any priority dispute between the patents.
In the case before us, the interference was declared between
the JD application and the SH patent. The interference was
necessary for the examiner to know whether a patent may be issued
to JD. An attempt is now made to add a JD patent, one issuing

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from the parent application of the involved JD application, to
the interference. But, the board does not have jurisdiction
under 35 U.S.C. § 135(a) to resolve priority as between the JD
patent and the SH patent. Moreover, the uninvolved JD patent
does not have to be added to the interference to determine
priority between the involved JD application and the involved SH
patent.
The additional patent of junior party JD sought to be added
to this interference does not stand in the way of the issuance of
anyone’s application except perhaps JD’s own involved application
on the ground of double patenting. That, of course, does not
present an interference situation since there is no adverse
party. The case might be different if there were a second SH
patent which stands in the way of issuing a patent based on the
JD application. If it were necessary for JD to establish
priority vis-a-vis two SH patents claiming the same patentable
invention, addition of a second SH patent to the interference may
well be justified.
Rule 642 gives the board discretion to add newly discovered
patents to an interference. However, where the board would lack
jurisdiction to resolve an interference between two patents,
discretion should be exercised to deny addition of the patent to

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the interference. Since the board lacks subject matter
jurisdiction to resolve priority between the additional JD patent
sought to be added to this interference and the already involved
SH patent, the joint request to add the additional JD patent to
the interference is denied.
Contrary to the argument of SH, denial of the request to add
the Davis patent is not inconsistent with Schultze v. Green,
136 F.3d 786, 45 USPQ2d 1769 (Fed. Cir. 1998). The issue in
Schultze was one over which the board had jurisdiction. The same
is not true in this case.
2.
Senior party SH’s preliminary motion 2
This motion (Paper No. 32) is contingent upon the granting
of senior party’s miscellaneous motion 1 to add junior party’s
Patent 5,XXX,XXX to this interference. Because senior party’s
miscellaneous motion 1 has been denied and junior party JD’s
Patent 5,XXX,XXX has not been added to this interference, senior
party SH’s preliminary motion 2 for judgment against claims 1 and
5-7 of junior party’s Patent 5,XXX,XXX, is dismissed.

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3.
Senior party SH’s preliminary motion 3
This motion (Paper No. 33) is contingent upon the granting
of senior party’s miscellaneous motion 1. Because senior party’s
miscellaneous motion 1 has been denied and junior party’s
additional Patent 5,XXX,XXX has not been added to this
interference, senior party SH’s preliminary motion 3 to redefine
the count as claim 2 of junior party’s patent 5,XXX,XXX is
dismissed.
4.
Junior party AD’s miscellaneous motion 1
By this motion (Paper No. 49), junior party AD seeks to
suppress the declaration of Mr. R.B. (senior party’s Exhibit
2005). According to junior party AD, the declarant is a long-
time employee of senior party’s assignee and thus has a conflict
of interest problem. According to the junior party AD, it is not
clear whether the declarant has any experience in examining and
construing patent claims. Further according to the junior party
AD, the opinions of the declarant are merely conclusory and lack
a substantial basis in the facts.
All of the objections of junior party AD relate to the
credibility and persuasiveness of the declarant’s testimony

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rather than technical admissibility. Furthermore, junior party
AD has not demonstrated how it has complied with the requirement
in ¶ No. 33 of the Notice Declaring Interference (Paper No. 1)
that:
Any objection to the admissibility of evidence,
including evidence filed with any motion, opposition or
reply shall be filed within five (5) working days of
service of the evidence to which the objection is made,
including evidence presented in connection with a
preliminary motion. (Emphasis in original.)
For the foregoing reasons, junior party’s miscellaneous
motion is denied.
5.
Junior party AD requests oral argument with regard to senior
party’s miscellaneous motion 1 and senior party’s preliminary
motions 2 and 3, and junior party’s miscellaneous motion 1.
Since we do not consider an oral argument to be necessary for
deciding these motions, the request is denied.
6.
Priority Testimony
In light of the foregoing decision on miscellaneous and
preliminary motions, the case will proceed to the priority

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testimony phase of the proceedings. The time periods for taking
priority testimony will be set in a separate paper in due course.
Fred E. McKelvey, Senior )
Administrative Patent Judge)
)
)
)
)
Richard E. Schafer )
Administrative Patent Judge) BOARD OF PATENT
) APPEALS
) AND
) INTERFERENCES
)
Jameson Lee )
Administrative Patent Judge)
)
)
)
)
Richard Torczon )
Administrative Patent Judge)