California Institute of Technology v. Enzo Life Sciences, Inc

BoxInterferences@uspto.gov 	Paper 126
Telephone: 571-272-4683 	ENTERED: 29 October 2010
UNITED STATES PATENT AND TRADEMARK OFFICE
BOARD OF PATENT APPEALS AND INTERFERENCES
Patent Interference No. 105,496
CALIFORNIA INSTITUTE OF TECHNOLOGY
(5,821,058),
Junior Party,
v.
ENZO LIFE SCIENCES, INC.
(08/486,069),
Senior Party.
Before JAMES T. MOORE, Acting Chief Administrative Patent Judge, and
SALLY G. LANE, RICHARD E. SCHAFER, JAMESON LEE, RICHARD
TORCZON, SALLY C. MEDLEY, and MICHAEL P. TIERNEY,
Administrative Patent Judges.
TORCZON, Administrative Patent Judge.
DECISION
Bd.R. 125
on motion

Interference No. 105,496 	Page 2
The senior party (Enzo) seeks relief in the form of removing the
record of this interference from the Board's interference web portal 1 and
from any other public forum that the Office operates or controls. 2 The junior
party (CIT) does not oppose. 3 The relief is DENIED.
OPINION
I. 	FACTS AND FINDINGS
[1] 	Enzo's 08/486,069 application is involved in this interference. 4
[2] 	The involved application was filed on 7 June 1995.5
[3] 	Enzo states that its application has not been published and is not
otherwise available. 6
The Board is not aware of a general exception to Enzo's statement
prior to the release of the interference record after judgment in this
interference, but Enzo's involved application was released to CIT pursuant to
a rule. 7
[4] 	CIT's 5,821,058 patent is involved in this interference. 8
[5] 	The involved patent issued to the public on 13 October 1998. 9
[6] 	A judgment was entered in this interference on 22 September 2010. 10
1 https://acts.uspto.gov/ifiling/PublicView.jsp.
2 Paper 124 at 1.
3 Id. at 1 n.1.
4 Paper 1 at 3.
5 Exh. 1049: Request for filing a continuation application, Hybridization
assay method, U.S. Patent Appl'n [08/]486,069 (filed 7 June 1995).
6 Paper 124 at 1, mat'l facts 2-4.
7 Paper 13 (Order) (authorizing copies to the parties under Bd.R. 109(b)).
8 Paper 1 at 2.
9 Exh. 1002: L.M. Smith et al., Automated DNA sequencing technique, U.S.
Patent 5,821,058 (iss'd 13 October 1998), cover page.
10 Paper 122.

Interference No. 105,496 	Page 3
[7] 	The judgment was entered against Enzo for count 1, the sole count.
[8] 	As a result, all of claims Enzo's involved application except certain
listed claims were finally refused pursuant to 35 U.S.C. 135(a).
II. DISCUSSION
A. Statutory confidentiality
Under 35 U.S.C. 122(a), the Office holds a patent application in
confidence unless certain exceptions are met. The major exception arises in
the next subsection of the statute itself, which effectively provides for the
publication of most applications no later than eighteen months after they are
filed.11 Enzo's involved application is not subject to this exception because
it was filed before the effective date of the statute adding all of the
subsections after subsection (a).12
The statute provides other exceptions, however. First, the applicant or
application owner may consent to publication. Second, publication is
permitted if necessary to carry out the provisions of an Act of Congress.
Third, the Director may determine that special circumstances warrant
publication.13 Enzo's motion makes clear that Enzo does not consent to
publication of its involved application. The remaining exceptions warrant
closer examination.
B. Rule-based exceptions
Although the patent system is over two hundred years old, statutory
confidentiality dates only to the 1952 Patent Act, which enacted what is now
11 35 U.S.C. 122(b) (Publication).
12 Pub. L. 106-113, Div. B, § 1000(a)(9) (applying publication provision to
applications filed on or after 29 November 2000).
13 § 122(a).

Interference No. 105,496 	Page 4
§ 122(a). Previously, application confidentiality was a creation of Patent
Office rules. As P.J. Federico, one of the drafters of the Act, explains in his
famous commentary, the statute was intended simply to codify the existing
practice.14 Federico notes several exceptions to confidentiality:
patent interferences, including notice of the application and
then availability of the application itself to the adverse party;
judicial review, where the default is for the record to be public;
national security, where defense agencies may review
applications; and
patents, where not only the application resulting in the patent,
but also any application to which it claims benefit, become
public.
The interference exception already occurred in this case as previously noted.
The national security exception may have occurred, although it is difficult to
determine from this record. The judicial exception will occur if there is
judicial review unless a party succeeds in moving to have the application
placed under seal.
The Office rules provide a process for case-by-case determinations. 15
They provide at least two categorical "special circumstance" exceptions as
well.
14 P.J. Federico, Commentary on the New Patent Act (1953), available at
http://ipmall.info/hosted_resources/lipa/patents/federico-
commentary.asp#Application_for_Patent (visited 20 Oct. 2010) at
"Confidential status of applications (section 122)": "Section 122 is a new
section which enacts as part of the statute the rule of secrecy of patent
applications which has been in the Patent Office rules in one form or another
for about a hundred years."
15 37 C.F.R. § 1.14(a)(1)(i) (2010). Unless otherwise noted, all references
are to current rules.

Interference No. 105,496 	Page 5
1. Reissue applications
A reissue application must arise from a previously issued patent. 16 It
is open to the public 17 even though § 122(a) does not distinguish between
regular applications and reissue applications. 18 As a policy matter, the
exception makes sense since there are relatively few reissue applications, the
invention disclosure has already been published in a patent, and such an
application may change the public record in a case of public interest. The
original rule making noted that this change in the rules was favored in public
comments except for concern about a lack of statutory authority. The
rulemaking expressly grounded the rule on the "special circumstance"
provision of § 122. 19
2. Interference records
A similar exception has existed even longer for applications appearing
in the record of an interference. The interference record is public by
default.20 The exception to this default publication arises when an involved
application is not publicly available. 21 Even then, once the interference ends
with a judgment, if the interference involved a patent or if an involved
application becomes public, the record becomes public. 22 This exception
predates the current secrecy statute.
16 35 U.S.C. 251.
17 37 C.F.R. § 1.11(b).
18 35 U.S.C. 122(a).
19 Final Rule, Patent Examining and Appeal Procedures, 42 Fed. Reg. 5588,
5588 (28 January 1977).
20 37 C.F.R. § 1.11(e). Indeed, most are freely available on the Board's
interference web portal.
21 Bd.R. 6(b)(1).
22 Bd.R. 6(b)(2).

Interference No. 105,496 	Page 6
In 1948, Patent Rules 15 and 16 provided:
15. Pending applications are preserved in secrecy. No
information will be given, without authority, respecting the
filing by any particular person of an application for a patent or
for a reissue of a patent, the pendency of a particular case
before the office, or the subject matter of any particular
application, unless it shall be necessary to the proper conduct of
business before the office, as provided by rules [list omitted].
16. After a patent has issued, the model, specification,
drawings, and all documents relating to the case are subject to
general inspection, and copies, except of the model, will be
furnished at the rates specified in [another rule].
Note that under Rule 15, even reissue applications were held in confidence.
Rule 16 ensured the essential feature of a patent, its openness, by making
"all documents relating to the" patent publicly available.
Effective 1 March 1949, Rule 15 was modified and expanded to
provide more detail and to state expressly the national security exception.
Rule 16, however, was moved to Rule 11 with a significant clarification: 23
After a patent has been issued, the specification, drawings, and
all papers relating to the case in the file of the patent are open to
public inspection by the general public, and copies may be
furnished upon payment therefore. The file of any terminated
interference involving a patent, or an application on which a
patent has subsequently issued, is similarly open to public
inspection and procurement of copies.
In the 1940s, rule making was much terser than now, so unfortunately there
is not much guidance on why the rule was changed. A contemporaneous
23 Final Rule, Certain Amendments and Additions to Regulations, 13 Fed.
Reg. 9575 (31 Dec. 1948) (emphases added).

Interference No. 105,496 	Page 7
treatise, however, explains that the new sentence simply reflected existing
practice: 24
Rule 11, first sentence, is a recasting of old Rule 16…; the other
sentence is new, but states old practice.
It may be significant that the clarification in the rule arose at a time of
growing public concern about abuses occurring under a veil of secrecy in
settling interferences. In 1945, the Supreme Court declined to enforce a
patent that issued on an application after misconduct in an interference that
came to light during an infringement suit. 25 In 1962, Congress added
35 U.S.C. 135(c) to require interference parties to put their agreement into
writing and file it with the Office. 26 Subsection (c) provides for qualified
confidentiality upon request, reflecting the understanding that the agreement
would otherwise become public with the rest of the record.
The current practice of opening the interference record after judgment
whenever a patent is involved was already established when application
confidentiality was first enacted in 1952. The practice makes sense because
an interference may play a substantial role in the evolution of patent claims.
Hence, the interference record may be as vital as any other part of the
prosecution history to understanding the scope and meaning of a claim. In
any case, the practice is facially consistent with the two Director-vested
exceptions in § 122(a). We are not aware of any reason to believe Congress
meant to end the practice when enacting § 122 in 1952. If anything, the
24 A.R. McCrady, Patent Office Practice 19 (1950).
25 Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806,
816-19 (1945)
26 S. Rep. 87-2169 (1962), reprinted in 1962 U.S.C.C.A.N. 3286, 3286.

Interference No. 105,496 	Page 8
authorities indicate that this practice has long been understood to be
consistent with regulatory and statutory confidentiality of applications.
C. Enzo's argument
1. Board Rule 6(b)(2)
Enzo argues that publication of the record in the present interference
was inconsistent with Board Rule 6(b), 27 which provides:
(b) Record of proceeding. (1) The record of a Board
proceeding is available to the public unless a patent application
not otherwise available to the public is involved.
(2) Notwithstanding paragraph (b)(1) of this section, after a
final Board action in or judgment in a Board proceeding, the
record of the Board proceeding will be made available to the
public if any involved file is or becomes open to the public
under §1.11 of this title or an involved application is or
becomes published under §§1.211 to 1.221 of this title.
Paragraph (b)(1) explains the default that the record of a Board proceeding is
available to the public. It also explains the exception to this default, which
applies when a patent application is not otherwise available to the public.
Such was apparently the case for Enzo's involved application, which is why
the record was not publicly available earlier. Paragraph (b)(2) provides a
negation of the exception, however, once a judgment issues. The negation
applies "if any involved file is…open to the public under § 1.11 of this title".
The 1948 Rule 11 discussed above is the lineal antecedent of the 37 C.F.R.
§ 1.11, which provides that:
(a) The specification, drawings, and all papers relating to the
file of:…a patent…are open to inspection by the public….
27 Paper 124 at 3.

Interference No. 105,496 	Page 9
CIT's patent is thus open to the public, as are all papers relating to it. Enzo's
application was the reason for confidentiality under Board Rule 6(b)(1): it is
CIT's patent, not Enzo's application, that operated as the trigger for
publication under Board Rule 6(b)(2) once a judgment was entered. Enzo's
motion does not address the relevance of CIT's patent.
2. Standard Operating Procedure 2
Enzo also cites 28 to a Board standard operating procedure for the
proposition that:29
All opinions in support of a final decision will be posted at:
http://des.uspto.gov/Foia/BPAIReadingRoom.jsp unless the
opinion is subject to confidentiality protections under 35 U.S.C.
§ 122(a) or secrecy under 35 U.S.C. § 181.
The SOP does not support Enzo's contention. On its face, the SOP is
directed to final Board opinions generally, rather than interference records
specifically, in an effort to comply with the Freedom of Information Act. 30
Indeed, the postings at the FOIA BPAI Reading Room site are final
decisions from various Board proceedings rather than entire records. In
general, FOIA operates to facilitate publication rather than confidentiality.
Moreover, the exception in the SOP is expressly grounded on
§ 122(a). Board Rule 6(b) provides the relevant application of § 122(a) to
Board records. The SOP does not purport to overturn the rule; quite to the
28 Id.
29 Publication of opinions and binding precedent, Standard Operating
Procedure 2 [SOP] 7 (rev. 7, 2008).
30 5 U.S.C. 552 [FOIA], especially § 552(a)(2)(A) (requiring public
availability of final opinions, electronically after 1996).

Interference No. 105,496 	Page 10
contrary, it expressly states that "It does not create any legally enforceable
rights."31
III. CONCLUSION AND HOLDING
On this record, publication of the interference record appears to have
been not only appropriate, but actually required under Board Rule 6(b).
Enzo's motion misses the significance of the involvement of CIT's patent for
purposes of publication. The authorities on which Enzo relies do not compel
a different conclusion.
Board support staff did not abuse their authority in publishing the
record for this interference after judgment was entered.
cc:
For the California Institute of Technology: Jerry D. Voight, F INNEGAN ,
HENDERSON , F ARABOW , GARRETT & DUNNER , L.L.P., of Palo Alto,
California, with Steven P. O'Connor, of Reston, Virginia.
For Enzo Life Sciences, Inc.: Robert M. Schulman, HUNTON & W ILLIAMS ,
LLP, of Washington, D.C., with Scott F. Yarnell of McLean, Virginia and
Robert C. Lampe, III of Washington, D.C.; and with Eugene C. Rzucidlo of
Alexandria, Virginia; and with Ronald C. Fedus, ENZO BIOCHEM , I NC., of
New York City, New York.
31 SOP 2 at 1.