Lee M. Kaplan, Alice P. Liou, Peter J. Turnbaugh, Jason L. Harris v. Patrice Cani, Armandine Everard, Clara Belzer, Willem De Vos

N OTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
LEE M. KAPLAN, ALICE P. LIOU, PETER J.
TURNBAUGH, JASON L. HARRIS,
Appellants
v.
PATRICE CANI, ARMANDINE EVERARD, CLARA
BELZER, WILLEM DE VOS,
Appellees
KATHERINE K. VIDAL, Under Secretary of Com-
merce for Intellectual Property and Director of the
United States Patent and Trademark Office,
Intervenor
______________________
2021-2367
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 106,130.
______________________
ON MOTION
______________________
Before P ROST , REYNA, and CUNNINGHAM , Circuit Judges.
CUNNINGHAM , Circuit Judge.
O R D E R
Case: 21-2367 Document: 29 Page: 1 Filed: 04/18/2022

-- 1 of 5 --

KAPLAN v. CANI 2
Patrice Cani et al. (collectively, “Cani”) move to dismiss
this appeal for lack of jurisdiction. The United States Pa-
tent and Trademark Office (“PTO”) responds in support.
Lee M. Kaplan et al. (collectively, “Kaplan”) oppose.
This appeal stems from an ongoing interference pro-
ceeding between Cani and Kaplan before the Patent Trial
and Appeal Board. At the preliminary stage of the proceed-
ing, Kaplan sought permission to file a motion for judgment
against Cani based on alleged inequitable conduct. Find-
ing that allegations of inequitable conduct “would benefit
from evidence presented during a priority phase of the in-
terference,” the Board deferred a decision on the motion “to
the conclusion of the priority phase of the interference, if
any.” Int. No. 106,130, Paper 25 at 3.
Kaplan requested rehearing of the decision to defer,
which the Board denied. The Board explained that the al-
legedly misrepresented data here that forms the basis of
the proposed inequitable conduct “pertains directly to pri-
ority which will be asserted by [Cani] during the priority
phase” and that the “alleged defects in the data would be
expounded upon by witnesses who are subject to cross ex-
amination during the normal course of the interference.”
Int. No. 106,130, Paper 88 at 2–3. For that reason, the
Board maintained “the view that obtaining this infor-
mation in the regular course of the proceeding will assist
[the Board] in determining the future course of action con-
cerning the propriety of raising allegations of inequitable
conduct.” Id. at 4. Kaplan then filed this appeal.
We have exclusive jurisdiction to review decisions of
the Board. See 28 U.S.C. § 1295(a)(4)(A). But our jurisdic-
tion extends only to the Board’s final decisions. See In re
Arunachalam, 824 F.3d 987, 988 (Fed. Cir. 2016) (reading
§ 1295(a)(4) “to incorporate a finality requirement” (quot-
ing Loughlin v. Ling, 684 F.3d 1289, 1292 (Fed. Cir.
2012))). Rulings concerning preliminary motions are gen-
erally appealable only upon a final decision of the Board in
Case: 21-2367 Document: 29 Page: 2 Filed: 04/18/2022

-- 2 of 5 --

KAPLAN v. CANI 3
an interference, not on an interlocutory basis. Nonethe-
less, Kaplan argues that we have interlocutory jurisdiction
over this appeal under the collateral order doctrine. See
Cohen v. Beneficial Indus. Loan Corp., 337 U.S. 541, 546
(1949). We disagree with Kaplan.
The collateral order doctrine “considers as ‘final [deci-
sions],’ even though they do not ‘end the litigation on the
merits,’ decisions ‘which finally determine claims of right
separate from, and collateral to, rights asserted in the ac-
tion, too important to be denied review and too independ-
ent of the cause itself to require that appellate jurisdiction
be deferred until the whole case is adjudicated.’” Midland
Asphalt Corp. v. United States, 489 U.S. 794, 798 (1989)
(quoting Cohen, 337 U.S. at 546). To fall within the limited
class of final collateral orders that may immediately be ap-
pealed, the order must “[1] conclusively determine the dis-
puted question, [2] resolve an important issue completely
separate from the merits . . . , and [3] be effectively unre-
viewable on appeal from a final judgment.” Will v. Hallock,
546 U.S. 345, 349 (2006) (brackets in original) (internal
quotation marks and citation omitted).
Kaplan has failed to satisfy at least two of those re-
quirements. First, they have not sufficiently shown that
the Board conclusively determined the issue presented,
namely, whether the Board must decide Kaplan’s motion
for judgment based on inequitable conduct before reaching
the merits of the interference. The Board deferred consid-
eration of that motion until “the conclusion of the priority
phase of the interference.” Int. No. 106,130, Paper 25 at 3.
But the Board can still change course. Nothing in its order
prohibits the Board from granting Kaplan leave to file a
motion for judgment on inequitable conduct that the Board
resolves before reaching any decision on priority. The
Board has still not resolved any priority issue, and the par-
ties do not suggest the Board has otherwise reached the
merits of the interference. Thus, the Board’s ruling is not
“conclusive.” See Gulfstream Aerospace Corp. v. Maycamas
Case: 21-2367 Document: 29 Page: 3 Filed: 04/18/2022

-- 3 of 5 --

KAPLAN v. CANI 4
Corp., 485 U.S. 271, 278 (1988) (noting that an order is “in-
herently tentative” if the district court “does not neces-
sarily contemplate that the decision will close the matter
for all time” (internal quotation marks omitted)).
Second, whether Cani should lose standing as a party
to the interference because of committing inequitable con-
duct, as alleged here, is meaningfully capable of review af-
ter the final decision. It is true that forcing Kaplan to wait
to validate that claim until after the final decision cannot
undo the expense of having to participate in these interfer-
ence proceedings. But in that respect, this situation is in-
distinguishable from a denial of a motion for lack of
jurisdiction or venue, which are also not immediately ap-
pealable. See Lauro Lines s.r.l. v. Chasser, 490 U.S. 495,
499–500 (1989); see also Mohawk Indus., Inc. v. Carpenter,
558 U.S. 100, 107 (2009) (“That a ruling may burden liti-
gants in ways that are only imperfectly reparable by appel-
late reversal of a final district court judgment . . . has never
sufficed.” (internal quotation marks and citation omitted)).
In the alternative, Kaplan requests that we treat the
appeal as a petition for a writ of mandamus. But Kaplan
has not shown any clear and indisputable error on the part
of the Board in deferring their motion. See Cheney v. U.S.
Dist. Ct. for D.C., 542 U.S. 367, 380–81 (2004). The cases
cited by Kaplan do not provide clear legal authority to com-
pel the Board to act on their motion at this preliminary
stage. In Berman v. Housey, 291 F.3d 1345 (Fed. Cir.
2002), the Board dismissed an unpatentability motion as
moot after finding there were no claims that could sustain
an interference proceeding. Id. at 1350. We found no error
on the part of the Board in refusing to address that motion.
That decision does not directly speak to the issue here.
Norton v. Curtiss, 433 F.2d 779 (C.C.P.A. 1970), like-
wise does not provide clear legal entitlement to the Board’s
consideration of the inequitable conduct motion during the
preliminary stage of the interference proceeding. In that
Case: 21-2367 Document: 29 Page: 4 Filed: 04/18/2022

-- 4 of 5 --

KAPLAN v. CANI 5
case, the Court of Customs and Patent Appeals held that
the issue of misconduct on the part of a patent applicant is
an issue “ancillary to priority” and therefore properly
within the jurisdiction of the Board and the court. Id. at
783. The Board’s ruling deferring action did not say other-
wise. And Norton did not address when the Board is re-
quired to take up the issue of inequitable conduct.
Accordingly,
I T I S O RDERED T HAT :
(1) The motion to dismiss is granted.
(2) Each side shall bear its own costs.
April 18, 2022
Date
F OR THE COURT
/s/ Peter R. Marksteiner
Peter R. Marksteiner
Clerk of Court
ISSUED AS A MANDATE: April 18, 2022
Case: 21-2367 Document: 29 Page: 5 Filed: 04/18/2022

-- 5 of 5 --