Barany v. McGall

Mail Stop Interference 	Paper 59
P.O. Box 1450 	Filed: February 6, 2009
Alexandria VA 22313-1450
Tel: 571-272-9797
Fax: 571-273-0042
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
FRANCIS BARANY,
GEORGE BARANY, ROBERT P. HAMMER,
Junior Party
(Application 09/986,527),
v.
GLENN H. McGALL,
CHARLES G. MIYADA, MAUREEN T. CRONIN,
JENNIFER D. TAN, and MARK S. CHEE
Senior Party
(Patent 6,156,501).
Patent Interference No. 105,351
(Technology Center 1600)
Decision - Interlocutory Motion	1
Barany seeks reconsideration of the oral decision that this interference	2
will proceed to the priority phase. The request is denied.	3
History	4
During the prosecution of its Application 09/986,527, Junior Party	5
Barany requested that an interference be set up with Senior Party McGall’s	6
Patent 6,156,501. Application 09/986,527, Showing by Applicant under 37	7
CFR § 1.608(b), filed January 28, 2002. At that time, the application had	8
not been examined. After lengthy prosecution before the examiner, this	9

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interference was declared. Paper 1. The count was a combination of	1
Barany’s and McGall’s independent claims:	2
Any of claims 15, 25, 28, 35, 36, or 37 of Barany (09/986,527)	3
or	4
any of claims 1, 26, 35, 51 or 58 of McGall (6,156,501).	5
Paper 1, p. 4. Barany was accorded an effective filing date of February 9,	6
1996. Paper 1, p. 5. McGall was accorded an effective filing date of	7
May 10, 1995. Thus, McGall is the Senior Party.	8
During the “motions” phase of the interference, Barany filed a number	9
of motions including a motion asserting that McGall’s patent claims were	10
unpatentable because they were not supported by an enabling disclosure.	11
Paper 32. McGall neither filed oppositions nor any motions of its own. A	12
panel of the board granted the enablement motion, holding all of McGall’s	13
patent claims were unpatentable. Paper 49, p. 12-20. As a result, the	14
interference was redeclared with a new count, which eliminated all reference	15
to McGall’s unpatentable claims. Paper 50, p. 1.	16
Because all of McGall’s claims were unpatentable, an APJ ordered	17
McGall to show cause why this interference should continue. Paper 51.	18
McGall responded. Paper 53. McGall argued that Barany had not overcome	19
McGall’s accorded benefit date for the subject matter of the count and	20
Barany’s claims were unpatentable under 35 U.S.C. § 102(g). Paper 53,	21
p. 3-4. At a telephone conference call on January 5, 2009, the APJ orally	22
ruled that the interference would proceed to priority. During the call,	23
Barany asked and was authorized to file a miscellaneous motion seeking	24
reconsideration of that decision. Paper 54, p. 1-2.	25
Barany filed the motion. Paper 55. Barany argues that the board has	26
discretion to enter judgment without deciding priority and that judgment	27

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should be entered against McGall because (1) since McGall’s claims are	1
unpatentable there no longer is an interference-in-fact between the parties;	2
(2) 35 U.S.C. § 102(g) is not a legal impediment to the issuance of Barany’s	3
patent and (3) McGall has not actively participated in the interference.	4
Analysis	5
The board has broad discretion to decide how an interference will	6
proceed. Thus 37 CFR § 41.104(a) provides:	7
(a) The Board may determine a proper course of conduct	8
in a proceeding for any situation not specifically covered	9
by this part and may enter non-final orders to administer	10
the proceeding.	11
The board also decides which motions may be filed and the order in which	12
the motions will be decided. 37 CFR §§ 41.121 and 41.125(a). Ultimately	13
what issues will be decided depends on a case-by-case analysis.	14
There are circumstances where an interference will be terminated	15
without reaching priority. The board’s rules identify three narrow threshold	16
issues that may result in termination of the interference without reaching	17
priority: (1) no interference-in-fact; (2) where a party-applicant’s interfering	18
claims are barred by the opponent’s patent claims under 35 U.S.C. § 135(b)	19
and (3) where an applicant adds claims to provoke an interference and the	20
added claims do not have written descriptive support. 37 CFR § 41.201.	21
Each of these situations provide a strong reason to stop the	22
interference without reaching priority. A holding of no interference-in-fact	23
says the parties are claiming patentably distinct subject matter. Since the	24
parties are not claiming the same invention, who is first to invent is	25
irrelevant.	26
A holding that that a party-applicant’s claims are barred by the party-	27
patentee’s claims under § 135(b) says because of applicant’s tardiness in	28

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claiming interfering subject matter, he will not be permitted to challenge the	1
patentee’s right to the patent claims by means of an interference. Between	2
the two parties, who is the first inventor simply does not matter.	3
When claims added to provoke the interference do not have written	4
descriptive support, the provoking party, in effect, got into the interference	5
under false pretenses. Since the applicant’s original specification never	6
conveyed possession of the interfering subject matter, it is inappropriate and	7
manifestly unfair to allow the applicant to attempt to challenge the	8
patentee’s rights.	9
There are of course, additional situations where it would be	10
appropriate to exercise discretion to terminate the interference without	11
reaching priority. For example, where all of a Junior Party patentee’s claims	12
are held to be unpatentable, there would appear to be little reason to evaluate	13
priority. A patent versus application interference may be considered as a	14
proceeding to assist the examiner in deciding whether the patent stands in	15
the way of allowing the application to issue. The fact that the patent claims	16
are unpatentable and the patentee is presumptively the second inventor	17
would seem to provide the examiner with the answer that the patent is not an	18
impediment to allowing the application to issue. On the other hand, it is	19
possible that the patentee might be able to present a convincing factual story	20
that priority should be determined notwithstanding unpatentability of the	21
claims and the presumption that the patentee is the second inventor.1
22
1 Interferences have been resolved on the basis of unpatentability without
deciding priority (Berman v. Housey, 291 F.3d 1345 (Fed. Cir. 2002); on the
basis of the patentability of less than all of the claims (Noelle v. Lederman,
355 F.3d 1343 (Fed. Cir. 2004); on the basis of priority without deciding
patentability (In re Sullivan, 362 F.3d 1324 (Fed. Cir. 2004) and on the basis

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Barany argues that since McGall’s claims are unpatentable there is no	1
interference-in-fact.	2
Barany’s argument misapprehends the meaning and purpose	3
“interference-in-fact.”	4
The determination of an interference-in-fact involves a comparison of	5
the parties’ claimed subject matter to determine if they are claiming	6
patentably indistinct subject matter. The interference-in-fact question is “are	7
the parties claiming the same invention?” As defined in 37 CFR § 41.203(a)	8
the parties claim interfering inventions when “the subject matter of a claim	9
of one party would, if prior art, have anticipated or rendered obvious the	10
subject matter of a claim of the opposing party and vice versa.” The	11
existence of an interference-in-fact under the rule, however, does not depend	12
on patentability over the prior art or under 35 U.S.C. § 112. The holding	13
that McGall’s claims are unpatentable does not mean that the subject matter	14
claimed by the parties’ is not directed to the same invention. And Barany,	15
having suggested the interference, is not in a position to argue that its claims	16
do not interfere with McGall’s.	17
Patentability of the claims is important, not for the existence of	18
interfering subject matter, but as a prerequisite to an evaluation of whether	19
there is interfering subject matter. Prior to initiating an interference,	20
examination must be complete and each party must have an allowable claim.	21
37 CFR § 41.102. Whether an interference in fact exists is simply not	22
considered until after examination is complete and the claims are allowable.	23
The holding that McGall’s claims are unpatentable does not establish	24
no interference-in-fact.	25
of both priority and patentability (Perkins v. Kwon, 886 F.2d 325 (Fed. Cir.
1989).

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Barany also argues that McGall is no longer an impediment to the	1
issuance of a patent to Barany under 35 U.S.C. § 102(g).	2
Section 102(g) in relevant part states:	3
A person shall be entitled to a patent unless - . . . (g)(1)	4
during the course of an interference . . . another inventor	5
involved therein establishes. . .that before such person's	6
invention thereof the invention was made by such other	7
inventor and not abandoned, suppressed, or	8
concealed, . . . .	9
10
McGall’s benefit application is a conception and constructive reduction to	11
practice of everything described and enabled in the specification. See	12
Stevens v. Tamai, 366 F.3d 1325,1330-31 (Fed. Cir. 2004); Hyatt v. Boone,	13
146 F.3d 1348, 1352 (Fed. Cir. 1998); Kawai v. Metlesics, 480 F.2d 880,	14
885-86 (CCPA 1973). McGall’s accorded benefit date is earlier than	15
Barany’s effective filing date. Thus, McGall is the presumptive first	16
inventor of the subject matter described and enabled in McGall’s patent.	17
37 CFR § 207(a).	18
Barany has not established, in this interference proceeding, that it	19
made the invention of the count before McGall’s date of invention, i.e.,	20
McGall’s accorded filing date, as required by 35 U.S.C. § 102(g). Barany’s	21
ex parte submissions under 37 CFR § 1.608(b) (2002) (Application	22
09/986,527, Showing by Applicant under 37 CFR § 1.608(b), filed January	23
28, 2002) were sufficient to have the interference declared and avoid	24
summary judgment under 37 CFR § 1.617 (2002). However, Barany has not	25
yet submitted proofs that meet the requirements of the current interference	26
rules. Additionally, McGall has not had an opportunity to cross examine	27
Barany’s witnesses or to submit proofs of his own.	28

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McGall’s patent has not been removed as an impediment to the	1
issuance of Barany’s claims under 35 U.S.C. § 102(g).	2
Barany also asserts that the interference should be terminated because	3
McGall has not meaningfully participated in the interference.	4
Barany is correct to the extant that McGall has not substantively	5
participated. However, as long as McGall complies with procedural	6
requirements of the board, he doesn’t have to take any additional action,	7
including filing motions or oppositions. The status quo of the interference is	8
presumptively correct. A party wishing to change the status quo must file a	9
motion and show why the status quo should be changed. In other words, the	10
movant has the burden of proving entitlement to the relief requested.	11
37 CFR § 41.121(b). That burden must be met whether or not the motion is	12
opposed. The status quo of this interference is that McGall is the	13
presumptive first inventor of the subject matter of the count and remains so	14
until such time as Barany proves otherwise.	15
The circumstances of this interference favor proceeding to the priority	16
phase.	17
Order	18
Barany’s request to terminate this interference with a judgment on	19
priority against McGall is denied.	20
This interference shall proceed to the priority phase on the schedule	21
set in Paper 54, p. 3.	22

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On or before March 9, 2009, or within fourteen days of the filing of	1
Barany’s motion for priority, which ever is later, McGall shall file a paper	2
advising the board if it intends do any of the following: (1) cross-examine	3
Barany’s witnesses; (2) file its own motion for priority or (3) file an	4
opposition to Barany’s priority motion.	5
/Richard E. Schafer/
Administrative Patent Judge
cc (via electronic filing):
Counsel for McGall
Oliver R. Ashe, Jr., Esq.
Jill M. Browning, Esq.
ASHE, P.C.
11440 Isaac Newton Sq. North
Suite 210
Reston, VA 20190
Tel.: (703) 467-9001
Fax: (703) 467-9002
E-mail: oashe@ashepc.com
Counsel for Barany
Michael L. Goldman, Esq.
Nixon Peabody LLP
1300 Clinton Square
Rochester, NY 14604
Tel: 585-263-1000
Fax: 585-263-1600
E-mail: mgoldman@nixonpeabody.com