California Institute of Technology v. Enzo Life Sciences, Inc.

Informative decision only: persuasive authority, not binding precedent. When a judgment has been entered in an interference and an involved file is open to the public under 37 C.F.R. § 1.11 (here, an involved issued patent), Board Rule 6(b)(2) makes the interference record public even though another involved application is unpublished and confidential under 35 U.S.C. 122(a). The Board therefore will not remove the record from its web portal or other public forums at that application owner's request, and staff do not abuse their authority by publishing it. No prior precedent directly addressed this issue. For the opposing party in an interference, the practical effect is that once judgment issues, the record becomes public, which includes the briefing and evidence, if the other side's patent is involved, so the record cannot be kept confidential just because the opponent's own application was secret. For a senior party with an unpublished application, such as Enzo, a motion to remove the record from the public portal will fail, and the party should expect its involved application's record to be disclosed after judgment. The Board relied on its own rules (Bd.R. 6(b), 37 C.F.R. § 1.11) and the statute, 35 U.S.C. 122(a), and cited Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806 (1945), only as historical background on interference abuses, not as binding authority for the holding. LEGAL TEST OR STANDARD: Bd.R. 6(b)(1) makes the record of a Board proceeding public unless a patent application not otherwise available to the public is involved. Under Bd.R. 6(b)(2), notwithstanding that exception, after a final Board action or judgment the record is made public if any involved file is or becomes open to the public under 37 C.F.R. § 1.11, or an involved application is or becomes published under §§ 1.211 to 1.221. The Board read this against the exceptions in 35 U.S.C. 122(a), including the Director's special-circumstances determination. TRIGGERING FACTS: Enzo's involved application (filed 7 June 1995) was unpublished and not otherwise available. CIT's involved patent issued on 13 October 1998. Judgment was entered on 22 September 2010 against Enzo on the sole count. After judgment, the patent's involvement opened the record. A party would fall outside the rule only if no involved patent or published application existed, or if judgment had not yet been entered. KEY QUOTE: "Board support staff did not abuse their authority in publishing the record for this interference after judgment was entered." (Paper 126, p. 10) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board distinguished Standard Operating Procedure 2 (Publication of opinions and binding precedent, rev. 7, 2008), saying it addresses final opinions generally, is grounded on § 122(a), does not overturn Bd.R. 6(b), and creates no legally enforceable rights. PRACTICE TIP: Do not move to remove or seal a post-judgment interference record on the ground that your own application is unpublished if an involved patent exists. Address the effect of the other party's patent under Bd.R. 6(b)(2) and 37 C.F.R. § 1.11. Treat all filings as likely to become public after judgment.