Strelchenko v. Campbell

Informative decision only: persuasive authority, not binding precedent. When a party moves under 37 CFR § 1.633(a) to hold an opponent's claims barred under 35 U.S.C. § 135(b) by reference to a patent that is not involved in the interference, the Board need not treat the motion as a threshold issue and need not expedite it. Because the purpose of § 135(b), protecting a patentee from an interference, is not implicated and granting the motion would not terminate the interference, the motion is handled like a "mere" patentability motion on the ordinary preliminary-motion schedule. No prior Board precedent is named; the decision distinguishes the Federal Circuit's Berman v. Housey, Appeal No. 01-1311 (Fed. Cir., May 29, 2002), which held § 135(b) to be a threshold issue, and confines it to its facts. For the party asserting the bar, such as Campbell, a § 135(b) motion based on a non-involved patent will not get expedited, threshold treatment, and it will proceed with the other preliminary motions. For the party facing the bar, such as Strelchenko, the claims stay in the interference and the motion is not decided ahead of other issues. The Board treated Berman as binding but distinguishable on its facts, citing In re Berger, 279 F.3d 975 (Fed. Cir. 2002), on the purpose of § 135(b) and FMC Corp. v. Manitowoc Co., 835 F.2d 1411 (Fed. Cir. 1987), on not misapplying precedent to materially different facts. LEGAL TEST OR STANDARD: No multi-factor test is stated. The Board asked whether the fundamental purpose of § 135(b), to protect the patentee from being involved in an interference, is implicated, and whether an early decision is necessary to protect the patentee from having to prosecute the interference. It also asked whether granting the motion would terminate the interference. Berman's rule that § 135(b) is a threshold issue was applied according to the precise facts before the court. TRIGGERING FACTS: Campbell moved under 37 CFR § 1.633(a) to hold all of Strelchenko's involved claims barred under § 135(b)(1) because they were not made within one year of the issuance of the Stice patent. The Stice patent was not involved in this interference. The movant was an applicant, not a patentee in the interference. Granting the motion would not necessarily keep Stice from defending an interference and would not terminate this one. The Board had earlier expedited the motion. KEY QUOTE: "Under the particular facts of this case, Campbell's motion is more akin to a "'mere' patentability issue," than to an application of a statute of limitation or repose in favor of Stice." (Paper 26, p. 3) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The decision distinguishes Berman v. Housey, Appeal No. 01-1311 (Fed. Cir., May 29, 2002), which it calls binding. It also relies on In re Berger, 279 F.3d 975, 982, 61 USPQ2d 1523, 1527 (Fed. Cir. 2002), quoting Corbett v. Chisholm, 568 F.2d 759, 765, 196 USPQ 337, 342 (CCPA 1977), and on FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1417 n.12 (Fed. Cir. 1987). PRACTICE TIP: If your § 135(b) motion rests on a patent that is not involved in the interference, do not expect expedited or threshold treatment under Berman. Prepare to file the motion and any opposition or reply on the ordinary preliminary-motion schedule, and argue from the facts that the patentee's repose interest is actually at stake if you want it decided first.