Ex parte Shaw

Informative decision only: persuasive authority, not binding precedent. When the Board has entered a merits decision in an interference and the applicant's 35 U.S.C. § 146 civil action seeking review was dismissed (the time for appeal having expired) so that the Board's judgment was undisturbed, the Board may apply issue preclusion against the applicant in a later ex parte appeal on the same issue (here, lack of enablement). The applicant's later telephone calls and ex parte letters to court personnel do not undo the dismissal, and the applicant's lack of diligence, together with prejudice to the public, supports the Board's discretion to apply preclusion rather than re-decide the issue on asserted "new evidence." No prior precedent directly addressed this issue in the text; the Board here adheres to and elaborates on its original decision (Paper 94), which relied on Deckler for estoppel based on a Board decision, and it corrects an erratum about how the Deckler civil action was dismissed. For the examiner or opposing side, an undisturbed interference merits judgment can foreclose re-litigation of the same ground of unpatentability, such as non-enablement, in ex parte prosecution. For the applicant, a dismissed § 146 action is no shield: the applicant must promptly file and serve an inter partes motion to vacate the dismissal, and informal inquiries to the clerk's office will not suffice. The Board relied on United States v. Utah Construction & Minins Co., 384 U.S. 394, 421, 86 S.Ct. 1545, 1559-60 (1966), and Astoria Federal Savinqs and Loan Assln. v. Solimino, 501 U.S. 104, 107, 111 S.Ct. 2166, 2169 (1991), as cited in the decision, for the proposition that an unreviewed administrative adjudication can support issue preclusion. LEGAL TEST OR STANDARD: The Board found it apparent that (1) there has been an administrative adjudication by the board on the merits, (2) the adjudication was not disturbed on judicial review and (3) the administrative adjudication is sufficient to support application of issue preclusion. Application of issue preclusion is then discretionary, and the Board weighed the equities, including the applicant's diligence and prejudice to the public. TRIGGERING FACTS: Interference 100,775 ended in an adverse Board merits decision (5 August 1986) holding the claimed apparatus not enabled. The applicant sought § 146 review in the Northern District of California, and that civil action was dismissed (administratively) and the appeal time expired. Applicant's counsel learned of the dismissal by 2 May 2000 but filed no motion to vacate it, even by 2005. The patent at issue in the interference expired, and the Board found the proffered new witnesses were available during the interference. KEY QUOTE: "At the end of the day all the phone calls (whether returned or not) and letters have not changed the fact that the civil action stands dismissed." (Paper 109, p. 12) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board follows its original decision (Paper 94), cites United States v. Utah Construction & Minins Co., 384 U.S. 394, 421, 86 S.Ct. 1545, 1559-60 (1966), and Astoria Federal Savinqs and Loan Assln. v. Solimino, 501 U.S. 104, 107, 111 S.Ct. 2166, 2169 (1991), and corrects its description of the dismissal in Deckler. PRACTICE TIP: If a § 146 action seeking review of an adverse interference judgment is dismissed, promptly file and serve an inter partes motion in the district court to vacate the dismissal. Do not rely on calls or ex parte letters to court staff, and do not expect new evidence from witnesses who were available during the interference to defeat issue preclusion.