Barany v. McGall

Informative decision only: persuasive authority, not binding precedent. When all of a senior-party patentee's claims have been held unpatentable but the junior-party applicant has not yet proven it invented the count's subject matter before the patentee's accorded benefit date, the Board need not terminate the interference and may proceed to the priority phase, because unpatentability does not establish no interference-in-fact, does not remove the patent as a 35 U.S.C. § 102(g) impediment, and the patentee's non-participation does not shift the movant's burden. Termination without reaching priority is reserved for situations such as no interference-in-fact, a § 135(b) bar, or lack of written description support for claims added to provoke the interference. No prior precedent directly addressed this issue in the text; the Board relied on its rules, 37 CFR § 41.104(a) and § 41.201, and case-by-case discretion. For the junior-party applicant, winning an unpatentability motion against every patentee claim does not end the interference; it must still prove priority by showing invention before the patentee's accorded benefit date, and cannot rely on its ex parte § 1.608(b) showing, which only got the interference declared. For the patentee, silence is not forfeiture: so long as it complies with Board procedural requirements, it need not file motions or oppositions, and the status quo that it is the presumptive first inventor stands until the movant proves otherwise. The Board cited Stevens v. Tamai, 366 F.3d 1325 (Fed. Cir. 2004), Hyatt v. Boone, 146 F.3d 1348 (Fed. Cir. 1998), and Kawai v. Metlesics, 480 F.2d 880 (CCPA 1973) for the benefit application serving as constructive reduction to practice, and listed Federal Circuit interference cases showing resolution on varied grounds. LEGAL TEST OR STANDARD: The Board has broad discretion under 37 CFR § 41.104(a) and decides case by case. The rules identify three narrow threshold issues that may end an interference without reaching priority: (1) no interference-in-fact; (2) where a party-applicant's interfering claims are barred by the opponent's patent claims under 35 U.S.C. § 135(b); and (3) where an applicant adds claims to provoke an interference and the added claims do not have written descriptive support. Other situations may also warrant discretionary termination, for example where all of a junior-party patentee's claims are unpatentable. TRIGGERING FACTS: Barany's enablement motion was granted and all of senior party McGall's patent claims were held unpatentable; the interference was redeclared with a new count and McGall was ordered to show cause. McGall had an earlier accorded benefit date (May 10, 1995 versus February 9, 1996), Barany had submitted only ex parte § 1.608(b) showings, no priority proofs under current rules, no cross-examination had occurred, and McGall had not substantively participated but complied with procedure. KEY QUOTE: "The status quo of this interference is that McGall is the presumptive first inventor of the subject matter of the count and remains so until such time as Barany proves otherwise." (Paper 59, p. 7) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board cited Berman v. Housey, 291 F.3d 1345 (Fed. Cir. 2002), Noelle v. Lederman, 355 F.3d 1343 (Fed. Cir. 2004), In re Sullivan, 362 F.3d 1324 (Fed. Cir. 2004), and Perkins v. Kwon, 886 F.2d 325 (Fed. Cir. 1989) in a footnote as examples of interferences resolved on varying grounds. PRACTICE TIP: If you are the junior party and have won unpatentability of all of the senior party's claims, do not expect judgment without priority; prepare a full priority motion with proofs meeting the current interference rules, and do not argue no interference-in-fact from unpatentability, since the test under 37 CFR § 41.203(a) does not depend on patentability.