Rohrman v. Alt

Informative decision only: persuasive authority, not binding precedent. When a party moves under 37 CFR § 1.633(c)(3) to have an opponent's claim designated as corresponding to a count, and that claim is directed to the same patentable invention as a claim of the movant that is not itself a timely-presented claim, satisfying the procedural showing of 37 CFR § 1.637(c)(3)(ii) is not enough. The movant must also comply with 35 U.S.C. § 135(b) by showing it timely presented a claim to the same or substantially the same invention, and the Board will not search the record to supply that showing. No prior precedent directly addressed this issue in the text of the decision; the Board reasoned from the statute and the rules, and stated that the rules should not be read in a vacuum. For the opposing party seeking to bring in an additional claim, a Rule 637(c)(3)(ii) showing of same patentable invention will not suffice if the § 135(b) one-year period after the patent issued has run without a timely claim to that invention. The movant must affirmatively show and document timeliness in its motion. For the party whose claim is targeted, the decision supplies a statutory defense to indirect involvement of its claims long after the § 135(b) bar. It also preserves its right to contest priority on any broader count. The Board cited no binding Federal Circuit, CCPA or Supreme Court authority for this point; it cited only district court, regional circuit and Board decisions, as to the Board declining to search the record. LEGAL TEST OR STANDARD: Under 37 CFR § 1.637(c)(3)(ii), a movant seeking to have a claim designated as corresponding to a count must 'show that the claim defines the same patentable invention as another claim whose designation as corresponding to the count the moving party does not dispute.' The Board added that the rules must be interpreted consistent with the statute, so the movant must also comply with 35 U.S.C. § 135(b) by showing it timely presented a claim directed to the same, or substantially the same, invention as the targeted claim. TRIGGERING FACTS: Alt moved under 37 CFR § 1.633(c)(3) to designate Rohrmann claim 5 (a method of making a metallocene) as corresponding to Count 2 (methods of polymerizing an olefin). Alt relied on its claim 101, a two-step process that includes making the metallocene. Alt had not shown that, within one year of issuance of the Rohrmann patent, it attempted to amend its application to add a claim to a method of making the metallocene. Rohrmann had conceded priority on Count 2 but not on subject matter as broad as claim 5. KEY QUOTE: "Alt has made no reasonable attempt to show that it timely presented a claim directed to the same, or substantially the same, invention as that defined by Rohrmann claim 5." (Paper 21, p. 6) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board cited Clintec Nutrition Co. v. Baxa Corp., 44 USPQ2d 1719, 1723 n.16 (N.D. Ill. 1997), Ernst Haas Studio, Inc. v. Palm Press, Inc., 164 F.3d 110 (2d Cir. 1999), and Bamberger v. Cheruvu, 55 USPQ 1523, 1537 (Bd. Pat. App. & Int. 1998), only by 'Cf.' for declining to search the record. PRACTICE TIP: When moving to add an opponent's claim to an interference, do not rely only on the Rule 637(c)(3)(ii) same-patentable-invention showing. Expressly show, with record citations, that you presented a claim to the same or substantially the same invention within the 35 U.S.C. § 135(b) period, because the Board will not search the record for you.