Wolf v. Tomalia

When a patent involved in an interference is also the subject of a pending ex parte reexamination, the Board will not stay the interference, fold the reexamination into it, or let the opposing party contest the reexamined claims inter partes there. It may enter judgment on the claims designated as corresponding to the count and leave the opposing party to ask the Primary Examiner for a new interference if a reexamination certificate issues with claims directed to the same patentable invention. The opposing party's request that reexamination-amended claims be designated as corresponding to the count is premature, because it is not known whether any claim will survive. No prior precedent directly addressed this issue; the opinion notes only an arguable tension between interference and reexamination law and regulations. For the interference opponent (here the senior party Tomalia), a stay or an inter partes fight over the amended reexamination claims is unavailable. Tomalia gets judgment and must wait, then request a new interference from the Primary Examiner against any reexamined patent. Tomalia may rely on arguments and evidence not considered in the reexamination, and it may file a reissue application if its own application issues first. For the patent owner (Wolf), filing a reexamination request is lawful, and the interference proceeds to judgment against it on the involved claims without reexamination-claim litigation in the interference. Wolf remains estopped under 37 CFR § 1.658(c) and must obtain claims patentable over the count and the Tomalia patent. The Board relied on Syntex (U.S.A.) Inc. v. U.S. Patent and Trademark Office, 882 F.2d 1570 (Fed. Cir. 1989), for the absence of third-party judicial review of reexamination. It also relied on Ethicon, Inc. v. Quigg, 849 F.2d 1422 (Fed. Cir. 1988), on special dispatch. LEGAL TEST OR STANDARD: No multi-factor test. The Board reasoned that reexamination is ex parte under 35 U.S.C. § 305 and 37 CFR § 1.550(e)(1), so a third party cannot protest it inter partes. It found no legal authority to incorporate a reexamination into an interference, because doing so would (1) probably run afoul of the 'special dispatch' provisions of the reexamination statute given the lengthy nature of interference proceedings and (2) shift responsibility for conducting the reexamination away from the Primary Examiner to the board. It entered judgment as a matter of discretion, without prejudice to a later interference. TRIGGERING FACTS: Wolf's patent claims 1-7 and 11-12 were designated as corresponding to the sole count. Wolf filed a reexamination request (Control No. 90/005,134) on October 1, 1998, before the interference was declared on December 16, 1998. The reexamination was pending before the Primary Examiner. Wolf conceded a priority judgment could be entered against it on the involved claims, and it did not seek a reexamined patent containing those claims. In its patent owner's statement it proposed amended claims. Tomalia sought a stay and a chance to move to designate any surviving reexamined claims as corresponding to the count. Wolf did not dispute that the Tomalia patent is prior art. KEY QUOTE: "On balance, the better course is to terminate this interference with entry of a judgment against Wolf--a judgment to which Wolf has no objection." (Paper 23, p. 11) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board cited Syntex (U.S.A.) Inc. v. U.S. Patent and Trademark Office, 882 F.2d 1570, 11 USPQ2d 1866 (Fed. Cir. 1989), and Ethicon, Inc. v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988), as supporting authority. It said to compare Pritchard v. Loughlin, 361 F.2d 483, 149 USPQ 841 (CCPA 1966). PRACTICE TIP: Do not ask the Board to stay an interference for a pending reexamination or to address reexamination-amended claims in the interference. Instead, preserve the right to a later interference. If you are the opposing party, be ready to request one from the Primary Examiner once a reexamination certificate issues. Support the request with arguments and evidence not considered in the reexamination, and consider a reissue application if your own application may issue first.