Noelle v. Armitage

Informative decision only: persuasive authority, not binding precedent. When, at the close of decisions on preliminary motions, one party has no patentable claims corresponding to the count and priority has been developed no further than a preliminary statement, the Board has authority but is not compelled to proceed to a priority phase, and may terminate the interference by weighing at least three non-dispositive factors: which party has the benefit of the earliest application, what efforts the party without patentable claims made to preserve patentable claims corresponding to the count, and how strong that party's evidence of prior invention is. The Board expressly disclaimed any general rule of decision, stating that each case turns on its own facts. No prior Board precedent directly addressed this issue; the Board said that precedent gave no clear answers and that cases such as Perkins v. Kwon and Rexam were not on all fours, because there priority had been fully developed and presented. For the party that prevailed on a patentability motion, the decision means it can argue that the junior party should not get a priority phase, provided the other party made no effort to preserve patentable claims and has weak priority evidence. For the party with no patentable claims, a priority phase is not a matter of right under 35 U.S.C. 135(a); it should file a contingent motion under 37 CFR 1.633(i) to redefine the count with narrower claims, and should raise any claim-correspondence issue in a timely preliminary motion, or it risks judgment and estoppel under 37 CFR 1.658(c). The Board relied on Berman v. Housey, 291 F.3d 1345 (Fed. Cir. 2002), which read Perkins as giving the Board authority, not an obligation, to reach priority after a dispositive ruling, and on Perkins v. Kwon, 886 F.2d 325 (Fed. Cir. 1989), and Rexam Indus. Corp. v. Eastman Kodak Co., 182 F.3d 1366 (Fed. Cir. 1999). LEGAL TEST OR STANDARD: When confronted with a situation at the close of decisions on preliminary motions in which one party has no patentable claims that correspond to the count, at least three factors guide whether to continue, and no one factor is necessarily dispositive: Which party has been accorded for priority the benefit of the earliest application? What efforts has the party without patentable claims made to preserve patentable claims corresponding to the count? How strong is the evidence that that party has presented supporting its case of prior invention of an embodiment within the scope of the count? Other considerations include the parties' status and relative positions, whether the interference was provoked, and the parties' actions and constraints in the proceeding. TRIGGERING FACTS: All of the junior party's claims designated as corresponding to the count were held unpatentable for lack of enablement under 35 U.S.C. 112, first paragraph. Priority had not been developed beyond a preliminary statement, with no testimony, cross examination, evidence or argument. Both parties were applicants and neither copied the other's claims. The junior party filed no contingent motion under 37 CFR 1.633(i) and did not seek to redefine the count. Its preliminary statement proffer was two unsigned, unwitnessed notebook pages that did not identify the experiment or results. KEY QUOTE: "Thus, Perkins authorizes but does not compel the Board to address priority, even if patentability is dispositive, and vice-versa." (Paper 89, p. 11) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The Board distinguished Perkins v. Kwon, 886 F.2d 325 (Fed. Cir. 1989), and Rexam Indus. Corp. v. Eastman Kodak Co., 182 F.3d 1366 (Fed. Cir. 1999), as cases where priority was fully developed, and followed Berman v. Housey, 291 F.3d 1345 (Fed. Cir. 2002), in reading them as conferring authority rather than a duty. PRACTICE TIP: If a patentability motion threatens all of your claims corresponding to the count, file a contingent motion under 37 CFR 1.633(i) in Time Period 2 to add or redefine narrower, supported claims, and raise any claim-correspondence issue by timely preliminary motion; do not assume a priority phase will follow. Also hold a conference call before filing any unscheduled motion, as the standing order requires.