Kaufman v. Talieh

Informative decision only: persuasive authority, not binding precedent. When a settlement agreement filed with a joint request to terminate an interference contains a paragraph in which the junior party concedes priority to the senior party on the claims involved in the interference, the Board may construe that paragraph to be a request for adverse judgment pursuant to 37 CFR §41.127(b)(3) [formerly 37 CFR §1.662(a)] and grant it. The Board then enters judgment on priority against the conceding party on the count, and the concession does not negate interference estoppel under 37 CFR §41.127. No prior precedent directly addressed this issue; the decision cites no earlier Board decision. For the opposing party in an interference (here the senior party), a settlement clause conceding priority yields an adverse judgment against the other side without a separate motion, so a clear concession is enough to obtain judgment. For the conceding party (here the junior party, whose patent claims 1-28 were at issue), the concession is treated as a binding request for adverse judgment: the party is held not entitled to a patent containing those claims, and interference estoppel still applies. The decision cites no Federal Circuit, CCPA or Supreme Court authority; it relies only on the Board's rules. LEGAL TEST OR STANDARD: The Board stated no multi-factor test. It construed the settlement paragraph conceding priority as a request for adverse judgment pursuant to 37 CFR §41.127(b)(3) [formerly 37 CFR §1.662(a)] and granted it. It also noted that 37 CFR §41.205(c) [formerly 37 CFR §1.666(b)] governs settlement agreements and requests to keep them separate from the interference file. TRIGGERING FACTS: The parties filed Paper 21, a joint request terminating the interference with a contingent stipulation to extend a deadline. The enclosed settlement agreement, paragraph 2, said the junior party concedes priority with respect to the patent claims over its patent, that priority is to be granted to the senior party's application, and that the concession is limited to claims 1-28 of the junior party's patent, the claims subject to the interference. KEY QUOTE: "This paragraph is construed by the Board to be a request for adverse judgment pursuant to 37 CFR §41.127(b)(3) [formerly 37 CFR §1.662(a)]." (Paper 23, p. 2) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: When settling an interference, assume that a priority-concession clause will be treated as a request for adverse judgment and granted, with estoppel under 37 CFR §41.127 still applying. Also assume that a settlement agreement forming an integral part of a joint request stays in the interference file, so do not expect to keep it separate under 37 CFR §41.205(c) in that situation.