Karim v. Jobson

Informative decision only: persuasive authority, not binding precedent. When an interference has been resolved against a party on priority and on unpatentability grounds that answer the Examiner's "yes" or "no" question (do the patent claims stand in the way of issuing a patent to the applicant?), the Board may, as a matter of case-management discretion under 35 U.S.C. § 135(a) and 37 C.F.R. § 41.125(a), enter judgment without deciding all briefed patentability motions and leave the remaining issues to the Examiner on resumed ex parte prosecution. Federal Circuit decisions (Perkins, Wu, Schulze) do not require the Board to decide every fairly raised and fully briefed patentability issue. No prior precedent directly addressed this issue in the text; the Board instead reads Perkins v. Kwon, Wu v. Wang and Schulze v. Green narrowly, as not requiring that every briefed issue be decided, and relies on Berman v. Housey and In re Sullivan as confirming Board discretion. For the losing party in an interference, which here sought judgment of unpatentability against the senior party, the decision means a fully briefed patentability motion against the opponent may be dismissed without prejudice or deemed moot, and the party has no inherent right to participate in later ex parte examination as though it were a pre-grant opposition. For the winning applicant, the decision means it still faces examination, with no estoppel under 37 C.F.R. § 41.127(a) because it did not lose, and it may amend claims in response to any rejection by the Examiner. The Board relied on Federal Circuit authority including Berman v. Housey, 291 F.3d 1345 (Fed. Cir. 2002), which found no abuse of discretion in declining a patentability motion, and In re Sullivan, 362 F.3d 1324 (Fed. Cir. 2004), which found no abuse of discretion in referring an issue to the Examiner. LEGAL TEST OR STANDARD: The Board treats the choice of which issues to decide, and in what order, as case-by-case discretion: "What issues are decided, and in what order, manifestly depends on a case-by-case analysis." 37 C.F.R. § 41.125(a) (2006). Factors discussed: whether the Examiner's yes/no question has been answered; efficiency and the just, speedy and inexpensive resolution under 37 C.F.R. § 41.1(b); the advantage of Examiner consideration in the more efficient ex parte process, with the presumption that examiners perform their duties correctly; possible additional patent term adjustment under 35 U.S.C. § 154(b)(1)(C)(i); and the running of patent term where a terminal disclaimer has set the term. TRIGGERING FACTS: The Board had held all involved claims of the losing party (Karim) unpatentable over the prior art (claim 1) or for lack of enablement (remaining involved claims), and had also decided priority against Karim, a belt-and-suspenders result. The remaining motions were Jobson's unpatentability motion (moot), Karim's written description and enablement motions against Jobson (denied in part, otherwise dismissed without prejudice) and Karim's prior art motion against Jobson (dismissed without prejudice). Jobson had filed a terminal disclaimer, so patent term adjustment was not a concern, and the prior art and specifications were not identical as between the parties. KEY QUOTE: "What issues are decided, and in what order, manifestly depends on a case-by-case analysis." (Paper 99, p. 6) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The Board distinguishes or narrowly reads Perkins v. Kwon, 886 F.2d 325 (Fed. Cir. 1989), Wu v. Wang, 129 F.3d 1237 (Fed. Cir. 1997), and Schulze v. Green, 136 F.3d 786 (Fed. Cir. 1998), and follows Berman v. Housey, 291 F.3d 1345 (Fed. Cir. 2002), and In re Sullivan, 362 F.3d 1324 (Fed. Cir. 2004). PRACTICE TIP: Do not assume that fully briefing a patentability motion against your opponent obligates the Board to decide it. If you lose on priority or unpatentability, expect the motion to be dismissed without prejudice and raise the issues with the Examiner. Argue specific reasons, such as differing prior art or specifications, why the Board should decide the issue rather than defer it.