Sauer, Inc. v. Kanzaki Kokyukoki Mfg.

When adding a patent to a pending interference would result in a patent versus patent conflict, the Board lacks jurisdiction under 35 U.S.C. § 135(a) to add it, even if one party also has an involved application claiming the same invention. Such an addition is treated as declaring a patent versus patent interference and merging it into the existing one. Alternatively, 37 CFR § 1.642 makes adding a patent discretionary ("may add"), and the Board may decline to add it to keep the interference simple, speedy and inexpensive. The decision follows JD v. SH, a trial section precedential decision holding that the Board will not add a patent to an ongoing interference where the opposing party is involved only through patents, and it extends that rule to the case where the other side has a patent and an application. For the party seeking to add the patent, here the patentee Sauer, a 37 CFR § 1.635/1.642 motion cannot bring an opponent's patent into the interference when the addition creates a patent versus patent conflict. The remedies are a civil action under 35 U.S.C. § 291 or a separate interference based on a pending application. For the owner of the patent sought to be added, the patent stays outside the interference, and the owner cannot be forced into Board adjudication of a conflict with another patent. The Board relied on Ewing v. United States ex rel. The Fowler Car Co., 244 U.S. 1 (1917), on the Commissioner's discretion over declaring interferences, and on Thomas Jefferson University v. Shalala, 512 U.S. 504 (1994), for deference to an agency's reading of its own regulations. LEGAL TEST OR STANDARD: Jurisdiction: 35 U.S.C. § 135(a) makes the pendency of an application a predicate to an interference, and the Board cannot declare or conduct a patent versus patent interference. Where the addition of a patent results in a patent versus patent conflict, the Board also lacks jurisdiction to add it. Discretion: under 37 CFR § 1.642 the administrative patent judge "may add the application or patent to the interference on such terms as may be fair to all parties." The Board weighed 37 CFR § 1.601 (just, speedy, and inexpensive determination of "every interference"), the waste of Board resources, and the availability of other remedies. TRIGGERING FACTS: The interference was between Sauer's patent and Kanzaki's application. Sauer moved under 37 CFR § 1.635/1.642 to add two other Kanzaki patents claiming the same subject matter. Adding them would create a conflict between Sauer's patent and Kanzaki's patents. Sauer argued that Kanzaki's involved application took the case out of the patent versus patent category. The Board said a reissue application substituted for an involved patent is different, because the problem is the addition of an issued patent. KEY QUOTE: "where we lack the jurisdiction to declare a patent versus patent interference, we also lack jurisdiction to add a patent to an existing interference such that the addition results in a patent versus patent interference." (Paper 147, p. 8) PRIOR PRECEDENT AFFECTED: Follows JD v. SH, a trial section precedential decision (www.uspto.gov/web/offices/dcom/bpai/its/104044.pdf), and declines Sauer's request to overrule it. Treats the Board opinion in Wu v. Wang, noted in Winner Int. Royalty Corp. v. Wang, 202 F.3d 1340 (Fed. Cir. 2000), as non-binding. Also relies on Theeuwes v. Bogentoft, 2 USPQ2d 1378 (Comm'r Pats. 1986), for the discretionary nature of 37 CFR § 1.642. PRACTICE TIP: Do not move under 37 CFR § 1.635/1.642 to add an opponent's patent where doing so would create a patent versus patent conflict. Plan on a civil action under 35 U.S.C. § 291 or a separate interference based on your own pending application. Any motion that does seek an addition should set out its substantive analysis in the motion itself, because the Notice Declaring Interference barred incorporating arguments by reference to another paper such as a declaration.