Rohr v. McNulty

Informative decision only: persuasive authority, not binding precedent. When an interference party moves under 37 C.F.R. § 1.633(c)(2) to add claims corresponding to the count and complies with the terms of 37 C.F.R. § 1.637, the Board is not required to grant the motion, because mere compliance with a rule does not entitle the movant to relief. The Board may exercise its discretion to dismiss the motion without prejudice, in light of the mandate to secure "the just, speedy, and inexpensive determination of every interference" (37 C.F.R. § 1.601), where the movant has not shown that it needs the claims for the priority contest or is disadvantaged by dismissal. No prior precedent directly addressed this issue beyond the Board's own earlier statement in Hillman v. Shyamala, which the decision cites for the point that mere compliance with a rule's terms does not entitle a movant to relief. For the opposing party, here Rohr, the decision means a motion to add claims can be resisted on the ground that adjudicating them adds complexity, time and expense without advancing the priority contest. For a movant, here McNulty, compliance with § 1.637 only avoids dismissal for procedural infirmities; the movant must show a real need for the claims in the priority contest or prejudice from leaving them to ex parte examination, and a showing of delay in obtaining a patent is not enough. The decision relies on Merck v. Kessler, 80 F.3d 1543 (Fed. Cir. 1996), for the proposition that former 35 U.S.C. § 6 did not provide substantive rulemaking authority, which supports treating the interference rules as procedural. LEGAL TEST OR STANDARD: No multi-factor test is stated. Mere compliance with the terms of a rule does not entitle the movant to the relief sought (Hillman v. Shyamala). Compliance with § 1.637 only assures a motion will not be dismissed for procedural infirmities. The Board weighs whether granting the motion would better meet the mandate that "[t]his subpart shall be construed to secure the just, speedy, and inexpensive determination of every interference" (37 C.F.R. § 1.601), and whether the movant showed need for the claims in the priority contest or disadvantage from dismissal. TRIGGERING FACTS: McNulty provoked the interference by filing an RCE with claims substantially copied from Rohr's patent plus a request for interference, and could have submitted additional claims then. Its preliminary motion 2 to add claims under § 1.633(c)(2) was dismissed without prejudice. To the extent the motion responded to Rohr's prior-art motion, that motion had been denied, which removed that basis. McNulty did not show it needed the claims for priority against Rohr, or that it was disadvantaged, and could still seek the claims ex parte if it prevails on priority. KEY QUOTE: "Mere compliance with the terms of a rule does not entitle the movant to the relief sought." (Paper 39, p. 3) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The decision follows Hillman v. Shyamala, 55 USPQ2d 1220, 1221 (Bd. Pat. App. & Interf. 2000), and cites Merck v. Kessler, 80 F.3d 1543, 1549-50, 38 USPQ2d 1347, 1351 (Fed. Cir. 1996), on the lack of substantive rulemaking authority under former 35 U.S.C. § 6. PRACTICE TIP: Do not rely on rule compliance alone when moving to add claims in an interference. Present the claims with the original interference request where possible, and show concretely why the claims are needed for the priority contest or how dismissal prejudices the party, rather than pointing to delay in ex parte prosecution.