Han v. Livak

Informative decision only: persuasive authority, not binding precedent. Under 35 U.S.C. § 135(a), which says the Board "may determine questions of patentability," the Board may decline to decide a fairly raised patentability motion, here a § 135(b) motion, once a final judgment of no interference-in-fact is entered. In that situation the movant is only a third-party protester. Where the parties claim the same patentable invention, patentability generally should be decided if it is fairly, timely and otherwise properly raised. Perkins v. Kwon dicta had been read too broadly to mean the Board must decide patentability whenever it is raised, fully briefed and supported by evidence. This decision treats that dicta as inapplicable where there is no interference-in-fact. It also disagrees with Fiddes v. Baird in part and says Gustavsson v. Valentini would not be decided the same way today. For the party attacking patentability, here the patentee Livak, a no interference-in-fact win does not guarantee a ruling on its patentability or § 135(b) motions, and it is treated as a third-party protester without standing to oppose the grant of a patent. For the applicant, Han, the interference ends, ex parte prosecution resumes with lower costs, and the patentee's claims are declared no impediment to a patent. The Board relied on Perkins v. Kwon, Schulze v. Green, Nitz v. Ehrenreich, In re McGrew and Animal Legal Defense Fund v. Quigg, and treated the Perkins statement as non-binding dicta. LEGAL TEST OR STANDARD: Section 135(a) says the Board "shall determine questions of priority of the inventions and may determine questions of patentability." Where two parties claim the same patentable invention, patentability generally should be decided if the issue is fairly (motion filed and served, with full opportunity to oppose), timely (filed when the Board authorized motions) and otherwise properly raised (compliant procedurally and substantively), by the parties under 37 CFR § 1.633(a) or by the Board under 37 CFR § 1.641. Where there is no interference-in-fact, the Board may decline to reach patentability. The Board declined to set rigid rules for all cases. TRIGGERING FACTS: A 3-judge motions panel granted Livak Preliminary Motion 2 and found no interference-in-fact between Han claims 102-108 and Livak claims 1, 3, 14 and 24, the only claims involved. Livak then asked the Board to decide Livak Preliminary Motion 1 (35 U.S.C. § 135(b) unpatentability) and Livak Miscellaneous Motion 1. Those motions were fairly raised and supported by evidence, and Han opposed deciding them. Livak had thus obtained the favorable ruling it sought, and Livak's patent was no longer an impediment to a patent for Han. KEY QUOTE: "Accordingly, it is our view that under § 135(a) we "may" decline to consider on its merits an issue of patentability, albeit raised in an interference, when our ultimate determination is that there is no interference-in-fact." (Paper 68, p. 17) PRIOR PRECEDENT AFFECTED: Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir. 1989) is distinguished, and its "fairly placed at issue" observation is treated as dicta that does not require a decision when there is no interference-in-fact. Schulze v. Green, 136 F.3d 786, 45 USPQ2d 1769 (Fed. Cir. 1998) is distinguished. Fiddes v. Baird, 30 USPQ2d 1481 (Bd. Pat. App. & Int. 1993) is disagreed with in part. Gustavsson v. Valentini, 25 USPQ2d 1401 (Bd. Pat. App. & Int. 1991) is said to have been overtaken by In re McGrew, 120 F.3d 1236, 43 USPQ2d 1632 (Fed. Cir. 1997). PRACTICE TIP: After winning a no interference-in-fact motion, do not assume the Board must still decide your pending patentability or § 135(b) motions against the applicant. Expect them to be dismissed, since you are a third-party protester. If you want patentability decided, raise it so that it is fairly, timely and properly raised and ties to the same patentable invention, and address the order to show cause. As applicant, oppose any such request for decision.