Davis v. Hendron

When an interference is declared between an application and a patent and a party moves under 37 CFR § 1.635 to add under 37 CFR § 1.642 a further patent such that the Board would lack jurisdiction under 35 U.S.C. § 135(a) to resolve priority between that added patent and a patent already involved, the Board should exercise its discretion to deny the addition. Section 135(a) does not authorize declaring an interference between interfering patents, so a patent may be added only where the application's priority must still be resolved against it. Joinder of the motion by the opposing party does not change the result. No prior Board precedent is named as directly addressing this exact issue. The decision relies on the 1984 Notice of Final Rule, which allows interferences with more than one patent but requires at least one application. For the party seeking to add a patent, here the senior party patentee, the route is closed when the added patent is an uninvolved patent of the opposing party and the only adversary to it is a patent. A patent that blocks only the applicant's own application, for example through double patenting, is not an interference matter. For the junior party applicant, it is not required to litigate priority against its own parent-application patent, and its agreement to joinder does not confer jurisdiction. The Board distinguished Schultze v. Green, 136 F.3d 786, 45 USPQ2d 1769 (Fed. Cir. 1998), because the issue there was one over which the Board had jurisdiction, and it relied on the statute, 35 U.S.C. § 135(a), and the contrast with 35 U.S.C. § 291. LEGAL TEST OR STANDARD: Rule 642 (37 CFR § 1.642) lets an administrative patent judge add an application or patent not involved that claims the same patentable invention as a count, 'on such terms as may be fair to all parties.' The Board held that this is discretionary and that 'where the board would lack jurisdiction to resolve an interference between two patents, discretion should be exercised to deny addition of the patent to the interference.' The jurisdictional limit comes from 35 U.S.C. § 135(a), which does not authorize an interference between interfering patents, and from the requirement that at least one application be present. TRIGGERING FACTS: The interference was declared between the junior party's application and the senior party's patent. The senior party moved, and the junior party joined, to add a junior party patent that issued from the parent of the involved application, names the same inventors and has the same assignee. The junior party was already accorded the parent's earlier filing date. The patent did not need to be added to decide priority between the involved application and the involved patent. The only dispute it would raise was patent against patent, and the Board lacked jurisdiction to resolve it. A different result is possible where a second patent of the opposing party stands in the way of issuing the applicant's patent, so that the applicant must show priority against both patents. KEY QUOTE: "Rule 642 gives the board discretion to add newly discovered patents to an interference." (Paper 55, p. 8) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The decision distinguishes Schultze v. Green, 136 F.3d 786, 45 USPQ2d 1769 (Fed. Cir. 1998), as involving an issue within the Board's jurisdiction. It also discusses the Notice of Final Rule, Patent Interference Proceedings, 49 Fed. Reg. 48416, 48419 (Dec. 12, 1984), which adopted the policy of Wilson v. Yakel, 1876 Dec. Comm'r. Pat. 245, and departed from Touval v. Newcombe, 194 USPQ 509 (Comm'r. Pat. 1976), to the extent inconsistent. PRACTICE TIP: Before moving under 37 CFR § 1.635 to add a patent under 37 CFR § 1.642, show that the applicant must establish priority against the added patent for the application to issue. Do not rely on the opposing party's consent, and do not seek to add an adverse party's own commonly owned patent merely to litigate patent-versus-patent issues, because a motion to do so will be denied for lack of jurisdiction.