Bouzida et alv.Beamer et al

Board of Patent Appeals and Interferences

Oct 25, 2001

08991717 (B.P.A.I. Oct. 25, 2001)

The opinion in support of the decision being entered
today is not binding precedent of the Board.
Filed by: Trial Section Motions Panel Paper No. 57
Box Interference
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
SAMY BOUZIDA, CHRISTOPHE MIGNOT,
and MIKE V. POWERS,
Junior Party
(Application 08/991,717),
v.
HENRY E. BEAMER and TIMOTHY A. COWELL
Senior Party
(Patent 5,730,214)
_______________
Patent Interference No. 104,621
_______________
MEMORANDUM OPINION AND JUDGMENT
Before LEE, GARDNER-LANE and MEDLEY, Administrative Patent
Judges.
MEDLEY, Administrative Patent Judge.
A. Introduction
As a result of the decision on preliminary motions (Paper
51), Bouzida became the junior party in this interference. The
interference was redeclared to indicate that Bouzida is the
junior party and that Beamer is the senior party (Paper 52).
2
In Bouzida’s preliminary statement, Bouzida stated that
Bouzida “does not intend to present evidence to prove a prior
conception of an actual reduction to practice of the subject
matter of Count 1, and intends to reply (sic) solely on the
priority of the filing date of their French priority application,
French Patent Application No. 96.15584, filed on December 18,
1996.” (Paper 29 at 1). Beamer unopposed preliminary motion 2,
attacking the benefit granted Bouzida to its French priority
application No. 96.15584, filed on December 18, 1996 was granted.
An order to show cause was filed requesting Bouzida to show cause
why the interference should continue, since Bouzida does not
allege an earlier date of invention relative to Beamer (Paper
53).
On October 15, 2001, Bouzida filed a paper entitled
“BOUZIDA’S MEMORANDUM IN RESPONSE TO THE ORDER TO SHOW CAUSE”
(Paper 55). On October 15, 2001 Bouzida also filed a paper
entitled “BOUZIDA’S MOTION PURSUANT TO 37 C.F.R. §§ 1.640(e)(3)
and 1.635" (Paper 56).
In response to the order to show cause, Bouzida does not
demonstrate that it can prove a date prior to Beamer. Instead,
Bouzida’s response to the order to show cause is essentially a
request for reconsideration of the denial of Bouzida preliminary
motion 1. Bouzida’s motion under 37 C.F.R. §§ 1.640(e)(3) and
1.635 is a request for a testimony period to introduce evidence
3
that Bouzida wishes the board to consider at final hearing in
connection with the denial of Bouzida preliminary motion 1 (Paper
56 at 2).
For the reasons that follow, we deny Bouzida’s motion under
37 C.F.R. §§ 1.640(e)(3) and 1.635. We treat Bouzida’s response
to the order to show cause as a request for reconsideration of
our earlier decision denying Bouzida preliminary motion 1.
Bouzida’s request for reconsideration of the denial of Bouzida
preliminary motion 1 is denied. Finally, since Bouzida does not
contest the board’s decision that judgment should be entered
against Bouzida, we enter judgment against Bouzida.
B. Discussion
Bouzida motion for testimony and final hearing
Bouzida states in its motion under 37 C.F.R. §§ 1.640(e)(3)
and 1.635, that “Bouzida does not contest the Board’s decision
that it is not entitled to a judgment of priority as the (sic)
Count” (Paper 56 at 2). Thus, Bouzida concedes priority to
Beamer.
Bouzida requests in its motion under 37 C.F.R. §§
1.640(e)(3) and 1.635, that Bouzida be granted a final hearing in
connection with its preliminary motion 1. Apparently, Bouzida
would also like to introduce evidence in support of its
preliminary motion 1 that we have not previously considered
(Paper 56 at 2).
1 See Notice of the Chief Administrative Patent Judge of
Nov. 6, 1998, Interference Practice – New Procedures for Handling
Interference Cases at the Board of Patent Appeals and
Interferences, 1217 Off. Gaz. Pat. & T. Office 18 (Dec. 1, 1998).
4
Bouzida argues that we should consider its preliminary
motion 1 during a final hearing to determine if the board legally
erred in denying Bouzida’s preliminary motion 1. Bouzida then
cites to a string of cases for the proposition that the board
should resolve patentability issues when those questions are
fully presented.
A three judge panel has already determined patentability
issues raised in this interference. Specifically, a three judge
panel has already once considered and decided Bouzida preliminary
motion 1. Thus, this is not a situation where a party has raised
a patentability issue and the board has not considered the issue.
Since the inception of the Trial Section1, it has been the
standard practice for a three judge motions panel to decide all
preliminary motions in an interference. The Trial Section is of
the opinion that entry of three judge decisions is more efficient
and establishes the law of the case. In this interference, a
three judge panel decided the preliminary motions filed during
the preliminary motions phase of the interference (Paper 51).
The scope of review at final hearing of a three-judge
interlocutory order is explained in Trial Section precedential
opinion Charlton v. Rosenstein, No. 104,148, 2000 Pat. App. Lexis
5
4 (Bd. Pat. App. & Int. (Trial Section) 2000).
As explained in Charlton:
When there is review at final hearing by a 3-judge
panel of an interlocutory order entered by a 3-judge panel
(which will almost always be the same three judges), the
case takes on a different posture. All three judges
previously considered the record and cast their votes. Any
review at final hearing will be on the same record and new
arguments are not authorized. It should be apparent that
when a 3-judge panel reviews its previous decision, the 3-
judge panel, in effect, is reconsidering its earlier
decision. There is no de novo consideration. Hence, it will
be necessary for a party asking for review to establish that
the 3-judge panel overlooked or misapprehended something in
entering the order sought to be reviewed. 2000 Pat. App.
Lexis 4.
A three judge panel decision establishes the law of the
case. A party need not seek review of a decision made by a three
judge panel to preserve a party’s right to seek judicial review.
The decision on preliminary motions is herein made final for
purposes of judicial review.
In essence, Bouzida seeks final review of our decision to
deny its preliminary motion 1. As stated above, however, such a
request for “review” is treated as a request for reconsideration.
A party seeking “review”, e.g. reconsideration of the decision on
preliminary motions, is not permitted to make new arguments, or
file new evidence in support of the request.
Accordingly, Bouzida’s request for a testimony period to be
6
set to introduce evidence in support of its preliminary motion 1
is denied. Furthermore, this interference need not be prolonged
any further by allowing Bouzida to file a request for
reconsideration at a later time. We have before us Bouzida’s
request for reconsideration, which is decided in this paper.
Accordingly, there is no occasion to allow Bouzida to refile what
it has already filed.
Bouzida states in its response to the order to show cause
that if the board does not grant Bouzida’s motion for a testimony
period, then we should consider Bouzida’s arguments as to why
judgment should not be entered against Bouzida (Paper 55 at 2).
Bouzida’s arguments as to why judgment should not be
entered against it are based on the premise that the three judge
panel erroneously decided Bouzida preliminary motion 1. Even if
we were to agree with Bouzida, which we do not, judgment would
still be entered against Bouzida. That judgment can be entered
against one party does not preclude judgment from being entered
against another party. There can be two losers in a two party
interference. Thus, the mere fact that Bouzida does not agree
with our decision to deny its preliminary motion 1 does not
preclude the panel from entering judgment against Bouzida.
Bouzida’s response to the order to show cause is essentially
a request for reconsideration of the denial of Bouzida
preliminary motion 1. Accordingly, we treat it as such.
7
A request for reconsideration of a three judge panel
decision must be made within 14 days of the decision. 37 CFR
§ 1.640(c). The decision on preliminary motions was entered in
this interference on September 20, 2001. Thus, any request for
reconsideration was due within 14 days of that decision.
Bouzida’s request for reconsideration was received on October 15,
2001, beyond the fourteen day deadline, and thus is not timely.
Nonetheless, we consider Bouzida’s request for
reconsideration as follows.
Bouzida’s request for reconsideration of its preliminary
motion 1
A party requesting reconsideration of a decision must
specify with particularity points believed to have been
misapprehended or overlooked in rendering the decision.
37 CFR § 1.640(c). A request for reconsideration is not a new
opportunity to raise issues which should have been raised during
the preliminary motions period. Further, a request for
reconsideration will not be granted where the moving party merely
disagrees with the decision of the panel.
Bouzida argues that the panel erred in determining that
Beamer claim 1 includes louvers having at least three different
angles. Bouzida argues that the dictionary definitions of “est”
and “superlative” make clear that shallowest and steepest do not
indicate a comparison between three or more things. Bouzida
disagrees with our interpretation of the terms “steepest” and
8
“shallowest” as those terms are recited in Beamer claim 1.
As stated above, a request for reconsideration will not be
granted where the moving party merely disagrees with the panel.
Further, Bouzida’s argument regarding interpretation of “est” and
the “superlative” form of a word were not presented in connection
with its preliminary motion 1. Thus, this a new argument.
Bouzida further argues that it was error for the panel to
conclude from the use in Beamer claim 1 of “shallower, initial
louvers” and “steeper louvers in successive walls” that Beamer
used the term “shallowest” and “steepest” to refer to sets having
three or more angles and used shallower and steeper to refer to a
set having only two increasing angles. Bouzida disagrees with
our analysis regarding the different use of the comparative and
superlative form of the word “shallow” within claim 1. However,
mere disagreement is not sufficient to grant a request for
reconsideration of our earlier decision. We see no error in our
analysis. Bouzida has failed to direct us to points that we
misapprehended or overlooked in connection with Bouzida’s
arguments made in its preliminary motion 1.
Bouzida argues that the panel erred in narrowly interpreting
Beamer claim 1, such as to exclude one of Beamer’s disclosed
embodiments showing louvers with only two angles (Paper 55 at 5-
8). Bouzida cites to Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1676, 1583, 39 USPQ2d 1573, 1578 (Fed. Cir. 1997) for the
9
proposition that claim interpretation excluding the preferred
embodiment is rarely, if ever, correct and would require highly
persuasive evidentiary support (Paper 55 at 6).
Bouzida did not, in its preliminary motion 1, argue that the
embodiment in Beamer’s patent that discloses a pattern of louvers
having two different angles was a preferred embodiment. Nor did
Bouzida, in its preliminary motion 1, direct us to a particular
passage in the Beamer patent that disclosed that the two angled
louver arrangement was the preferred embodiment, or was in any
way preferable over the at least three angled louver
arrangements. Bouzida has failed to direct us to where in the
Beamer specification it is stated that, or even to explain why, a
two angled louver arrangement is the preferred embodiment.
Bouzida further argues that the panel erred in reading
Beamer claim 1 narrowly to exclude the two angled embodiments,
since the superlative form of a word is commonly used instead of
the comparative form when comparing two items (Paper 55 at 7).
Apparently, Bouzida is arguing that it is probable that the
drafter of the Beamer claims used the superlative form of the
word “shallow” when he/she really meant to use the comparative
form of the word. Bouzida directs us to evidence presented in
support of Beamer’s opposition to Bouzida preliminary motion 1.
According to the Penguin Dictionary of American Usage and Style,
it is often the case that the superlative form of a word is used
10
mistakenly, instead of the comparative form of the word.
The Penguin Dictionary of American Usage and Style was not
considered in rendering our decision on Bouzida preliminary
motion 1. Beamer’s opposition was not considered, since Bouzida
failed to sufficiently demonstrate that it was entitled to the
relief sought (Paper 51 at 22).
Furthermore, Bouzida did not, in its preliminary motion 1,
direct us to evidence that would demonstrate that the drafter of
Beamer claim 1 made the allegedly common mistake of using the
superlative form of the word “shallow” when the drafter intended
the comparative meaning of the word.
Bouzida appears to accuse the panel of improperly reading
limitations into Beamer claim 1 to arrive at our interpretation
(Paper 55 at 6-7). In the decision on Bouzida preliminary motion
1, the panel’s analysis began with the language of the claim
(Paper 15-16). We looked to the specification to support our
interpretation, as was pointed out in our decision (Paper 55 at
16). Thus, we disagree that we impermissibly imported
limitations into Beamer claim 1.
Bouzida disagrees with our decision to require Bouzida to
enter into evidence the examiner’s statement (Paper 55 at 9).
However, Bouzida was not penalized for not doing so. We
considered Bouzida’s arguments regarding the examiner’s
statement. Thus, this point appears moot. We reiterate, as we
11
stated in our opinion, however, that examiner’s conclusions are
not binding on the Board. See Glaxo Wellcome, Inc. v. Cabilly,
56 USPQ2d 1983, 1984 (BPAI (ITS) 2000). (Neither the Board nor a
party are bound by an ex parte decision made during prosecution
by another party. A motion in an interference is not an appeal
from the examiner’s decision, but an independent request to the
Board). The examiner’s statement is not under review.
In our decision, the panel commented on the examiner’s
statement, although it need not have done so. We stated that:
Bouzida has failed to demonstrate that the examiner
incorrectly interpreted Beamer claim 1 (the count) in the
same manner as Bouzida. That is, Bouzida has failed to
direct us to evidence that demonstrates that the examiner
interpreted Beamer claim 1 to have louvers with at least two
angles. Based on the record before us, the examiner
interpreted Beamer claim 1 as having louvers with at least
three angles. Therefore, the examiner’s conclusion that
Beamer claim 2 and Beamer claim 3 should correspond to the
count would make sense, given that Beamer claim 2 and claim
3 recite louvers having at least three angles with other
minor variations (Paper 51 at 21).
Bouzida argues that the panel erred in determining that
Bouzida failed to demonstrate that the examiner incorrectly
interpreted Beamer claim 1 (the count) in the same manner as
Bouzida. Bouzida presents new arguments as to how the examiner
probably interpreted the claims involved in the interference
12
(Paper 55 at 9). Specifically, Bouzida argues that since the
examiner’s statement indicates that Bouzida claims 1, 2, 7, 13,
15 and 16, directed to two angled louver arrangements, were
determined to correspond to the count, then the examiner
interpreted the count as claiming a two angled louver
arrangement. This argument was not presented in connection with
Bouzida’s preliminary motion 1. Furthermore, as stated above, we
are not bound by an examiner’s decision. Lastly, the examiner
did refer to Bouzida’s claims 1, 2, 7, 13, 15 and 16 as broader
in scope than the count. Thus, it is possible that the examiner
did interpret the count as reciting louvers having at least three
different angles, and that the at least two angled louvered
arrangements would be anticipated by or obvious in view of the
count.
Bouzida also argues that the examiner stated that Beamer
claims 2 and 3, reciting at least three angled louver
arrangements are “virtually identical to the count” except for
minor recitations. The examiner’s statement could be interpreted
to mean that the examiner thought that the count recited an at
least three angled louver arrangement. In any event, Bouzida’s
arguments regarding the possible “state of mind” as to what the
examiner believed, was not raised in connection with its
preliminary motion 1.
13
C. Conclusion
Having considered Bouzida’s arguments in its request for
reconsideration, we conclude that Bouzida has failed to
demonstrate that we misapprehended or overlooked any fact or
argument first presented prior to the filing of the request for
reconsideration.
The decision on preliminary motions (Paper 51) has been
reconsidered to the extent necessary to provide the discussion
here. No change in the decision will be made. Bouzida’s request
for reconsideration is denied.
Beamer need not file an opposition to Bouzida’s motion for
testimony period and final hearing on Bouzida preliminary motion
1.
Upon consideration of the record, it is
ORDERED that the interlocutory decision on preliminary
motions is final for purposes of judicial review;
FURTHER ORDERED that Bouzida’s motion for final hearing
and additional testimony on its preliminary motion 1 is denied;
FURTHER ORDERED that Bouzida’s request for
reconsideration of the decision on Bouzida preliminary motion 1
is denied;
ORDERED that judgment on priority as to Count 1 (Paper
1 at 49), the sole count in the interference, is awarded against
14
junior party SAMY BOUZIDA, CHRISTOPHE MIGNOT, and MIKE V. POWERS.
FURTHER ORDERED that junior party SAMY BOUZIDA,
CHRISTOPHE MIGNOT, and MIKE V. POWERS is not entitled to a patent
containing claims 1, 2, 7, 13 and 15-17 (corresponding to Count
1) of application 08/991,717, filed 16 December 1997.
FURTHER ORDERED that a copy of this paper shall be made
of record in files of application 08/991,717 and U.S. Patent
5,730,214.
FURTHER ORDERED that if there is a settlement
agreement, attention is directed to 35 U.S.C. § 135(c) and 37 CFR
§ 1.661.
______________________________)
JAMESON LEE )
Administrative Patent Judge )
)
)
______________________________) BOARD OF PATENT
SALLY GARDNER-LANE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
______________________________)
SALLY C. MEDLEY )
Administrative Patent Judge )
15
cc (via federal express):
Attorney for BEAMER:
Ronald J. Kisicki, Esq.
JAECKLE FLEISCHMANN & MUGEL, LLP
39 State Street
Rochester, NY 14614-1310
Tel: 716-262-3640
Fax: 716-262-4133
Attorney for BOUZIDA:
Joseph A. Calvaruso, Esq.
MORGAN & FINNEGAN, LLP
345 Park Avenue
New York, NY 10154
Tel: 212-758-4800
Fax: 212-751-6849