Ex Parte Glickman

Board of Patent Appeals and Interferences

Nov 6, 2001

08922236 (B.P.A.I. Nov. 6, 2001)

The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 33
Filed by: Trial Section Merits Panel
Box Interference Filed:
Washington, D.C. 20231 November 6, 2001
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
FRANK SEVER, JR.,
Junior Party,
(Application 09/340,437),
v.
MORTON G. GLICKMAN,
Senior Party,
(Patent 5,897,533).
_______________
Patent Interference No. 104,722
______________________
MEMORANDUM OPINION
AND ORDER FOR SUMMARY JUDGMENT
AGAINST SEVER
Before TORCZON, GARDNER-LANE, and MEDLEY, Administrative Patent
Judges.
MEDLEY, Administrative Patent Judge.
A. Introduction
This interference is before a merits panel for a
determination of whether summary judgment should be entered
against Sever, the junior party applicant in the interference.
1 Rule 608(b) states that:
When the effective filing date of an application is more
than three months after the effective filing date of a
patent, the applicant, before an interference will be
declared, shall file evidence which may consist of patents
or printed publications, other documents, and one or more
affidavits which demonstrate that applicant is prima facie
entitled to a judgment relative to the patentee and an
explanation stating with particularity the basis upon which
the applicant is prima facie entitled to the judgment.
2 Rule 617(a) provides that:
An administrative patent judge shall review any evidence
filed by an applicant under § 1.608(b) to determine if the
applicant is prima facie entitled to a judgment relative to
the patentee...
If in the opinion of the administrative patent judge the
evidence fails to show that the applicant is prima facie
entitled to a judgment relative to the patentee, the
administrative patent judge shall, concurrently with the
notice declaring the interference, enter an order stating
the reasons for the opinion and directing the applicant,
within a time set in the order, to show cause why summary
judgment should not be entered against the applicant.
2
We conclude that entry of summary judgment is appropriate.
The interference was declared on July 10, 2001 (Paper 1).
At that time it was determined that Sever’s showing submitted
under 37 CFR § 1.608(b)1 was insufficient to demonstrate that
Sever is prima facie entitled to judgment relative to Glickman.
An Order to Show Cause under 37 CFR § 1.617(a)2 accompanied the
Notice Declaring Interference (Paper 2). Sever was ordered to
show cause why judgment should not be entered against it.
On August 14, 2001, Sever filed a response to the Order to
3
Show Cause (Paper 20). Glickman filed a statement concerning the
Sever response (Paper 23). Sever filed a reply to Glickman’s
statement (Paper 26). Oral argument was held on October 16,
2001.
B. Findings of fact
1. Sever is involved in the interference on the basis of
application 09/340,437, filed 28 June 1999.
2. Glickman is involved in the interference on the basis of
Patent 5,897,533, granted 27 April 1999, based on application
08/922,236, filed 2 September 1997.
3. Count 1, the sole count of the interference, is claim 6
of the Glickman patent.
4. Sever claim 6 is identical to claim 6 of the Glickman
patent.
5. Claim 6 of the Glickman patent is as follows:
An arrangement for selectively restricting the flow of
a fluid through the anular [sic] space between an
elastomeric tube and a substantially rigid tube disposed
within it and for selectively restricting lateral movement
if [sic] said substantially rigid tube relative to said
elastomeric tube, comprising:
a substantially rigid telescoping tube for supporting
said elastomeric tube therewithin, which includes an
arrangement for variably fixing said substantially rigid
telescoping tube to a desired length;
a first clamping arrangement for fixing one end of said
elastomeric tube to one of said substantially rigid
telescoping tube; and,
a second clamping arrangement for fixing the other end
of said elastomeric tube to the other end of said
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substantially rigid telescoping tube;
wherein said substantially rigid tube is disposed with
said elastomeric tube; and
said elasotomeric tube is disposed within said
substantially rigid telescoping tube; and,
whereby the inner diameter of said elastomeric tube is
selectively varied in direct proportion to said desired
length of said substantially rigid telescoping tube.
6. In the Order to Show Cause, the administrative patent
judge designated to handle this interference, determined that
Sever’s showing submitted under 37 CFR § 1.608(b) was
insufficient to demonstrate that Sever is prima facie entitled to
judgment relative to Glickman.
7. Specifically, it was determined that:
(A) Sever failed to allege or establish an actual
reduction to practice that is prior to the Glickman
effective filing date (Paper 2 at 4);
(B) For purposes of priority, Sever sufficiently
demonstrated that Sever conceived of the invention sometime
prior to Glickman’s 2 September 1997 filing date (Paper 2 at
5);
(C) Sever failed to sufficiently demonstrate that it
exercised reasonable diligence from a time prior to
Glickman’s 2 September 1997 filing date to its own reduction
to practice (Paper 2 at 5-6); and
(D) Sever failed to sufficiently demonstrate that
Glickman had derived the invention from Sever since (Paper 2
at 6-7):
(1) Sever failed to sufficiently demonstrate that
5
the alleged communication of its conception was to
Glickman;
6
(2) Sever failed to sufficiently demonstrate that
the alleged communication to Glickman’s attorney of the
invention was corroborated;
(3) the date of the alleged communication of the
invention to Glickman’s attorney was apparently prior
to the conception.
8. In response to the Order to Show Cause, Sever submits no
new evidence.
C. Discussion
Rule 608(b)
Rule 608(b) was codified to protect a senior party patentee
from the expense and hardships of an interference. In order to
proceed with an interference, the junior party applicant must
show that it is prima facie entitled to judgment relative to the
senior party patentee.
The purpose of Rules 608(b) and 617 were discussed in
Kistler v. Weber, 412 F.2d 280, 285, 162 USPQ 214, 218-219 (CCPA
1969). In Kistler v. Weber, the Court of Customs and Patent
Appeals rejected junior party’s argument that then Rule 228
(predecessor of Rule 617) and then Rule 204(c) (predecessor of
Rule 608(b)) place an undue burden on the junior party or are
contrary to the rights of the first inventor. The CCPA stated
that:
[t]he expense involved in a protracted interference, and the
special hardships workable on a patentee involved therein,
7
are notorious, and to minimize both, where possible,
would appear to be the laudable purpose of these rules.
Kistler v. Weber, 412 F.2d at 285, 162 USPQ at 218-219
(CCPA 1969).
Thus, Rule 608(b) was designed primarily to protect the
patentee.
Sever’s burden of proof
The appropriate evidentiary standard to be applied in
determining whether an applicant has met its prima facie burden,
where the applicant's effective filing date is after the issue
date of the patent, is by the clear and convincing standard.
Basmadjian v. Landry, 54 USPQ2d 1617, 1624 (Bd. Pat. App. & Int.
1997). 37 CFR § 1.657(b). Thus, in response to the order to
show cause, Sever must demonstrate by clear and convincing
evidence that it is prima facie entitled to a patent vis-a-vis
Glickman.
Sever’s response to the Order to Show Cause
Sever concedes that priority is not at issue in this
proceeding (Paper 20 at 9). The sole issue, Sever argues, is one
of fraud/derivation. As the junior party, the burden is upon
Sever to demonstrate with sufficient evidence that Glickman
derived the invention from Sever. Until that is done, there is
no occasion to address the issue of fraud.
Sever presents no additional evidence in support of its
response to the Order to Show Cause. Instead, Sever presents
unsupported allegations made by Sever’s attorney. At the outset,
8
we note that attorney argument alone is insufficient to overcome
Sever’s burden, as argument of counsel cannot take the place of
evidence lacking in the record. Estee Lauder Inc. v. L'Oreal,
S.A., 129 F.3d 588, 595, 44 USPQ2d 1610, 1615 (Fed. Cir. 1997).
Derivation
To prove derivation, a party must establish conception of
the claimed subject matter and communication of the conception to
the opponent. Price v. Symsek, 988 F.2d 1187, 1190, 26 USPQ2d
1031, 1033 (Fed. Cir. 1993). As with conception, corroboration
is required to support testimony of the communication. Id. at
1196, 26 USPQ2d at 1038. See also Davis v. Reddy, 620 F.2d 885,
889, 205 USPQ 1065, 1068 (CCPA 1980).
Sever has failed to sufficiently demonstrate that Glickman
derived the invention from Sever. Sever has failed to
demonstrate that: (1) Sever communicated the invention to
Glickman; (2) the alleged communication made (to Glickman’s
attorney - Feldman) was corroborated; and (3) Sever’s alleged
conception occurred prior to the alleged communication (Finding
7). The insufficiency of Sever’s Rule 608(b) showing was set
forth in the Order to Show Cause. In response to the Order to
Show Cause, Sever has failed to sufficiently explain how it meets
any of the missing elements (1)-(3).
Instead, Sever argues that the Order to Show Cause
establishes that Glickman stole the invention from Sever. Sever
9
reasons that since the board has accepted that Sever conceived
the invention prior to Glickman, then one would necessarily
conclude that Sever’s invention was communicated to Glickman.
Sever’s argument is misplaced. The Order to Show Cause
indicated that for purposes of priority, Sever “has demonstrated
that Sever conceived of the invention sometime prior to
Glickman’s 2 September 1997 filing date” (Paper 2 at 5). That
Sever demonstrated that it conceived the invention prior to the
filing date of the Glickman patent does not mean that Sever is
the first to conceive the invention. Glickman could properly
demonstrate conception prior to Sever’s conception. Logically,
if Sever’s “conception” was sufficient to proceed with the
interference, the Order to Show Cause would not have been made.
Still further, the Order to Show Cause stated that for
purposes of derivation, Sever failed to sufficiently demonstrate
that its conception was prior to its alleged communication date.
Sever provides no explanation in its response to this point
raised in the Order to Show Cause.
Since Sever has failed to sufficiently demonstrate that
Glickman derived the invention from Sever, we conclude that this
interference should not proceed and that entry of summary
judgment against Sever is appropriate. We address, however,
Sever’s additional arguments as follows.
10
Fraud
Sever argues that since the Sever application and the
Glickman patent are nearly identical, it is obvious that someone
stole the invention, and that the proper place to resolve the
fraud upon the PTO, e.g. the theft of the invention, is through
this interference (Paper 20 at 3). Even if we were to agree that
the Glickman patent and the Sever application are nearly
identical, that does not relieve Sever from its burden to
demonstrate that it is entitled to a patent relative to the
patentee. The burden is still upon Sever as the junior party to
demonstrate that Glickman derived the invention from Sever.
Sever has failed to sufficiently demonstrate that Glickman
derived the invention from Sever. The condition precedent to
addressing the fraud issue is for Sever to establish that
Glickman did derive the invention from Sever. Without derivation
there can be no showing of fraud.
Questions of fraud and inequitable conduct require a showing
of materiality and intent. “Inequitable conduct includes
affirmative misrepresentations of a material fact, failure to
disclose material information, or submission of false material
information coupled with an intent to deceive." PerSeptive
Biosystems, Inc. v. Pharmacia Biotech, Inc., 225 F.3d 1315, 1318,
56 USPQ2d 1001, 1003 (Fed. Cir. 2000).

3 An applicant may file a response to the order, which may
include an appropriate preliminary motion under § 1.633(c), (f)
or (g), and state any reasons why summary judgment should not be
entered. 37 CFR § 1.617(b).
11
“Applied to patent prosecution, fraud requires (1) a false
representation or deliberate omission of a fact material to
patentability, (2) made with the intent to deceive the patent
examiner, (3) on which the examiner justifiably relied in
granting the patent, and (4) but for which misrepresentation or
deliberate omission the patent would not have been granted.”
C. R. Bard, Inc. v. M3 Systems Inc., 157 F.3d 1340, 1364,
48 USPQ2d 1225, 1242 (Fed. Cir. 1998).
Sever has failed to establish that Glickman derived the
invention from Sever, and thus, Sever has failed to demonstrate
that Glickman knew of the Sever invention. Without demonstrating
that Glickman had such knowledge, there is no demonstration of
materiality or intent.
Further, in response to a show cause order, a party is not
entitled to file a preliminary motion seeking judgment against
another party3. Sever is essentially seeking judgment against
Glickman on the theory that Glickman committed a fraud against
the PTO. Sever is impermissibly reconstructing the rules.
Furthermore, interferences are not cancellation proceedings.
The Supreme Court has rejected the notion that “there is a
fundamental and basic right of opposition on the part of any
12
applicant, whether junior or senior, to prevent the wrongful
grant of a patent to his opponent.” Ewing v. Fowler Car Co.,
244 U.S. 1, 10-11 (1917).
Allowing a junior party who did not meet the requirements of
Rule 608(b) to continue in an interference contest would ignore
the meaning and purpose behind Rule 608(b) and the decision in
Kistler v. Weber. The intent of Rule 608(b) is to protect the
patentee from invalid attacks upon its patent; not to allow an
applicant to challenge the patentability of the patent when it
has no right to do so.
Estoppel
Sever additionally argues that because he relied on the
statements of Feldman, Glickman’s attorney, Sever did not earlier
file its application (Paper 20 at 10-11). According to Sever’s
declaration, Feldman told Sever that Glickman would not file an
application on the involved subject matter. Apparently, Sever
relied on this statement and also did not pursue the invention.
Sever allegedly filed its application only after Sever saw
Glickman’s patent on the Internet (Sever Dec., ¶¶ 17-18).
Sever’s argument appears to be based on a theory of common
law estoppel. Sever fails to direct us to precedent that
suggests that the board may decide issues of common law estoppel.
Further, Sever’s declaration is hearsay. There is no
corroborating witness that testified as to the conversation that
13
allegedly took place between Sever and Feldman. For these
reasons, Sever’s “estoppel” theory is not persuasive.
Business to be conducted with decorum and courtesy
Parties and counsel appearing before the Office must conduct
themselves with decorum and courtesy. 37 C.F.R. § 1.3. Sever's
conduct, particularly its reply (Paper No. 26), has fallen well
short of that mark. Sever accuses Glickman and its former
counsel of being "liars and thieves" and impugns the competence
and character of Glickman's present counsel (id. at 2). Sever
also employs a pejorative phrase. Since judgment will be entered
against Sever, no further sanction will be contemplated by the
Board, but the nature of Sever's improper conduct warrants a
little further exploration as a caution to Sever's counsel and
those who might follow his path. .
Ethical violations by counsel
Sever suggests misconduct by both former and present
Glickman counsel. Sever's accusations implicate several
provisions of 37 C.F.R. § 10.23, particularly §10.23(c)(10).
Sever has not, however, filed a complaint with the Office of
Enrollment and Discipline against either counsel. Cf. Hoffmann-
La Roche, Inc. v. Invamed, Inc., 213 F.3d 1359, 1366, 54 USPQ2d
1846, 1850 (Fed. Cir. 2000) (leaving consideration of
professional ethics violations to the relevant bar). Both Sever
(Reg. No. 37,569) and Sever's counsel (Reg. No. 32,855) are
14
registered patent practitioners. As such, they are ethically
obligated to provide any unprivileged information regarding a
disciplinary rules violation to the Director of Enrollment and
Discipline. 37 C.F.R. § 10.24(a). Their failure to do so in the
present case is a disturbing fact. Indeed, the ease with which
counsel bandy about accusations of inequitable conduct against
registered practitioners versus their inaction in reporting such
conduct to the Director may well deserve weight in evaluating
such accusations. As explained above, we need not reach the
question. Nevertheless, the conduct of Sever and Sever's counsel
is at best irresponsible.
Pejorative language
Sever states that "Glickman's patent is a virtual Chinese
copy of Sever's application" (Paper No. 26 at 4). It is not
clear precisely what Sever means by the phrase "virtual Chinese
copy", but in context it is clear that it is intended
pejoratively. While it is not the responsibility of the board to
police political correctness, the use of such phrases falls well
below the required standard of decorum and courtesy expected of
all practitioners. The Office is an equal opportunity employer
and the possibility of having a Chinese-American administrative
patent judge hear any given interference motion is pretty high.
The comment was unnecessary, irrelevant, and (to the extent it
means anything) literally untrue and, hence, all the more
15
prejudicial to the administration of justice in this
interference. See Standing Cmte. on Discipline v. Yagman,
55 F.3d 1430 (9th Cir. 1995) (reversing sanctions but noting the
potential harm to the administration of justice when counsel
engage in conduct hostile to a presiding judge). Counsel will
not be permitted to engage in this sort of misconduct.
D. Judgment
Upon consideration of the record, it is
ORDERED that summary judgment is entered against the
junior party FRANK SEVER, JR. 37 CFR § 1.617.
FURTHER ORDERED that judgment on priority as to Count 1
(Paper 1 at 5) is awarded against junior party FRANK SEVER, JR.
35 U.S.C. § 102(g).
FURTHER ORDERED that junior party FRANK SEVER, JR. is
not entitled to a patent containing claims 1-7 (corresponding to
Count 1) of application 09/340,437, filed 28 June 1999. 35
U.S.C. § 102(g).
FURTHER ORDERED that a copy of this paper shall be made
of record in files of SEVER application 09/340,437, and GLICKMAN
U.S. Patent 5,897,533.
16
FURTHER ORDERED that if there is a settlement
agreement, attention is directed to 35 U.S.C. § 135(c) and 37 CFR
§ 1.661.
______________________________)
RICHARD TORCZON )
Administrative Patent Judge )
)
)
)
)
______________________________) BOARD OF PATENT
SALLY GARDNER-LANE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
______________________________)
SALLY C. MEDLEY )
Administrative Patent Judge )
17
cc (via Federal Express):
Attorney for Sever:
Peter Paul Mitrano, Esq.
4912 Oakcrest Drive
Fairfax, VA 22030
Fax: (703) 591-1350
Attorney for Glickman:
R. Danny Huntington, Esq.
Burns, Doane, Swecker & Mathis, L.L.P.
P.O. Box 1401
Alexandria, VA 22313-1404
Fax: (703) 836-2021