Ryanv.Young et al.

Board of Patent Appeals and Interferences

Apr 24, 2008

10909594 (B.P.A.I. Apr. 24, 2008)

Filed by: Merits Panel Paper 42 1
BoxInterferences@uspto.gov Entered: 24 April 2008 2
Telephone: 571-272-4683 3
4
UNITED STATES PATENT AND TRADEMARK OFFICE 5
BOARD OF PATENT APPEALS AND INTERFERENCES 6
7
Patent Interference 105,505 McK 8
Technology Center 1700 9
____________________ 10
11
WAYNE L. RYAN, 12
13
Patent 6,653,137 B2, 14
Junior Party, 15
16
v. 17
18
CAROLE J. YOUNG, MICHAEL N. ELLIOTT, 19
NANCY R. NAYLOR-SCHLIPP and TIMOTHY J. FISCHER 20
21
Application 10/909,594, 22
Senior Party. 23
___________________ 24
25
Before: FRED E. McKELVEY, Senior Administrative Patent Judge, and 26
RICHARD TORCZON and SALLY GARDNER LANE, Administrative 27
Patent Judges. 28
29
McKELVEY, Senior Administrative Patent Judge. 30
31
JUDGMENT 32
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A. Background 34
In this interference, Senior Party Young did not file a priority 35
statement. 36
Junior Party Ryan filed a priority statement. Interference 105,504, 37
Paper 31. 38
2
The Ryan priority statement alleged an actual reduction to practice of 1
the subject matter of the count more than four years prior to the constructive 2
reduction to practice accorded to Young. Interference 105,504, Paper 31, 3
page 5. 4
Because Ryan alleged a date of invention prior to Young, times for 5
taking action during a priority phase were set. Interference 105,505, 6
Paper 31. 7
After times for taking action during the priority phase were set, the 8
Board received a paper from Young styled YOUNG CONCESSION OF 9
PRIORITY. Interference 105,505, Paper 38; 37 C.F.R. § 41.127(b)(2) 10
(2007). 11
A concession of priority is construed to be a request for adverse 12
judgment. 37 C.F.R. § 41.127(b) (2007). 13
During the motions phase, Young filed a motion for judgment against 14
Ryan alleging that all the claims of the involved Ryan patent were 15
unpatentable under 35 U.S.C. § 103. Interference 105,504, Paper 34. 16
Since there was more than four years difference in filing dates and it 17
is not often that a party junior by four years prevails on the issue of priority, 18
the Young motion for judgment based on § 103 was deferred to the priority 19
phase of the interference. Interference 105,504, Paper 116, page 57. 20
Assuming that Young would prevail on priority, the motion for judgment 21
under § 103 would be moot. On the other hand, if Ryan were to prevail on 22
priority, the Board could exercise discretion to consider the Young motion 23
for judgment. 24
B. Conference call 25
Upon receipt of the Young CONCESSION OF PRIORITY, a 26
conference call took place on Friday, 18 April 2008. 27
3
Participants in the conference call included: 1
(1) Janelle D. Waack, counsel for Ryan, 2
(2) Herbert D. Hart, III, counsel for Young and 3
(3) Senior Administrative Patent Judge Fred E. McKelvey. 4
The conference call occurred at the request of the Board. 5
First item of discussion 6
A first item of discussion was a request by the Board that Ms. Waack 7
orally proffer the basis upon which Ryan claims to have established priority 8
more than four years prior to its earliest accorded constructive reduction to 9
practice. 10
The Board explained to counsel that a concession of priority by a 11
senior party, in a case where a junior party is four years junior, gives the 12
Board some pause. 13
To understand Ms. Waack's proffer, a discussion of the count and the 14
subject matter claimed by the parties is helpful. 15
Ryan claims a method of using a control including a nucleated red 16
blood cell component. 17
Young claims a method of using a hematology control product 18
including at least one nucleated blood cell analog. 19
A nucleated blood cell can be a red blood cell or a white blood cell. 20
The count is essentially (1) a method of using a control including a 21
nucleated red blood cell component or (2) a method of using a hematology 22
control product including at least one nucleated blood cell analog. 23
In our decision on motions, we held that the "parent" Young 24
application 10/214,717 did not describe (35 U.S.C. § 112, first paragraph) 25
a method of using a hematology control product including at least one 26
4
nucleated red blood cell analog. Interference 105,504, Paper 116, 1
pages 28-39. 2
Neither party filed a motion for judgment based on no interference-in-3
fact. Accordingly, the parties were content to have us decide the 4
interference on the basis that (1) a method of using a hematology control 5
product including at least one nucleated blood cell analog anticipates or 6
renders obvious a method of using a control including a nucleated red blood 7
cell component and (2) vice versa. 35 U.S.C. § 135(a); 37 C.F.R. 8
§ 41.203(a) (2007). 9
According to Ms. Waack, Ryan did not attempt to establish priority 10
based on a method of using a control including a nucleated red blood cell 11
component. Rather, according to Ms. Waack, Ryan claims to have actually 12
reduced to practice a method of using a control including a nucleated white 13
blood cell component. Ms. Waack was asked why the actual reduction to 14
practice was not suppressed or concealed (35 U.S.C. § 102(g)(1)). 15
According to her response, the actual reduction to practice was 16
commercialized by Ryan's assignee shortly after the reduction to practice 17
and therefore there was no suppression or concealment of the invention. 18
Mr. Hart expressed no disagreement with Ms. Waack's response. 19
If Ms. Waack's proffer is taken at face value, then Ryan can be said to 20
have actually reduced to practice an invention (1) not within the scope of the 21
Ryan claims, but (2) within the scope of both Young's claims and the count. 22
Priority of invention can be established by a non-suppressed or non-23
concealed actual reduction to practice falling within the scope of the count. 24
5
Second item of discussion 1
The second item of discussion, on which input was requested from 2
counsel, was: "What is the Board to do with the Young motion for judgment 3
based on alleged unpatentability under § 103 of the Ryan claims?" 4
Ms. Waack, in addition to indicating that the § 103 motion was wrong 5
on the merits, suggested that the Board had discretion to not decide the 6
motion given that the parties had come to terms through a settlement 7
agreement which is said to have resolved the business interests of both 8
parties. 9
Mr. Hart had a slightly modified take. According to Mr. Hart, nothing 10
in the settlement agreement required Young to "withdraw" its § 103 motion. 11
Mr. Hart therefore reasoned that the Board has discretion to decide the § 103 12
motion. 13
The Board inquired whether either party had contemplated filing a 14
request for reexamination based on the evidence offered by both parties in 15
connection with Young's § 103 motion. Neither Mr. Hart nor Ms. Waack, 16
had considered the possibility, let alone discussed it with their respective 17
clients. Understandably, at the time of the conference call, neither could 18
give an informed response to the Board's reexamination inquiry. 19
As a result of the conference call the Board believes it understands 20
counsel to have indicated the following. Young's assignee and Ryan's 21
assignee are the principal, if not the only, entities involved in selling within 22
the United States apparatus for carrying out the process of the count. That 23
being said, it is possible that, beyond the two assignees, no other entity is 24
likely to have an interest in whether the Ryan patent continues to be viable. 25
Given that both assignees have come to terms "business-wise" and the 26
possible lack of any realistic third-party that might be adversely affected in 27
6
any meaningful way, Ms. Waack suggested that there is no practical reason 1
to decide the Young § 103 motion. 2
C. Discussion 3
Patentability under § 103 4
We will exercise our discretion by not deciding Young's § 103 motion 5
on the merits despite the fact Young has not prevailed on priority. 6
If there are no entities beyond Young's assignee and Ryan's assignee 7
which are affected by the existence of the Ryan patent, then the patentability 8
of the Ryan patent claims is not as significant as it might be if other third-9
parties were in the business or if the Board did not have any input on 10
whether there are other adversely affected third-parties. 11
The other factor is that should someone have a business need, the 12
evidence and arguments, pro and con, included by both parties in 13
prosecuting the Young § 103 motion certainly provides a basis for anyone to 14
request reexamination. 15
We feel comfortable in this case dismissing Young § 103 motion with 16
the understanding that nothing we say should be construed as our having 17
taken a position on the merits. We will also dismiss the Young § 103 18
motion without any prejudice to anyone (including Ryan or Young) filing a 19
request for reexamination of the Ryan patent based on the arguments and 20
evidence presented by the parties in prosecuting the Young § 103 motion. 21
Priority 22
As indicated earlier, a four year difference in filing dates is a serious 23
gap to overcome in making out a case of priority. 24
However, for at least two reasons, we are inclined to accept 25
Ms. Waack's proffer on the issue of priority. 26
First, we have no reason to doubt the proffer. 27
7
Second, the interference, along with Interference 105,504, was 1
contested—some might say "hotly" contested—up to the time of the filing of 2
the CONCESSION OF PRIORITY by Young. If there were any loose ends 3
in the Ryan priority proofs, which we have to assume were reviewed 4
thoroughly by Mr. Hart, we entertain no doubt based on the history of this 5
interference that Young would not have agreed on the merits with 6
Ms. Waack's proffer. We therefore accept the proffer and Young's 7
CONCESSION OF PRIORITY. 8
D. Judgment 9
Upon consideration of the record, including the discussion during the 10
conference call, it is 11
ORDERED that Young Motion 1 (Interference 105,504, 12
Paper 34) is dismissed. 13
FURTHER ORDERED that judgment on priority as to Count 2 14
(the sole count in the interference; Interference 105,504, Paper 39, page 2) is 15
awarded against Senior Party CAROLE J. YOUNG, MICHAEL N. 16
ELLIOTT, NANCY R. NAYLOR-SCHLIPP and TIMOTHY J. FISCHER 17
. FURTHER ORDERED that Senior Party CAROLE J. 18
YOUNG, MICHAEL N. ELLIOTT, NANCY R. NAYLOR-SCHLIPP and 19
TIMOTHY J. FISCHER is not entitled to a patent containing claims 43, 49, 20
51, 54, 59-60, 62-64, 67 and 69-75 (corresponding to Count 2) of: 21
Application 10/909,594 22
filed 02 August 2004 23
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8
FURTHER ORDERED that claims 43, 49, 51, 54, 59-60, 62-1
64, 67 and 69-75 (corresponding to Count 2) of: 2
Application 10/909,594 3
filed 02 August 2004 4
are finally refused. 35 U.S.C. § 135(a). 5
FURTHER ORDERED that if there is any settlement 6
agreement beyond that already filed in the interference, attention is directed 7
to 35 U.S.C. § 135(c). 8
FURTHER ORDERED that a copy of this JUDGMENT shall 9
be placed in the files of (1) Ryan U.S. Patent 6,653,137 B2 and (2) Young 10
application 10/909,594. 11
FURTHER ORDERED that the Clerk is directed to distribute 12
the files upon entry of this JUDGMENT. 13
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cc (via electronic mail): 1
2
Attorney for Ryan 3
(real party in interest 4
Streck Laboratories, Inc.): 5
6
Janelle D. Waack, Esq. 7
Melinda L. Patterson, Esq. 8
Howrey LLP 9
1111 Louisiana, 25th Floor 10
Houston, TX 77002-5242 11
12
Tel: 713-787-1686 (Waack) 13
Tel: 713-787-1592 (Patterson) 14
Fax: 713-787-1440 15
Email: waackj@howrey.com 16
Email: pattersonm@howrey.com 17
18
Attorney for Young 19
(real party in interest 20
Beckman Coulter, Inc.) 21
22
Herbert D. Hart III 23
McANDREWS, HELD & MALLOY, Ltd. 24
500 W. Madison St., 34th Floor 25
Chicago, IL 60661 26
27
Tel: 312-775-8000 28
Fax: 312-775-8100 29
Email: hhart@mhmlaw.com 30
Email: mharlin@mhmlaw.com 31
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