Winkerv.Abileah et al.

Board of Patent Appeals and Interferences

Nov 23, 1999

08881667 (B.P.A.I. Nov. 23, 1999)

Filed September 30, 1994. Accorded the benefit of1
application 08/223,251, filed April 4, 1994, now Patent No.
5,504,603, granted April 2, 1996. The real party in interest
is Rockwell Science Center, LLC.
Filed June 24, 1997. Accorded the benefit of2
application 08/595,068, filed February 1, 1996, application
08/451,962, filed May 26, 1995, now Patent No. 5,818,615,
granted October 6, 1998, and application 08/160,731, filed
December 2, 1993, now Patent No. 5,499,126, granted March 12,
1996. The real party in interest is OIS Optical Imaging
Systems, Inc.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not
written for publication in a law journal and (2) is not binding precedent
of the Board.
Paper No. 21
Filed by: Trial Section Merits Panel
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
_______________
BRUCE K. WINKER
Junior Party,
(Patent No. 5,612,801)1
v.
ADIEL ABILEAH, GANG XU,
and PATRICK F. BRINKLEY
Senior Party
(Application 08/881,667)2
_______________
Patent Interference No. 104,372
_______________
Interference No. 104,372
Winker v. Abileah
- 2 -
Before: McKELVEY, Senior Administrative Patent Judge, and
SCHAFER and LEE, Administrative Patent Judges.
LEE, Administrative Patent Judge.
JUDGMENT UNDER 37 CFR § 1.662(b)
This interference was declared on September 15, 1999. At
the time of declaration, the count was as follows:
Count 1
[Abileah claim 96]
A compensator for a liquid crystal display
comprising:
(a) a first deposited thin-film compensator
layer having a first surface;
(b) a second thin-film compensator layer
deposited onto said first surface of said first
compensator layer, wherein each of said first and
said second deposited thin-film compensator layers
are selected from the group consisting of: (i) a
positively birefringent A-plate compensator layer,
and (ii) a negatively birefringent C-plate
compensator layer.
or
[Winker claim 1]
A monolithic compensator for a liquid crystal
display comprising:
(a) a first deposited thin-film compensator
layer having a first surface;
(b) a second thin-film compensator layer
deposited onto said first surface of said first
compensator layer, wherein each of said first and
Interference No. 104,372
Winker v. Abileah
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said second deposited thin-film compensator layers
are selected from the group consisting of: (i) a
positively birefringent O-plate compensator layer,
(ii) a positively birefringent A-plate compensator
layer, (iii) a negatively birefringent A-plate
compensator layer and (iv) a negatively birefringent
C-plate compensator layer.
Interference No. 104,372
Winker v. Abileah
- 4 -
A. First conference call
A first telephone conference call was held on 3 November
1999, involving:
1. John J. Deinken, Esq., counsel for junior party
Winker;
2. Joseph A. Rhoa, Esq., counsel for senior party
Abileah; and
3. Jameson Lee, Administrative Patent Judge (APJ).
B. Discussion--first conference call
Winker informed the APJ that junior party Winker intends
to file a reissue application which limits the first deposited
thin-film compensator layer of all Winker claims corresponding
to the count to a positively birefringent O-plate layer, to
add the reissue application to this interference, to change
the count to require a positively birefringent O-plate layer
as the first deposited thin-film compensator layer, and to
designate all of Abileah’s claims corresponding to the present
count as not corresponding to the proposed new count.
Abileah informed the APJ that if the count is changed as
was proposed by Winker, Abileah cannot prevail on priority.
The parties agreed that there would be no interference-in-fact
Interference No. 104,372
Winker v. Abileah
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between Abileah’s claims and all claims Winker proposed to
include in Winker’s reissue application, since all claims in
the Winker reissue application will require a positively
birefringent O-plate layer as the first deposited thin-film
compensator layer. The APJ took the information under
advisement
C. Second conference call
A second telephone conference call was held on 3 November
1999, involving:
1. John J. Deinken, Esq., counsel for junior party
Winker;
2. Joseph A. Rhoa, Esq., counsel for senior party
Abileah; and
3. Jameson Lee, Administrative Patent Judge (APJ).
D. Discussion--second conference call
The APJ proposed the following to the parties:
1. The APJ will sua sponte change the count to
read the same as Abileah’s application claim 96,
which requires each of the first and second
deposited thin-film compensator layer to be selected
from the group consisting of (i) a positively
Interference No. 104,372
Winker v. Abileah
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birefringent A-plate compensator layer, and (ii) a
negatively birefringent C-plate compensator layer.
2. All claims which corresponded to the
original count will be designated as corresponding
to the proposed new count.
3. Winker will file its reissue application to
limit each claim to a first deposited thin-film
compensator layer which is made of a positively
birefringent O-plate layer and include no claim
which in Winker’s opinion corresponds to the
modified count.
4. Under 37 CFR § 1.662(b), Winker’s filing of
such a reissue application will operate as a request
for entry of adverse judgment as to the subject
matter of the modified count.
5. After filing of the reissue application,
the Board will enter judgment in favor of Abileah,
and Winker will be left to pursue its reissue
application claims before an examiner, in ex parte
prosecution, and Winker runs the risk of an examiner
finding that the reissue application claims are not
Interference No. 104,372
Winker v. Abileah
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patentably distinct from the subject matter of the
lost count. The examiner may uncover references
sufficient to render Winker’s reissue application
claims obvious in view of the subject matter of the
lost count.
The APJ instructed the parties to consider the proposed
course of action and to contact the APJ in a joint telephone
conference call to inform him as to their decision.
E. Third conference call
A third telephone conference call was held 10 November
1999, at approximately 2:00 p.m. (1400 hours Eastern Time),
involving:
Interference No. 104,372
Winker v. Abileah
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1. John J. Deinken, Esq., counsel for junior party
Winker;
2. Joseph A. Rhoa, Esq., counsel for senior party
Abileah; and
3 Jameson Lee, Administrative Patent Judge (APJ).
F. Discussion--third conference call
The parties advised the APJ that the actions proposed by
the APJ are agreeable to the parties. In particular, the
parties represented that the filing by Winker of a reissue
application all of which claims require the first deposited
thin-film compensator layer to be a positively birefringent O-
plate layer will operate as a request for entry of adverse
judgment against Winker as to the subject matter of a modified
count which requires each of the first and second deposited
thin-film layer to be selected from the group consisting of
(i) a positively birefringent A-plate compensator layer, and
(ii) a negatively birefringent C-plate compensator layer.
G. On November 10, 1999, the APJ re-declared the
interference (Paper No. 18) to change the count to the
following:
A compensator for a liquid crystal display
comprising:
Interference No. 104,372
Winker v. Abileah
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(a) a first deposited thin-film compensator
layer having a first surface;
(b) a second thin-film compensator layer
deposited onto said first surface of said first
compensator layer, wherein each of said first and
said second deposited thin-film compensator layers
are selected from the group consisting of: (i) a
positively birefringent A-plate compensator layer,
and (ii) a negatively birefringent C-plate
compensator layer.
All of the claims which corresponded to the original
count were designated as corresponding to the modified count.
H. On November 15, 1999, Winker filed a reissue
application to reissue its involved patent in this
interference. The original independent claims were amended to
require the first deposited thin-film layer to be a positively
birefringent O-plate compensator layer.
I. Fourth conference call
A fourth telephone conference call was held 19 November
1999, at approximately 3:00 p.m. (1500 hours Eastern Time),
involving:
1. John J. Deinken, Esq., counsel for junior party
Winker;
2. Joseph A. Rhoa, Esq., counsel for senior party
Abileah; and
Interference No. 104,372
Winker v. Abileah
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3 Jameson Lee, Administrative Patent Judge (APJ).
J. Discussion--fourth conference call
The parties confirmed to the APJ that in their view
Winker’s reissue application does not contain any claim that
corresponds to the modified count, and that judgment should
issue in favor of Abileah as to the subject matter of the
modified count.
K. The parties’ joint position that all of Winker’s
reissue claims do not correspond to the modified count appears
facially plausible on this record, in the absence of any
evidence to which we have been directed. In this
circumstance, entry of adverse judgment with respect to
Winker’s involved patent is authorized under 37 CFR §
1.662(b). We regard the filing of the Winker reissue
application as constituting a request for entry of adverse
judgment as to the subject matter of the modified count. The
request is granted.
L Order
Upon consideration of the record, it is
ORDERED that junior party Winker is not entitled to
its patent claims 1-7, which correspond to the count.
Interference No. 104,372
Winker v. Abileah
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FURTHER ORDERED that senior party Abileah is
entitled to its application claims 96-102 which correspond to
the count.
FURTHER ORDERED that judgment is entered with
prejudice as to Winker’s involved patent claims 1-7, but that
Winker is free to pursue, in ex parte, before a primary
examiner claims now pending in its reissue application which
limit the first deposited thin-film layer to a positively
birefringent O-plate compensator layer, by arguing that such
claims would not have been obvious over the lost count.
FURTHER ORDERED that nothing in this JUDGMENT UNDER
37 CFR § 1.662(b) should be construed as expressing an opinion
on the patentable distinction or lack thereof between Winker’s
reissue application claims and the subject matter of the
count. The examiner is free to make his or her own
determination in that regard, and that Winker shall bring to
the examiner’s attention the substance of this particular
paragraph.
FURTHER ORDERED that should further prosecution by
Winker of its reissue application result in an appeal to the
Interference No. 104,372
Winker v. Abileah
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board, Winker shall identify this interference as a related
case.
______________________________
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
______________________________)
RICHARD E. SCHAFER ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
______________________________)
JAMESON LEE )
Administrative Patent Judge )
Interference No. 104,372
Winker v. Abileah
- 13 -
By Federal Express:
Attorney for senior party Abileah
(real party in interest
OIS Optical Imaging Systems, Inc.):
Joseph A. Rhoa
6550 Rock Spring Drive, Suite 240
Bethesda, Maryland 20817
Attorney for junior party Winkler
(real party in interest
Rockwell Science Center, LLC.):
John J. Deinken
P.O. Box 1085, MC A15
Thousand Oaks, California 91358-0085