Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)

*1 SHIRAI ET AL.

v.

GERRITSEN ET AL.

Patent Interference No. 102,103

June 14, 1993

Final Hearing June 25, 1991

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 Application of Shoji Shirai, Masakazu Fukushima, Satoru Miyamoto and Masahiro Miyazaki, filed November 24, 1987, Serial No. 07/124,595. Accorded benefit of Japan Application No. 288798/1986 filed December 5, 1986.

 Patent granted to Jan Gerritsen and Johannes C.J. Aerts on May 21, 1991, Patent No. Reissue 33592 filed August 31, 1989, Serial No. Reissue 07/402,001. Accorded benefit of Serial No. 002,065 filed 01/12/87, Patent No. 4,742,279 issued May 3, 1988 and Netherlands Patent Application No. 8600117 filed January 21, 1986.

Donald R. Antonelli, David T. Terry, Charles E. Wands, Melvin Kraus, James F. McKeown, Stanley A. Wal, David S. Safran, William I. Solomon, Gregory E. Montone and Ronald J. Shore for Shirai et al. Oral argument by Melvin Kraus.

Thomas A. Briody, Jack E. Haken and Robert J. Kraus for Gerritsen et al. Oral argument by Robert J. Kraus

Before Urynowicz, Caroff and Lynch

Examiners-in-Chief

Urynowicz

Examiner-in-Chief

 On November 19, 1992 the United States Court of Appeals for the Federal Circuit (the Court) vacated the sanction imposed against the senior party Gerritsen et al. by the Board of Patent Appeals and Interferences (the Board) and remanded this case to the Board for new fact findings relevant to the selection of an appropriate sanction and for imposition of the sanction.

 In its decision, the Court found that the Board clearly erred by finding the senior party's failure to make a belated motion to add its reissue application to the interference under 37 CFR 1.662(b) was the cause of Shirai et al.'s lack of opportunity to raise issues with respect to the new reissue claims. The Court also found that the senior party's failure to move did not result in significant prejudice to the U.S. Patent and Trademark Office (PTO) or the public interest based on a need to allow a further preliminary motions period due to Gerritsen et al.'s failure to make the aforementioned belated motion.

 In its decision the Court agreed that what the party Gerritsen et al. did was worthy of some sanction, but it was apparently the severity of the sanction that the Board originally applied which caused the Court to remand. We have reviewed anew the history of this proceeding with respect to the senior party's practice herein. Formed in light of the Court's decision and that review, our opinion is that Gerritsen et al.'s conduct in this proceeding has prejudiced Shirai et al., the PTO and the public interest and, consequently, that the sanction applied below against the senior party is appropriate.

 As pointed out in 37 CFR 1.601, the purpose of the interference rules is  "... to secure the just, speedy, and inexpensive determination of every interference." At the Final Hearing, counsel for the party Gerritsen et al. not only refused to acknowledge that the senior party had failed to comply with 37 CFR 1.662(b), but emphatically and stubbornly took the position that since the patent statute allowed the filing of a reissue at any time during the life of the patent, it was not necessary for Gerritsen et al. to follow the provisions of the above interference rule in this regard. This position was certainly not conducive to a just, speedy and inexpensive determination of this interference. It was not just or inexpensive for the party Shirai et al., which was required to expend much effort in briefing and arguing the issue raised by the Board of the propriety of the senior party's conduct surrounding the filing of their reissue. Neither was it inexpensive for the PTO. The Examiner-in-Chief got embroiled in this issue of sanctions and the Solicitor's Office expended significant resources on the case after Gerritsen et al. filed a notice of appeal to the Federal Circuit. [FN1] Nor was it inexpensive for the Court, which had to expend its resources on an appeal which could have been easily avoided had the senior party complied with 37 CFR 1.662(b).

  *2 We also note that our previous judgment was rendered on August 6, 1991, and the Court's decision was rendered on November 19, 1992. Thus, the final disposition of this interference has been delayed by over one year and three months, plus the additional time required for the Board to wrestle with the remand since the Court's decision. All this wasted time (approximately two years) occurred because Gerritsen failed to comply with 37 CFR 1.662(b).

 Of further but no less equal importance, is the fact that, by refusing to follow the applicable interference rule with respect to reissue applications, the party Gerritsen et al. was able to engage in ex parte prosecution of its reissue application and obtain a patent prematurely thereon. Thus, the senior party was able to confront the public with new claims in a reissue patent long before he could have done so had prosecution on the reissue application been suspended due to its involvement in the interference. The party Gerritsen et al. filed its reissue application on August 31, 1989 and our original final decision is dated August 6, 1991. Thus, the senior party was able to obtain its additional reissue claims almost two years before it could have expected to do so had it followed proper interference procedure.

 Accordingly, since the Court has indicated that some sanction is warranted, and since the actions of the party Gerritsen et al. have not effected a just, speedy, and inexpensive determination of this interference and have enabled the senior party to obtain additional claims in a reissue patent almost two years before it could have expected to do so had it followed proper interference procedure, we apply the following sanction:

 The party Gerritsen et al. is ordered to file a terminal disclaimer within 30 days of this decision for the final two years of the RE33,592 patent. [FN2]

 Should the senior party fail to respond to the above order, further sanction against Gerritsen et al. will be considered by the Board.

Judgment

 Judgment as to the subject matter of the count in issue is awarded to Jan Gerritsen and Joannes C.J. Aerts, the senior party. On the present record the party Gerritsen et al. is entitled to its reissue patent with claims 1, 3-6 and 10-22 corresponding to the count. The party Shirai et al. is not entitled to a patent on its application with claims 1-15.

BOARD OF PATENT APPEALS AND INTERFERENCES

Stanley M. Urynowicz, Jr

Examiner-in-Chief

Thomas E. Lynch

Examiner-in-Chief

FN1. At the Court, as before the Board, Gerritsen et al. argued that no sanction at all was justified based on its actions with respect to its reissue application.

FN2. We recognize that this modest order affects claims of the senior party not involved in this proceeding. However, the effect is incidental; there is no such thing as a partial terminal disclaimer. See 35 USC 253, second paragraph.

DISSENTING-IN-PART OPINION

*3 Marc Caroff

Examiner-in-Chief

 I concur in the result reached by the majority (imposition of a sanction requiring the party Gerritsen et al. to file a disclaimer of the terminal two years of its RE 33,592 patent). My concurrence is based on the finding that the senior party proceeded in bad faith by prematurely engaging in ex parte prosecution of its reissue application to the point of obtaining a reissued patent on May 21, 1991 despite the fact that the senior party: (1) failed to comply with the requirements set forth in 37 C.F.R. 1.662(b); (2) was informed by the Examiner-in-Chief (EIC) on February 8, 1990 (Paper No. 18) that it was considered to be in noncompliance with the rule; and (3) was ordered by the EIC at the same time to show cause why sanctions for failure to comply with the rule should not be applied.

 Counsel for Gerritsen et al. is charged with the knowledge that if a motion to add the reissue application was filed (as required by § 1.662(b)) and granted, ex parte prosecution of the reissue application would have been suspended. § 1.615(a). Ex parte prosecution could have been continued only with the express consent of the EIC. § 1.615(b). Yet, the senior party continued to prosecute its reissue application oblivious to the requirements of § 1.662(b) and the position of the EIC with respect to that rule and, at the same time, paying no heed to the procedural restrictions mandated by § 1.615.

 As indicated in the majority opinion, the adverse impact of these actions on the public interest is clear. In this regard, see 35 U.S.C. 251, first paragraph, for limitations upon the term of a reissued patent, especially when read in conjunction with the second paragraph of 35 U.S.C. 252.

 However, I cannot agree with the additional reasons advanced by the majority in support of the presently imposed sanction. In my opinion, mere arrogance or "stubbornness" on the part of an attorney in staunchly defending his position is not by itself a sanctionable offense especially where, as here, that position has not been determined by our reviewing court to be totally without merit. Therefore, I cannot say that the senior party's action in contesting our initially-imposed sanction was frivolous or an abuse of the appeal process.

 In response to the Board's order of June 14, 1993 (Paper No. 65), the party Gerritsen et al. have filed a disclaimer of the final two year terminal part of Reissue Patent Re. 33,592 extending from May 3, 2003 to its expiration on May 2, 2005. The response is deemed a complete reply by the senior party in compliance with the aforementioned order. [FN1]

 Whereas a final decision was rendered in this proceeding on June 14, 1993 and there is no outstanding matter remaining before the Board, the interference is terminated.

FN1. Language of the terminal disclaimer is in conflict with terminology found in examples of terminal disclaimers given at MPEP § 1490. Accordingly, we consider that a typographical error appears at page 2, line 6, of the disclaimer and we construe the term "grantor" (The U.S. Patent and Trademark Office) at page 2, line 6, of the disclaimer, to be grantee (U.S. Philips Corporation). In any case, since any "successor" or "assigns" would step into the shoes of a grantee, these terms of the disclaimer are deemed to encompass a grantee such as U.S. Philips Corporation.

July 29, 1993

Stanley M. Urynowicz, Jr., Marc L. Caroff and Thomas E. Lynch

Examiners-in-Chief

  *4 In response to the Board's order of June 14, 1993 (Paper No. 65), the party Gerritsen et al. have filed a disclaimer of the final two year terminal part of Reissue Patent Re. 33,592 extending from May 3, 2003 to its expiration on May 2, 2005. The response is deemed a complete reply by the senior party in compliance with the aforementioned order. [FN1]

 Whereas a final decision was rendered in this proceeding on June 14, 1993 and there is no outstanding matter remaining before the Board, the interference is terminated.

FN1. Language of the terminal disclaimer is in conflict with terminology found in examples of terminal disclaimers given at MPEP §1490. Accordingly, we consider that a typographical error appears at page 2, line 6, of the disclaimer and we construe the term "grantor" (The U.S. Patent and Trademark Office) at page 2, line 6, of the disclaimer, to be granted (U.S. Philips Corporation). In any case, since any "successor" or "assigns" would step into the shoes of a grantee, these terms of the disclaimer are deemed to encompass a grantee such as U.S. Philips Corporation.

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