Must Board Permit Every Authorized Patentability Motion to be "Fully Developed"?

In this Analysis, Charles Gholz discusses the issue of when the BPAI will decide issues that it isn't absolutely required to decide in order to enter judgment in a given interference and, specifically, when the BPAI will go on to the second phase of an interference despite the fact that its decision on the first phase of the interference could be used to enter a judgment terminating the interference. He writes:

WHAT THE COURT DID IN PHILIPS V. CARDIAC SCIENCE

[A]fter Koninklijke Philips Electronics N.V. v. Cardiac Science Operating Co., 590 F.3d 1326, 93 USPQ2d 1227 (Fed. Cir. 2010) (opinion by C.J. Gajarsa, joined by Ch.C.J. Michel and S.C.J. Friedman)(hereinafter referred to as "Philips"), the board may have no choice but to decide every patentability and priority motion that is "fairly raised and fully developed during the interference" -and, of course, it is the board's view that priority motions, derivation motions, and inventorship motions are just species of the genus patentability motion. However, the court's opinion in Philips raises an intriguing new question. Must the board permit every authorized patentability motion to be "fully developed"?

     Cardiac Science was the senior party applicant, and Philips was the junior party patentee. During the interference, Philips filed both a 35 USC 112 written description motion for a judgment that all of Cardiac Science's claims were unpatentable and a 35 USC 102/103 motion for a judgment that Cardiac Science's claim 38 was either anticipated by or unpatentable over the same reference. The board granted the written description motion and then either dismissed or deferred Philips's § 102/103 motion.

     The reason that I write that the board "either dismissed or deferred Philips's § 102/103 motion" is that the Federal Circuit's opinion said only that "The Board found it unnecessary to consider the patentability of ...[Cardiac Science's] claims 38, holding that Philips failed to establish that all of ...[Cardiac Science's] other claims were unpatentable in...[its written description motion]." However, it is my guess that the board merely deferred that motion. I base that guess on the fact that the court's opinion continues "As long as the Board found that...[Cardiac Science's] application had priority over the...[Philips] patent and that at least some of the claims [in Cardiac Science's application] were patentable, the Board opined that determining claim 38's patentability was 'not essential for this interference'." According to the court, "The Board assumed that the primary examiner could determine whether...[Cardiac Science's] claim 38 was anticipated or obvious ex parte after the interference proceedings concluded."  This, of course, is the board's usual practice, discussed in Amgen [v. Human Genome Sciences, Inc., 2009 Pat. App. LEXIS 12 (Pat. App. 2009)]

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