Is the Federal Circuit a Paper Tiger?

Is the Federal Circuit a Paper Tiger?


For years now, the Federal Circuit has been telling the Administrative Patent Judges (hereinafter referred to as "the APJs") that they should decide every patentability and priority motion that is "fairly raised and fully developed during...[an] interference." Throughout those years, the APJs have been assiduously ignoring the Federal Circuit's admonitions--and, remarkably, the Federal Circuit has been ignoring the fact that its admonitions have gone ignored.

It is the thesis of this article that the Federal Circuit should either enforce its admonitions or stop making them. To continue repeating those admonitions while simultaneously allowing the APJs to ignore them makes the Federal Circuit look silly.


Perkins v. Kwon

This saga goes back to Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir. 1989)(opinion by Circuit Judge Newman for a panel that also consisted of Chief Circuit Judge Markey and Senior Circuit Judge Cowen) [an enhanced version of this opinion is available to subscribers]. In that case, a nine-member expanded panel of the Board of Patent Appeals and Interferences (hereinafter referred to as "the Board" or "the BPAI") had held that neither party was entitled to a patent on its invention. Perkins's claims designated as corresponding to the count were held to be unpatentable under 35 USC 102(g) because Kwon (the junior party) was the prior inventor, and Kwon's claims designated as corresponding to the count were held to be unpatentable under 35 USC 102(b) over Perkins' publication, sale, and public use of the invention more than a year before Kwon's filing date. Kwon v. Perkins, 6 USPQ2d 1747 (BPAI 1988). The only issue on appeal was "Perkins' the authority of the Board to have decided the question of priority of invention and cancelled Perkins' claims, when it was [also] determined by the Board that the invention of the count was unpatentable to Kwon" over prior art.

Kwon did not participate in the appeal. However, the Commissioner of Patents and Trademarks appeared as amicus curia, arguing for affirmance of the Board's decision. Interestingly, the Commissioner was represented by then-Solicitor Fred E. McKelvey, whose name appears frequently in this saga. According to Judge Newman's opinion:

The Commissioner, in support of the Board's decision, points out the expediency of resolution of all issues by the Board, on the possibility of appellate reversal of some but not all of the Board's rulings. The Commissioner emphasizes that the time-consuming delays inherent in the prior practice of piecemeal decisions in consecutive proceedings before separate tribunals [i.e., the Board of Appeals and the Board of Patent Interferences] contributed to this legislative change [i.e., the consolidation of the two separate tribunals into the BPAI].[footnotes omitted]

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