Loughlin v. Ling

United States Court of Appeals
for the Federal Circuit
__________________________
ROBERT LOUGHLIN AND JOHN LOUGHLIN,
Appellants,
v.
RENNY TSE-HAW LING AND CHUN-SHENG WU,
Appellees.
__________________________
2011-1432
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
__________________________
Decided: July 11, 2012
__________________________
GLEN M. DIEHL, Diehl Servilla LLC, of Iselin, New
Jersey, argued for appellant.
TODD R. WALTERS, Buchanan Ingersoll & Rooney P.C.,
of Alexandria, Virginia, argued for appellee. With him on
the brief was ERIN M. DUNSTON. Of counsel on the brief
was TODD P. BLAKELY, Sheridan Ross PC, of Denver,
Colorado.
__________________________
Before RADER, Chief Judge, and LOURIE and MOORE,
Circuit Judges.
LOUGHLIN v. LING 2
LOURIE, Circuit Judge.
Robert Loughlin and John Loughlin (together,
“Loughlin”) appeal from the judgment of the Board of
Patent Appeals and Interferences (the “Board”) canceling
claim 1 of U.S. Patent 7,434,426 (the “’426 patent”) pur-
suant to their request for adverse judgment in light of the
Board’s decision on the relationship between 35 U.S.C.
§ 135(b)(2) and 35 U.S.C. § 120. Because we agree with
the Board that the interfering claims of Renny Tse-Haw
Ling and Chun-Sheng Wu (together, “Ling”) are not
barred by 35 U.S.C. § 135(b)(2), and hence that the Board
correctly canceled claim 1, we affirm.
BACKGROUND
This appeal arises from an interference proceeding
under 35 U.S.C. § 135(a) between Loughlin’s ’426 patent
and Ling’s Application No. 11/671,404 (the “’404 applica-
tion”), both of which claim a “multiple function lock.”
On May 13, 2004, Loughlin filed Application No.
10/845,624 (the “’624 application”). The ’624 application
was published on November 18, 2004, as Publication No.
2004/0226324. On October 14, 2008, the ’624 application
issued as the ’426 patent.
On February 5, 2007, Ling filed the ’404 application,
which was granted priority benefit under § 120 from
Application No. 10/759,413 (the “’413 application”), filed
January 16, 2004. On February 21, 2007, Ling, seeking to
provoke an interference, copied claims from Loughlin’s
pending ’624 application. Relevant to the issue on appeal,
Ling added to the ’404 application new claim 31, which
was identical to claim 42 of Loughlin’s ’624 application.
Loughlin’s claim 42 later issued as claim 1 of Loughlin’s
’426 patent.
3 LOUGHLIN v. LING
In September 2010, the United States Patent and
Trademark Office (“PTO”) declared an interference be-
tween claim 1 of Loughlin’s ’426 patent and claim 31 of
Ling’s ’404 application. Shortly thereafter, Loughlin
moved for judgment under § 135(b)(2), which provides
that:
A claim which is the same as, or for the same or
substantially the same subject matter as, a claim
of an application published under section 122(b) of
this title may be made in an application filed after
the application is published only if the claim is
made before 1 year after the date on which the
application is published.
35 U.S.C. § 135(b)(2) (emphasis added). * Loughlin as-
serted that Ling was barred by § 135(b)(2) from provoking
an interference because Ling’s attempt to copy the claim
from Loughlin’s published application was untimely, i.e.,
Ling’s ’404 application is “an application filed” after the
publication date of Loughlin’s ’624 application and Ling
copied Loughlin’s claim more than one year after its
publication date.
The Board denied Loughlin’s motion. Loughlin v.
Ling, Interference No. 105,766, slip op. at 7 (B.P.A.I. Feb.
17, 2011) (“Decision on Motion”). The Board concluded
that the bar imposed by § 135(b)(2) does not apply to an
application filed before a published application. Id. at 4.
Noting that Loughlin’s motion raised the issue whether
Ling’s ’404 application is “an application filed” after the
* On September 16, 2011, the President signed into
law the Leahy-Smith America Invents Act, Pub. L. No.
112-29, § 3(i), 125 Stat. 284, 289–90 (2011) (to be codified
at 35 U.S.C. § 135), which at a future date will replace
“Interferences” with “Derivation proceedings” in § 135.
That newly enacted law does not apply to this case.
LOUGHLIN v. LING 4
date on which Loughlin’s ’624 application was published,
the Board observed that it “has consistently determined
that § 120 is applicable when considering whether ‘an
application filed’ is after the date on which another appli-
cation is published.” Id. The Board thus held that, “since
Ling was granted § 120 priority benefit of its ’413 Applica-
tion[], then Ling’s involved ’404 application, having an
effective filing date of 16 January 2004, is not an applica-
tion filed after Loughlin’s Application published on 18
November 2004.” Id.
On March 8, 2011, Loughlin requested adverse judg-
ment under 37 C.F.R. § 41.127(b) (“Board Rule 127(b)”), in
essence conceding that his entire case hinged on the
Board’s interpretation of § 135(b)(2). A day later, the
Board entered judgment against Loughlin, canceling
claim 1 of the ’426 patent and observing that “[Loughlin’s
counsel] represented that Loughlin intends to appeal the
decision denying [the motion for judgment under
§ 135(b)(2)].” Loughlin v. Ling, Interference No. 105,766,
2011 WL 841189 (B.P.A.I. Mar. 9, 2011) (“Judgment”).
Loughlin appealed.
DISCUSSION
In an appeal from the Board, we review factual find-
ings for substantial evidence and legal conclusions, in-
cluding statutory interpretation, de novo. Stevens v.
Tamai, 366 F.3d 1325, 1330 (Fed. Cir. 2004). When
interpreting a statute, “we give effect to the intent of
Congress by ‘look[ing] not only to the particular statutory
language, but to the design of the statute as a whole and
to its object and policy.’” In re Swanson, 540 F.3d 1368,
1375 (Fed. Cir. 2008) (alteration in original) (quoting
Crandon v. United States, 494 U.S. 152, 158 (1990)). We
review the Board’s application of its interference rules for
an abuse of discretion. Stevens, 366 F.3d at 1330.
5 LOUGHLIN v. LING
Loughlin argues on appeal that the Board incorrectly
determined that § 120 applies when considering the date
of “an application filed” under § 135(b)(2). According to
Loughlin, because the actual (not effective) filing date of
Ling’s ’404 application was more than one year after the
publication of Loughlin’s ’624 application, Ling was
barred by § 135(b)(2) from copying Loughlin’s claims.
Because Ling waited more than one year after the publi-
cation of Loughlin’s ’624 application to copy the claims,
Loughlin argues, the Board should have dissolved the
interference.
In response, Ling argues that the Board correctly con-
strued “an application filed” in § 135(b)(2) as including an
application filed earlier and benefiting from the provi-
sions of § 120. Ling points out that the ordinary under-
standing of “an application filed” refers to the
application’s effective filing date under § 120, as the
Board has held in three prior interference decisions.
Thus, Ling argues, the Board correctly held that Ling was
not time-barred under § 135(b)(2) from copying claims
from Loughlin’s ’624 application to provoke an interfer-
ence.
In the alternative, Ling contends that we should dis-
miss the appeal for lack of jurisdiction. According to Ling,
Loughlin conceded priority by requesting entry of adverse
judgment, so there was no final adverse decision from
which Loughlin could appeal. Ling further contends that
Loughlin failed to exhaust his administrative remedies by
prematurely requesting adverse judgment. Finally, Ling
asks us to dismiss Loughlin’s appeal as an impermissible
interlocutory appeal.
We first address Ling’s jurisdictional arguments. “It
is axiomatic that the initial inquiry in any appeal is
whether the court to which appeal is taken has jurisdic-
LOUGHLIN v. LING 6
tion to hear the appeal.” Woodard v. Sage Prods., Inc.,
818 F.2d 841, 844 (Fed. Cir. 1987) (en banc). Under 28
U.S.C. § 1295(a)(4)(A), we have exclusive jurisdiction over
an appeal from “a decision” of the Board. We have held
that § 1295(a)(4) should be read to incorporate a finality
requirement. See Copelands’ Enters., Inc. v. CNV, Inc.,
887 F.2d 1065, 1067–68 (Fed. Cir. 1989) (en banc). This
requirement of finality, which is based on prudential
considerations, id. at 1067, serves the important purposes
of “emphasiz[ing] the deference that appellate courts owe
to the trial judge,” avoiding “piecemeal appeals,” and
“promoting efficient judicial administration,” Firestone
Tire & Rubber Co. v. Risjord, 449 U.S. 368, 374 (1981).
Appeals from interference actions are governed by 35
U.S.C. § 141, which provides in relevant part that “[a]
party to an interference dissatisfied with the decision of
the Board of Patent Appeals and Interferences on the
interference may appeal the decision to the United States
Court of Appeals for the Federal Circuit . . . .” Moreover,
Board Rule 127(b) expressly permits a party to request
adverse judgment in an interference:
(b) Request for adverse judgment. A party may at
any time in the proceeding request judgment
against itself. Actions construed to be a request
for adverse judgment include:
....
(3) Concession of priority or unpatentability of the
contested subject matter[.]
We conclude that the Board’s decision on priority is a
final, adverse judgment over which we have jurisdiction.
Loughlin appropriately availed himself of Board Rule
127(b) in requesting adverse judgment. Furthermore,
Loughlin represented to the Board that he intended to
7 LOUGHLIN v. LING
appeal the decision denying his motion under § 135(b)(2),
and the Board noted that representation in granting the
request for adverse judgment. Judgment, 2011 WL
841189, at *1. Judicial economy is promoted, not frus-
trated, by permitting Loughlin to request adverse judg-
ment and seek review under § 141 of the dispositive legal
issue in this appeal. Moreover, there is no question that
Loughlin is “dissatisfied with the [Board’s] decision” to
deny his motion under § 135(b)(2). See 35 U.S.C. § 141.
In view of the expansive statutory language governing
appeals from interference actions and the Board’s rule
permitting such requests for adverse judgment, we con-
clude that we possess jurisdiction over Loughlin’s appeal.
Ling’s jurisdictional arguments rely primarily on two
district court cases, Human Genome Sciences, Inc. v.
Amgen, Inc., 552 F. Supp. 2d 466 (D. Del. 2008) (“HGS I”),
and Human Genome Sciences, Inc. v. Genentech, Inc., 589
F. Supp. 2d 512 (D. Del. 2008) (“HGS II”). Those cases,
however, do not compel the result sought by Ling. HGS I
and HGS II were civil actions filed under § 146 following
a request for adverse judgment on a poorly developed
record, and the district court was concerned that the
court’s consideration of new evidence in the civil action
would amount to “an effective usurpation of the Board’s
original jurisdiction to determine priority.” HGS I, 552 F.
Supp. 2d at 474; see also HGS II, 589 F. Supp. 2d at 520.
Here, in contrast, we have a direct appeal from the Board
to our court under § 141, and benefit under § 120 is not
disputed. Decision on Motion, slip op. at 4 n.4 (“Loughlin
does not dispute that Ling’s involved ’404 Application is
entitled to the benefit of the earlier effective filing date of
Ling’s ’413 Application.”). Thus, as the district court itself
observed, the concerns motivating its decisions in HGS I
and HGS II are not directly relevant to appeals under
§ 141. See HGS I, 552 F. Supp. 2d at 474 n.10 (“Such
LOUGHLIN v. LING 8
concerns may be minimized when the appeal is to the
Federal Circuit on the PTO record pursuant to 35 U.S.C.
§§ 141–144.”); see also HGS II, 589 F. Supp. 2d at 522
n.21. We therefore reject Ling’s jurisdictional arguments.
We now turn to the merits of Loughlin’s appeal. We
agree with Ling that the Board correctly interpreted
§ 135(b)(2) in view of the plain language of that statute
and the benefit provision of § 120. The first sentence of
§ 120 permits an application to claim the benefit of an
earlier filing date, such that the application is treated as
having been effectively filed on the earlier date. The
statute provides in relevant part:
An application for patent for an invention dis-
closed in the manner provided by section 112(a)
. . . in an application previously filed in the United
States . . . shall have the same effect, as to such
invention, as though filed on the date of the prior
application . . . .
35 U.S.C. § 120 (emphases added). Provided the criteria
in § 120 are met, applications “shall,” without exception,
receive the benefit of the earlier filing date. The statute
does not limit its effect to only certain provisions under
the patent laws. As our predecessor court explained,
“[n]othing in § 120 limits its application to any specific
grounds for rejection . . . .” In re Hogan, 559 F.2d 595,
604 (CCPA 1977).
The broad applicability of § 120 is illustrated in the
context of 35 U.S.C. § 102. Subsections (b), (d), and (e) of
§ 102 refer to the filing of an “application” but do not
explicitly reference § 120. Yet, as Loughlin concedes,
§ 120 applies to those subsections, permitting applicants
to antedate prior art by claiming the benefit of an earlier
filing date. Appellant’s Br. 15; see also, e.g., PowerOasis,
Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir.
9 LOUGHLIN v. LING
2008) (recognizing that a proper claim for benefit under
§ 120 may avoid prior art under § 102(b)); Bayer AG v.
Schein Pharm., Inc., 301 F.3d 1306, 1323 (Fed. Cir. 2002)
(holding that an application may claim benefit under
§ 120 to defeat an invalidity defense under § 102(d)); In re
Chu, 66 F.3d 292, 297 (Fed. Cir. 1995) (recognizing that a
proper claim for benefit under § 120 may avoid prior art
under § 102(e)).
Loughlin offers no convincing reason why the priority
benefit under § 120 should not apply to “an application
filed” under § 135(b)(2). At most, Loughlin asserts that
the Board erred by construing § 135(b)(2) and § 120 in
pari materia. As the Supreme Court has explained,
however, “[a] party seeking a right under the patent
statutes may avail himself of all their provisions, and the
courts may not deny him the benefit of a single one.”
United States v. Am. Bell Tel. Co., 167 U.S. 224, 247
(1897). In this case, as Ling’s ’404 application was enti-
tled under § 120 to the benefit of the ’413 application for
the subject matter of claim 31, it was “an application” for
purposes of § 135(b)(2) as well. Ling was therefore enti-
tled to avail himself of § 120 in overcoming the bar set
forth in § 135(b)(2).
Loughlin argues that § 135(b)(2) is a “staleness” pro-
vision requiring a party who wishes to provoke an inter-
ference to do so in a timely manner, so that Ling, who
waited more than two years after Loughlin’s application
was published to file his application, should not benefit
from § 120. We recognize the force of Loughlin’s point
about timeliness, but it cannot prevail in light of § 120’s
granting of priority benefit to any application meeting its
requirements, which includes Ling’s application.
Bolstering our conclusion is the fact that the Board
has consistently interpreted “an application filed” in
LOUGHLIN v. LING 10
§ 135(b)(2) as including the benefit provision of § 120. See
Sepracor, Inc. v. Wyeth LLC, Interference No. 105,685
(B.P.A.I. Feb. 1, 2010) (J.A. 277–318); Ryan v. Young,
Interference Nos. 105,504 & 105,505, 2008 WL 577435(B.P.A.I. Mar. 4, 2008) (J.A. 346–404); Ding v. Singer,
Interference No. 105,436 (B.P.A.I. Aug. 24, 2007) (J.A.
405–25). In Sepracor, the Board found the phrase “an
application filed” in §135(b)(2) “clear on its face” as includ-
ing the benefit provision of § 120. J.A. 298. In Ryan, the
Board concluded that it would be absurd to hold that an
applicant could rely on § 120 to antedate a bar under
§ 102 but not the bar under §135(b)(2). And in Ding, the
Board observed that § 120 applies without exception to
patent applications meeting its criteria, and that
§ 135(b)(2) does not itself exclude the application of § 120.
In each case, the Board concluded that § 120 may apply in
the context of § 135(b)(2). We see no reason to disagree
with those well-reasoned opinions.
Accordingly, the Board correctly interpreted “an ap-
plication filed” in § 135(b)(2) as including the possibility of
claiming benefit under § 120 to an earlier effective filing
date. It is not disputed that Ling’s ’404 application is
entitled to benefit under § 120. Decision on Motion, slip
op. at 4 n.4. As the Board correctly held, Ling was not
barred by § 135(b)(2) from copying claims from Loughlin’s
published ’624 application. Because that is the sole issue
raised in Loughlin’s appeal, we affirm the Board’s judg-
ment in favor of Ling.
CONCLUSION
We have considered Loughlin’s remaining arguments
and find them unpersuasive. The Board’s judgment is
affirmed.
AFFIRMED