To do otherwise is contrary to the PTO's mission to grant presumptively valid patents, 35 U.S.C. § 285, and thus disserves the public interest. Perkins v. Kwon, 886 F.2d 325, 328-29, 12 USPQ2d 1308, 1311 (Fed. Cir. 1989). We hold that the Board had the authority and the responsibility pursuant to 35 U.S.C. § 135(a) to resolve the interference and render judgment against Guinn as a result of his disclaimer of claim 9 of the `812 patent.
See Paper No. 63 at 1-2. Despite Forgac's withdrawal from the interference, the APJ held that the interference should proceed based on our decision in Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir. 1989), as the issues surrounding the patentability of Gartside's claims had been fairly placed at issue and fully developed during the interference, and they therefore should be resolved for the sake of the public interest. See Paper No. 64 at 3-5.
35 U.S.C. § 135(a) (1994). We interpreted this new language broadly in Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir. 1989), where the Board had decided the issue of priority in favor of Kwon even though it also determined that the invention of the interference count was unpatentable to Kwon under 35 U.S.C. § 102(b)/103. Perkins appealed, arguing that once the Board decided that Kwon's claims were unpatentable, the Board should have dissolved the interference and left Perkins' claims standing as originally issued without further consideration of priority.
The Board's decision to address Housey's § 135(b) motion before Berman's unpatentability motion was therefore not only not arbitrary, but was correct. The cases cited by Berman in his brief, including Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir. 1989); Guinn v. Kopf, 96 F.3d 1419, 40 USPQ2d 1157 (Fed. Cir. 1996); Wu v. Wang, 129 F.3d 1237, 44 USPQ2d 1641 (Fed. Cir. 1997); Schulze v. Green, 136 F.3d 786, 45 USPQ2d 1770 (Fed. Cir. 1998); and In re Gartside, 203 F.3d 1305, 53 USPQ2d 1769 (Fed. Cir. 2000), are not to the contrary. Those cases, contrary to Berman's argument, do not hold that all issues relating to patentability that are fairly raised in an interference must be addressed by the Board.
37 C.F.R. § 1.655(b); see General Instrument Corp. v. Scientific-Atlanta, Inc., 995 F.2d 209, 212, 27 USPQ2d 1145, 1147 (Fed. Cir. 1993) ("[T]he preliminary motions which a party files or does not file under § 1.633 can have far reaching consequences for both the outcome of the interference and subsequent ex parte prosecution."); accord Kwon v. Perkins, 6 USPQ2d 1747, 1751 (Bd.Pat.App. Interfer. 1988) (party who did not raise an issue by motion under § 1.633 was not entitled to do so at Board), aff'd, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir. 1989). The fact that Conservolite did not contest that the parties were claiming the same patentable invention by way of a suitable motion not only precluded Conservolite from doing so at the Board's final hearing, it also precluded Conservolite from raising this issue in an action brought pursuant to § 146.
A patentability determination, if fairly raised and fully developed before the BPAI, is "nearly mandatory." In re Gartside, 203 F.3d 1305, 1317 (Fed. Cir. 2000); see Perkins v. Kwon, 886 F.2d 325, 328-29 (Fed. Cir. 1989) (interpreting the language "may determine questions of patentability" to permit discretion only where patentability is not placed at issue); see also Koninklijke Philips Elecs. N.V. v. Cardiac Sci. Operating Co., 590 F.3d 1326, 1334 (Fed. Cir. 2010) (citing Perkins for this proposition). Furthermore, the Federal Circuit has held that the BPAI should determine priority and patentability even after a party to the interference no longer has a personal stake in the outcome.
A patentability determination, if fairly raised and fully developed before the BPAI, is “nearly mandatory.” In re Gartside, 203 F.3d 1305, 1317 (Fed.Cir.2000); see also Perkins v. Kwon, 886 F.2d 325, 328–29 (Fed.Cir.1989) (interpreting the phrase “may determine questions of patentability” to require a determination unless patentability is not placed at issue); Koninklijke Philips Elecs. N.V. v. Cardiac Sci. Operating Co., 590 F.3d 1326, 1334 (Fed.Cir.2010) (citing Perkins, 886 F.2d at 328). Once the BPAI has rendered a final decision, Section 146 of the Patent Act authorizes an aggrieved party to seek review of that decision in federal district court.
A patentability determination, if fairly raised and fully developed before the BPAI, is "nearly mandatory." In re Gartside, 203 F.3d 1305, 1317 (Fed. Cir. 2000); see also Perkins v. Kwon, 886 F.2d 325, 328-29 (Fed. Cir. 1989) (interpreting the phrase "may determine questions of patentability" to require a determination unless patentability is not placed at issue); Koninklijke Philips Elecs. N.V. v. Cardiac Sci. Operating Co., 590 F.3d 1326, 1334 (Fed. Cir. 2010) (citing Perkins, 886 F.2d at 328).
Avax argues that the Board should have decided its motions concerning patentability because doing so is consistent with the legislative intent to provide complete resolution of the rights between parties and rights of concern to the public. Perkins v.Kwon, 886 F.2d 325, 328-29 (Fed. Cir. 1989) (describing legislative purpose as determination of both priority and patentability when fully presented in interference proceedings because it would settle not only the rights between parties but also the rights of concern to the public). Avax also suggests that despite having lost the right to its patent as a result of an adverse decision on priority, Avax still has an interest in seeing that Novartis is likewise not entitled to the subject matter of the interference, albeit on patentability, not priority, grounds.
" In re Gartside, 203 F.3d 1305, 1317 (Fed. Cir. 2000); see also Schulze v. Green, 136 F.3d 786, 791 (Fed. Cir. 1998) ("[B]y combining the two boards, `all issues of patentability and priority which arise in an interference can be decided in a single proceeding rather than in a series of complicated inter partes and ex partes proceedings.'" (quoting 130 Cong. Rec. 28,065, 28,072 (1984) (statement of Rep. Kastenmeier))); Perkins v. Kwon, 886 F.2d 325, 328 (Fed. Cir. 1989) ("[I]ssues of patentability and priority that have been fully developed before the Board should be resolved by the Board."). Pursuant to § 135(a), the PTO has issued procedural regulations that govern interference proceedings.