Case 1:01-cv-02015-RJL Document 79-3 Filed 04/12/05 Page 2 of 74
`T-164 P 002
`6104070701
`FROM-RATNER & " \iiA
`11:26
`
`F-955
`
`JUL-30-01
`
`The opinion in support of the decision being entered
`today is not binding preceden~ of the Board.
`
`* ••
`
`""'
`
`.....
`"':·-·.·
`'.
`".Paper No·. ia?
`
`.~.
`
`•
`
`•
`
`'
`
`> ..
`
`·,
`
`"."
`
`.. :
`
`I.
`
`Filed by: T.rial section Merits Panel
`Bt:>X Interference
`Washington, o.c. 20231
`Tel: 703-308-9797
`Fax: 703-305-0942
`UNITED STATES PATENT AND TRADEMARK OFFICE ·: ·;; · ......... , .. '
`.. .
`.
`. '•
`• • • > '··~=·: ~··, .. · • . .... =~ .. -·: :~; ~ .... ::: ,!:
`BEFORE THE BOARD ·oF PATENT. ~PEALs··:' .!.~"··· •. : ;;,~:··/·. ~ •• :.-:" ·
`AND INTERFERENCES
`
`'
`
`... . ..
`
`••
`
`•
`
`..
`
`•
`
`'
`
`RECEIV-ED
`JUL 3 0 2001
`RATNER & PRESTIA
`
`ANDREW H. CRAGG and MICHAEL D. DAKE,
`Junior Party,
`MAILED
`(Application 08/461,402), 1
`t.
`v.
`!JUL 2 7 2001
`ERIC C. MARTIN,
`PAT. & T.J.~. OFFICE
`SOARD OF PATeNi APPEAlS
`Junior Party,
`AND INTERFERENCES
`(Application 5,575,817), 2
`t - .
`·' ........
`. .
`.;..
`
`v ..
`
`),..
`
`THOM.F>.S J. FOGARTY, JAY A. LENKER, ..
`TIMOTHY J. RYAN and KIRSTEN FREISLINGER,·.
`Senior Party,
`(Application 08/463,836) . 3
`
`Patent Interference No. 104,192
`--------r·
`
`Filed 06/05/95. Accorded the benef~t of
`08/317,763, filed October 4, 1994, now Patent No.
`application 08/312,881, filed Sept~~er 27, 1994.
`in interest is Boston Scientific Techno1og·y, Inc.:
`·, .. ·,·~·
`Based on application 08/293,541, filed Augus:t~ .. i9:-\¥9·1 •. :··.
`~·.·4 .·.: .:~-~._.:·~/<· .~l:~~~:::~:;:··.;.~ .. ~.~~· ... -,':
`. ·:
`~
`Filed June 5, 1995. Accorded the :benefi,t of:~:app~i'¢at~d':t;l--·~·.::.-
`3
`08/255,681, filed June 9, 1994. The real party in ·in:terest:'~is'1t·: ··.·."~:,,
`. Medtronic Aneur~,. Inc.
`:<~~~~:·:.~ .
`. ' .,, ..
`.
`. •""··
`
`application
`5,609, 627 ,. and
`The real_party
`.... ·=
`
`"'
`·~.· •
`
`':
`
`:
`
`: · · · .. •
`
`•• •• ,;>
`
`'
`
`•
`
`·'
`
`2
`
`'
`
`.....
`
`W.L. Gore & Associates, Inc.
`Exhibit 1008-1
`
`

`

`JUL-30-01
`
`Case 1:01-cv-02015-RJL Document 79-3 Filed 04/12/05 Page 3 of 74
`T-164 P 003
`6104070701
`11 :26
`
`F-955
`
`Interference No. 104,192
`Cragg v. Martin v. Fogarty
`
`Before McKELVEY, Senior Administrative Patent Judge, and SCHAFER,
`LEE and MEDLEY, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`FINAL DECISION AND JUDGMENT
`
`Introduction
`
`When this interference was declared on April 23, 1998,
`·.
`current junior party Cragg was then senior party Goicoechea.
`
`Because of the granting of a motion to correct inventorship in
`
`related Interference No. 104,083 for appiication 08/461,402, the
`
`same application that is involved in this interference, co-
`
`inventors George Goicoechea, John Hudson, and Claude gialhe were
`
`deleted and the only remaining inventors in that applic~tion are
`
`Andrew H. Cragg and Michael D. Dake. Thus, party Goicoechea
`
`became party Cragg. Any reference to party Goicoechea should be
`
`understood as a reference ~o party Cragg.
`
`A decision on the parties' preliminary motions was rendered
`
`on February 11, 2000 (Paper No. 108}, after which party Fogarty
`
`filed a miscellaneous motion (Paper No. 1~2) for :eave to file,
`
`out of time, a preliminary motion 12 to attack the benefit
`
`accorded party Cragg of European Applications EP94400284.9 and
`
`EP94401306.9. The motion for leave as well as the preliminary
`
`motion 12 (Paper No. 113) were granted by a panel consisting of
`
`a~~inistrative patent judges Schafer and Lee (Paper No. 130).
`
`- 2 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1008-2
`
`

`

`JUL-30-01
`
`Case 1:01-cv-02015-RJL Document 79-3 Filed 04/12/05 Page 4 of 74
`i-164
`p 004
`6104070701
`11 :27
`:
`
`F-955
`
`Interference No. 104,192
`Cragg v. Martin v. Fogarty
`
`The decision on Fogarty's preliminary motion 12 was adhered to on
`
`reconsideration (Paper No. 138) by a panel consisting of Senior
`Administrative Patent Judge McKelvey, and Administrative Patent
`Judges Schafer and Lee. This interference was re-declared in
`
`Paper No. 131 to change the junior/senior status of parties Cragg
`and Fogarty, with Cragg now being junior party.
`Junior party Martin did not file a preliminary statement.
`
`It has indicated to the administrative patent judge to which this
`~·
`case was ass~gned that it did not want to participate in this
`interference except to "ride along" for the possibility that (1)
`the only interference-in-fact is determined to be between parties
`t
`Cragg and Martin (a Cragg content~on), and (2) that par~y Cragg
`will be deprived of its accorded benefit date (a Fogarty
`contention) and cannot demonstrate a sufficiently early date to
`prevail over Martin.
`Because junior party Cragg filed no case-in-chief during the
`priority phase of this proceeding, it was placed under an order
`
`to show cause why judgment should not be entered against Cragg.
`
`~
`
`Party Cragg requested final hearing for review of the Board's
`
`decision on Cragg's preliminary motions l and 2 and on Fogarty's
`preliminary motion 12. According to party Cragg it should not
`have been made a junior party and thus need not have had to put
`on a priority case in the first instance. Party Fogarty
`
`- 3
`
`-
`
`W.L. Gore & Associates, Inc.
`Exhibit 1008-3
`
`

`

`JUL-30-01
`
`Case 1:01-cv-02015-RJL Document 79-3 Filed 04/12/05 Page 5 of 74
`T-164 P 005
`6104070701
`FROM-RATNER & ppc~TIA
`11 :27
`
`F-955
`
`Interference No. 104,192
`Cragg v. Martin v. Fogarty
`
`..
`requested review of the Board's decision on its preliminary
`motions 8 and 10. Oral argument was made on ~~bruary 28, 2001,
`
`'
`
`before administrative patent judges Schafer, Lee and Medley.
`Findings of Fact
`
`The below-listed findings as well as those contained in the
`
`discussion portion of this opinion are supported by a
`preponderance of the evidence:
`This interference was declared on April 23, 1998,
`'~
`between thre~ parties, Martin, Fogarty, and Goicoechea (now
`Cragg) .
`
`1.
`
`?
`
`2.
`
`The i~volved patent of Martin is Patent No. 5,575,817,
`~
`based on application 08/293,541, filed August 19, 1994.:'
`.•
`The involved application of Cragg is application
`3.
`08/461,402, filed June 5, 1995.
`The involved application of Fogarty is application
`4.
`08/463,836, filed June S, 1995.
`At the time of declaration of this interference, the
`
`5.
`
`named inventors of Cragg's involved application 08/461,402 were
`
`George Goicoechea, John Hudson, Claude Mialhe, Andrew H. Cragg,
`
`l D. Dake.
`and Mi
`in a
`, was also invo
`Cragg's application 06/461,4
`6.
`related in~erference, Interference No. 104,083, between parties
`Cragg and Martin but not Fogarty, wherein a motion to correct
`
`- 4 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1008-4
`
`

`

`JUL-30-01
`
`Case 1:01-cv-02015-RJL Document 79-3 Filed 04/12/05 Page 6 of 74
`T-164 P 006
`6104070701
`FROM-RATNER & po:sTIA
`11 :27
`.:
`
`F-955
`
`Interference No. 104,192
`Cragg v. Martin v. Fogarty
`
`inventor:ship was granted, deleting George Goicoechea, John
`Hudson, and Claude Mialhe as co-inventors, and leaving only
`Andrew H. Cragg and Michael D. Dake.
`
`7.
`
`This interference was re-declared on June 2, 1999
`(Paper No. 106) to reflect that only Andrew H. Cragg and Michael
`
`D. Dake are named inventors in Cragg's involve~ application.
`Independent claim 1 of Martin's involved patent reads
`identically as the count in related Interference No. 104,083, and
`' \
`judgment was _.entered against party Martin in that interference on
`March 10, 1999.
`Claim 2 of Martin's involved patent depends from claim
`1, and if re-written in independent form it would read the same
`
`8.
`
`9.
`
`{1
`
`as the count in this interference.
`10. The count of this interference reads as follows (Paper
`No. 16 l :
`
`An apparatus for reinforcing a bifurcated lumen
`comprising:
`a first section, configured to.~e positioned
`within the lumen, comprising:
`
`an upper limb, configured to fit within the lumen
`upstream of the bifurcation;
`
`a firs~ lower limb, configured ~o extend into a
`first eg of said bifurcation when said first section
`is pos tioned in the l~~en, and
`
`- 5 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1008-5
`
`

`

`JUL-30-01
`
`Case 1:01-cv-02015-RJL Document 79-3 Filed 04/12/05 Page 7 of 74
`T-164 P 007
`6 04070701
`FROM-RATNER & p~~)T!A
`11 :27
`
`F-955
`
`Interference No. 104,192
`Cragg v. Martin v. Fogarty
`
`a second lower limb, shorter than said first lower
`limb, and configured so that when said first section is
`positioned in the lumen, said second lower limb does
`not extend into a second leg of said bifurcation,
`and further comprising
`a second section configured to be positioned
`separately within the lumen and joined to said second
`lower limb of the first s.ection, effectively extending·
`said second lower limb into said second leg of said
`bifurcation.
`·
`
`11. Cragg's preliminary statement identifies only Michael
`D. Dake as the inventor of the subject matter of the count.
`12. After the rendering of the Board's decision on
`preliminary motions (Paper No. 108) and subsequent se·rvice of the
`preliminary statement of party Cragg, Cragg filed a mii~ellaneous
`
`!
`
`motion to amend or correct its preliminary statement to identify
`
`Andrew H. Cragg and Michael D. Dake as co-inventors of the
`subject matter of the coun~. (Paper No . 11 7) .
`(Paper No. 130).
`13. Cragg's motion to a~end was denied.
`A written opinion explaining the basis of that denial followed.
`(Paper No. 140). Cragg requested reconsideration. The original
`(Paper No. 146).
`
`decision was adhered to on reconsideration.
`
`14. Cragg has not sought review of the Board's denial of
`stat.ement to
`na
`Cragg's motion to amend cr correct its prel
`name both &~drew H. Cragg and Michael D. Dake as inven~ors.
`
`- 6 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1008-6
`
`

`

`JUL-30-0l
`
`Case 1:01-cv-02015-RJL Document 79-3 Filed 04/12/05 Page 8 of 74
`T-164 P 008
`6104070701
`FROM-RATNER l po:sTIA
`11 :ZT
`
`F-955
`
`Interference No. 104,192
`Cragg v. Martin v. Fogarty
`
`15. Upon declaration of this interference, Cragg was
`
`accorded benefit of U.S. application 08/317,763, filed October 4,
`
`1994, European application EP94400284.9, filed February 9, 1994,
`
`and European application EP94401306.9, filed June 10, 1994. The
`
`European applications did not identify any inventor and were
`filed by the entity MINTEC SARL.
`
`16. Based on representations from individuals associated
`
`with party Cragg, party Fogarty regarded as true, until the
`
`service of p~rty Cragg's preliminary statement, that European
`
`applications EP94400284.9 and EP94401306.9 were filed by MINTEC
`
`SARL on behalf of inventors Goicoechea, Hudson, ~ialhe, and
`
`Cragg.
`
`(Fogarty Preliminary Motion 12, Fact Ko. 5 - not disputed
`
`by Cragg) .
`
`17. Michael D. Dake made an assignment of rights, including
`
`his interests in the invention covered by Cragg's involved
`
`application relating to a bifurcated stent-graft, to HinTec,
`Inc., for a one time payment of eight hundred thousand u.s.
`dollars (U.S. $800,000) and other considerations, on May 6, 1996,
`
`with a stated effective date of April 30, 1996.
`
`(Cragg Exhibit
`
`1025, C£-1025) . The date of assigr~uent was nearly two years and
`
`e date of filing of EP9440G264.9 on February
`months from
`9, 1994, and nearly two years from the date of filing of
`EP94401306.9 on June 10, 1994.
`
`- 7 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1008-7
`
`

`

`JUL-30-01
`
`Case 1:01-cv-02015-RJL Document 79-3 Filed 04/12/05 Page 9 of 74
`T-164 P 009
`6104070701
`FROM-RATNER l e~=STIA
`1 :27
`
`. .
`
`F-955
`
`Interference No. 104,192
`Cragg v. Martin v. Fogarty
`
`18. Parties Cragg and Fogarty evidently treat, without
`
`dispute, that MinTec, Inc. and MINTEC SARL are related entities
`
`such that an assignment of interest to the former means the
`
`latter is an "assign."
`
`19. Andrew H. Cragg made an assignment of rights, including
`' ~-
`his interests in the invention covered by Crag~'s involved
`
`application relating to a bifurcated endoluminal prosthesis, to
`
`MINTEC,
`
`INC. on August 22, 1994.
`
`(Cragg Exhibit 1021, CE-1021).
`,I
`The date of assignment was six months after the date of filing of
`
`EP94400284.9 on February 9, 1994, and two months after the date
`
`of filing of EP94401306.9 on ~une 10, 1994.
`
`A.
`
`Fogarty's Prelininary Motion 12
`
`Discussion
`
`In the "Relief Requested" portion of Fogarty's preliminary
`
`motion 12, it is stated:
`
`Fogarty moves under 37 CFR § 1.633(g) to deny the
`
`senior party the benefit of EP94400284.9 and
`r
`EP94401306.9 on the grounds that neither applicat:on
`
`r
`
`was filed by (i) the individual now identified as the
`
`inventor or (iil on
`
`s behalf by
`
`s le
`
`representatives or assigns.
`
`nary moticn 12 is
`T~e sta~utory basis of Fogarty's prel
`35 u.s.c. § 119, which states, in pertinent part:
`- 8 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1008-8
`
`

`

`JUL-30-01
`
`Case 1:01-cv-02015-RJL Document 79-3 Filed 04/12/05 Page 10 of 74
`T-164 P 010
`6104070701
`11:27
`_ ..
`
`F-955
`
`Interference No. 104,192
`Cragg v. Martin v. Fogarty
`
`(a) An application for patent for an invention filed in
`this country by any person who has, or whose legal
`representatives or assigns have, previously regularly
`filed an application for a patent for the same
`invention in a foreign country which affords similar
`privileges in the case of applications filed in the
`United States or to citizens of the United States, or
`in a WTO member country, shall have the same effect as
`the same application would have if filed in this
`country on the date on which the application for patent
`for the same invention was first filed in ?Uch foreign
`country, if the application in this country is filed
`within twelve months from the earliest date on which
`such foreign application was filed; .
`.
`.
`.
`(Emphasis
`added.}
`
`As the motion panel's decision on reconsideration (Paper No.
`
`138) states on page 3, a statement with which we agree and adopt
`
`herein:
`
`~~
`1i1e interpret the above-quoted "any person who' has,
`or whose legal representativ~s or assigns haven
`language as meaning that the previously filed foreign
`application must have been filed by the person or one
`who was, at the time of filing of the previo~sly filed
`foreign application~ already a legal representative or
`assign of that person. This view is necessary to
`ensure a link between the presently involved
`application and the earlier filed foreign application
`with respect to the particular i"nventor. A contrary
`interpretation would cause entitlement to benefit to be
`negotiable as a commodity between uRrelated entities.
`Note that if party Martin or party FogarLy now assigned
`its involved patent or application to MINTEC, that does
`not and should not mean party Martin or party Fogarty's
`involved case should suddenly be entitled to the
`bene
`t cf the earlier
`ling dates of party Cragg's
`European applications, on the basis that
`European
`applications were previously filed by
`who is now
`the assignee of party Martin or party Fogarty's
`involved patent or application.
`
`- 9 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1008-9
`
`

`

`Case 1:01-cv-02015-RJL Document 79-3 Filed 04/12/05 Page 11 of 74
`i-164 POll
`6104070701
`FROU-RATNER & • -~TIA
`11 :Z7
`
`F-955
`
`JUL-30-0 1
`
`Interference No. 104,192
`Cragg v. Martin v. Fogarty
`
`our view is consistent with the opinion of the Court of
`
`Customs and Patent Appeals in Vogel v. Jones, 486 F.2d 1068,
`
`1072, 179 USPQ 425, 428
`
`(CCPA 1973), wherein the court determined
`
`that a foreign application made by the assignee of a U.S.
`
`applicant, on behalf of one other than the United States
`
`inventor, is irrelevant to the rights of priori.ty of the U.S.
`
`~
`
`inventor. The Vogel case concerns 35 U.S.C. § 119, not 35 U.S.C.
`
`§ 116 or § 120. Contrary to a suggestion by party Cragg in its
`
`reply brief ~t final hearing, Voael has not been made outdated by
`
`statutory amendments to 35 U.S.C. § 116 and§ 120 in 1984. The
`
`inventive entity may not always be identical between a U.S.
`;
`'·
`application as a whole and an ancestral corresponding application
`
`in a foreign application. E.a., Reitz v. Inoue, 39 USPQ2d 1838,
`
`18 4 0)
`
`(Bd. Pat. App. & Int. 199 6) ("the proposition that the
`
`inventive entity must be the same in both the foreign and the
`
`corresponding U.S. application in order to obtain benefit can no
`
`longer be accepted, if it ever was, as a hard and fast rule in
`
`view of the liberalization of the requirements for filing a U.S.
`
`application as joint inventors wrought by the 198~ amendment of
`
`35 u.s.c. § ll6."i. 3ut wi
`
`regard to any part~cular inven~ion
`
`at issue or involved in an in~erference, 35 G.s.c. § 119 still
`
`:ncludes the language concerning filing in a foreign country by
`
`- 10 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1008-10
`
`

`

`JUL-30-01
`
`Case 1:01-cv-02015-RJL Document 79-3 Filed 04/12/05 Page 12 of 74
`T-164 P 01 Z
`FROM-RATNER l ~--~TIA
`6104070701
`11 :28
`
`F-955
`
`Interference No. 104,192
`Cragg ~- Martin v. Fogarty
`
`assigns or legal representatives of the one who files for that
`
`invention in the United States.
`
`We have reviewed Schmitt v. Babcock, 377 F.2d 994, 153 USPQ
`
`719 (CCPA 1967), a case mentioned by Cragg during oral argument
`
`at final hearing as somehow being in support of its position, but
`
`tl!
`
`•
`
`it does not help Cragg's position. The Schmitt- case, from a pre-
`
`1984 era, relates to an inconsistency or disagreement in
`
`inventorship between the U.S. application and the foreign
`
`application and a resolution of that disagreement prior to
`
`accordance of benefit. Here, inconsistency or disagr~ement in
`
`inventorship is not the issue. Nothing in Schmitt purp~rts to
`
`not recognize the fi:ing by assigns requirement cf 35 U.S.C.
`§ 119. Even if it does, that would be contrary to the Vogel case
`
`wh:ch is later in tiille and thus takes precedent over SchmitL.
`It is not in dispu~e that the assignment from Michael D.
`
`Dake to Mintec, Inc. occurred subsequent to the filing of the two
`
`European applications.
`
`In its request f~r reconsideration (Paper
`
`No. 137) of the granting of Fogarty's preliminary motion 12, on
`
`pages 4-5, Cragg stated:
`
`Mintec, the applicant in ~ne EP applications in
`Dr.
`quest
`, was the assignee of both
`. Cragg
`Dake, albeit the ass
`by Dr. Cragg came several
`months after those applications had been filed and the
`assignment by Dr. Dake came more than a year after they
`had been filed.
`·
`
`- 11 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1008-11
`
`

`

`JUL-30-01
`
`Case 1:01-cv-02015-RJL Document 79-3 Filed 04/12/05 Page 13 of 74
`P 013
`T-164
`FROM-RATNER & ·--)T!A
`6104070701
`1 :28
`
`F-955
`
`Interference No. 104,192
`Cragg v. Martin v. Fogarty
`
`Note Cragg's exhibit CE-1025, an assignment document from Mr.
`
`Michael D. Dake to MinTec, Inc., which was executed on May 6,
`1996, more than two years after the filing of EP94400284.9, and
`nearly two years after the filing of EP94401306.9.
`Cragg's brief at final hearing does not app;ar to argu~ that
`under 35 U.S.C. § 119, a subsequent assignment .puts an assignee
`
`in the same position as if it were a "legal representative" or
`
`"assign" of the inventor at a previous t~J;ne when a foreign
`application for the same inve~tion was filed by that assignee.
`In any event, that argument, if made, would be reject~d because
`it ignores plain statutory language to the contrary. Cfagg has
`not set forth evidence of legislative history which clearly
`
`indicates that the statute does nBt mean what it plainly says.
`
`Two new arg~~ents have been raised for the first time by
`party Cragg in its reply brief at final hearing, which should
`have been raisedr if at all, in its opposition to Fogarty's
`preliminary motion 12. The first new ar~ument is this: That the
`two European applications were filed by MINTEC SARL for an
`
`invention "actually made" by Michael D. Dake and A.'l.drew H. Cragg,
`
`regardless of assignro.ent, and that this should satisfy the filing
`representative requirement of 35 u.s.c. § 119.
`by assign or le
`The second new argument is raised by the last sentence on page 10
`
`of Cragg's reply brief, which reads:
`
`"There is no requirement
`
`- 12 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1008-12
`
`

`

`JUL-30-01
`
`Case 1:01-cv-02015-RJL Document 79-3 Filed 04/12/05 Page 14 of 74
`T-164 P 014/074
`6104070701
`11: ze
`
`F-955
`
`Interference No. 104,192
`Cragg v. Martin v. Fogarty
`..
`.·
`either in Section 119 or in case law that the assignment must .
`have been perfected b~fore the EP applications. were filed in
`order to rely on those applications for priority purposes." The
`statement implies that somehow there was at least an obligation
`of assignment which only was not perfected or formalized until
`{-
`after the filing of the European applications, and that this
`should satisfy 35 U.s.c. § 119.
`The two new arguments were not in Cragg's opposition to
`\l .•
`Fogarty's preliminary motion 12, and still not in Cragg's request
`for reconsideration of the motion panel's decision on Fogarty's
`preliminary motion 12. They further still do not appear to be
`~ .
`contained in Cragg's principal br~ef at final hearing. 4 ;' These
`arguments do not involve mere statutory construction, but are
`also fact determinative.
`If the new arguments were timely raised
`in Cragg's opposition to Fogarty's preliminary motion 12,
`
`In its principal brief at final hearing on page 24,
`Cragg states:
`"Michael Dake had assigned his invention to Mintec
`and his collaboration with Andrew Cragg on the claimed invention
`prior to the filing of the EP applications is acknowledged.
`C£1025-1." This cannot be reasonably construed as an argument
`that the European applications filed by MINTEC S~~L were for an
`invention actually made by Michael D. Dake and that that would
`sa~isfy the filing by assigns requirement of 35 U.S.C. § 119.
`any event, raising such an argument for the first time in the
`principal brief at final hearing would none
`ess be untimely.
`Exhibit CE1025 also does not speak of any "collaboration" in the
`sense of there being a common goal, but mere discussion,
`consultation, and co~~unication between Michael D. Dake and one
`or more of Messr. Goicoechea, Cragg, and Hudson on a topic and
`"whatever contributions Dr. Dake may have made" (Emphasis added).
`- 13 -
`
`In
`
`W.L. Gore & Associates, Inc.
`Exhibit 1008-13
`
`

`

`JUL-30-01
`
`Case 1:01-cv-02015-RJL Document 79-3 Filed 04/12/05 Page 15 of 74
`T-164 P 015/074
`6104070701
`11: za
`FROM-RATNER l p~~~T!A
`
`F-955
`
`Interference No. 104,192
`Cragg v. Martin v. Fogarty
`
`pertinent facts could have been presented by both parties and
`Fogarty would have had an opportunity to explo~e and possibly
`discredit Cragg's assertions. We decline to entertain new
`arguments which were not presented in Cragg's opposition to
`Fogarty's preliminary motion 12.
`
`c
`Accordingly, we address only those arguments of Cragg which
`were raised in its opposition to Fogarty's preliminary motion 12.
`
`Cragg argues that Fogarty's preliminary motion 12 was based
`h
`on the repre~entation in Cragg's preliminary statement that
`Michael D. Dake was the inventor for the subject matter of the
`count, and yet applicable precedent indicates that preliminary
`t
`statements can only be used as an effective admission of the
`earliest or limiting date of invention provable by the party.
`
`•'
`
`I
`
`Cragg's argument overlooks the 1984 changes to 35 U.S.C. § 116
`
`and a corresponding change to 37 CFR § 1.622 regarding the
`
`content of preliminary statements. C~agg's argument is rejected.
`There are many precedents, including the one cited by Cragg,
`!
`Dewey v. Lawton, 347 F.2d 629, 631, 146 USPQ 187, 188 (CCPA
`1965), which set forth the law that the date alleged in a party's
`
`preliminary statement only constitutes a limiLing date. Thus,
`
`although a party may prove a date of invention that is earlier or
`later than the alleged date, it cannot be entitled to a date that
`
`is prior to the alleged date. Those cases all focus on
`
`- 14 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1008-14
`
`

`

`Case 1:01-cv-02015-RJL Document 79-3 Filed 04/12/05 Page 16 of 74
`T-164 P 016/074
`6104070701
`FROM-RATNER l ~~esTIA
`11: ZB
`
`F-955
`
`JUL-30-0l
`
`Interference No. 104,192
`Cragg v. Martin v. Fogarty
`
`the assertion of a date of invention and are not concerned with
`
`any identification of inventorship in the preliminary statement.
`
`Identification of inventorship did not become a requirement for
`
`preliminary statements until an amendment was made to 37 CFR §
`
`1.622 in 1984 when Title 35, United States Code, was amended to
`
`provide that not every named i~ventor has to h~ve made a
`
`~
`
`contribution to every claim in a patent application.
`
`In
`
`pertinent part, 35 U.S.C. § 116 now states:
`,l
`
`§ 116
`
`Inventors
`
`.-
`When an invention is made by two or more persons
`jointly, they shall apply for patent jointly and.·each
`make the required oath, except as otherwise provided in
`this title.
`Inventors may apply for a patent jointly
`even though (1) they did not physically work together
`or at the same time,
`(2) each did not make the same
`type or amount of contribution, or (3) each did not
`make a contribution to the subject matter of every
`claim of the patent.
`
`Thus, when an application is filed which names multiple
`
`inventors, it is not known which inventor(sl contributed to the
`
`subject matter of which claims, or to the count in an
`
`interference, even though that information may be relevant to tte
`
`requirements for accordance of benefit in an interference. Rule
`
`1.622, as amended in 1984, partially addresses
`
`problem by
`
`requiring in a preliminary statement identificati~n of the
`
`inventors of the subject matter of the count.
`
`It reads, in
`
`pertinent part:
`
`- 15 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1008-15
`
`

`

`JUL-30-01
`
`Case 1:01-cv-02015-RJL Document 79-3 Filed 04/12/05 Page 17 of 74
`T-164 P 017/074
`6104070701
`11:29
`
`F-955
`
`Interf~rence No. 104,192
`Cragg v. Martin v. Fogarty
`
`~·:
`
`(a) A party's preliminary statement must identify
`the inventor who made the invention defined by each
`count and must state on behalf of the inventor the
`facts required by paragraph (a) of §§ 1.623, 1.624, and
`1.625 as may be appropriate . . . .
`Thus, the established precedent focusing on the effect of
`assertions of invention dates and not concerned with
`identification of inventorship are not apposite.
`Cragg argues:
`Rule 629, entitled "Effect of prelif!finary statement,"
`is the only rule that addresses the consequences for
`allegat~ons made in a preliminary statement, such
`consequences being limited to dates and issues of
`proving priority.
`Importantly, Rule 629 was amended at
`the same time Rule 622 was amended (in 1984) to require
`identification of inventors in a preliminary statement,
`but the amendment did not create an admission as to
`inventorship. Rule 629(a) states:
`A party shall be held to any date alleged in
`the preliminary statement. Doubts as to
`definiteness or sufficiency of any alleaation
`in a preliminary statement . . . will be
`~esolved against the party filing the
`statement by restricting the party to its
`effective date or the latest date of a period
`alleged in the preliminary statement.
`(Emphasis in original) .
`But again, this rule focuses on the effect of assertions as to a
`date of invention.
`It is concerned with ambiguities or
`
`indefiniteness in the assertion of a date of invention, and is
`rs. The
`anything about the naming of
`not concerned wi
`rule gives notice of something not so plain and obvious, i.e.,
`
`(hat if a range of daces is asserted, then the party making the
`
`- 16 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1008-16
`
`

`

`JUL-30-01
`
`Case 1:01-cv-02015-RJL Document 79-3 Filed 04/12/05 Page 18 of 74
`T-154 P 018/074
`FROM-RATNER & ~--)TIA
`6104070701
`11:28
`
`F-955
`
`Interference No. 104,192
`Cragg v. Martin v. Fogarty
`
`assertion is limited to the latest of such dates. For instance,
`if a party asserts that its invention was made in a period from
`January through March of a certain year, then the earliest date
`of invention the party is entitled would be March 31st.
`There need not be a rule to state that which is plainly so,
`~~ that what a party represents to an adminl;,.strative tribunal
`or an opposing party can be used against the party if the
`representation is relevant to an adjudication of the party's own
`\\
`rights or the rights between the parties. Party Cragg is not
`charged with a crime and is not. being interrogated in a criminal
`investigation such that it must be "mirandized" -- warned that
`:I
`anything it says can and will be used against it in a court of
`law -- before it makes a usable statement. What is important is
`that party Cragg be given an opportunity to explain or correct
`any misstatement it ~ight ~ave made and which has been relied
`upon by either the tribunal or the opposing party. There was
`ample such opportunity in this case.
`Concurrently with the filing of its opposition to Fogarty's
`preliminary motion 12, Cragg filed a motion under 37 CFR § 1.628
`co amend or correct its preliminary statement, to name not just
`chael D.
`ke as the only inventor of the subject matter of the
`coun:, but Andrew H. Cragg and Michael D. Dake as co-inventors.
`
`That was a full opportunity for party Cragg to present all the
`
`- 17 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1008-17
`
`

`

`JUL-30-01
`
`Case 1:01-cv-02015-RJL Document 79-3 Filed 04/12/05 Page 19 of 74
`T-164 P 019/074
`6104070701
`FROM-RATNER & '
`11 :Z9
`~TiA
`-·
`
`F-955
`
`Interference No. 104,192
`Cragg v. Martin v. Fogarty
`
`evidence it wanted to present on the issue, to demonstrate that
`it had made an error in only naming Michael D. Dake as the
`inventor of the subject matter of the count. That motion was
`denied on April 7, 2000, in Paper No. 130. Party Cragg requested
`reconsideration of that decision. The original decision was
`I·
`adhered to in a reconsideration decision on June 27, 2000, in
`Paper No. 146. Party Cragg has not sought review of that
`decision at final hearing.
`Party C~agg further argues that the outcome here is unfair
`because as the original senior party it need not have filed a
`preliminary statement, and if it did not file a prelimi~ary
`.,
`'·
`statement, then none of this would have ensued. The argument is
`rejected.
`If Cragg had not filed a preliminary statement, it
`would not have revealed information which ultimately led to its
`being deprived of benefit to the earlier filing dates of foreign
`
`applications. But this result is not unfair if, as i~ is here,
`all pertinent information were known, Cragg would not be
`entitled, under the law, to those earlier filing dates. Cragg
`had ample opportunity to show that the information it had first
`given was a mistake but failed to make a successful showing.
`When 35 U.S.C. § 116 was amended in 1984 to permit co-
`inventors to be jointly listed as inventors without all of them
`
`having contributed to each and every claim in an application, a
`
`- 18 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1008-18
`
`

`

`JUL-30-01
`
`Case 1:01-cv-02015-RJL Document 79-3 Filed 04/12/05 Page 20 of 74
`T-164 P 020/074
`FROM-RATNER l ~~~sTIA
`6104070701
`11 :29
`
`F-955
`
`Interference No. 104,192
`Cragg v. Martin v. Fogar~y
`
`corresponding change was made in 35 U.s.c. § 120 (relating to
`
`benefit to the earlier filing date of previously filed United
`
`States applications) to require not identity but merely an
`
`overlap of inventor{s) between the application seeking benefit
`
`and the earlier filed application. The change to 35 U.S.C. § 120
`
`was necessary because additional or non-overla~ping inventors may
`
`be present due to the inclusion of claims drawn to different
`
`subject matter. No such change was necessary, however, with
`t\
`respect to tpe requirement of 35 U.S.C. § 119 that the person who
`
`has filed for a patent on an invention (here the invention of the
`
`count) must have previously regularly filed for a patent on the
`l!
`same invention in a foreign country, whether it is through legal
`
`representatives or assigns.
`
`Indeed, no change was made. The
`
`contexts and req~irements of 35 U.S.C. § 119 and 35 U.S.C. § 120
`are different. That Michael D. Dake being a sole inventor for
`
`the subject matter of the count is n~t a problem ~nder 35 U.S.C.
`
`§ :20 with respect to earlier filed United States applications
`,.r
`does not mean Cragg can expect that it should also not be a
`
`problem insofar as benefit to foreign applications are concerned.
`
`Satisfaction of requirements under 35 U.S.C. § 12G entitles a
`
`parLy only to the earlier
`
`ling date of