THIS opmxou wxs uoT‘muTTmu non PUBI.IC.A1'ION '
`
`The opinion in support of the decision being entered today (1) was not written
`for publication in a law journal and (2) is not binding precedent of-the Board.
`I
`.
`Papez_No. 130
`'
`.
`
`-
`
`j.
`'
`Filed by: Judge Richard B. schnter
`Judge Jnleson Lee
`Box Interference
`' iishington, o.c.
`Tel:
`703-303-9797
`Fax:
`703-305-0942
`
`20231
`
`tmITEr>'sTATEs PATENT AND Tnnnznmnrg orrncz
`.
`.
`—
`.
`.
`an-oar: THE noun: or PATENT APPEALS
`. AND INTERFERENCES
`-
`-
`
`ANDREW H; CRAGG
`and HICHREL-D; DARE
`.
`_
`.
`.
`..
`I
`Junior-Party -
`(Application 09/461,402)
`v.v
`
`l~‘
`
`‘
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`am )
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`2%
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`mgmzm.
`
`ERIC Vc . MAaTn_1,
`
`Junior Party
`(Patent No. 5,575,817),
`f
`v.
`
`_
`
`, Taorms J. FOGARTY, an A. LENKER,
`TIMOTHY J. RYAN and_KIRSTEN FREISLINGER,
`
`_
`
`Senior Party
`(Application 08/463,836)
`
`Patent Interference No. 104,192 r‘
`
`Decision on Barty Cragg’s Motion
`,
`.
`.
`to Correct the Preliminary Statement
`
`Before SCHAFER and LEE,
`
`LEE.
`
`
`
`
`
`The opinion in support of the decision being entered today (1) was not written
`for publication in a law journal and (2) is not binding precedent of-the Board.
`I
`.
`Papez_No. 130
`'
`.
`
`-
`
`j.
`'
`Filed by: Judge Richard B. schnter
`Judge Jnleson Lee
`Box Interference
`' iishington, o.c.
`Tel:
`703-303-9797
`Fax:
`703-305-0942
`
`20231
`
`tmITEr>'sTATEs PATENT AND Tnnnznmnrg orrncz
`.
`.
`—
`.
`.
`an-oar: THE noun: or PATENT APPEALS
`. AND INTERFERENCES
`-
`-
`
`ANDREW H; CRAGG
`and HICHREL-D; DARE
`.
`_
`.
`.
`..
`I
`Junior-Party -
`(Application 09/461,402)
`v.v
`
`l~‘
`
`‘
`
`am )
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`2%
`‘'%‘’‘'-’'c,
`4.00:4:
`mgmzm.
`
`ERIC Vc . MAaTn_1,
`
`Junior Party
`(Patent No. 5,575,817),
`f
`v.
`
`_
`
`, Taorms J. FOGARTY, an A. LENKER,
`TIMOTHY J. RYAN and_KIRSTEN FREISLINGER,
`
`_
`
`Senior Party
`(Application 08/463,836)
`
`Patent Interference No. 104,192 r‘
`
`Decision on Barty Cragg’s Motion
`,
`.
`.
`to Correct the Preliminary Statement
`
`Before SCHAFER and LEE,
`
`LEE.
`
`
`
`
`
`Interference No. 104,192
`Fgragg y. Martin v. Fogarty
`
`_
`
`.
`
`-
`
`3g._h;h;f-
`
`aackanoimd
`
`1.
`
`on February 11, 2000, a trial section motions panel
`
`rendered a decision on the parties’ preliminary motions and
`
`-ordered that the preliminary statements be mutually served.
`(Paper No. 108).
`i
`-
`2.
`The current named inventors of party Cragg’s involved
`application are Andrea H. Cragg and Michael D, Dake.' See re-'_
`declaration of interference'(Paper No.'106){
`3.
`Party Craggfs preliminary statement identifies_only '
`Michael D. Dake as the inventor of the subject hatter of the sole
`_count, Count 2, of this interference.
`
`-At-the time of declaration of this interference, party
`4.
`P.
`"
`"
`Kcragé was accorded benefit of the earlier filing dates of
`
`lfluropean patent applications EP94400284.9 and'EP944013b6.9/Wfiled
`
`"respectively on February 9, 1994, and June 10, 1994.
`
`5.
`
`At the time of declaration of this interference, party
`
`fogarty was accorded benefit of the earlier filing date of U.S.
`
`application 98/255,681, filed June 8, 1994.
`
`6.
`
`.At the time of declaration of the interference, party
`
`Cragg was designated senior party, on the basis of the accorded
`
`. benefit date of February 9, 1994.
`
`'7.-
`
`The European applications E_P944oo2é4.9 and EP94401306.9
`
`were filed by the assignee MINTEC SARL on behalf of inventors
`
`-2-’
`
`
`
`
`
`Interference No. 104,192 i_
`Cragg v. Martin v; Fogarty
`
`Andrew H. Cragg, George Goicoechea, John Hudson, and Claude
`Mialhe.
`V
`I
`8. After opening of the preliminary statements following
`the Board*s decision on preliminary-motions, party Fogarty filed
`
`.
`
`on March 13, 2000, a motion under 37_CFR 5 1.633(9)
`(Paper No.
`113), attacking the benefit accorded party dragg.to the filing
`dates of European applications EP944d0284.9 and EP944013g6.9.
`9,
`The basis underlying party Fogartyis motion attacking
`benefit is that there is.no common inventor between party Cragg's
`involved application 08/4614402 and the European applications.
`10. Also on March 13, 2000, party Fogarty filed a
`
`miscellaneous motion for leave to file its preliminary motion 12
`
`-after expiration of the time period for filing preliminary
`
`motions.
`‘11.
`
`QPaper No. 112).
`_
`y
`The basis for Fogarty's motion for leave to file its
`
`preliminary motion 12 late is that it did not become aware of
`what is alleged in party Cragg's preliminary statement until
`
`service of the preliminary statement as ordered in the decision
`
`on preliminary motions dated February 11, 2000s
`
`12. Party Cragg opposes-Fogartyis preliminary motion 12 and
`
`miscellaneous motion for leave to file preliminary motion 12.
`
`(Paper No. 116).
`
`
`
`Interference No._104,192
`Cragg v. Martin v. Fogarty
`
`‘The parties do not appear to dispute that in order to_
`13.
`be entitled to benefit of uthefiling date of an earlier filed
`application or patent,
`there must be at least one common inventor
`between the involved application or patent and_the benefit
`
`application or patent.‘
`14?
`on March 22, 2000, party Cragg filed a miscellaneous
`€-.4.
`"
`.
`"-_
`1-
`motion_¢o correct its preliminary statement.
`(Paper No._117{.
`':--!I-'
`‘.1.
`-1-
`'
`-
`ill:
`'15. Party Cragg’s proposed corrected preliminary statement
`fibhid name Michael D. Dake and Andrew H. Cragg as co+inventors
`and state the date of conception of the invention as sometime as
`early as_February B; 1993.
`
`16.
`
`The oricinal preliminary statement of party Cragg only
`
`-named Michael D. Dake as the inventor, and identified July 1992'.
`
`has the earliest date of conception of the invention of the count.
`
`17., The preliminary statement of party'Fogarty alleges a
`date of conception as early as July 1993.
`15.
`The preliminary statement of party Martin indicates
`
`that party Martin intends>to rely only on its effective filing
`
`date as the date of inventionr
`
`15.
`
`In a telephone conference call held approximately 1
`
`month aoo,
`
`the priority-testimony period had been set to expire
`
`.on‘Julyi11, 2001, based on counsel's representation that an it
`
`extraordinary amount of time will be required to locate-multiple
`
`.-4-
`
`
`
`
`
`Interference No. 104,192
`Cragg v. Martin v. Fogarty
`
`witnesses who are no longer employed by the assignees of the
`
`involved applications of party Fogarty and party Cragg.'
`
`20. ‘Party Fogarty's case-in—chief testimony period is now
`
`running.
`
`I.
`
`.
`
`While a preliminary statement-shall not be used as evidence
`
`on hehalf of the party filing the preliminary statementi 37 CFR
`§ 1l6i9(e), nothing precludes an opposing party from relying on
`'
`--'
`!-
`'
`,
`.
`_.,-:t-.;
`ifstatements made therein as an admission against the partymfiling
`
`'the statement.
`
`‘That is consistent with 37 CFR § 1.62§1b[ which
`
`states that evidence which shows that_an act alleged in the’
`
`preliminary statement occurred prior to the date alleged in the
`
`statement shall establish only that the act occurred as early as
`.
`_
`p’
`'
`in the statement.
`
`the date alleged
`
`Party Cragg
`
`cites Ha1bg;t_1._5;hunz§, 220 USPQ 558, 565 (Ed.
`
`Pat, App{ & Int. 1983), for the proposition that statements made
`
`-in a preliminary
`
`statement are not regarded as effective
`
`admissions except for the setting of limiting dates.. However,"
`
`that case is not apposite since preliminary statements at that
`
`time did not require the naming of the inventor[s] who made the
`
`invention of each count, and the patent statute at that time did
`
`the claims of different inventive entities to bet
`not pérmit
`1 k'.i._nc';J.ud-‘ed in the same application.
`Furthermore,
`the case_A‘:’1_11:'_L___s‘+._..
`_ 5_-.>
`-
`_
`
`
`
`I Interference No. 104,192
`Cragg v. Martin v. Fogarty
`
`for‘
`(can. 1.965)
`‘cited , -347 F.2d 6'29, 146 uspo is‘:
`sfiiéhrfi, which held only that although a party in an interference
`
`iE'estopped from proving any date of invention prior td'%hose set
`up in a preliminary gtatement, estoppel does not extend to
`subsequent events, such as a date of actual reduction.to practice
`which is later than the earliest date alleged in a_preliminary
`
`statement.
`
`In any event,
`
`the Board decision in Ha1bg;L_gf
`
`fighuuri is not our binding precedent.
`
`the sole inventor named in party
`'Because Michael D; Dake,
`Cragg’s preliminary statement is not a named inventor in either
`one or the European priority applications,_party Fogarty's
`preliminary motion l2 under 37 CFR § 1.633(g) attacking the_'
`benefit accorded party Cragg to the filing dates of the two
`European patent applications has merit and thus is granted.
`
`Although party Cragg opposes Fogarty’s motion for leave to
`file preliminary motion 12 outside of the period for filing ‘
`
`preliminary motions, no explanation has been provided by party
`
`Cragg as to the basis of the opposition.
`
`It is evident that
`
`party Fogarty could not have learned of the basis for filing the
`preliminary motion until after the preliminary statements have
`
`been opened. Accordingly, Fogarty's miscellaneous motion to file
`
`preliminary motion 12 is also granted.
`4
`
`
`
`'Intér£jei-ence No. 104,192
`-Craggyy. Martin v. Fogarty
`
`'
`
`'
`
`_
`
`.-
`
`t
`
`‘
`
`‘
`
`'
`
`V
`
`,
`.-.,-I4;
`
`_.I\::_:-195
`
`We have considered party Cragg's motion to correct its
`preliminary statement and conclude that granting it would cause
`undue prejudice to party Fogarty. Accordingly, Craggis motion to
`
`correct the preliminary statement is denied.-
`
`Because the matter is somewhat urgent and we do not want
`
`party Fogarty to have_to continue on with its caseFin-chief while
`
`waiting for a decision on party Cragg's motion to correct the
`
`preliminary statement, we have not taken the time to support of
`
`‘decision to deny Cragg's motion to correct the preliminary
`
`statement with a more detailed and reasoned opinion.
`
`It is ORDERED that if Party Cragg desires such.an opinion, a
`written request shall be made to that effect_within-fiye (5) days
`_
`F
`
`of the date of this_communication:
`'
`FURTpR ORDERED that consistent with the decisions made
`herein,
`the interference will be re-declared to designate party
`Eogarty as the senior party, party Cragg as the junior party, and
`party Martin as the junior party; and
`V
`
`the ‘Last time” of the
`l4,
`FURTHR ORDERED that Item No.
`priority testimony schedule remains unchanged (duly 11, 2001),.
`
`and the parties shall stipulate to all intermediate time periods
`
`_ and submit a copy to the Board within ten (10) days of the date
`
`of this communication.
`
`
`
`Interference No. 104,192
`Cragg v. Martin v. Fogarty
`
`I fig; 2, 5;: id
`
`,
`
`)
`Richard Schafer
`Administrative Patent Judge)
`.
`'
`'
`)
`
`'
`
`.
`
`eson Lee
`
`-BOARD OF PATENT
`APPEALS
`- AND
`
`*
`
`.
`
`) )
`
`) )
`
`INTERFEKENCES
`
`
`
`inistrative Patent Judge)
`
`¢.;-:-
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