In Re Commonwealth Scientific & Industrial Research Organisation

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
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IN RE: COMMONWEALTH SCIENTIFIC &
INDUSTRIAL RESEARCH ORGANISATION,
BAYER CROPSCIENCE NV,
Appellants
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2014-1710
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board, in No. 105,754.
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Decided: November 20, 2015
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CHRISTOPHER LEE NORTH Buchanan Ingersoll &
Rooney P.C., Alexandria, VA, argued for appellants. Also
represented by TODD RAY WALTERS, ERIN M. DUNSTON.

Before CHEN, MAYER, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
Commonwealth Scientific & Industrial Research Or-
ganization (“CSIRO”) appeals the Patent Trial and Appeal
Board’s decision in Interference No. 105,754 that claims
52–62 and 69–106 of U.S. Patent Application
No. 11/364,183 (“the ’183 application”) are time-barred
under 35 U.S.C. § 135(b)(1). For the reasons below, we
reverse.
2 IN RE: COMMONWEALTH SCIENTIFIC

BACKGROUND
This case involves an interference between CSIRO’s
’183 application and Carnegie Institution of Washington
and the University of Massachusetts’ (collectively, “Car-
negie”) U.S. Patent Nos. 6,506,559, 7,622,633, and
7,538,095 (collectively, “Carnegie’s patents”). 1 The inter-
ference involved a single count, and the Board ultimately
designated claims 52–67 and 69–106 of the ’183 applica-
tion and various claims of Carnegie’s patents as corre-
sponding the count.
During the interference, Carnegie moved for judg-
ment that all claims of the ’183 application involved in the
interference were unpatentable as untimely filed under
§ 135(b)(1). Section 135(b)(1) provides:
A claim which is the same as, or for the same or
substantially the same subject matter as, a claim
of an issued patent may not be made in any appli-
cation unless such a claim is made prior to one
year from the date on which the patent was
granted.
Although CSIRO substantially copied claims from one
of Carnegie’s patents before the critical date in
§ 135(b)(1), CSIRO later canceled those claims (the “pre-
critical date claims”) to avoid an interference. It was not
until five years after the critical date that CSIRO added
claims 52–67 and 69–106 to the ’183 application (the
“post-critical date claims”) and sought an interference
with Carnegie’s patents. Carnegie alleged that CSIRO’s
prosecution strategy delayed declaration of the interfer-

1 The America Invents Act (“AIA”), Pub. L. No. 112-
29, eliminated interference proceedings. Because the
applications and patents at issue in this case were filed
before March 16, 2013, we apply the pre-AIA version of 35
U.S.C. § 135.
IN RE: COMMONWEALTH SCIENTIFIC 3

ence until more than five years after the § 135(b)(1)
critical date, in violation of the intent of § 135(b)(1).
According to Carnegie, excusing an intentional effort to
avoid an interference for five years would frustrate the
purpose of § 135(b)(1).
The Board agreed that CSIRO’s prosecution strategy
delayed declaration of the interference and held that
CSIRO could not rely on its pre-critical date claims to
demonstrate compliance with § 135(b)(1). The Board
acknowledged that, under this Court’s precedent, a party
can comply with § 135(b)(1) by showing that its post-
critical date claims are not materially different from pre-
critical date claims. Interference No. 105,754, Paper
No. 458 at 3 (Dec. 11, 2013) (citing Adair v. Carter, 668
F.3d 1334, 1339 (Fed. Cir. 2012)). The Board also
acknowledged that, “[i]n the present case, there is conced-
ed nexus between CSIRO’s pre- and post-critical date
claims.” Interference No. 105,754, Paper No. 453 at 11
(Oct. 12, 2012). But the Board held, as a matter of first
impression, that § 135(b)(1) does not allow relation back
to a pre-critical date claim when a patent applicant inten-
tionally delays declaration of an interference, even if the
differences between the pre- and post-critical date claims
are immaterial. In reaching this conclusion, the Board
emphasized its view that “like any statutory time bar,
§ 135(b)(1) was intended to encourage promptitude” in
seeking interferences. Id. at 13.
Based on its holding that a party that deliberately
chooses to avoid or delay an interference cannot rely on its
pre-critical date claims, the Board concluded that claims
52–67 and 69–106 of the ’183 application were barred as
untimely under § 135(b)(1). Administrative Patent Judge
Tierney dissented-in-part, explaining that the theory that
prosecution delay can affect the § 135(b)(1) bar is unsup-
4 IN RE: COMMONWEALTH SCIENTIFIC

ported by case law and unnecessary for operation of the
statute. 2
In the meantime, CSIRO moved for judgment that
Carnegie was not entitled to the benefit it was accorded in
the interference for its provisional patent application.
The Board ruled in CSIRO’s favor and redeclared the
interference with CSIRO as the senior party. Carnegie
failed to file a priority motion in response. Consequently,
the Board entered judgment against Carnegie, canceling
all of Carnegie’s claims involved in the interference. At
the same time, the Board finally refused CSIRO’s claims
52–62 and 69–106 based on its earlier determination that
the claims were barred under § 135(b)(1).
CSIRO appeals the Board’s refusal of claims 52–62
and 69–106 of the ’183 application, arguing that
§ 135(b)(1) does not require promptness or diligence in
seeking an interference. Alternatively, CSIRO argues
that its claims cannot be barred under § 135(b)(1) in view
of the cancellation of Carnegie’s claims in the Board’s
final decision. Neither Carnegie nor the PTO participated
in the appeal.
We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
We review the Board’s statutory construction de novo.
Adair, 668 F.3d at 1336. We hold that the Board erred by
construing § 135(b)(1) to bar CSIRO’s post-critical date
claims even assuming CSIRO’s prosecution strategy

2 Upon CSIRO’s motion for rehearing, the Board
vacated its judgment with respect to claims 63–67, but
maintained that claims 52–62 and 69–106 were barred as
untimely.
IN RE: COMMONWEALTH SCIENTIFIC 5

delayed declaration of the interference. Application of
§ 135(b)(1) does not turn on the patent applicant’s prose-
cution decisions or require diligence in prosecution. Both
the plain language of the statute and the precedent
applying it support this conclusion.
Our predecessor court held that cancellation or
amendment of a pre-critical date claim does not in itself
result in a violation of § 135(b)(1) so long as the later-
added claims are immaterially different from the pre-
critical date claim. See Cryns v. Musher, 161 F.2d 217
(CCPA 1947); Corbett v. Chisholm, 568 F.2d 759 (CCPA
1977). We have followed this precedent. See, e.g., Regents
of the Univ. of Cal. v. Univ. of Iowa Research Found., 455
F.3d 1371, 1376 (Fed. Cir. 2006); Adair, 668 F.3d at 1334.
In Cryns, the CCPA explained that Rule 94, 3 a predeces-
sor to § 135(b), only required the “urging [of] claims
covering the matter which is claimed in the patent before
the critical period has terminated,” and declined to im-
pose a requirement for continuous prosecution of the pre-
critical date claims. 161 F.2d at 219–220.
Later, in Corbett, the CCPA applied the reasoning in
Cryns to § 135(b)(1), explaining that the statute only
required that, prior to the critical date, “the copier had to
be claiming the invention, whether or not the claims were
subsequently cancelled.” 568 F.2d at 765. In Regents,
this Court explained that a party can defeat a § 135(b)(1)

3 The pertinent part of Rule 94 of the Rules of Prac-
tice in the PTO, which at the time was identical to the
second paragraph of 35 U.S.C. § 51 (1939), stated: “No
amendment for the first time presenting or asserting a
claim which is the same as, or for substantially the same
subject matter as, a claim of an issued patent may be
made in any application unless such amendment is filed
within one year from the date on which said patent was
granted.”
6 IN RE: COMMONWEALTH SCIENTIFIC

bar by showing “that claims filed after the critical date
find support in the claims filed before the critical date”
and explained that the relationship between post- and
pre-critical date claims is “dispositive of the section
135(b)(1) question.” 455 F.3d at 1374. Finally, in Adair,
this Court reaffirmed that cancellation of claims does not
impact application of § 135(b)(1), explaining that “[a]ny
claims filed within the critical period, whether or not later
cancelled, may provide pre-critical date support for the
later filed patent claim(s), so long as the pre-critical date
claims are not materially different from the later filed
claims.” 668 F.3d at 1339. We left no room for imposition
of a requirement of diligent prosecution when the requi-
site relationship between post- and pre-critical date
claims is otherwise established.
We see no basis in this precedent or the statutory lan-
guage itself for now reading in an exception to the excep-
tion in § 135(b)(1) to require a showing of diligent
prosecution by the patent applicant. At no time have we
held that a patent applicant’s prosecution strategy could
bar claims otherwise permissible under § 135(b)(1), and
the Board’s analysis does not persuade us to adopt such a
rule at this time.
Because we reverse the Board’s refusal of claims
52–62 and 69–106 of the ’183 application, we do not
address CSIRO’s argument that these claims cannot be
time-barred in view of the Board’s subsequent cancella-
tion of Carnegie’s interfering patent claims.
CONCLUSION
The Board erred by finding claims 52–62 and 69–106
of the ’183 application time-barred under 35 U.S.C.
§ 135(b)(1) based on prosecution delay caused by CSIRO.
Because Carnegie bore the burden of demonstrating the
applicability of the § 135(b)(1) bar but failed to present
any evidence of differences between CSIRO’s post- and
IN RE: COMMONWEALTH SCIENTIFIC 7

pre-critical date claims, we reverse the Board’s refusal of
claims 52–62 and 69–106 of the ’183 application.
REVERSED
COSTS
None.