United States Court of Appeals for the Federal Circuit
2009-1241
KONINKLIJKE PHILIPS ELECTRONICS N.V.,
Plaintiff-Appellant,
v.
CARDIAC SCIENCE OPERATING COMPANY,
Defendant-Appellee.
J. Michael Jakes, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of
Washington, DC, argued for plaintiff-appellant. With him on the brief were James F.
Sherwood; and Lily Lim, of Palo Alto, California.
Eric H. Chadwick, Patterson, Thuente, Skaar & Christensen, P.A., of Minneapolis,
Minnesota, argued for defendant-appellee. With him on the brief was Aaron W. Davis.
Appealed from: United States District Court for the Western District of Washington
Judge Marsha J. Pechman
United States Court of Appeals for the Federal Circuit
2009-1241
KONINKLIJKE PHILIPS ELECTRONICS N.V.,
Plaintiff-Appellant,
v.
CARDIAC SCIENCE OPERATING COMPANY,
Defendant-Appellee.
Appeal from the United States District Court for the Western District of
Washington in case no. 08-CV-543, Judge Marsha J. Pechman.
___________________________
DECIDED: January 5, 2010
___________________________
Before MICHEL, Chief Judge, FRIEDMAN, and GAJARSA, Circuit Judges.
GAJARSA, Circuit Judge.
Koninklijke Philips Electronics N.V. (“Philips”) appeals from the United States
District Court for the Western District of Washington’s sua sponte dismissal of Philips’
civil suit against Cardiac Science Operating Co. (“Cardiac Science”). Pursuant to
35 U.S.C. § 146, Philips sought review in the district court of the Board of Patent
Appeals and Interferences’ (the “Board”) interference decision. Philips timely appealed
the district court’s order dismissing Philips’ complaint with prejudice. We reverse and
remand with instructions as outlined below.
BACKGROUND
Philips is the assignee of U.S. Patent No. 6,241,751 (the “’751 patent”). The ’751
patent discloses a cardiac defibrillator that delivers electrical shocks to a patient’s heart
during ventricular fibrillation. Carlton B. Morgan and three other engineers invented the
defibrillator and applied for a patent on April 22, 1999. ’751 patent at [22]. The
inventors obtained a patent for the defibrillator on June 5, 2001, assigning their interest
to Agilent Technologies, Inc., Philips’ predecessor in interest. Id. at [45], [73]. The ’751
patent is an improvement patent on a previous cardiac defibrillator, U.S. Patent No.
5,749,904 (the “Gliner patent”).
According to Philips, the ’751 patent discloses a defibrillator that delivers
electrical shock based on two parameters. First, the defibrillator uses multiple capacitor
configurations to measure a patient’s transthoracic impedance. Id. at col.1 ll.39–45;
col.2 ll.53–64. The patent uses the term transthoracic impedance or patient impedance
to mean the electrical impedance of the thoracic tissues, including the heart, as
measured between the defibrillator’s electrodes. Second, the defibrillator uses the
capacitors to deliver varying energy levels measured in joules that an operator can
select for delivering electric shock. Id. at col.2 ll.53–64. In sum, the ’751 patent
discloses a defibrillator with a set of capacitors arranged according to both “patient
impedance and desired energy level.” Id. at [57].
On March 6, 1998, Cardiac Science filed a patent application for a multiple-
capacitor cardiac defibrillator. Almost a year after the ’751 patent issued, Cardiac
Science filed a continuation application, No. 10/159,806 (the “Owen application”), on
2009-1241 2
May 31, 2002. To provoke interference proceedings, Cardiac Science copied claims 1–
37 of the ’751 patent into the Owen application and claimed an earlier priority date.
The U.S. Patent and Trademark Office (“PTO”) declared an interference under
35 U.S.C. § 135(a) between the Owen application and the ’751 patent. The Board
formulated one count for the interference, which it copied verbatim from claim 15 of the
’751 patent and claim 15 of the Owen application. That count reads:
A method for delivering an impedance-compensated defibrillation pulse to
a patient, comprising:
measuring a patient impedance of said patient;
selecting from a set of configurations in an energy storage
capacitor network to deliver an impedance-compensated defibrillation
pulse to said patient responsive to said patient impedance; and
delivering said impedance-compensated defibrillation pulse to said
patient.
This lone count corresponds to ’751 patent claims 1–37 and Owen application
claims 1–9, 11–13, 15–18, 20–25, 27–30, 32–33, and 38–39. The term “impedance-
compensated defibrillation pulse” from the count is at the center of the parties’ dispute.
Pursuant to its statutory mandate, the Board proceeded to “determine questions of
priority of the inventions” disclosed in the ’751 patent and the Owen application and
“determine questions of patentability.” 35 U.S.C. § 135(a) (2006).
During the interference proceedings, Philips filed five preliminary motions in an
effort to terminate the proceedings. Three of those motions are relevant to this appeal
and are presented below so as to track the Board’s reasoning. Note, however, that the
motions are not presented in numerical order.
In motion 4, Philips argued, inter alia, that the Owen application was not
patentable because it failed to provide an adequate written description as required
under § 112, ¶ 1. Philips asserted that the ’751 patent narrowly defined the term
2009-1241 3
“impedance-compensated defibrillation pulse” in its specification as corresponding to
“an overall capacitance and charge voltage tailored to the patient impedance and the
desired energy level.” In contrast, Philips asserted that the Owen specification
disclosed “configuring capacitors based only on patient impedance.” Because Owen’s
specification failed to disclose desired energy level as an additional parameter for
configuring capacitors, Philips argued that all of Owen’s claims except for claim 38 were
unpatentable for lack of written description. The Board rejected Philips’ argument,
opining that “Morgan[, the ’751 patent inventor,] has [presented] no basis for construing
Owen’s claims in light of definitions contained in Morgan’s specification.” The Board
explained that the ’751 patent’s written description was irrelevant to its analysis under
the PTO’s interference procedures. The Board cited one regulation in particular as
authority to disregard the ’751 patent in construing the claim term in the Owen
application: “A claim shall be given its broadest reasonable construction in light of the
application or patent in which it appears.” 37 C.F.R. § 41.200(b) (2009) (emphasis
added).
In motion 5, 1 Philips filed a motion expressly contingent on the Board broadly
interpreting the term “impedance-compensated defibrillation pulse” to include a
capacitor configuration based only on patient impedance, but not based on desired
energy level. If the Board so construed the term, Philips argued that Owen’s claims 1–
4, 13, 15, 20–22, and 39 were unpatentable because the Gliner patent anticipated the
claims under § 102 or at least rendered the claims obvious under § 103. The Board
dismissed Philips’ contingent motion, explaining that the contingency upon which the
1
Motion 5 is entitled “Morgan Contingent Motion 1” in the record. Philips
later renumbered “Morgan Contingent Motion 1” to be motion 5.
2009-1241 4
motion relied never materialized because the Board had not interpreted the term
“impedance-compensated defibrillation pulse.”
In motion 2, Philips argued that Owen’s claim 38 was unpatentable because the
Gliner patent anticipated claim 38 as prior art under § 102 or because the Gliner patent
rendered claim 38 obvious under § 103. The Board found it unnecessary to consider
the patentability of Owen’s claim 38, holding that Philips failed to establish that all of
Owen’s other claims were unpatentable in motion 4. As long as the Board found that
the Owen application had priority over the ’751 patent and that at least some of the
claims were patentable, the Board opined that determining claim 38’s patentability was
“not essential for this interference.” The Board assumed that the primary examiner
could determine whether Owen’s claim 38 was anticipated or obvious ex parte after the
interference proceeding concluded.
After denying all of Philips’ motions, the Board addressed the priority stage of the
interference. The Board found in favor of the Owen application for priority and canceled
the ’751 patent claims 1–37. Philips then promptly filed suit in the United States District
Court for the Western District of Washington under § 146.
Philips sought review in the district court of the Board’s rulings as to written
description, anticipation, obviousness, and priority as raised in motions 2, 4, and 5 and
during the priority stage. Shortly after filing its complaint, Philips filed a motion for a
claim construction hearing. The court then requested additional briefing on Philips’
preliminary motions before the Board and both parties submitted their briefs
accordingly. In its last brief before the district court, Philips asserted that if the court
denied its motion for a claim construction hearing, “the parties would need to proceed to
2009-1241 5
trial over the claims raised in Philips’ complaint” because “Philips would introduce live
testimony.”
After the parties submitted their briefs, the court held a hearing to discuss the
Board’s rulings on Philips’ preliminary motions. During that hearing, Philips’ counsel
advised the court that Philips “would be asking for a trial if there’s no claim construction
here” to relitigate the five motions before the Board and to argue no interference in fact.
Counsel stated that Philips “can introduce evidence, live evidence to this Court at trial.
That’s what we intend to do if there’s no claim construction in the case.”
After the hearing, the district court denied Philips’ motion for a claim construction
hearing and sua sponte dismissed the complaint with prejudice. The district court
affirmed all of the Board’s decisions, finding that the Board’s “reasons for denying or
dismissing each motion were grounded in the application of the Board’s own procedures
and regulations.” The order did not address motion 2 before the Board or Philips’ claim
that the Board erred in determining that the Owen application had priority over the ’751
patent. Both parties agree that even though the district court did not explain under
which Federal Rule of Civil Procedure it dismissed the complaint, the dismissal was
tantamount to sua sponte summary judgment. At the time of dismissal, the court had
yet to issue a scheduling order.
Philips timely filed an appeal. We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(4)(C).
2009-1241 6
DISCUSSION
Philips raises three issues on appeal. First, Philips argues that the district court
improperly dismissed its complaint with prejudice sua sponte, thereby entering a de
facto summary judgment. Second, Philips argues that the district court improperly
dismissed its claim that the Board erroneously applied 37 C.F.R. § 41.200(b). Philips
asserts that when a patentee challenges the written description of a competing
application, the court and Board should interpret claims in light of the original dislcosure.
Third, Philips argues that the district court improperly dismissed its claim that the Board
erred in denying Philips’ contingent motion to find several of the competing applicant’s
claims anticipated or obvious based on the Gliner patent. We address each of Philips’
arguments in turn and reverse the district court on all three issues. We express no
opinion, however, on the proper construction of the term “impedance-compensated
defibrillation pulse” or on whether the Owen application satisfies 35 U.S.C. § 112, ¶ 1 by
providing an adequate written description. 2
We first address the district court’s sua sponte summary judgment. This court
reviews a district court’s grant of summary judgment de novo. Revolution Eyewear, Inc.
v. Aspex Eyewear, Inc., 563 F.3d 1358, 1365 (Fed. Cir. 2009). “Because this case
presents a procedural question not unique to patent law, this court follows the law of the
regional circuit from which the case is appealed.” Massey v. Del Labs., Inc., 118 F.3d
2
The district court should note that this court recently heard arguments en
banc to consider whether § 112, ¶ 1 contains a separate written description requirement
and, if so, what the scope and purpose of that requirement should be. See Ariad
Pharms., Inc. v. Eli Lilly & Co., 332 F. App’x 636 (Fed. Cir. 2009) (per curiam) (granting
rehearing en banc).
2009-1241 7
1568, 1572 (Fed. Cir. 1997) (applying Ninth Circuit law to vacate a grant of summary
judgment). In this case, Ninth Circuit law applies.
The Ninth Circuit has held that “[a]s a general rule, a district court may not sua
sponte grant summary judgment on a claim without giving the losing party ten days’
notice and an opportunity to present new evidence as required by Federal Rule of Civil
Procedure 56(c).” United States v. Grayson, 879 F.2d 620, 625 (9th Cir. 1989).
However, the Ninth Circuit recognizes an exception to the rule. “A district court may
grant summary judgment without notice if the losing party has had a ‘full and fair
opportunity to ventilate the issues involved in the motion.’” Grayson, 879 F.2d at 625
(quoting Waterbury v. T.G. & Y. Stores Co., 820 F.2d 1479, 1480 (9th Cir. 1987)). After
a party has had a full and fair opportunity to present its arguments, summary judgment
is only appropriate when “there is no genuine issue as to any material fact and the
movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c). Thus, a
district court in the Ninth Circuit may enter summary judgment (1) as long as the losing
party has had a full and fair opportunity to present arguments and (2) the parties have
no genuine dispute as to a material fact.
The district court did not satisfy either standard in this case. First, the district
court did not give Philips an opportunity to present its evidence or argument that the
’751 patent had priority over the Owen application. Philips brought its action under
35 U.S.C. § 146, which allows the losing party in an interference proceeding to file a
complaint in district court to review the Board’s interference proceedings and to present
new evidence. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1345 (Fed. Cir.
2000) (“Unlike a direct appeal to this court pursuant to 35 U.S.C. § 141, the parties
2009-1241 8
before the district court [in a § 146 action] are not limited to the evidentiary record
before the Board . . . .”). Though the court suggested during the last hearing that it
need not consider the merits of the interference if it agreed with the Board’s procedural
grounds, § 146 grants parties the right to present new testimony and requires the court
to review the Board’s factual findings. See Winner, 202 F.3d at 1345; Estee Lauder Inc.
v. L’Oreal, S.A., 129 F.3d 588, 592 (Fed. Cir. 1997) (“Section 146 actions have been
described as a hybrid of an appeal and a trial de novo.”). 3 Philips claimed that the
Board’s priority decision was in error and informed the district court that it intended to
present new testimony. Because the district court ignored Philips’ request to present
new evidence and never heard Philips’ argument that the ’751 patent had priority, the
court did not give Philips a full and fair opportunity to ventilate the issues raised in its
complaint and improperly entered summary judgment under Ninth Circuit law. See
Grayson, 879 F.2d at 625.
Second, there remains a genuine dispute as to material facts between the
parties. For example, the parties still disagree on whether the Owen application
contains an adequate written description for the term “impedance-compensated
defibrillation pulse” and on whether the Gliner patent anticipates Owen’s claim 38.
3
We note that this case does not involve a question of a district court’s
standard of review in a § 146 action nor whether the standard of review in a § 146
action differs from the standard in a § 145 action. Compare Hyatt v. Doll, 576 F.3d
1246, 1273 (Fed. Cir. 2009) (“[T]he district court must defer to the PTO’s fact-finding [in
a § 145 action] except where appropriately admitted new evidence conflicts with a fact
found by the PTO or presents a new factual issue that the PTO did not consider.”), and
Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1379 (Fed. Cir. 2009) (“In Section 146
actions, if the parties present new evidence to the district court that conflicts with the
record before the Board, the district court must make de novo factual findings regarding
this new evidence.”), with Winner, 202 F.3d at 1347 (“We hold that the admission of live
testimony on all matters before the Board in a section 146 action . . . makes a factfinder
of the district court and requires a de novo trial.”).
2009-1241 9
Cardiac Science argues that Philips failed to inform the district court that it would need
to address other issues after ruling on the motion for a claim construction hearing. But
Cardiac Science ignores clear statements to the contrary. At the last hearing before the
district court, Philips made clear that it “would be asking for a trial if there’s no claim
construction here.” And in its last brief before the district court, Philips asserted that if
the court denied its motion for a claim construction hearing, “the parties would need to
proceed to trial over the claims raised in Philips’ complaint” because Philips would
introduce new testimony. Though Philips could have been more explicit in explaining
the issues on which it intended to present additional evidence, Philips’ complaint and
briefs together with Cardiac Science’s answer set out the issues on which the parties
still have a dispute as to material facts. For example, Philips asserted that the Owen
application did not disclose both patient impedance and desired energy level as
parameters for delivering electrical shock, pointing to the definition of “impedance-
compensated defibrillation pulse” in the ’751 patent and the Owen application as
evidence. It then alleged in complaint count I that the Board erroneously dismissed its
motion that all of Owen’s claims except for claim 38 were unpatentable for lack of a
written description. In response, Cardiac Science denied Philips’ assertions of fact as to
written description in its answer. Philips further asserted that the Gliner patent
disclosed a defibrillator that configured capacitors based on patient impedance before
the Owen application, pointing to documents such as a 1995 defibrillation article, the
Gliner patent, and the Owen application as evidence. It then alleged in count I that the
Gliner patent anticipated Owen’s claim 38 under § 102. In response, Cardiac Science
denied Philips’ assertions of fact as to anticipation in its answer.
2009-1241 10
This court has held that genuine issues of material fact as to written description
and anticipation preclude summary judgment. See, e.g., Vita-Mix Corp. v. Basic
Holding, Inc., 581 F.3d 1317, 1332 (Fed. Cir. 2009) (holding that genuine issues of
material fact with respect to anticipation, obviousness, and lack of enablement
precluded summary judgment); SunTiger, Inc. v. Scientific Research Funding Group,
189 F.3d 1327, 1334 (Fed. Cir. 1999) (holding that a genuine issue of material fact as to
written description precluded summary judgment). Because the parties genuinely
disputed issues of material fact as to, e.g., written description and anticipation, the
district court improperly entered summary judgment.
We next address whether the district court properly affirmed the Board in
applying 37 C.F.R. § 41.200(b) to Philips’ challenge of the Owen application’s written
description. Congress has charged the Board with resolving questions of priority of
invention in an interference proceeding when more than one party seeks to patent
substantially the same subject matter. 3A Donald S. Chisum, Chisum on Patents
§ 10.09[1][a] (2005). By statute, the Board “shall determine questions of priority of the
inventions and may determine questions of patentability.” 35 U.S.C. § 135(a) (2006).
This court has held that “the Board should decide issues relating to priority and
patentability that are fairly raised and fully developed during the interference, despite
the permissive language of § 135(a) with respect to patentability issues.” 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.
2009-1241 11
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. See,
e.g., 37 C.F.R. §§ 41.200–.208 (2009). The Board and district court relied on one of
those regulations in deciding Philips’ written description challenge on procedural
grounds. That regulation governs claim construction in an interference proceeding: “A
claim shall be given its broadest reasonable construction in light of the specification of
the application or patent in which it appears.” 37 C.F.R. § 41.200(b).
This court gives substantial deference to an agency’s own interpretation of its
rules and will thus accept the Board’s interpretation of its rules unless the interpretation
“is plainly erroneous or inconsistent with the regulation.” Eli Lilly & Co. v. Bd. of
Regents of the Univ. of Wash., 334 F.3d 1264, 1266 (Fed. Cir. 2003). Specifically, the
court reviews a Board decision “pursuant to the permissive rules governing a patent
interference proceeding for abuse of discretion.” Id. “An abuse of discretion occurs if
the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an
erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves
a record that contains no evidence on which the Board could rationally base its
decision.” Id. at 1266–67. The regulation in dispute here raises an issue of law—claim
construction. See Markman v. Westview Instruments, 52 F.3d 967, 970–71 (Fed. Cir.
1995), aff’d, 517 U.S. 370, 372 (1996).
A district court reviews issues of law from Board interference proceedings de
novo. Winner, 202 F.3d at 1344–45. We, in turn, “review[] the district court’s
2009-1241 12
conclusions of law de novo and findings of fact for clear error.” Golden Blount, Inc. v.
Robert H. Peterson Co., 365 F.3d 1054, 1058 (Fed. Cir. 2004).
In this case, the district court abused its discretion by basing summary judgment
on “an erroneous conclusion of law.” Eli Lilly, 334 F.3d at 1266. Philips argued below
that all of Owen’s claims except for claim 38 were unpatentable for lack of a written
description because those claims include the term “impedance-compensated
defibrillation pulse,” the ’751 patent written description defines the term to include both
patient impedance and desired energy level, and the Owen application’s written
description failed to disclose desired energy level. But the district court erroneously
concluded that the ’751 patent written description was irrelevant. The court erred in
holding that the Board can apply 37 C.F.R. § 41.200(b) and disregard the original
disclosure when a patentee challenges an applicant’s written description in an
interference proceeding. The court’s decision is contrary to the holdings of Agilent
Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009) and In re Spina,
975 F.2d 854 (Fed. Cir. 1992). Based on its understanding of § 41.200(b), the court
further erred in assuming that it need not construe the term “impedance-compensated
defibrillation pulse.” We appreciate that the Board may believe that there is a conflict
between this court’s holdings and § 41.200(b). However, any conflict between the two
must be resolved as directed in Agilent.
Agilent addressed when the Spina rule should apply in an interference
proceeding. In Spina, this court considered which specification was relevant when
interpreting a claim for a written description challenge. 975 F.2d at 856. The court
agreed with the Board’s approach: “When interpretation is required of a claim that is
2009-1241 13
copied for interference purposes, the copied claim is viewed in the context of the patent
from which it was copied.” 975 F.2d at 856. Though the Board chose the relevant
specification on which to interpret Charles Spina’s claim, the court reversed the Board’s
claim construction on different grounds. See id. at 857–58. After Spina, the court
distinguished a written description challenge from a priority challenge under 35 U.S.C.
§ 102, holding that when a party challenges a claim’s validity based on prior art, “the
PTO and this court must interpret [a] claim in light of the specification in which it
appears.” Rowe v. Dror, 112 F.3d 473, 479 (Fed. Cir. 1997). Despite this distinction in
Rowe, some parties still misunderstood when the Spina rule should apply.
In Agilent, this court again addressed the differences between a written
description challenge and a validity challenge in interference proceedings. The court
held: “[W]hen a party challenges written description support for an interference count or
the copied claim in an interference, the originating disclosure provides the meaning of
the pertinent claim language.” Agilent, 567 F.3d at 1375 (emphasis added). In contrast,
“[w]hen a party challenges a claim’s validity under 35 U.S.C. § 102 or § 103, however,
this court and the Board must interpret the claim in light of the specification in which it
appears.” Id. Consequently, the relevant specification for claim construction depends
on whether a party in an interference proceeding challenges the written description
under § 112, ¶ 1 or challenges validity under § 102 or § 103. Recall that PTO regulation
requires the examiner to give a claim “its broadest reasonable construction in light of the
application or patent in which it appears” regardless of the type of challenge in an
interference proceeding. 37 C.F.R. § 41.200(b) (emphasis added).
2009-1241 14
Agilent made clear that 37 C.F.R. § 41.200(b) does not apply in an interference
proceeding when one party challenges another’s written description. The court applied
the Spina rule to a case with the same preliminary motion as in this case: Philips filed a
“preliminary motion challenging the validity of the copied claims on the grounds that the
[Owen] application did not describe the invention adequately under § 112 ¶ 1.” Agilent,
567 F.3d at 1373. As in Agilent, “[t]his case calls for application of the Spina rule,
because the question is ‘whether the copying party’s specification[, Owen,] adequately
supported the subject matter claimed by the other party[, the inventors of the ‘751
patent].’” Id. (quoting Rowe, 112 F.3d at 479).
Based on their failure to apply our precedent, the Board and the district court
fundamentally erred by summarily rejecting Philips’ written description challenge. A
district court must base its analysis of written description under § 112, ¶ 1 on proper
claim construction. See Agilent, 567 F.3d at 1383 (reversing the district court’s holding
that an applicant’s written description was adequate because the court erred in its claim
construction); Intirtool, Ltd. v. Texar Corp., 369 F.3d 1289, 1296 (Fed. Cir. 2004) (“The
district court’s reliance on [an] erroneous [claim] construction . . . renders its finding that
the . . . patent is invalid for failure to ‘contain an adequate written description of the
claimed invention’ clearly erroneous.”). Here, the district court did not construe the
disputed term at all. Nor did the court analyze the Owen application’s written
description, assuming that the Board’s procedural grounds obviated claim construction.
The district court failed to recognize that “the Board should decide issues relating to . . .
patentability that are fairly raised and fully developed during the interference, despite
the permissive language of § 135(a) with respect to patentability issues.” Gartside,
2009-1241 15
203 F.3d at 1317. Cardiac Science does not dispute that Philips fairly raised and fully
developed its written description challenge before the Board. Consequently, the district
court should have corrected the Board’s error by deciding whether the Owen
application’s written description satisfied § 112, ¶ 1. On remand, the district court must
construe the term “impedance-compensated defibrillation pulse” in light of the ’751
patent written description and then determine whether the Owen application’s written
description satisfies § 112, ¶ 1.
The district court and the Board’s legal errors stem from a failure to appreciate
the consequences of the PTO’s rulemaking authority. The PTO lacks substantive
rulemaking authority. See Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549–50 (Fed.
Cir. 1996) (“[T]he broadest of the PTO’s rulemaking powers—35 U.S.C. § 6(a)—
authorizes the Commissioner to promulgate regulations directed only to ‘the conduct of
proceedings in the [PTO]’; it does not grant the Commissioner the authority to issue
substantive rules.” (quoting Animal Legal Def. Fund v. Quigg, 932 F.2d 920, 930 (Fed.
Cir. 1991))). Unfortunately, the district court and the Board did not heed this court’s
prior warnings that PTO regulations disregarding Spina have limited applicability. In
1994, the PTO proposed an amendment to 37 C.F.R. § 1.633(a)—the precursor of
37 C.F.R. § 41.200(b)—to “specify that a claim shall be construed in light of the
specification of the application or patent in which it appears.” PTO Miscellaneous
Amendments, 59 Fed. Reg. 50,181, 50,185 (1994). The PTO explained that “[t]his
amendment would administratively set aside the judicially created rule of In re Spina . . .
to the extent it held that the interference rules require that an ambiguous claim copied
from a patent for interference purposes be construed in light of the disclosure of the
2009-1241 16
patent.” Id. This amendment is currently codified at 37 C.F.R. § 41.200(b). In 1997, we
explained that it “does not accept the PTO’s statement that it can ‘administratively set
aside the judicially created rule of In re Spina.’ Judicial precedent is as binding on
administrative agencies as are statutes.” Rowe, 112 F.3d at 479 n.2. We remind the
district court and the Board that they must follow judicial precedent instead of 37 C.F.R.
§ 41.200(b) when a party challenges another’s written description during an interference
proceeding because the PTO lacks the substantive rulemaking authority to
administratively set aside judicial precedent.
Cardiac Science similarly misunderstands this court’s holdings in Agilent and
Spina. At oral argument, Cardiac Science argued that Kubota v. Shibuya, 999 F.2d 517
(Fed. Cir. 1993), “annulled” Agilent. In its brief, Cardiac Science asserted that Kubota
held that “right to make” cases like Spina do not apply to the preliminary motions period.
However, Cardiac Science misunderstands Kubota’s implications. Kubota, a panel
decision, could not have overturned Spina and could not have preemptively “annulled”
Agilent, which was decided about six years after Kubota. Moreover, Kubota did not hold
that the “right to make” cases no longer apply during preliminary motions. The “right to
make” line of cases concerned whether a party had the right to copy a generic claim to
provoke an interference when the party’s written description only disclosed a species,
but claimed the genus. See, e.g., Squires v. Corbett, 560 F.2d 424, 434 (CCPA 1977)
(holding that a party’s “right to make” a copied claim depended on whether an
application’s disclosure supported the full scope of the claim under § 112, ¶ 1),
superseded by statute, 35 U.S.C. § 135(a); 3A Donald S. Chisum, Chisum on Patents
§ 10.09[4][e][i] (2005). This line of cases addressed the PTO’s interference rules before
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the Patent Law Amendments Act of 1984. Some of the “right to make” cases held that
under the old interference rules, a party copying claims to provoke an interference had
the burden of proof during preliminary motions to show “by clear and convincing
evidence that it had the ‘right to make’ the claim.” Kubota, 999 F.2d at 521. Kubota
rendered “right to make” cases inapplicable for the purpose of a party’s burden of proof
during preliminary motions. See id. at 522 (“Since it is no longer necessary to copy
claims to provoke an interference, the ‘old rule’ ‘right to make’ decisions, to the extent
they put the burden of proof on the non-moving party . . . are inapplicable to a 37 C.F.R.
1.633(a) motion alleging lack of written description support.”). The parties in this case
do not dispute the burden of proof. They dispute which specification is relevant for a
written description challenge, and the district court’s conclusion was legally incorrect.
Finally, we address whether the district court properly dismissed Philips’ claim
that the Board erred in denying Philips’ contingent motion, numbered as motion 5 before
the Board. We agree with Philips. The district court indeed erred in dismissing Philips’
claim that Owen’s claims 1–4, 13, 15, 20–22, and 39 are unpatentable because the
Gliner patent anticipated those claims under 35 U.S.C. § 102 or at least rendered the
claims obvious under § 103. The court opined that the Board properly dismissed motion
5 “because the contingency on which it was premised never arose.” But the
contingency never materialized because the Board failed to apply Spina and resolve the
written description challenge as a properly raised issue of patentability. Moreover,
Agilent makes clear that the district court should have addressed Philips’ unpatentability
claims under § 102 and § 103 regardless of whether it construed the term “impedance-
compensated defibrillation pulse” in light of the ’751 patent written description. In
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Agilent, the court clarified that when a party challenges a claim’s patentability under
§ 102 or § 103—in contrast to a written description challenge—a court “must interpret
the claim in light of the specification in which it appears.” 567 F.3d at 1375. Therefore,
the district court must address Philips’ argument that Owen’s claims 1–4, 13, 15, 20–22,
and 39 are unpatentable over the Gliner patent if the court concludes that the Owen
application provides an adequate written description on remand.
CONCLUSION
Because the district court erred by entering summary judgment and abused its
discretion by holding that the Board can apply 37 C.F.R. § 41.200(b) and disregard the
original disclosure’s written description, we reverse and remand with instructions to
construe the claims in accordance with Agilent Technologies, Inc. v. Affymetrix, Inc.,
567 F.3d 1366 (Fed. Cir. 2009).
REVERSED and REMANDED
COSTS
Costs to the Appellant.
2009-1241 19