Loughlin v. Ling
684 F.3d 1289
Fed. Cir.2012Background
- Loughlin appeals a Board cancellation of claim 1 of the ’426 patent in an interference with Ling’s ’404 application claiming a multiple function lock.
- Ling’s ’404 was filed Feb. 5, 2007 and credited with §120 priority from Ling’s earlier ’413 application, with Ling adding claim 31 identical to Loughlin’s claim 42 (later issued as claim 1 of the ’426).
- Interference declared Sept. 2010 between Loughlin’s claim 1 and Ling’s claim 31; Loughlin moved for judgment under § 135(b)(2).
- § 135(b)(2) bars an application filed after publication unless the filing occurs within one year after publication; the Board denied Loughlin’s motion.
- The Board held that § 120 priority applies to Ling’s involved application, so Ling’s ’404 is not an “application filed” after Loughlin’s publication, and thus Ling is not barred from copying claims to provoke an interference.
- Loughlin then sought adverse judgment under Board Rule 127(b); the Board entered judgment adverse to Loughlin, and Loughlin appealed to the Federal Circuit.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does §135(b)(2) bar Ling from provoking an interference when Ling’s application benefits from §120? | Loughlin: Ling is barred because Ling copied after publication and §120 does not apply to §135(b)(2). | Ling: ‘an application filed’ includes §120-benefited apps; Ling’s 404 has an effective filing date prior to Ling’s publication, so not barred. | Yes; Ling is not barred; §120 applies to §135(b)(2). |
| Whether the Board correctly interpreted §135(b)(2) in pari materia with §120. | Loughlin argues pari materia interpretation misreads §135(b)(2) as separate from §120. | Ling contends Board properly applied §120 to determine ‘an application filed’ under §135(b)(2). | Board interpretation correct; §120 applies to ‘an application filed’ under §135(b)(2). |
| Did Loughlin properly seek and obtain a final adverse judgment appealable under §141? | Loughlin sought adverse judgment under Rule 127(b) and appealed the Board’s decision. | Ling argues jurisdiction is lacking due to absence of final adverse decision. | The appeal is proper; §141 provides jurisdiction over final adverse Board decisions in interference cases. |
| Should Ling’s application be treated as an earlier-filed, §120-bearing application for §135(b)(2) purposes given Ling’s priority from the ’413 application? | Loughlin: Ling’s effective filing date is after publication, so §135(b)(2) should apply. | Ling: Ling’s §120-based benefit makes it an eligible predecessor for §135(b)(2). | Ling’s §120 benefit makes Ling’s application eligible under §135(b)(2). |
Key Cases Cited
- In re Hogan, 559 F.2d 595 (CCPA 1977) (§120 has broad applicability beyond specific grounds for rejection)
- United States v. Am. Bell Tel. Co., 167 U.S. 224 (1897) (Congressional intent to grant broad patent-statutory rights)
- In re Chu, 66 F.3d 292 (Fed. Cir. 1995) (proper use of §120 to antedate prior art under other sections)
- PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008) (recognizing §120 may apply to defeat certain patent-invalidity defenses)
- Stevens v. Tamai, 366 F.3d 1325 (Fed. Cir. 2004) (statutory interpretation with respect to interference and priority)
- In re Swanson, 540 F.3d 1368 (Fed. Cir. 2008) (statutory interpretation and priority principles in patent law)