Last Month at the Federal Circuit
Last Month at the Federal Circuit

August 2012

In an Interference Proceeding, a Party Can Rely on a Claim to Priority Under 120 to Overcome a 135(b)(2) Bar


Judges:  Rader, Lourie (author), Moore
[Appealed from Board]

In Loughlin v. Ling, No. 11-1432 (Fed. Cir. July 11, 2012), the Federal Circuit affirmed the Board’s determination that appellees’ (collectively “Ling”) claims involved in an interference with appellants (collectively “Loughlin”) were not barred under 35 U.S.C. § 135(b)(2). 

Ling filed U.S. Application No. 11/671,404 (“the ’404 application”) and provoked an interference with Loughlin’s U.S. Application No. 10/845,624 (“the ’624 application”).  Ling filed the ’404 application after the ’624 application published and provoked the interference more than one year after its publication date.  Ling’s ’404 application, however, claimed priority under 35 U.S.C. § 120 to U.S. Application No. 10/759,413 (“the ’413 application”), which was filed before the ’624 application.

After the PTO declared an interference, Loughlin moved for judgment under § 135(b)(2).  Loughlin argued that Ling’s attempt to provoke an interference was untimely because Ling’s ’404 application was “an application filed” after the publication date of Loughlin’s ’624 application and that Ling provoked the interference more than one year after the publication date of the ’624 application.  The Board denied Loughlin’s motion, concluding that because Ling’s ’404 application claimed priority to the ’413 application, § 135(b)(2) did not apply.  The Board held that because Ling was entitled to a § 120 priority benefit to his ’413 application, the ’404 application had an earlier effective filing date and was not “an application filed” after Loughlin’s application published.  After the Board denied his motion, Loughlin requested adverse judgment, conceding that his entire case hinged on the Board’s interpretation of § 135(b)(2).

On appeal, Loughlin argued that the Board erred by concluding that § 120 applies when considering the date of “an application filed” under § 135(b)(2).  Loughlin argued that because the actual (not effective) filling date of Ling’s ’404 application was more than one year after the publication of Loughlin’s ’624 application, Ling was barred under § 135(b)(2) from provoking the interference.  Ling countered that the Board correctly construed “an application filed” in § 135(b)(2) as including an application filed earlier and benefiting from the provisions of § 120.  Ling alternatively argued that because Loughlin conceded priority and requested the entry of an adverse judgment, there was no final adverse decision from which he could appeal.


[I]t would be absurd to hold that an applicant could rely on 120 to antedate a bar under 102 but not the bar under 135(b)(2).  Slip op. at 10.

Addressing Ling’s jurisdictional argument, the Federal Circuit concluded that Loughlin appropriately availed himself of Board Rule 127(b), which allows a party to request judgment against itself in an interference proceeding.  The Court found that permitting Loughlin to request an adverse judgment and then appeal the underlying dispositive legal issue promotes, not frustrates, judicial economy.  The Court also concluded that Loughlin satisfied 35 U.S.C. § 141, which permits a party to an interference who is dissatisfied with the Board’s decision to appeal to the Federal Circuit.  Because Loughlin ultimately lost the interference, there was no question that he was dissatisfied with the Board’s decision.

Turning to the merits of the appeal, the Court next addressed Loughlin’s argument that the Board erred in interpreting § 135(b)(2).  The Court noted that § 120 permits an application to claim the benefit of an earlier filing date, such that the application is treated as having been effectively filed on the earlier date.  Nothing in the statute limits its application to any specific grounds for rejection.  Indeed, the Court noted that § 120 applies to 35 U.S.C. § 102(b), (d), and (e).  Loughlin failed to provide any convincing reason why the priority benefit of § 120 should not also apply to § 135(b)(2).  As a result, the Federal Circuit concluded that because Ling’s ’404 application was an application entitled to priority under § 120, it was also an application for purposes of § 135(b)(2).

The Federal Circuit also rejected Loughlin’s argument that § 135(b)(2) is a “staleness” provision that requires a party to provoke an interference in a timely manner, instead of waiting several years, as Ling did.  The Court acknowledged the strength of this argument, but nonetheless concluded that it must fail in light of § 120’s granting of priority benefit to any application meeting its requirements, including Ling’s ’404 application.  In addition, the Court noted that the Board’s decision was consistent with prior Board decisions, which held that the phrase “an application filed” in § 135(b)(2) was clear on its face that it included the benefit of § 120.  Accordingly, the Court affirmed the Board’s decision that Ling’s interfering claims are not barred by 35 U.S.C. § 135(b)(2), and, thus, that the Board correctly canceled claim 1.