b.
According to Livak, Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d
1308 (Fed. Cir. 1989), precludes our exercise of discretion to
decline to consider Livak Preliminary Motion 1. We disagree.
Perkins involved an interference between (1) patentee
Perkins and (2) applicant Kwon. Before the board, Perkins filed
a preliminary motion for judgment seeking entry of an order that
all of Kwon's claims corresponding to the count were unpatentable
over the prior art. At final hearing, the board determined on
the evidence that Kwon was the first inventor. Hence, Perkins
was not entitled to a patent to its claims involved in the
interference. 35 U.S.C. § 102(g). The board also determined on
the evidence that the Kwon claims corresponding to the count were
unpatentable over the prior art.
Patentee Perkins was dissatisfied with the board's
determination that it should lose on the issue of priority.
According to patentee Perkins, once the board determined that
applicant Kwon's claims were unpatentable over the prior art, the
board should not have reached priority. The board disagreed and
on appeal the Federal Circuit affirmed.
The Federal Circuit held "that issues of patentability and
priority that have been fully developed before the Board should
be resolved by the Board." 886 F.2d at 328, 12 USPQ2d at 1311.
The Federal Circuit went on to note that "[t]he legislative
history *** shows that Congress intended that if patentability is
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