fairly placed at issue in the [interference] proceeding, it will
be determined [by the board]." Id. In dicta, the Federal
Circuit further stated that "[t]he word 'may' in § 135(a)
accommodates the situation when patentability is not placed at
issue during the priority contest, but it would contradict the
remedial purpose of the legislation if the Board could refuse to
decide questions of patentability for which there had been
adduced an appropriate record." Id.
The facts in this case differ in significant respects from
the facts in Perkins. To be sure, a similarity is that the issue
of whether Han timely presented claims within the meaning of
35 U.S.C. § 135(b) can be said to have been "fairly raised"
within the meaning of Perkins. Livak filed a preliminary motion
raising a patentability issue, Han opposed and Livak replied;
evidence was presented.
A significant difference, however, is that here there is no
interference-in-fact. In Perkins, on the other hand, patentee
Perkins and applicant Kwon were claiming, and had an interest in,
what had been determined to be the same patentable invention, a
matter never questioned in the interference by either Perkins or
Kwon. Thus, while there was an interference-in-fact in Perkins,
it turned out the invention was not patentable to either party.
In this interference, it has been determined inter partes
that the parties are not claiming the same patentable invention.
An interference is no longer needed because, given the 3-judge
motions panel's determination with respect to Livak Preliminary
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