Motion 2, the Livak patent is no longer an impediment to granting
a patent to Han. At this point, having asked for and received
a favorable ruling of no interference-in-fact, it is not apparent
how Livak now has standing as a party under the patent law to
seek to preclude issuance of a patent to Han containing Han
claims 102-108. Livak is now nothing more than a third-party
seeking to protest the grant of a patent to Han and is therefore
not entitled to participate in an inter partes pre-grant
opposition with respect to Han claims 102-108. Animal Legal
Defense Fund v. Quigg, 932 F.2d 920, 936-37, 18 USPQ2d 1677, 1691
(Fed. Cir. 1991) (a third-party may not protest grant of a
patent); Godtfredsen v. Banner, 503 F. Supp. 642, 207 USPQ 202
(D.D.C. 1980) (it is well-established in the patent system that
an individual does not have standing to challenge the decision of
the PTO to grant a patent to a third party). 10
We have not overlooked the Federal Circuit's observation
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." Moreover, we follow the established rule of law "that,
if a controlling precedent is determined to be on point, it must
be followed." Hart v. Massanari, 266 F.3d 1155, 1172 (9th Cir.
10 Livak may take advantage of the provisions of 37 CFR § 1.291. Nothing
in Rule 291 gives Livak standing to participate as a party in any protest
proceeding before the examiner.
- 15 -
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: November 3, 2007