Livak also relies on Gustavsson v. Valentini, 25 USPQ2d 1401
(Bd. Pat. App. & Int. 1991). Gustavsson, which did not involve
a no interference-in-fact issue, was an interference between
(1) claims 1-17 of a Gustavsson patent versus (2) a Valentini
application. Gustavsson filed a preliminary motion for judgment
(37 CFR § 1.633(a)) alleging that Valentini's involved claims did
not comply with 35 U.S.C. § 135(b). The motion was granted. In
the meantime, Valentini had filed numerous preliminary motions,
identified as motions (1)-(9), attacking the claims of
Gustavsson's involved patent. Gustavsson, however, argued that
35 U.S.C. § 135(b) "compels termination of this interference by
entry of judgment against Valentini without consideration of
these motions." 25 USPQ2d 1409, col. 2. However, the board
determined, relying on Perkins, that an administrative patent
judge should consider Valentini motions (1)-(9). According to
the panel, "the possibility that the PTO, prior to declaring an
interference, will fail to detect a deliberate violation of
§ 135(b) is outweighed by the greater public interest in having
the PTO 'resolve administratively questions affecting patent
validity that arise before [it].'" 25 USPQ2d 1412, col. 2. The
panel held that it was "required by § 135(a) and Perkins to
consider the merits of [Valentini] motions (1) and (3)-(5), which
raise patentability issues ***." 25 USPQ2d at 1413, col. 2.
At this point in time, we need not address on its merits the
correctness of what appears to be a per se rule announced by the
panel in its Gustavsson opinion. Rather, we believe that a
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