Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
Board precedent—binding or otherwise—does not, and cannot, bind the
Federal Circuit just as Federal Circuit precedent does not bind the Supreme
Court.
A difficult situation arises when (1) a Federal Circuit decision is
entered subsequent to a decision by the Board to adopt a Board decision as
"binding" and (2) the Federal Circuit decision may be "inconsistent" with
our "binding" Board decision. If the Federal Circuit decision is "on all
fours" factually, then our "binding" "precedent" is no longer viable and
should not be followed. Even if a subsequent Federal Circuit is not on all
fours, an argument can be made that we should reevaluate our position in the
face of Federal Circuit authority. Cf. Teva Pharmaceuticals USA, Inc.
Novartis Pharmaceuticals Corporation, 482 F.3d 1330, 13247 (Fed. Cir.
2007) (Friedman, Senior Circuit Judge, concurring). At this point in time,
some judges at the Board are of the opinion that North American Container,
Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed.
Cir. 2005), has rendered Ex parte Eggert no longer viable. A judge of the
Board having an opinion that North American trumps Eggert may
legitimately decline to follow Eggert.
The patent system is a tool designed by Congress to advance the
economic well-being of the Nation. The system does not work efficiently
when applicants, attorneys and the public (including potential infringers and
licensees of patents) have difficulty understanding and applying the "rule of
law" applicable to a set of facts. In this case, the set of facts is a claim in a
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