Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
reissue application which narrows in one respect and broadens in another
respect.
We can, of course, "guess" how the Federal Circuit might come out on
any particular issue. If we guess wrong, and a patent issues, then the very
issue on which we guessed can come up again inter partes in a civil action
for infringement. Our guess would not bind the Federal courts. Cf.
Keystone Bridge Co. v. Phoenix Iron Co., 5 Otto (95 U.S.) 274, 279 (1877);
Reckendorfer v. Faber, 2 Otto (92 U.S.) 347, 350 (1975); Sze v. Block, 485
F.2d 137, 173 USPQ 498 (CCPA 1972); Switzer v. Sockman, 333 F.2d 935,
142 USPQ 226 (CCPA 1964); Turchan v. Bailey Meter Co., 167 F. Supp.
58, 119 USPQ 165 (D. Del. 1958). A civil action for infringement is an
expensive proposition, not only for the parties, but for a district court. On
the other hand, a direct appeal of our decision to the Federal Circuit is less
expensive and does not involve the need for the private third-parties to use
their financial and personnel resources.
Given the reasonable debate within the Board as to the proper
outcome in a case such as that before us, my view is that we should "affirm"
and give the applicant an opportunity to seek judicial review at a time when
it is least inconvenience to the system, the public, and the courts. While I
agree with Judge MacDonald's opinion, I cannot say that Judge Blankenship
does not have a point. Whether a Federal Circuit three-judge or en banc
panel would agree with our majority opinion or Judge Blankenship's
contrary opinion is not for me to say. If I had a magic wand, I would wave it
and certify the question involved in this case to the Federal Circuit. Cf. 28
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