Appeal 2007-2127
Reexamination Control No. 90/006,621
application is entitled to the benefit of the filing date of an earlier application
only as to common subject matter.").
The fact that the Board opinions mention multithreading and repeated
the 1982 priority date that Patent Owner said that he was entitled to, does not
imply that the panels ever recognized, much less expressly decided, the issue
of written description support for "multithreading" so as to raise a collateral
estoppel issue. Since the Board decides appeals, issues that are not
expressly raised by the examiner or the applicant may not be apparent.
"[I]t regularly happens in adjudication that issues do not arise until counsel
raise them." Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 972,
63 USPQ2d 1609, 1619 (Fed. Cir. 2002) (Lourie, J. and Newman, J.,
concurring in decision not to hear the case en banc).
In any case, this panel is not bound by collateral estoppel by other
ex parte Board opinions. The duty of the USPTO is to issue valid patents.
See Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. 274, 278 (1877) (In
the Patent Office, applicant's "claim is, or is supposed to be, examined,
scrutinized, limited, and made to conform to what he is entitled to.");
Graham v. John Deere Co., 383 U.S. 1, 18 (1966) ("[T]he primary
responsibility for sifting out unpatentable material lies in the Patent Office.
To await litigation is—for all practical purposes—to debilitate the patent
system."). The doctrine of res judicata is judicial in origin and "rests upon
considerations of economy of judicial time and public policy favoring the
establishment of certainty in legal relations," Comm'r v. Sunnen, 333 U.S. at
597, 77 USPQ at 31, and the same reasoning applies to collateral estoppel.
The public policy of issuing valid patents outweighs the judicial and public
policy considerations of res judicata and collateral estoppel. See In re Craig,
90
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