Anderson v. Dionex Corp

This opinion is binding precedent of the Trial Section.
Paper 29
Filed by: Trial Section
Box Interference Entered
Washington, D.C. 20231 17 November 1999
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
JAMES M. ANDERSON, Jr., RAAIDAH SAARI-NORDHAUS,
CAROL W. SIMS and YURI E. GERNER,
Junior Party,
(Application 08/904,852),
v.
DIONEX CORPORATION,
Senior Party
(Patent 5,633,171
Patent 5,773,615).
_______________
Patent Interference No. 104,446
_______________
Before: McKELVEY, Senior Administrative Patent Judge, and
SCHAFER, LEE and TORCZON, Administrative Patent Judges.
McKELVEY, Senior Administrative Patent Judge.
MEMORANDUM OPINION and ORDER
(denying motion for stay)
A. Introduction
Dionex Corporation has filed a Rule 635 motion (Paper 15)
requesting that the interference be stayed pending entry of a

Dionex has presented exhibits labeled in a manner contrary to ¶ 39 of	1
the NOTICE DECLARING INTERFERENCE (Paper 1). Dionex exhibits should be
numbered beginning with 5001. The Brezner declaration should have had, but
does not have, an exhibit number. The remaining Dionex exhibits are numbered
50002 through 50005. In the future, Dionex is expected to properly number
exhibits. The next Dionex exhibit should be Dionex Ex 5006.
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final judgment in Dionex Corporation v. Alltech Associates, Inc.,
Civil Action C 98-3147 MJJ, pending before the U.S. District
Court for the Northern District of California (Hon. Martin J.
Jenkins, District Judge).
In view of an ORDER entered 2 November 1999 (Paper 14), as
corrected by a COMMUNICATION entered 12 November 1999 (Paper 21),
Anderson has not filed a response.
For reasons which follow, the motion is denied.
B. Findings of fact
1. The complaint in the civil action was filed on
13 August 1998 (Ex 50002).1
2. The complaint alleges that Alltech Associates,
Inc. (Alltech) infringes Small, U.S. Patent 5,633,171 (Small
'171) and Small U.S. Patent 5,773,615 (Small '615), both owned by
Dionex Corporation (Dionex).
3. The interference was declared on 22 September 1999
(Paper 1).
4. As declared, the interference involved an
application of Anderson versus Small '171.

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5. Alltech owns the Anderson application involved in
the interference.
6. By virtue of an ORDER ADDING PATENT 5,773,615 TO
INTERFERENCE entered 12 November 1999 (Paper 22), Small '615 was
also added to the interference.
7. Accordingly, the interference currently involves
the Anderson application versus both Small '171 and Small '615.
8. In the civil action, it appears that the parties
(Dionex and Alltech) narrowed the issues.
a. Dionex withdrew Small '171 from the civil
action (Ex 50003, page 2).
b. The principal defense maintained by Alltech
is that it made an "Anderson" invention
(35 U.S.C. § 102(g)) prior to the date Dionex
made its "Small" invention as claimed in
Small '615 and that the Anderson invention
together with other prior art renders the
Small invention claimed in Small '615
unpatentable (motion, page 5).
c. Another issue pending before the Northern
District of California appears to be the
meaning of "a first packed bed suppressor"
in claim 1 of Small '615 and "an ion exchange

See Markman v. Westview Instruments, Inc., 52 F.3d 967, 981, 34	2
USPQ2d 1321, 1331 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996).
Mr. Gabric and Mr. Green, on behalf of Anderson, and Mr. Brezner, on	3
behalf of Dionex, participated in the conference call in which Judge McKelvey
presided.
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resin bed" in claim 8 of Small '615
(Ex 50003, page 3, ¶ B).
9. The Northern District of California entered an
order on 6 October 1999 in which it set a "Claim Construction
Hearing" (i.e., a Markman hearing ) for 18 February 2000	2
(Ex 50004, page 2).
10. In the civil action, Dionex has requested a jury
trial (Ex 50002, page 1).
11. Dionex represents that (motion, page 5):
the court [Northern District of California] has indicated
that a trial date will be held by early July 2000. Since
this is a jury trial, it is likely that all issues before
the Board in this Interference proceeding will be resolved
by the district court by the end of July 2000.
12. Notwithstanding what Dionex represents, nothing in
the record indicates that the Northern District of California has
set a trial date.
13. During a conference call on 10 November 1999 (see
Paper 22), counsel orally argued that Anderson would oppose a	3
stay because it cannot obtain a patent until it can prevail in

Mr. Gabric and Mr. Green, on behalf of Anderson, and Mr. Brezner and	4
Mr. Kelber, on behalf of Dionex participated in the conference call in which
Judges McKelvey and Schafer presided.
Rule 1.610(b) [37 CFR § 1.610(b)] further provides that "[a]t the	5
discretion of the administrative patent judge assigned to the interference, a
panel consisting of two or more members of the Board may enter interlocutory
orders." In view of its precedential nature, the interlocutory order entered
today is being entered by a panel consisting of all judges assigned to the
Trial Section.
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the interference, and it cannot prevail in an interference which
is stayed.
14. During a conference call on 12 November 1999,4
counsel for Dionex orally argued that if a stay is not granted
then there would be substantial duplication of work while the
interference and the civil action proceeded simultaneously.
C. Discussion
Rule 645(d) [37 CFR § 1.645(d)] provides that "[a]n
administrative patent judge may stay proceedings in an
interference" (emphasis added). Thus, whether a stay should be
entered in an interference is committed to the sound discretion
the administrative patent judge--in this case the Trial Section
motions panel.5
1. Different burdens of proof
In a civil action for infringement, a defendant alleging
invalidity (including invalidity based on prior invention under
35 U.S.C. § 102(g)) must prove its case by clear and convincing
evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152,

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1155-56 (Fed. Cir. 1988); Kaufman Co. v. Lantech, Inc., 807 F.2d
970, 974, 1 USPQ2d 1202, 1204 (Fed. Cir. 1986). On the other
hand, in this interference where the Anderson application was
copending with Small, the burden of proving priority and
unpatentability is by a preponderance of the evidence. Bosies v.
Benedict, 27 F.3d 539, 541-42, 30 USPQ2d 1862 (Fed. Cir. 1995)
(in interference with copending applications, the burden of proof
on the issue of priority is by a preponderance of the evidence);
Bruning v. Hirose, 161 F.3d 681, 48 USPQ2d 1934 (Fed. Cir. 1998)
(burden of proof on the issue of patentability of the claims of a
patent in an interference where applications are copending is by
a preponderance of the evidence).
In view of the different burden of proof standards
prevailing in infringement civil actions vis-a-vis interferences,
it is manifest that even if Anderson's assignee Alltech does not
prevail in the civil action, it nevertheless could prevail in
the interference.
2. Anderson's right to prosecute its application
Anderson has applied for a patent. The current position
of the Patent and Trademark Office is that Anderson is not
entitled to a patent unless it can establish priority of
invention vis-a-vis Small '171 and Small '615. If the
interference is stayed, and if Alltech does not prevail in the

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civil action under a clear and convincing proof standard, then
the interference will resume at some undetermined date after a
final judgment is entered in the civil action. Alltech could
then try a second time to prevail in the interference under a
lesser preponderance standard.
Dionex would have Anderson wait two periods of time until
its right to a patent is determined. One period of time is the
undefined time it will take to reach final judgment in the civil
action. Another period of time is the time it will take to
resolve the interference, including any judicial review. We can
perceive of no cogent reason to make Anderson wait both periods.
3. Issues in the interference not present in the
civil action for infringement
The Anderson application is not before the Northern District
of California. The only tribunal with jurisdiction over the
Anderson application is the PTO.
In conference calls held 10 and 12 November 1999 to discuss
the preliminary motion phase of the interference, Dionex has
suggested numerous grounds upon which judgment should be entered
against Anderson which do not involve priority.
By way of example, Dionex suggests in SMALL LIST OF
PRELIMINARY MOTIONS IT INTENDS TO FILE (Paper 19, page 2) that it
will raise at least the following two issues:

We will not inquire into why Alltech elected not to raise a best mode	6
issue in the infringement civil action and why it has elected to pursue the
issue here. We will note, as discussed above, that Anderson's burden of proof
in this interference is less than Alltech's burden of proof in the
infringement civil action.
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(1) whether Anderson has failed to comply with the
best mode requirement of the first paragraph of
35 U.S.C. § 112; and
(2) whether Anderson has failed to comply with the
enablement requirement of the first paragraph of
35 U.S.C. § 112.
The two issues are not issues before the Northern District of
California, but can be raised in the interference. 37 CFR
§ 1.633(a).
Moreover, in an ANDERSON CORRECT AND SUPPLEMENTAL LIST OF
PRELIMINARY MOTIONS IT INTENDS TO FILE (Paper 20, page 2),
Anderson indicates that it will raise a question of whether Small
'171 fails to comply with the best mode requirement. Best mode
is not an issue in the civil action.6
4. Public interest
In determining whether a stay should be entered, it is not
inappropriate to consider the public interest. Compare Standard
Havens Products, Inc. v. Gencor Industries, Inc., ___ F.2d ____,
____, 13 USPQ2d 2029, 2029-30 (Fed. Cir. 1990).

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The former Court of Customs and Patent Appeals observed that
there is an obvious public interest in unnecessary postponement
of the beginning of the running of the term of a patent resulting
from an application in interference proceedings. Pritchard v.
Loughlin, 361 F.2d 483, ___, 149 USPQ 841, 844 (CCPA 1966). The
public interest can be a nebulous concern. Nevertheless, for the
reasons articulated by the former CCPA, it is entitled to some
consideration.
In this particular interference, Anderson is involved with
an application filed 1 August 1997. Thus, the Anderson
application involved in the interference is what is often
referred to as a GATT application, having been filed after 8 June
1995.
Anderson claims the benefit of the filing date of
applications filed 7 June 1995 and 3 March 1995. The term of any
patent issued on the Anderson application involved in the
interference expires 20 years from the earliest priority date
claimed. 35 U.S.C. § 154(a)(2). Thus, any Anderson patent will
expire on 3 March 2015. The law provides for an extension of the
term of any patent issued to Anderson, up to five years, for time
involved in an interference. 35 U.S.C. § 154(b)(1); 37 CFR
§ 1.701(a) and (c)(1)(i).
The public could be "burdened" with additional patent term
of up to five more years, i.e., for the entire time this

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interference is pending. On the other hand, Anderson stands to
lose "patent term rights" if the combined (a) time of a stay
requested by Dionex and (b) time to prosecute resumed proceedings
to resolve this interference exceeds five years. The only entity
which does not stand to lose much is Dionex. Thus, entry of stay
may prejudice the public and/or Anderson, but is very unlikely to
prejudice Dionex.
5. Possible prejudice to Anderson
The board's expertise does not extend to economic matters.
But, we are aware of the fact that some inventions are important
during the early life of a patent, while others are useful at the
end of the patent life (e.g., a patented drug approved by the FDA
late in the patent term). Given the commercial interest
represented by the filing of the civil action in the Northern
District of California, a plausible inference can be made that
the invention involved in the interference is of some commercial
significance at this time. If it were not so, why would Alltech
and Dionex be contesting the rights to the invention?
We do not know if the invention will have any commercial
value in the last years of any patent which might issue to
Anderson. But, we think a case exists for concluding that the
invention is commercially significant (at least as between Dionex

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and Alltech) right now. Hence, there is no reason to delay a
determination as to whether Anderson is entitled to a patent.
6. Duplicate effort
Dionex suggests (motion, page 5) that the Northern District
of California is not likely to stay the civil action. On the
record before us, there is no evidence that the court has been
asked to stay the civil action. More to the point, however, is
the fact that whether a stay of the civil action is entered
pending resolution of some or all issues in the interference is a
matter exclusively within the province of the court--not the PTO.
If we assume for purposes of discussion that the Northern
District of California would deny a request for a stay, then the
parties will may have to concurrently prosecute both the civil
action and the interference. One of the parties, Anderson, has
indicated that it does not mind. Dionex has indicated its intent
to raise issues in the interference which cannot be issues in the
civil action. Concurrent prosecution of the civil action and the
interference would seem to be the only method by which all issues
to be raised by the parties ultimately can be resolved.
7. Balancing interests
On balancing all factors discussed above, we believe the
scales are tipped--rather decidedly--in favor of denying a stay.

We call attention to the fact that our decision today is consistent	7
with a non-precedential opinion entered by Judge Schafer in Rosenthal v.
Mowrey-McKee, 50 USPQ2d 1863 (Bd. Pat. App. & Int. 1999).
We would caution against misuse of the word de novo in the context of	8
judicial review of a decision of the board by civil action under 35 U.S.C.
§ 146. Absent a compelling reason, a new issue cannot be raised in a civil
action under 35 U.S.C. § 146. Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d
588, ___, 44 USPQ2d 1610, 1613 (Fed. Cir. 1997); General Instrument
Corporation, Inc. v. Scientific-Atlanta, Inc., ___ F.2d ____, 27 USPQ2d 1145
(Fed. Cir. 1993) (E.D. Pa. did not abuse discretion in civil action under
§ 146 declining to admit in evidence proofs directed to on-sale bar where on-
sale had not been raised before the board). Nor does the losing party "start
over" prosecuting the interference upon arrival at the court's door. Fregeau
v. Mossinghoff, 776 F.2d 1034, ____, 227 USPQ 848, 851 (Fed. Cir. 1985).
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Anderson stands to lose a lot more than Dionex if a stay is
entered. Accordingly, the stay requested by Dionex is denied.7
D. Other Dionex arguments
Dionex points out (motion, page 6) that the interference
will not dispose of all issues before the Northern District of
California. But, as we point out above, the civil action will
not dispose of all the issues which the parties have expressed an
intent to raise in this interference.
Dionex argues (motion, page 7) that even if Alltech should
prevail in the interference, the district court would ultimately
review the interference decision de novo, further delaying final	8
decision in the interference. We find the argument premature, if
not curious.
Until a final decision is entered in the interference, and
the board articulates its rationale in support of its decision,
how can one tell that there will be judicial review. It seems

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odd that Dionex would express an opinion on its behalf, let alone
commit Anderson, that judicial review will occur regardless of
what happens in the PTO.
Dionex suggests (motion, page 7) that numerous documents
have been exchanged during the course of discovery in the civil
action which have been designated for "attorney's eyes only." We
have not been told whether those documents deal with priority,
infringement (wilful or otherwise), damages, unpatentability or
some issue not relevant to the interference. It is alleged
(motion, page 8) that failure to submit to the PTO documents
required to be turned over by 37 CFR § 1.56 (Rule 56) complicates
the life of the parties. Assuming that some of the "attorney's
eyes only" document need to be submitted pursuant to Rule 56, it
is difficult to imagine that counsel, with the assistance of the
Trial Section, could not come to some arrangement to accommodate
the Rule 56 concern expressed by Dionex.
Dionex says (motion, page 7) that some its "trade secrets"
will become available to the public upon termination of the
interference. 37 CFR § 1.11(a). Unexplained is why a stay makes
any difference. Any evidence submitted by the parties will
become available to the public upon entry of a final decision in
the interference whether or not a stay is granted.

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E. Order
Upon consideration of the motion for stay filed by Dionex
(Paper 15), and for the reasons given, it is
ORDERED that the motion is denied.
______________________________
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
______________________________)
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
) BOARD OF PATENT
______________________________) APPEALS AND
JAMESON LEE ) INTERFERENCES
Administrative Patent Judge )
)
)
______________________________)
RICHARD TORCZON )
Administrative Patent Judge )

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cc (via Federal Express):
Attorney for Anderson
(real party in interest
Alltech Associates, Inc.):
Ralph J. Gabric, Esq.
Raymond W. Green, Esq.
BRINKS HOFER GILSON & LIONE
Suite 3600
NBC Tower
455 N. Cityfront Plaza Drive
Chicago, IL 60611-5599
Tel: 312-321-4200 (main)
Tel: 312-321-4253 (Gabric)
Tel: 312-321-4222 (Green)
Fax: 312-321-4299
E-mail: rgabric@brinkshofer.com
E-mail: rgreen@bringshofer.com
Attorney for Dionex
(owner of the Small patents
involved in the interference):
Lead:
David J. Brezner, Esq.
FLEHR HOHBACH TEST ALBRITTON and HERBERT
Four Embarcadero Center
Suite 3400
San Francisco, CA 94111-4187
Tel: 415-781-1989
Fax: 415-398-3249
E-mail: None
Backup:
Steven B. Kelber, Esq.
LONG, ALDRIDGE & NORMAN LLP
701 Pennsylvania Avenue, N.W.
Suite 600
Washington, D.C. 20004
Tel: 202-624-1200
Fax: 202-624-1298
E-mail: skelber@lanlaw.co