LeVeen v. Edwards

1 Filed November 16, 1995. Accorded the benefit of
application 08/410,344, filed March 24, 1995. The real party in
interest is Radio Therapeutics corporation, which is a wholly
owned subsidiary of Boston Scientific Corporation.
2 Based on Application 08/290,031, filed on August 12,
1994. The real party in interest is RITA Medical Systems, Inc.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 348
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
ROBERT F. LEVEEN
Junior Party,
(Application 08/559,072)1,
v.
STUART D. EDWARDS, RONALD G. LAX
and HUGH SHARKEY
Senior Party
(Patent No. 5,536,267)2
Patent Interference No. 104,290
Before McKELVEY, Senior Administrative Patent Judge, SCHAFER and
LEE, Administrative Patent Judges.
PER CURIAM.
MEMORANDUM OPINION ON ISSUES FOR WHICH
EDWARDS SEEKS REVIEW AT FINAL HEARING
Introduction

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Final hearing in this case has been bifurcated. The issues
for which Edwards seeks review at final hearing are decided in
this memorandum opinion, without oral argument. Another merits
panel will hear oral arguments on May 15, 2002, on the issue of
priority and the antedating of an asserted prior art reference.
Senior party Edwards seeks review of a single judge decision
(Paper No. 290) (1) denying Edwards 	 miscellaneous motion 29
which seeks authorization to file preliminary motion 28 more than
18 months after the time set for filing preliminary motions and
more than 4 months after all preliminary motions had been
decided, and (2) alternatively denying Edwards 	 preliminary
motion 28.
Edwards 	 miscellaneous motion 29 includes the bulk of
preliminary motion 28. According to these motions, LeVeen has
asserted that Dr. LeVeen is the sole inventor of the subject
matter recited in LeVeen  s claims 43 and 44, the only claims left
in LeVeen  s involved application.	 Preliminary motion 28 requests
authorization to take the testimony of Mr. Randy Fox regarding
his contributions to LeVeen  s claims 43 and 44.	 According to
Edwards, if such testimony is taken and if it shows that Mr. Fox
contributed to any feature recited in either LeVeen  s claim 43	 or

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claim 44, then Edwards will request judgment against LeVeen on
that involved claim or those claims under 35 U.S.C. § 102.
According to Edwards 	 miscellaneous motion 29, from the time
this interference was declared to the time the period for filing
preliminary motions had expired, Edwards did not have enough
evidence to request the taking of testimony of Mr. Randy Fox on
the issue of inventorship. Further according to Edwards 
miscellaneous motion 29, a threshold level of suspicion first
arose on April 20, 2001, during cross-examination of Dr. Robert
F. LeVeen in connection with junior party LeVeen  s priority case.
Numbered paragraph 3 of section V(B) in Edwards 
miscellaneous motion 29 identifies three portions of the cross-
examination of Dr. Robert F. LeVeen on April 20, 2001, as 	 the
reason 	 first acquired by Edwards to suspect (with at least a
threshold level of suspicion sufficient to request the taking of
testimony of Mr. Randy Fox) that Robert F. LeVeen cannot be sole
inventor for LeVeen  s involved application.	 Those portions are
noted with specificity in numbered material fact items 14 through
16 in section III of Edwards 	 miscellaneous motion 29.
Edwards 	 miscellaneous motion 29 was denied and Edwards 
preliminary motion 28 was alternatively denied (Paper No. 290).
The denials were based on that nothing was uncovered during the

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cross-examination of Dr. Robert F. LeVeen on April 20, 2001,
which gives rise to a threshold level of suspicion that Robert F.
LeVeen cannot be sole inventor in LeVeen  s involved application,
sufficient to justify the taking of testimony from Mr. Randy Fox
to possibly support a belated motion for judgment.
Edwards 	 desired 	 threshold level of suspicion 	 was
determined to be so low that it would support speculative fishing
expeditions, inconsistent with a just, speedy, and inexpensive
interference proceeding. 37 CFR § 1.601.
Discussion
Edwards 	 brief at final hearing does not focus on the
explanation and rationale for denying miscellaneous motion 29 and
alternatively denying preliminary motion 28. The decision
discusses all of the points raised in Edwards 	 motions regarding
the cross-examination testimony of Dr. Robert F. LeVeen on April
20, 2001, and provides a full answer to what Edwards states in
its brief (two paragraphs beginning on line 12 of page 11) as
those which had been pointed out in its motions.
We reaffirm the decision (Paper No. 290) as our own, except
that the reference to 	 additional discovery 	 on line 21 of page
7, lines 2-3 of page 8, and line 7 of page 4 is changed to
taking of testimony, 	 and the reference on line 2 of page 2 of

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that decision to 	 take additional testimony 	 is changed to 	 take
testimony. 	 Technically, Edwards 	 request is to take testimony,
rather than to have 	 additional discovery 	 which is a term of
art. 37 CFR § 1.601(a). This difference in terminology does not
affect the substance of the decision.
We reiterate here, for illustrative purposes only, a portion
of the stated rationale: In the decision on page 7, it was
concluded:
In short, nothing was uncovered during the cross-
examination of Mr. LeVeen that is necessarily
inconsistent with anything previously known to party
Edwards. Furthermore, it is plausible that the
testimony of Mr. LeVeen on cross-examination is
entirely consistent with what was previously known to
party Edwards.
It was also explained on pages 5-7 of the decision that there is
an apparent, logical, and manifestly plausible explanation for
the various cross-examination testimony of Dr. LeVeen which were
alluded to by party Edwards. Specifically:
There is an apparent, logical, and manifestly plausible
explanation for all of the above [various testimony of
Dr. LeVeen on cross-examination relating to the work of
Randy Fox in connection with the system disclosed in
the specification of LeVeen  s involved application].
In Mr. LeVeen  s Rule	 1.131 declaration (Exhibit 1120),
in paragraph 8, it is stated: 	 The construction of the
device described above and illustrated in LeVeen
Exhibits 1121 and 1122 was performed by Randy Fox in
the United States under my direct supervision while I
was an Associate Professor for the Department of
Radiology of the University of Nebraska College of

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Medicine, Omaha, Nebraska. 	 (Emphasis added.) In Mr.
LeVeen  s supplemental declaration (Exhibit 1123), in
paragraph 2, it is stated: 	 I personally instructed
Randy Fox to construct the device . . . . 	 (Emphasis
added.) Also in that supplemental declaration, in
paragraph 4, it is stated: 	 Randy Fox performed the
experiment which resulted in the liver ablation
illustrated in LeVeen EXHIBIT 1121 under my direction. 
(Emphasis added.) Mr. LeVeen  s reference to an
ongoing, interactive, and collaborative effort may
fairly and accurately describe the
supervisor/supervisee or instructor/instructee
relationship between Robert F. LeVeen and Randy Fox
without the latter  s	 having made an inventive
contribution to the subject matter of LeVeen  s claims
43 and 44.
Not all of the details in the system and methods
disclosed in the specification of LeVeen  s involved
application is claimed in LeVeen  s only two pending
claims 43 and 44. Thus, Randy Fox may well have made
contributions to the disclosed system without having
made an inventive contribution to the subject matter of
LeVeen  s claims 43 and 44.	 That is consistent with the
testimony of Robert F. LeVeen, on cross-examination,
that 	 Mr. Fox made some subsidiary contributions on the
original [apparently referring to the joint Rule 1.131
declaration in Patent No. 5,855,576]; however, the
major concept and contributions were mine.
We have substantial difficulty understanding Edwards 
presentation of the issues for review and its reasons for relief.
Edwards 	 arguments are disjointed and are based on a wide
assortment of principles without adequate explanation as to how
they undermine or defeat the explanation and rationale of the
decision sought to be reviewed.

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Off the cuff and aimless rambling about a variety of
matters, whether or not they correspond to the reasons for relief
advanced in Edwards 	 miscellaneous motion 29 and preliminary
motion 28 and whether or not they undermine or defeat the
rationale of the decision, characterizes the major portion of
Edwards 	 brief. There is no glue that binds or thread that ties
the arguments into a meaningful and pertinent presentation.
The two paragraphs beginning on line 12 of page 11 of
Edwards 	 brief note points which were made in Edwards 	 motions.
Those points were addressed by the decision and yet Edwards does
not explain why the treatment of those points should be deemed
erroneous or an abuse of discretion.
Setting the stage for not focusing on the stated reasons for
denying Edwards 	 motions, Edwards begins the argument portion of
its brief by arguing that the administrative patent judge (APJ)
designated to handle this interference abused his discretion by
ordering that senior party Edwards 	 principal brief shall refer
only to arguments made and facts presented in its original motion
and not include new arguments and/or new presentation of
pertinent facts.
Edwards 	 argument is rejected. The APJ could not have
abused his discretion in connection with arguments or facts which

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were not presented and developed by party Edwards. LeVeen also
would not have had an opportunity to address and rebut any
argument or fact not contained in Edward  s motion.	 Final hearing
for the purpose of reviewing an APJ  s decision for abuse of
discretion does not operate to put the parties back where they
were before the motions were filed such that they could start
afresh with a new set of facts and arguments. Cf. Keebler Co. v.
Murray Bakery Products, 866 F.2d 1386, 1388, 9 USPQ2d 1736, 1738
(Fed. Cir. 1989) (where review is under an abuse of discretion
standard, prescience is not a required characteristic of the
board and the board need not divine all possible afterthoughts of
counsel that might be asserted for the first time on review).
Read in context, the term 	 original motion 	 as used by the
APJ refers to papers submitted by the parties in connection with
the motion, and thus is inclusive of the opposition to the motion
and the reply to the opposition. The APJ has not precluded
Edwards from referring to arguments or facts presented in
oppositions to motions 28 and 29 or in replies to those
oppositions. The APJ made reference to Edwards 	 original motion,
in contrast with the Edwards 	 brief at final hearing.
Party Edwards changed counsel subsequent to the rendering of
the APJ 	 s decision on Edwards 	 miscellaneous motion 29 and

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preliminary motion 28. That, however, does not mean Edwards 	 new
counsel can take the opposing party and the board back in time
and start afresh from the very beginning as if nothing had
occurred before the coming on scene of new counsel.
I.
37 CFR § 1.4(b)
Edwards now argues for the first time that 37 CFR § 1.4(b)
requires that 	 each [application] file must be complete in
itself, 	 and that 	 a separate copy of every paper to be filed in
a patent or trademark application . . . must be furnished for
each file to which the paper pertains. 	 Edwards correctly quotes
from 37 CFR § 1.4(b). However, how does the rule come to the aid
of Edwards in refuting that nothing was uncovered during the
cross-examination of Dr. Robert F. LeVeen on April 20, 2001,
which gives rise to a threshold level of suspicion that LeVeen 	 s
named inventorship is wrong, sufficient to warrant a late motion
for judgment and a taking of testimony to support the motion?
It does not.
Moreover, the APJ remanded LeVeen  s involved application to
the examiner for entry of a formal decision on the petition to
change inventorship, and the examiner entered a formal decision.
Note that in Paper No. 35 of LeVeen  s involved application,
mailed on 05/18/01, the examiner stated:

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On October 15, 1998, this application was
forwarded to the Board of Patent Appeals and
Interferences for a proposed interference. Prior to
the forwarding of the application, a petition to change
inventorship under 37 CFR 1.48(b) was submitted on
March 10, 1998. The petition was filed to delete Randy
Fox as an inventor since he was no longer an inventor
of the invention in the remaining claims of the
application. No formal acknowledgment was made in the
application of the proposed change in inventorship;
however, the examiner did consider and accept the
change in inventorship prior to forwarding the
application to the Board. This is evidenced by the
papers submitted to the Board in which the sole
inventor listed for 08/559,072 is Robert F. LeVeen.
Accordingly, in view of the papers filed March 10,
1998, the inventorship in this nonprovisional
application has been changed by the deletion of Randy
Fox. (Emphasis added.)
Thus, as of May 18, 2001, LeVeen  s application file was
complete insofar as a decision on the petition to change
inventorship is concerned.
Moreover, the examiner  s communication indicates that he had
previously granted the pending petition to change inventorship
even though no formal paper was entered in the application file.
The indication is supported by the fact that within the Notice
Declaring Interference (Paper No. 1) the sheet containing all of
junior party  s information identifies	 only Robert F. LeVeen as
the inventor of LeVeen  s involved application, and that since the
declaration of this interference the caption of this case lists
only Robert F. LeVeen as the junior party inventor.

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The lack of a formal decision in the application file prior
to May 18, 2001, does not mean LeVeen  s petition to correct
inventorship was not granted by the primary examiner prior to
May 18, 2001. It means only that prior to May 18, 2001, the
LeVeen application file did not contain a formal decision on the
matter and thus may be deemed incomplete.
Section 1.4(b) of Title 37, Code of Federal Regulations,
does not provide that any decision of an examiner, if it is not
reflected in a formal paper entered of record in the application
file, is conclusively deemed non-existent. Section 1.4(b) of
Title 37, Code of Federal Regulations, does not provide that an
action taken by an examiner is as good as null until the
application file contains a formal notice of the action taken,
even though there may be other indications of the examiner  s
action. Section 1.4(b) of Title 37, Code of Federal Regulations,
does not preclude an examiner from entering a formal paper to
complete a file and to acknowledge in the same paper that
corresponding action had been taken at an earlier time.
We also reject Edwards 	 argument that it was not placed on
notice that a decision had been entered on LeVeen  s petition to
change inventorship. Implicit notice was given when this
interference was declared on July 16, 1999, listing Robert F.

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LeVeen as the sole inventor for LeVeen  s involved application	 and
each time a communication was sent from the board having in the
caption thereof for this interference an identification of only
Robert F. LeVeen as the junior party inventor. Explicit formal
notice was given in a communication from the examiner (Paper 35
in LeVeen  s involved application) and sent to the parties on
May 18, 2001. Moreover, it should be noted that Edwards 	 motions
28 and 29 were denied not because Edwards took too much time from
April 20, 2001 (date of cross-examination of Dr. Robert F.
LeVeen), to June 8, 2001, to file its miscellaneous motion 29 and
belated preliminary motion 28, but because nothing was uncovered
during the cross-examination of Dr. Robert F. LeVeen on April 20,
2001, to justify the taking of testimony from Mr. Randy Fox in
connection with a belated motion for judgment under 35 U.S.C.
§ 102(f).
In any event, we regard whether the petition to change
inventorship was granted by the primary examiner before May 18,
2001, and whether Edwards should have been given earlier notice
of the same as inconsequential side shows. The timing of the
examiner  s decision and when Edwards received notice of the same
do not affect the APJ  s analysis that during the cross-
examination of Dr. Robert F. LeVeen on April 20, 2001, nothing

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was uncovered which gives rise to a threshold level of suspicion
that Dr. Robert F. LeVeen cannot be sole inventor for LeVeen  s
involved application, sufficient to justify the taking of
testimony by Edwards in a belated motion for judgment based on
incorrectly named inventorship under 35 U.S.C. § 102(f).
II.
37 CFR § 1.48(b) and 37 CFR § 1.634
Edwards now argues also for the first time that 	 the party
LeVeen did not file a motion under 37 CFR § 1.634 as required by
37 CFR § 1.48(b). 	 Section 1.48(b) of Title 37, Code of Federal
Regulations, states in pertinent part:
When the application is involved in an interference,
the amendment [to change inventorship and attached to a
petition to correct inventorship] must comply with the
requirements of this section and must be accompanied by
a motion under 37 CFR § 1.634.
LeVeen  s petition to	 correct inventorship was filed in its
involved application on March 10, 1998. This interference was
declared on July 16, 1999. When LeVeen  s petition was filed in
its involved application, LeVeen  s involved application was not
involved in an interference. Therefore, 37 CFR § 1.48(b) does
not require LeVeen  s petition and corresponding amendment to have
been accompanied by a motion to correct inventorship under 37 CFR
§ 1.634. A remand by the APJ to the primary examiner for the
primary examiner to formally enter a decision on LeVeen  s

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previously filed petition does not constitute a re-filing of
LeVeen 	 s petition. We hold that LeVeen  s petition and related
amendment to change inventorship need not have been accompanied
by a motion under 37 CFR § 1.634.
Moreover, the remand by the APJ, for the sole purpose of
allowing the primary examiner to enter a formal decision on
LeVeen 	 s petition was made with the express consent of counsel
for senior party Edwards. (See Paper No. 266). That consent was
given after counsel for Edwards had been informed that the
examiner indicated to the APJ that he had granted the petition
before the declaration of this interference and that the Form 850
and papers associated therewith implicitly make known his
decision. (See Paper No. 266). Pertinent portions of the remand
order (Paper No. 266) is reproduced below:
In a telephone conference with the parties this
morning, the administrative patent judge was made aware
of a petition to correct inventorship in the junior
party  s application file which appears to not have been
decided. The junior party was directed to make an
inquiry to the examiner to ascertain the status of that
petition. Early this afternoon, the administrative
patent judge received a telephone call from Examiner
Lee Cohen who indicated that he had granted the
petition before the declaration of this interference
and that the Form 850 and papers associated therewith
implicitly make known that decision. In a telephone
conference with the parties this afternoon, the
Examiner  s remarks were conveyed to respective counsel
of the parties.

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Also in the telephone conference conducted this
afternoon, the parties agreed to a proposal by the
administrative patent judge that junior party  s
involved application be remanded to the examiner for
entry of a formal decision on the petition. As for a
motion for judgment based on incorrectly named
inventorship, which Edwards desires to file, Edwards 
counsel agreed to wait a short time until early next
week for the examiner to enter a formal decision on
LeVeen  s petition before filing such a motion.
(Emphasis added.)
Given the consent given by counsel for party Edwards as is
reflected above, Edwards cannot credibly argue that LeVeen should
have filed a motion under 37 CFR § 1.634, and that Edwards would
have had an opportunity, as a matter of right, to cross-examine
corresponding affiants or declarants whose testimony support the
hypothetical motion under 37 CFR § 1.634. Edwards had agreed to
entry of the examiner  s decision without there having been an
associated motion under 37 CFR § 1.634 in this interference.
Furthermore, at least from the date of declaration of this
interference on July 16, 1999, Edwards was on notice that LeVeen
had previously filed a petition to correct inventorship. If it
is Edwards 	 view that a motion under 37 CFR § 1.634 should have
accompanied LeVeen  s petition, the time to make that argument
would be shortly after the declaration of this interference on
July 16, 1999, not more than two years and five months later, on
January 10, 2002, in Edwards 	 brief for final hearing.

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Also, whether LeVeen  s petition should have been accompanied
by a motion under 37 CFR § 1.634 does not affect the APJ  s
analysis that during the cross-examination of Dr. LeVeen on April
20, 2001, nothing was uncovered which gives rise to a threshold
level of suspicion that he cannot be sole inventor for LeVeen 	 s
application, sufficient to justify the taking of testimony in a
belated motion for judgment under 35 U.S.C. § 102(f).
Not only do we regard Edwards 	 argument based on 37 CFR
§ 1.48(b) and 37 CFR § 1.634, as inappropriate new argument, we
are also of the view, for reasons discussed above, that it is a
frivolous argument that wasted the time and resources of opposing
party and counsel as well as the board.
III.
That Party Edwards Had Insufficient Notice That
Randy Fox Had Changed from Inventor To Corroborator
Edwards now argues for the first time that (1) 	 the party
Edwards was not put on notice that the status of Fox had changed
from that of an inventor to that of a corroborator. 
The argument is rejected.
For each party, the identity of the inventive entity
responsible for the subject matter of the count to be proven
during the priority phase of the interference proceeding is
specified in the party  s own preliminary statement.	 Party LeVeen

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filed its preliminary statement with the board on December 3,
1999, (Paper No. 52) and filed proof of service (Paper No. 58) of
its preliminary statement to party Edwards with the board on
December 9, 1999. LeVeen 	 s preliminary statement identifies only
Dr. Robert F. LeVeen as the inventor for the subject matter of
the count in this interference.
Party LeVeen  s preliminary statement, served on party
Edwards on December 9, 1999, states in pertinent part:
Robert F. LeVeen is the Junior party in the above-
identified interference. Robert F. LeVeen is the sole
inventor of the invention defined by the count in the
interference, and the invention was made by LeVeen in
the United states.
Accordingly, as early as several days after December 9, 1999
(accounting for the transit time by mail), party Edwards was on
notice that with respect to the subject matter of the count of
this interference if Mr. Randy Fox were to testify in the
priority phase of the interference, it would be as a corroborator
and not as an inventor. That is as much notice as any party in
interference can expect. The argument that Edwards was not on
notice that Mr. Randy Fox, if he testifies, would be testifying
as corroborator rather than as an inventor is frivolous.

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Conclusion
Because Edwards did not comply with the APJ  s valid
instruction that no new argument shall be presented in its brief
at final hearing, it is
ORDERED that Edwards 	 brief for final hearing is stricken
and not entitled to consideration.
Alternatively, even if Edwards 	 brief for final hearing is
considered on its merits, we reject each of the arguments
contained therein for reasons discussed above.
It is
FURTHER ORDERED that within fourteen (14) days of the date
of this communication party Edwards shall show good cause why we
should not impose sanction under 37 CFR § 1.616 (a)(5) in the
form of compensatory attorney fees against Edwards for filing a
brief which contains new and frivolous arguments, specifically
those discussed in Sections II and III above; and
FURTHER ORDERED that party LeVeen shall not file any reply
to Edwards 	 response to our show cause order above.
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
) BOARD OF PATENT
RICHARD E. SCHAFER ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
JAMESON LEE )
Administrative Patent Judge )