CAFC Denies Writ of Mandamus in PTO Interference Proceeding
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: Aug 10, 2010 @ 7:30 am
On August 2, 2010, a panel of the United States Court of Appeals for the Federal Circuit consisting of Chief Judge Rader and Judges Bryson and Moore summarily denied a petition for writ of mandamus filed by Allvoice Developments US, LLC. On July 12, 2010, Allvoice petitioned the Federal Circuit asking that court to issue a writ of mandamus directing the United States Patent and Trademark Office’s Board of Patent Appeals and Interferences to vacate its decision declaring an interference between Allvoice’s patent, US Patent No. 5,799,273 (“the Mitchell patent”) and Patent Application No. 09/351,542 (“the Holt application), which is a continuation of Patent Application No. 08/566,077, which was filed November 13, 1995. Advanced Voice Recognition Systems Inc. (AVRS) is the assignee of the Holt application.
Allvoice sought a remand of the Holt application to the examiner for further prosecution or to issue an order requiring AVRS to show cause why judgment should not be entered against the Holt application. Without requiring AVRS to even file a response, the Federal Circuit, per Chief Judge Rader, explained that there was simply no justification for the issuance of a writ of mandamus because there was no showing that an ordinary appeal wouldn’t suffice after the PTO finally disposed of the interference proceeding. Of course, that doesn’t take into consideration the need for Allvoice to quiet title to proceed with its infringement action against Microsoft. The plot thickens!
The panel decision in In re Allvoice Developments US LLC starts off by explaining that a writ of mandamus is only “available in extraordinary situations to correct a clear abuse of discretion or usurpation of judicial power.” The Court went on to explain that the “party seeking a writ bears the burden of proving that it has no other means of obtaining the relief desired and that the right to issuance of the writ is ‘clear and indisputable.’” (citations omitted). In reaching it conclusion the Court then explained:
The court determines that Allvoice has not shown that it has a clear and indisputable right to issuance of a writ of mandamus. In essence, Allvoice’s petition asserts that the PTO did not apply the correct law in determining whether an interference exists. However, Allvoice has not demonstrated that any error by the PTO cannot be corrected through an ordinary appeal after the PTO proceedings have concluded. Thus, Allvoice has not shown that it has no other means for attaining the relief it seeks and the petition is denied.
Charles Gholz and his team at Oblon Spivak were prepared to oppose Allvoice’s petition. However, the Federal Circuit ruling less than 10 days after the Allvoice filing did not leave time for a response to what was quite obviously deemed a defective petition filed by Allvoice. In any event, in a press release from AVRS touting the denial of the writ of mandamus, Mr. Gholz is alleged to have commented that, as much as he would have enjoyed opposing Allvoice’s petition, he was gratified by the court’s swift action—which clearly saved AVRS a good deal of money — and will allow the interference will be moving swiftly forward toward a final hearing.
In May 2010, Allvoice asked a panel of the BPAI to reconsider and reverse Judge Medley’s order instituting the interference, making arguments very similar to those made in its petition for a writ of mandamus. However, on June 18, 2010, a three-judge panel of the BPAI denied Allvoice’s request for reconsideration.
The Mitchell patent is the subject of a patent infringement suit that Allvoice filed against Microsoft in August 2009 in the United States District Court for the Eastern District of Texas, so it would seem that they would prefer a quick resolution to this interference proceeding so as to not negatively impact their case against Microsoft, which perhaps explains why they so clearly jumped the gun and wanted immediate consideration by the Federal Circuit.
The inventors and AVRS were subpoenaed by both Allvoice and Microsoft for depositions in the aforementioned infringement action. Not surprisingly, Microsoft is relying on the prior invention of AVRS’s inventors in support of its argument that the claims of the Mitchell patent asserted against it are invalid. Mr. McCabe (also of Oblon Spivak) filed a motion for a protective order in the Texas court limiting the scope of the discovery of AVRS requested by Allvoice and Microsoft. AVRS continues to wait for the ruling on the protective order before scheduling the depositions.
Walter Geldenhuys, President and CEO of AVRS, said, “The actions by the BPAI and the Federal Circuit validates AVRS, its commitment and accomplishments in the interference. AVRS and the team at Oblon Spivak continue to work on a strict timetable to meet the demanding requirements of an interference proceeding. I am especially grateful to the shareholders who continue to support AVRS. Additionally, we continue to evaluate companies that we believe are infringing on our patented technology and the appropriate steps to protect our intellectual property.”
I wonder if AVRS will go after Microsoft if they prevail? Things promise to get more exciting before they get any less interesting!
About the Author
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.