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September 5, 1980

Wagn Ole GODTFREDSEN, Plaintiffs,
Donald W. BANNER, Defendant

The opinion of the court was delivered by: GREENE


This is an action in which plaintiffs Wagn Ole Godtfredsen and its assignee, Leo Pharmaceutical Products Ltd., seek judicial review of a determination by defendant Commissioner of Patents and Trademarks regarding formulation of the counts to be considered in a patent office interference proceeding. *fn1" Peter Bamberg, et al. and its assignee, Astra Pharmaceutical Products, Inc., have intervened as defendants in this action, based upon their interest as junior party in the interference proceeding declared between Bamberg and plaintiffs. Presently before the Court are plaintiffs' motion for summary judgment and defendant's and defendant-intervenors' motions to dismiss or for judgment on the pleadings.


 On July 26, 1976, the Examiner of Patent Interferences declared an interference between plaintiffs' patent application filed on March 3, 1975 and an application by defendant-intervenors filed on April 25, 1974 both concerning certain pharmaceutical compositions used in the treatment of bacterial infections. The interference, as declared, involved a single count directed to a method of treating bacterial infections with a 1:1 mixture of mecillinam/ampicillin. *fn2" During the motions period in the interference, plaintiffs moved to substitute a broader count than that designated by the examiner, claiming that subject matter common to both applications had been excluded from consideration. More specifically, the plaintiffs proposed that the primary examiner replace the present count with a broader Count A which encompassed three related two-component antibiotic mixtures, each containing the compound mecillinam as a common component. The primary examiner denied the motion and instead granted plaintiffs' alternative motion to add counts 2 and 3 which correspond to the mixtures of mecillinam/benzylpenicillin and mecillinam/azidocillin, respectively. Plaintiffs petitioned the Commissioner of Patents and Trademarks (the Commissioner) to review this decision, *fn3" alleging abuse of discretion by the Primary Examiner in denying substitution of Count A for Count 1, and arguing that the use of mecillinam with different common penicillins was a single generic invention to be considered as the sole count of the interference proceeding. The Commissioner denied the petition, and plaintiffs are seeking this review from the denial. *fn4"

 Plaintiffs allege as error the Commissioner's construction of two recent decisions which, in their opinion, prevent an examiner from rejecting a particular claim on the basis that it contains independent and distinct inventions and mandate substitution of the broadest count common to both parties in the interference. *fn5" The Commissioner argues that these cases are distinguishable, that the purpose of an interference is to determine priority of invention, and that each count in the interference may not embrace more than one invention. Because of its disposition of the case on other grounds, the Court finds it unnecessary to consider the questions raised by these arguments.


 Defendants have moved to dismiss the complaint on the ground that the Court lacks jurisdiction over the subject matter because the Commissioner's decision is not final agency action subject to review, and the plaintiffs have failed to exhaust their administrative remedies. The Court agrees.

 It is clear that the patent statutes do not contemplate judicial review of interlocutory determinations, made during interference proceedings. These laws permit a defeated party only to seek review of an adverse decision by appeal to the CCPA (35 U.S.C. § 141) or by civil action in the district court (35 U.S.C. § 146) when the applicant has been "finally denied a patent because of a Patent Office decision against him and in favor of his adversary on the question of priority." Sanford v. Kepner, 344 U.S. 13, 73 S. Ct. 75, 97 L. Ed. 12 (1952).

 Recognizing this difficulty, plaintiffs argue that the Court has jurisdiction under the Administrative Procedure Act, 5 U.S.C. § 704, in that allegedly they have been adversely affected by final agency action for which there is no other adequate judicial remedy. However, except in unusual circumstances (see infra ) judicial review under this provision of the APA is available only if the plaintiff is able to demonstrate that the action complained of is final. Abbott Laboratories, Inc. v. Gardner, 387 U.S. 136, 87 S. Ct. 1507, 18 L. Ed. 2d 681 (1967). The Commissioner's action in denying plaintiffs' motion to substitute Count A is clearly interlocutory in nature. It is preliminary agency action occurring during the initial stages of a proceeding to determine priority of invention.

 In a similar case, review was sought under the APA of a Commissioner's denial of a motion to dissolve made during the preliminary stages of an interference proceeding. Klein v. Commissioner of Patents, 474 F.2d 821 (4th Cir. 1973). The Court of Appeals held that the Commissioner's decision did not constitute final agency action reviewable under the APA, explaining (474 F.2d at 825) that "the whole point of the proceeding is to determine priority of invention, and actions of the Patent Office prior to that determination are interlocutory in nature. We believe that judicial intervention at the initial stage of the determination of the question of priority of invention would disrupt the orderly administration of the Patent Office, which has been vested by Congress with the administrative duty of deciding the question of priority of invention."


 It has, of course, been recognized many times that the validity of what is in form an interlocutory administrative order may be considered by way of judicial review if it is in substance a final determination of rights. At the same time, the courts have consistently warned that "such exceptional authority is available only if the court is clearly convinced that review of final action would be completely unavailable to vindicate the statutory or substantive right." Phillips Petroleum Company v. Brenner, 127 U.S. App. D.C. 319, 383 F.2d 514 (D.C.Cir.1967); see also, Fidelity Television, Inc. v. FCC, 163 U.S. App. D.C. 441, 502 F.2d 443 (D.C.Cir.1974); Environmental Defense Fund, Inc. v. Ruckelshaus, 142 U.S. App. D.C. 74, 439 F.2d 584 (D.C.Cir.1971). Moreover, as noted supra, the aggrieved party must have no redress short of immediate court intervention available to it in order to warrant such intervention. These circumstances are not present here.

 Plaintiffs' assertions that the Commissioner's determination has adversely affected them and that review of his decision is permanently precluded are wholly based on speculation concerning the outcome of the interference proceedings and the subsequent processing of the parties' patent applications. Plaintiffs predict that they will be awarded priority on one of the counts and defendant-intervenors will prevail on one of the other counts, with the result that two patents will be granted, and that one of these will be held invalid in view of the other. This scenario, however, is entirely conjectural and based on several assumptions which subsequent events may prove to be erroneous.

 First, no evidence has been submitted on the issue of priority nor has any determination been made on this issue. Defendants accurately point out that it is possible that plaintiffs will be awarded priority of invention by the Board of Patent Interferences on the entire subject matter of each of counts 1, 2 and 3. If that were to occur, the issues arising from the denial of their motion to substitute Count A would be completely moot. Second, the Patent Office has made no final determination as to whether the subject matter of Count A is patentable to plaintiffs, and it can take no such action until after priority of invention has been determined. After the termination of the interference, the prosecution of the patent applications will be returned to the examiner. Manual of Patent Examining Procedure §§ 1109-1109.2. Even if each party were awarded priority on a single count, as hypothesized by plaintiffs, they would still be able to seek an ex parte determination by the examiner on the patentability of a claim corresponding to Count A. See Manual of Patent Examining Procedure, supra at 1109.2. His determination of patentability on this count could then be appealed to the Board of Appeals and subsequently to either the CCPA or a district court pursuant ...

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