Illinois Tool Works (ITW) appealed the decision of the Board of Patent Appeals and Interferences to the Delaware district court pursuant to 35 U.S.C. § 146. The interference was between the Jurgoven patent (assigned to Frito-Lay), an application submitted by Jurgoven, and an application by Ramsey (assigned to ITW). The subject matter of the patent/applications and the two counts of the interference was a zippered flexible food product package that is pinch-grip openable, and the method of opening and closing the package. The Board found in favor of Frito-Lay, awarding it priority of invention because ITW had derived its invention from the Jurgoven patent. The Board declined to rule on the patentability of the Jurgoven patent “because ITW did not file a timely preliminary motion on the issue.” Op. at 3.
The issue before the Court was whether the Court should consider the patentability of the Jurgoven patent even though the issue was not raised at the proper time before the Board. ITW did not raise the patentability issue in the early phases of the interference, instead waiting until its briefing before the Board to raise the issue. Frito-Lay argued that this amounted to a waiver of the patentability issue by ITW such that the patentability issue was not properly before the Court. The Court disagreed. The Court held that although ITW did not raise the patentability issue through the proper procedural vehicle before the Board (a preliminary motion), “the record clearly demonstrates that ITW raised the issue with the Board during the judgment motion phase of the interference and insisted that it be resolved during the interference.” Op. at 5. Thus, the Court ruled that the patentability issue is properly before the Court, but only as to the prior art argued before the Board – ITW may not raise new patentability arguments at this time. Op. at 8.