NOTE: This order is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

LEE M. KAPLAN, ALICE P. LIOU, PETER J. 

TURNBAUGH, JASON L. HARRIS,

Appellants

v.

PATRICE CANI, ARMANDINE EVERARD, CLARA 

BELZER, WILLEM DE VOS,

Appellees

KATHERINE K. VIDAL, Under Secretary of Commerce for Intellectual Property and Director of the 

United States Patent and Trademark Office,

Intervenor

______________________

2021-2367

______________________

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 106,130.

______________________

ON MOTION

______________________

Before PROST, REYNA, and CUNNINGHAM, Circuit Judges.

CUNNINGHAM, Circuit Judge.

O R D E R

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2 KAPLAN v. CANI

Patrice Cani et al. (collectively, “Cani”) move to dismiss 

this appeal for lack of jurisdiction. The United States Patent and Trademark Office (“PTO”) responds in support. 

Lee M. Kaplan et al. (collectively, “Kaplan”) oppose. 

This appeal stems from an ongoing interference proceeding between Cani and Kaplan before the Patent Trial 

and Appeal Board. At the preliminary stage of the proceeding, Kaplan sought permission to file a motion for judgment 

against Cani based on alleged inequitable conduct. Finding that allegations of inequitable conduct “would benefit 

from evidence presented during a priority phase of the interference,” the Board deferred a decision on the motion “to 

the conclusion of the priority phase of the interference, if 

any.” Int. No. 106,130, Paper 25 at 3. 

Kaplan requested rehearing of the decision to defer, 

which the Board denied. The Board explained that the allegedly misrepresented data here that forms the basis of 

the proposed inequitable conduct “pertains directly to priority which will be asserted by [Cani] during the priority 

phase” and that the “alleged defects in the data would be 

expounded upon by witnesses who are subject to cross examination during the normal course of the interference.” 

Int. No. 106,130, Paper 88 at 2–3. For that reason, the 

Board maintained “the view that obtaining this information in the regular course of the proceeding will assist 

[the Board] in determining the future course of action concerning the propriety of raising allegations of inequitable 

conduct.” Id. at 4. Kaplan then filed this appeal. 

We have exclusive jurisdiction to review decisions of 

the Board. See 28 U.S.C. § 1295(a)(4)(A). But our jurisdiction extends only to the Board’s final decisions. See In re 

Arunachalam, 824 F.3d 987, 988 (Fed. Cir. 2016) (reading 

§ 1295(a)(4) “to incorporate a finality requirement” (quoting Loughlin v. Ling, 684 F.3d 1289, 1292 (Fed. Cir. 

2012))). Rulings concerning preliminary motions are generally appealable only upon a final decision of the Board in 

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KAPLAN v. CANI 3

an interference, not on an interlocutory basis. Nonetheless, Kaplan argues that we have interlocutory jurisdiction 

over this appeal under the collateral order doctrine. See 

Cohen v. Beneficial Indus. Loan Corp., 337 U.S. 541, 546 

(1949). We disagree with Kaplan. 

The collateral order doctrine “considers as ‘final [decisions],’ even though they do not ‘end the litigation on the 

merits,’ decisions ‘which finally determine claims of right 

separate from, and collateral to, rights asserted in the action, too important to be denied review and too independent of the cause itself to require that appellate jurisdiction 

be deferred until the whole case is adjudicated.’” Midland 

Asphalt Corp. v. United States, 489 U.S. 794, 798 (1989) 

(quoting Cohen, 337 U.S. at 546). To fall within the limited

class of final collateral orders that may immediately be appealed, the order must “[1] conclusively determine the disputed question, [2] resolve an important issue completely 

separate from the merits . . . , and [3] be effectively unreviewable on appeal from a final judgment.” Will v. Hallock, 

546 U.S. 345, 349 (2006) (brackets in original) (internal 

quotation marks and citation omitted). 

Kaplan has failed to satisfy at least two of those requirements. First, they have not sufficiently shown that 

the Board conclusively determined the issue presented, 

namely, whether the Board must decide Kaplan’s motion 

for judgment based on inequitable conduct before reaching 

the merits of the interference. The Board deferred consideration of that motion until “the conclusion of the priority 

phase of the interference.” Int. No. 106,130, Paper 25 at 3. 

But the Board can still change course. Nothing in its order 

prohibits the Board from granting Kaplan leave to file a 

motion for judgment on inequitable conduct that the Board 

resolves before reaching any decision on priority. The 

Board has still not resolved any priority issue, and the parties do not suggest the Board has otherwise reached the 

merits of the interference. Thus, the Board’s ruling is not 

“conclusive.” See Gulfstream Aerospace Corp. v. Maycamas 

Case: 21-2367 Document: 29 Page: 3 Filed: 04/18/2022
4 KAPLAN v. CANI

Corp., 485 U.S. 271, 278 (1988) (noting that an order is “inherently tentative” if the district court “does not necessarily contemplate that the decision will close the matter 

for all time” (internal quotation marks omitted)).

Second, whether Cani should lose standing as a party 

to the interference because of committing inequitable conduct, as alleged here, is meaningfully capable of review after the final decision. It is true that forcing Kaplan to wait 

to validate that claim until after the final decision cannot 

undo the expense of having to participate in these interference proceedings. But in that respect, this situation is indistinguishable from a denial of a motion for lack of 

jurisdiction or venue, which are also not immediately appealable. See Lauro Lines s.r.l. v. Chasser, 490 U.S. 495, 

499–500 (1989); see also Mohawk Indus., Inc. v. Carpenter, 

558 U.S. 100, 107 (2009) (“That a ruling may burden litigants in ways that are only imperfectly reparable by appellate reversal of a final district court judgment . . . has never 

sufficed.” (internal quotation marks and citation omitted)).

In the alternative, Kaplan requests that we treat the

appeal as a petition for a writ of mandamus. But Kaplan 

has not shown any clear and indisputable error on the part 

of the Board in deferring their motion. See Cheney v. U.S. 

Dist. Ct. for D.C., 542 U.S. 367, 380–81 (2004). The cases 

cited by Kaplan do not provide clear legal authority to compel the Board to act on their motion at this preliminary 

stage. In Berman v. Housey, 291 F.3d 1345 (Fed. Cir. 

2002), the Board dismissed an unpatentability motion as 

moot after finding there were no claims that could sustain 

an interference proceeding. Id. at 1350. We found no error 

on the part of the Board in refusing to address that motion. 

That decision does not directly speak to the issue here. 

Norton v. Curtiss, 433 F.2d 779 (C.C.P.A. 1970), likewise does not provide clear legal entitlement to the Board’s 

consideration of the inequitable conduct motion during the 

preliminary stage of the interference proceeding. In that 

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KAPLAN v. CANI 5

case, the Court of Customs and Patent Appeals held that 

the issue of misconduct on the part of a patent applicant is 

an issue “ancillary to priority” and therefore properly 

within the jurisdiction of the Board and the court. Id. at 

783. The Board’s ruling deferring action did not say otherwise. And Norton did not address when the Board is required to take up the issue of inequitable conduct. 

Accordingly, 

 IT IS ORDERED THAT: 

(1) The motion to dismiss is granted.

(2) Each side shall bear its own costs. 

April 18, 2022 

 Date

 FOR THE COURT

/s/ Peter R. Marksteiner

 Peter R. Marksteiner

 Clerk of Court

 

ISSUED AS A MANDATE: April 18, 2022

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