discussing the need for a writ of mandamus
How later courts described this case
- discussing the need for a writ of mandamus
- writ denied; no jurisdiction to review Commissioner's decision to allow interference
Written by the judges who cited it.
Later courts went against this
Overruled in part by Hester v. Allgeier, 646 F.2d 513 (1981)
To the extent that Godfredsen v. Banner, supra, conflicts with this holding, it is overruled.
The opinion
MILLER, Judge,
concurring.
I agree with the majority’s dismissal of the petition for writs of mandamus and prohibition. However, I find it unnecessary to decide, as the majority does, that substitution of a count in an interference is not ancillary to priority. Instead, I would premise dismissal on appellant’s failure to demonstrate that this court has subject matter jurisdiction based on authority other than the All Writs Act itself, “in aid of” which a writ could be issued. See Roche v. Evaporated Milk Ass’n, 319 U.S. 21, 23-26 , 63 S.Ct. 938 , 87 L.Ed. 1185 (1957); Formica Corp. v. Lefkowitz, 590 F.2d 915 , 200 USPQ 641 (Cust. & Pat.App.1979)
There is little precedent supporting the proposition that substitution of a count in an interference is not ancillary to priority, and such as exists is old and devoid of reasoning. 1 Over the years, this court has expanded the types of issues regarded as ancillary to priority. Today, interferences commonly involve phantom counts, modified claim counts, or Markush claim counts. In such interferences, selection of the particular count for the determination of priority can have a significant impact on the interference proceeding (including the scope of discovery, the manner and nature of proofs, and the legal theory argued) and may be decisive in the award of priority, as appears would be the case here. Moreover, the language used by this court in recent cases 2 in which we have determined that the question of interference in fact is ancillary to priority, appears equally applicable to the determination of whether the substitution of a count is ancillary to priority.
It would seem appropriate to ask: What could be more ancillary to a determination of priority than a decision on the count to be used in that determination?
. In addition to the majority’s citation to Daley v. Wiltshire, 293 F.2d 677 , 130 USPQ 398 , 49 CCPA 719 (1961), which merely states the proposition, two pre-1952 Patent Act cases summarily treated the matter: Smith v. Hayward, 176 F.2d 914 , 83 USPQ 123 , 37 CCPA 718 (1949); Josserand v. Taylor, 138 F.2d 58 , 59 USPQ 140 , 31 CCPA 709 (1943).
. E. g., Aelony v. Arni, 547 F.2d 566, 568-69 , 192 USPQ 486, 489 (Cust. & Pat.App.1977); Nitz v. Ehrenreich, 537 F.2d 539, 542-43 , 190 USPQ 413, 416-17 (Cust. & Pat.App.1976).