If You Settle A 35 USC 136 Action With A Stipulated Judgment, What Should It Say?¹

Introduction

Jurgovan v. Ramsey, 86 USPQ2d 1447 (PTOBPAI 2006) (non- precedential) (opinion by APJ Medley, not joined by any other APJ), continues the saga discussed in Gholz, When (If Ever) Is The Judgment of a District Court in a 35 USC 146 Action Binding on the Board?, 13 Intellectual Property Today No. 5 (2006) at page 30.  Judge Medley was obviously still unhappy about having to follow a district court’s consent judgment in a 35 USC 146 action requiring vacature of the BPAI’s decision, but she realized that she had to do so -- provided that the settling parties put certain “magic words” in the consent judgment.

What Mr. Gholz Said in His Previous Article

In his previous article, Mr. Gholz cited Cleveland Trust Co. v. Berry, 99 F.2d 517, 521, 40 USPQ 77, 80 (6th Cir. 1938), a pre-Federal Circuit opinion by a regional circuit court, for the proposition that, like it or not, the BPAI has to comply with the judgment of a district court in a 35 USC 146 action even if that judgment is a consent judgment.⁴  He also asserted that, in Beam v. Chase, Int. No. 103,836 (which involved the board’s initial refusal to remand Chase’s application to the examiner after the district court had reversed the board’s decisio...