IN RE ZURKO

Nos. 96-1258, 07/479,666.

258 F.3d 1379 (2001)

In re Mary E. ZURKO, Thomas A. Casey, Jr., Morrie Gasser, Judith S. Hall, Clifford E. Kahn, Andrew H. Mason, Paul D. Sawyer, Leslie R. Kendall, and Steven B. Lipner.

United States Court of Appeals, Federal Circuit.

Decided August 2, 2001.


Attorney(s) appearing for the Case

Linda Moneys Isacson, Associate Solicitor, Office of the Solicitor, U.S. Patent and Trademark Office, of Arlington, Virginia, argued for the Commissioner of Patents and Trademarks. With her on the brief were John M. Whealan, Solicitor, Kenneth R. Corsello and Thomas J. Finn, Associate Solicitors.

John F. Sweeney, Morgan & Finnegan, L.L.P., of New York, New York, argued for Mary E. Zurko, et al. With him on the brief were Irene Kosturakis and Russell T. Wong, Compaq Computer Corporation, of Houston, Texas. Of counsel on the brief were Michael O. Cummings and Jon T. Hohenthaner, Morgan & Finnegan, L.L.P., of New York, New York; and Ernest Gellhorn, of Washington, DC. Also of counsel were Janice M. Mueller, Assistant Law Professor, Suffolk University Law School, of Boston, Massachusetts; Israel Blum, Steven F. Meyer and Brenda Pomerance, Morgan & Finnegan, L.L.P., of New York, New York; and Ronald C. Hudgens, Corporate Law Department, Digital Equipment Corporation, of Maynard, Massachusetts.

Bruce M. Wexler, Fitzpatrick, Cella, Harper & Scinto, of New York, New York, for amicus curiae New York Intellectual Property Law Association. With him on the brief was Herbert F. Schwartz, Fish & Neave, of New York, New York.

Charles F. Schill, Foley & Lardner, of Washington, DC, for amicus curiae Federal Circuit Bar Association. With him on the brief were James A. Sprowl and Amy L. Wilsey. Of counsel on the brief were Michael E. Dergosits, President, George E. Hutchinson, Executive Director, and Rudolph P. Hofmann, Jr., Chair, Amicus Committee, Federal Circuit Bar Association, of Washington, DC.

Before PAULINE NEWMAN, Circuit Judge, ARCHER, Senior Circuit Judge, and MICHEL, Circuit Judge.


ARCHER, Senior Circuit Judge.

This case is before us on remand from the Supreme Court of the United States. Dickinson v. Zurko, 527 U.S. 150, 119 S.Ct. 1816, 144 L.Ed.2d 143, 50 USPQ2d 1930 (1999) ("Zurko III"). In Zurko III, the Court reversed our judgment and remanded the case because we had reviewed the factual findings of the Board of Patent Appeals and Interferences ("Board") for clear error, an incorrect standard...

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