Troy v. Samson Manufacturing Corp.
758 F.3d 1322
Fed. Cir.2014Background
- Troy appeals district court § 146 judgment cancelling all claims of his ’451 patent in an interference with Samson.
- Board held Samson senior due to earlier provisional priority; Troy’s priority motion included alleged February 2004 reduction to practice, prior conception, inurement, and derivation.
- Board rejected Troy’s February 2004 reduction to practice and Troy’s claims of inurement/derivation for lack of prior conception; all claims cancelled.
- Troy introduced new evidence in district court, including July 2004 reduction to practice (Conley deposition, Chin affidavit) and alleged misappropriation of Troy drawings as inequitable conduct.
- District court refused to consider Chin affidavit and Conley deposition as new issues barred under § 146 review and found no inequitable conduct proven.
- Under Hyatt, there are no evidentiary limitations beyond Federal Rules; the panel vacates and remands to consider new evidence and arguments.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Admissibility of new issues in §146 review | Troy: Hyatt allows new evidence on new issues. | Samson/PTO: New issues not raised before the Board should be barred. | Hyatt permits new evidence; district court erred in barring. |
| Hyatt’s applicability to §145 vs §146 | Troy: Hyatt applies to both §145 and §146. | Samson/PTO: Hyatt limits differ between §145 and §146. | Hyatt applies with equal force to §145 and §146. |
| Effect of new evidence on priority determination | Troy: July 2004 reduction to practice supported; Conley/Chin evidence admissible. | Samson: New evidence should not disturb the Board’s findings absent proper procedure. | Remand to consider new evidence on July 2004 reduction to practice. |
| Inequitable conduct based on misappropriation evidence | Troy: Misappropriated drawings support Troy’s conception dates and inequitable conduct. | Samson: Record does not establish all elements of the Count or timely reduction. | Remand to consider inequitable conduct arguments and evidence. |
Key Cases Cited
- Hyatt v. Kappos, 132 S. Ct. 1690 (2012) (no evidentiary restrictions beyond Fed Rules; new evidence admissible in §145/§146)
- Disney Enters., Inc. v. Kappos, 923 F. Supp. 2d 788 (E.D. Va. 2013) (district court decisions on Hyatt principles cited)
- Conservolite v. Widmayer, 21 F.3d 1098 (Fed. Cir. 1994) (precedent on new evidence not viable post-Hyatt)
- Miller v. Gammie, 335 F.3d 889 (9th Cir. 2003) (panel can overrule prior decisions due to intervening Supreme Court law)
- Morgan v. Daniels, 153 U.S. 120 (1894) (interference context; standard of review discussion; pre-Hyatt locus)
- Conforto v. Merit Sys. Prot. Bd., 713 F.3d 1111 (Fed. Cir. 2013) (treatment of intervening authority on precedent)