Troy v. Samson Manufacturing Corp.
942 F. Supp. 2d 189
D. Mass.2013Background
- Troy sues under 35 U.S.C. §146 to review the PTO Board’s decision in Patent Interference No. 105,698 between the '451 patent and the '665 application.
- The Board held Troy failed to prove priority of invention over Samson; Troy seeks judicial review of that decision.
- The interference concerns a modular handguard rail for a firearm, with Troy owning the '451 patent issued May 15, 2007 and Samson having the earlier '665 application filed January 6, 2006.
- The Board deemed Troy the junior party because his provisional filing was after Samson’s; the Critical Date for Samson was January 18, 2005 and for Troy February 11, 2005.
- To win priority, Troy needed actual reduction to practice of all elements of Claim 3 prior to the Critical Date or, failing that, proof of conception with inured or derived benefit; he failed on all grounds.
- The court may admit new evidence in a §146 action but only on appropriate issues raised before the Board; new evidence is governed by standards from Hyatt v. Kappos and Streck.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Priority of invention—did Troy prove prior to Samson? | Troy argues Board misapplied burden; seeks priority. | Samson contends Troy did not prove actual reduction or conception. | Troy failed; Board affirmed. |
| Admission of new §146 evidence | Troy seeks admission of six new affidavits. | Samson argues evidence was available earlier and should be excluded. | Court admits new evidence but limits to issues raised before the Board. |
| Actual reduction to practice | Troy contends he reduced the invention to practice before the Critical Date. | Samson claims record corroboration is lacking and elements not proven. | Not proven; insufficient corroboration and five-element fulfillment absent. |
| Conception and inurement/derivation | Troy argues conception by multiple dates and inurement/derivation via Samson’s actions. | Samson disputes adequate conception and inurement/derivation evidence. | Conception not proven; inurement/derivation not proven. |
Key Cases Cited
- AlphaVax, Inc. v. Novartis Vaccines & Diagnostics, Inc., 719 F.Supp.2d 156 (D.Mass.2010) (§146 action is a hybrid of appeal and trial de novo; new evidence considerations)
- Invitrogen Corp. v. President & Fellows of Harvard Coll., 578 F.Supp.2d 248 (D.Mass.2008) (new evidence only to fill gaps or when not adequately presented earlier)
- Conservolite, Inc. v. Widmayer, 21 F.3d 1098 (Fed.Cir.1994) (new issues generally not allowed; exceptions apply)
- Hyatt v. Kappos, 132 S.Ct. 1690 (2012) (Congress intended §145 proceedings to admit new evidence subject to rules)
- Streck, Inc. v. Research & Diagnostic Sys., Inc., 659 F.3d 1186 (Fed.Cir.2011) (admission of new evidence in §146 depends on equity and relation to record)