*1
(Nov.
2001)
filed,
orthophosphate and TSP. In-
tion of claim terms so as to exclude COSTS interpretation during that was disclaimed Techs., No costs. Inc. v. prosecution.” Southwall Co., Cardinal IG 54 F.3d (Fed.Cir.1995) (cita
USPQ2d 1673, 1676 omitted).
tions argues also that the writ
Rheox BROWN, Joseph Michael S. description patent pre ten of the '600 Goldstein, L. and Yuval disclaimed, finding cludes a that TSP was Reiss, Appellants, TSP, because it indicates that which is v. indisputably primarily monocalcium ortho patent the '600 phosphate, is defined Veeraswamy Mariano BARBACID and orthophosphate.” Reading “calcium Manne, Appellees. alone, argument description
written No. 00-1590. effective, might light pros but in be Appeals, Court of United States history, generated ecution which was after Federal Circuit. drafted, description it is the written was 11, 2002. DECIDED: Jan. any apparent relinquished that Rheox cov Techs., PTI erage Corp. of TSP. Pall
Inc., (Fed.Cir.2001), petition cert. for *3 Jaworski, Parker, Fulbright &
David L. Austin, TX, L.L.P., appel- argued for on the brief was Steven lants. With-him Marcy Highlander. L. Of counsel was Ho- gan Greer. *4 Parmelee, Townsend and
Steven W. LLP, Crew, and of San Francis- Townsend co, CA, him argued appellees. for With Keeling. Of the brief was Edward J. Sandbaken, Mark Town- counsel were G. Crew, LLP; and Townsend and and send Klein, Christopher Bristol-Myers A. Princeton, Squibb Company, of NJ. NEWMAN, MICHEL, and Before RADER, Judges. Circuit RADER, Judge. Circuit assay In an interference over a new identify compounds, anti-cancer the United Patent and Trademark Office Board States Appeals and Interferences of Patent (Board) priority awarded to Mariano Bar- (collectively Veeraswamy Manne bacid Barbacid) Brown, Joseph over Michael Goldstein, (collectively and Yuval Reiss Brown). Board did not con- Because the that Brown conceived the sider evidence it to invention before Barbacid reduced diligently pursued the inven- tion from the time of Barbacid’s reduction date, practice through Brown’s court the award of vacates and remands. Barbacid
BACKGROUND involves an interference be- This case (the 5,185,248 Bar- No. tween U.S. Patent application patent and U.S. patent) bacid OR (the 07/937,893 applica- Brown No. Serial assay identifying compounds An for
tion). patent and the Brown The Barbacid oncogene activity, ras com- inhibit identi- assay claim an for application both prising: compounds that inhi- anti-cancer fying new reacting protein peptide 6. or sub- (FT), enzyme farnesyl bit transferase having strate a CAAX with FT motif growth. in the control of cell involved farnesyl pyrophosphate and (a farnesyl fame- by adding in the cell functions syl-protein pres- hydrocar- transferase polyunsaturated branched-chain substrate, ence of a test biosyn- intermediate of sterol bon alcohol thesis) cysteine to a amino acid near one detecting farnesyl wither the residue chain, namely the car- protein end incorporated protein into the protein sus- boxy-terminus. important An substrate, in peptide which the abili- farnesyl is “ras.” ceptible to addition of ty ras of the test substance inhibit reaction activates the farnesylation activity is indicated oncogene (which growth) stimulates cell protein ras incorporation decrease in the by moving vicinity ras to the of the cell *5 farnesyl protein residue into the or membrane, Once near the ras membrane. peptide compared substrate as Thus, ah FT inhi- growth. cell stimulates farnesyl residue the amount ras reduce the amount of bitor would pep- incorporated protein into the or therefore re- reaching the membrane and of the tide substrate the absence growth (including duce ras-stimulated substrate. test growth). “cancerous” Brown, Barbacid & Manne v. Goldstein & pro- count in the interference
The sole Reiss, 103,586,slip op. at Interference No. vides: (Bd. Appeals & Interferences 2-3 Pat. 2000) 30, (emphasis May opinion) {Board identifying a candidate A method for added). words, of the In other the method having ability to inhibit a substrate (1) (FT); farnesyl transferase count uses: comprising
farnesyl enzyme, transferase (2) i.e., the source farnesyl pyrophosphate, steps of: (3) “farnesyl acceptor sub- farnesyl; a obtaining enzyme composition 6. peptide substrate “protein stance” or or farnesyl comprising a transferase motif,” i.e., pep- or a having a ras CAAX transfer- enzyme capable that is motif containing ras the CAAX tide of farnesyl ring farnesyl moiety a to a (4) (which a or farnesylated); and test substance; acceptor FT, substrate, which inhibits candidate therefore, activity. protein ras admixing 7. a candidate substrate with enzyme composition and fame- was patent application The Barbacid syl pyrophosphate; 8, 1990, May and issued on Febru- filed on 9, application was 1993. The Brown ability ary of the farne- determining 8. 22, 1992, but was ac- a on December syl enzyme to transfer filed transferase of an earlier related farnesyl accep- corded the benefit farnesyl moiety to a 18, April 1990. application filed on presense in the tor substrate Barbacid, as party. the senior in the ab- Brown was candidate substance and prove junior party, had the burden sense of the candidate substance. 1332 Cir.1998). Accordingly, this court reviews of the evi-
priority by
preponderance
legal
conclu
deference
Board’s
without
dence.
priority, conception,
sions on
showed
The Board found
Barbacid
Hybritech Inc. v. Monoclonal
practice,
no later
an actual reduction
Inc.,
Antibodies,
802 F.2d
231
6,
The Board also found
than March
1990.
81,
(Fed.Cir.1986),
USPQ
and reviews
87
prac-
reduction to
that Brown did
show
not
Board’s factual
for substantial evidence the
6,
March
of the count
tice
before
Zurko, 527
findings. Dickinson v.
U.S.
Yu-
found that Dr.
Specifically, the Board
1816,
150,
144 L.Ed.2d
119 S.Ct.
20,
experi-
FT
September
val Reiss’
Gartside,
1305,
(1999); In re
203 F.3d
every
satisfy
not
limitation
ment did
(Fed.Cir.
1769,
USPQ2d
it did not include
test
count because
2000).
Finally this court
reviews
assay.
candidate substance
application
permissive
of its
inter
Board’s
September
Board also discounted
for an abuse of discretion.
ference rules
(which may have satisfied
experiment
Giovanniello,
Abrutyn v.
15 F.3d
count)
not
because Dr. Reiss could
(Fed.Cir.
USPQ2d
his
notebooks and autora-
authenticate
lab
1994)
Shirai,
(citing Gerritsen
Casey
Dr. Patrick
diographs. Moreover
1524, 1527-28,
1915-16
not corroborate Dr. Reiss’
could
(Fed.Cir.1992)).
relating
and documents
experiment.
I.
Responding
request
to a
for reconsider-
ation,
applica
to consider the
In an interference with an
the Board declined
*6
Morgan
respect
patent,
with
the date of the
testimony of Debra
tion filed after
priority by clear
conception
junior party
Brown’s earlier
and reduc-
must show
to
practice.
convincing
The Board found that
evidence.
37 C.F.R.
tion to
1.657(c) (2001);
Morgan
Symsek,
§
Price v.
988
Brown’s sole reference to Ms.
1190-91,
1031,
1187,
USPQ2d
opening brief was in a section of the F.2d
1033
their
(Fed.Cir.1993).
interferences,
In
such as
Statement of Facts entitled “Brown’s Case
Thereof,”
case,
Diligence
application
for
and Corroboration
with an
whose effec
patent
Argument
filing
but not in the
section.
tive
date antedates the
issu
ance,
junior party
priority
for
request
the Board denied Brown’s
re-
must show
holding that Brown
of
by
preponderance
consideration of its
a
the evidence.
1.657(c);
Benedict,
§
practice
not reduced the invention to
Bosies v.
had
C.F.R.
541-42,
USPQ2d
Accordingly, the
before March
(Fed.Cir.1994). Barbacid,
junior
as the
priority
Board awarded
to Barbacid.
prove
appealed.
party, has the ultimate burden to
Brown
Brown
that the Board
priority.
Id.
asserts
inappropriately
proof
shifted the burden of
DISCUSSION
by
prepon
a
by requiring Brown to show
practice
concep
derance
or reduction to
Priority and its issues of
6, 1990—the date of Barba
practice
ques
and reduction to
are
before March
tion
practice.
to
Brown
subsidiary factu
cid’s actual reduction
predicated
tions of law
that
Board should have shifted
Cooper Goldfarb,
argues
findings.
al
(Fed.
1321, 1327,
production
of
to Brown
burden
—the
going
presented by
forward with sufficient
parties,
burden
both
whether
junior party
proof.
evidence—rather than the burden of
has met its ultimate burden of
proving priority by preponderance of the
This court has not addressed whether a
evidence.
party
by
senior
has the burden to
a
show
sum,
1.657(a)
In
§
under 37 C.F.R.
preponderance a date of invention before
(b), the
proof
ultimate burden of
always
priority
junior par-
date shown
junior party,
remained on the
Barbacid.
decision,
ty. The Board cites to a Board
Thus, the Board
stating
erred in
that the
Gardiner,
USPQ
Fisher v.
proof
burden of
shifted to
at any
Brown
(Bd.
§
“A
presump
states:
rebuttable
in denying authentication to Dr. Reiss’ lab
that,
count,
tion shall exist
as to each
autoradiographs
notebooks and
under 37
1.671(f).
inventors made their invention in
(f)
the chro
§
Paragraph
C.F.R.
(entitled
nological
filing §
order
their effective
1.671
comply
“Evidence must
rules”)
proof
dates. The burden
with
upon
significance
shall be
states: “The
”
documentary and other exhibits
party
(empha
who contends
identified
otherwise
added).
(b)
by a
during
witness
an affidavit or
oral
Paragraph
sis
of the same
deposition
particu
shall be discussed with
explains
junior
section
has
*7
1.671(f)
larity by
§
a witness.” 37 C.F.R.
establishing
by
the burden of
priority
a
(2001)
added).
(emphasis
The Board not
preponderance of evidence. 37 C.F.R.
1.671(f)
§
that
requires
ed
a witness to
1.657(b).
words,
§
In other
the burden of
explain
pages
the entries of various
of the
proof by
preponderance
a
of the evidence
lab notebooks and exhibits.
Fed.
Cf.
“shall
a party” contending they
be on
(excluding
R.Evid. 902
notes and lab note
made their invention out of chronological
books from the list of self-authenticating
dates, i.e.,
order
of the effective
the
evidence).
extrinsic
The Board found that
junior party.
proof
This burden of
does
give
Dr. Reiss did not
sufficient
not shift.
regarding specific entries in his lab note
(i.e.,
autoradiographs
book or on relevant
Irrespective
burden,
of that
howev
32).
adequate expla
Exhibit
an
Without
er,
parties
given
both
must
an opportu
be
rejected
nation of Exhibit
the Board
nity
to submit evidence regarding
the exhibit for lack of authentication.
in an
proceeding.
interference
Once all
submitted,
evidence has been
the Board
pages
Exhibit 32 refers to
notebook
assess,
must
in light
autoradiographs
experi-
of all the evidence
from Dr. Reiss’
corresponded
protein.
in-
to the labeled ras
August
from
October
merits
Dr.
discuss the molecular
Nor did
Reiss
September 20
experiments dated
cluding
(in
weight markers
lane 1 on the left of the
regard to
September
1989. With
Likewise, he did not de-
autoradiograph).
experiment, Dr. Reiss
September
every single
in
experiment
each
lane
scribe
his declaration:
paragraph
in
stated
Nevertheless,
comparing
gels.
25, 1989, I
September
conducted
On
September
in
lanes 2-11 to lanes 14-15
pH dependence
assay to determine the
of skill in this art
autoradiograph,
one
farnesyl
preparation
transferase
that Dr. Reiss had in-
would understand
(Exhibit 32;
currently
pages
under use
in
farnesylation
presence
ras
hibited
0039).
study employed
This
0035 to
peptide.
inhi
peptide
potential
considered to be
Dr.
could have discussed
farnesylation.
peptide
of ras
This
While
Reiss
bitor
in
September
experiment
more de-
carboxy-terminus
ten
comprised
tail,
weigh
Board must nonetheless
The
amino acids of the ras molecule.
vantage point
that
from the
assay
gel
format of this
was the
electro
one of skill in the art. See Mahurkar v.
format,
phoresis
described above
Inc.,
Bard,
1572, 1578, 38
C.R.
[discussing
September
paragraph 20
(Fed.Cir.1996)
(stating
experiment].
radioautograph
de
that
of fact can conclude for
the trier
itself
(Ex
corresponding gel
veloped from the
show,
by testimony
what documents
aided
0038)
32;
clearly
page
hibit
shows
meaning
about the
of the exhibit to one
peptide
ig
inclusion of
at 10 and 20
art).
case,
In this
the note-
skilled
(lanes
15, respectively)
14 and
inhibited
explains
book data itself
the methods and
farnesyl
labeling
transferase-mediated
assays.
September
results of the
14C-FPP,
as determined
of ras
light
testimony,
of Dr. Reiss’
one of skill in
ras-speeific
bands
reduction/absence
this art would understand Exhibit 32 relat-
in these lanes.
ing
September experiments.
explanation informs one of skill in
This
In
lack of au-
excluding Exhibit 32 for
art, upon a
of the relevant
review
thentication,
applied
the Board
its own
pages
autoradiographs
lab notebook
ap-
rule. This court reviews the Board’s
32, that Dr. Reiss conducted an
Exhibit
plication of its rules for an abuse of discre-
experiment
September
FT
Abrutyn,
(citing
Dr. Reiss did not autoradiograph. example, argues For did he Brown further refusing to allow an inven- gels Board erred expressly not state which bands
1335 tor’s own documentation to corroborate his require inventive facts corroboration practice. independent or reduction to A evidence. Thomson S.A. v. Quixote 1172, Corp., 1174-75, 166 F.3d party seeking prove conception via the 49 USPQ2d 1530, (Fed.Cir.1999), 1533 testimony putative oral of a inventor cert. must denied, 1036, 2395, 527 U.S. 119 S.Ct. 144 proffer corroborating evidence that testi (1999); L.Ed.2d 796 Brake, Cooper Goldfarb, 1362, mony. Singh v. 222 F.3d 1321, 1330, 154 USPQ2d 1896, F.3d (Fed.Cir.2000); Mahurkar, 79 F.3d (Fed.Cir.1998). 1577; Symsek, at Price v. (Fed.Cir. applies This court a “rule of
1993). This corroboration rule does not
analysis
reason”
to determine sufficient
apply
proof
with the same force to
Singh,
1367;
corroboration.
222 F.3d at
physical
inventive facts with
exhibits. Ma-
Price, 988 F.2d at
applying
1195. In
(“This
hurkar,
hibit before the board includes. testimony requires inventor’s corrobora IV. considered.”); tion before it can be Hahn *9 1028, 1032, v. Wong, USPQ2d 892 F.2d 13 Conception in is “the formation 1313, (Fed.Cir.1989); 1317 Blicharz v. the mind of the inventor[ ] of definite (CCPA 1977). 603, Hays, 496 F.2d 605-06 permanent complete idea Thus, invention, operative inventor’s testimonial assertions as it is to thereafter
1336 independent only relevant ny, other 222 F.3d at the Singh, practice.” in applied be available, Dr. McCormick, must corroborate 105 evidence Kridl (quoting 1367 to and documents 1686, own statements USPQ2d 1689 Reiss’ 41 September on (internal a reduction to marks show (Fed.Cir.1997) quotation at 1330. Dr. Cooper, 154 F.3d 1989. omitted)). encompass conception must A testimony not corroborate invention, Casey’s could see the claimed all limitations Sep- testimony the regarding Dr. Reiss’ idea is id., only the complete when and “is however, experiment, because tember mind in the inventor’s clearly so defined the Casey purport not to witness Dr. did necessary be ordinary skill would only that Nor did September autoradiograph. practice, without the invention to reduce Septem- the Casey purport Dr. to discuss experimentation,” or research extensive Dr. particular in with experiment ber Co. v. Burroughs Wellcome (quoting Id. any time. Reiss at Inc., Lab., Barr (Fed.Cir.1994)). 1915, 1919 declaration submitted In his Board, Casey Dr. stated: Board, Dr. by the correctly found As every limitation of the satisfy Reiss did not Thursday, September 8. On assay FT his conducted count when he to Southwestern Dr. Buss came Janice September 1989. experiment I a seminar. present Medical School autoradiograph laboratory notebook or so of that that within a week recall September that show themselves date, me the results Dr. Reiss showed use of a include the experiment did not had demonstrated study in which he (i.e., an inhibitor substrate test/candidate activity gel- in a farnesyl transferase FT) Like- the count. element of of —an of the ex- assay.... [Description based wise, independent only study, distinctly I periment] recall Dr. experiments, corroborating Dr. Reiss’ showing. very important as was it September suggest that Casey did not page shown Exhibit The notebook FT included an inhibitor. experiment 20, 1989] page September [dated evi- Thus, and testimonial physical showed to experiment Dr.' Reiss is the experi- regarding dence me.... conception or reduction do not show ment September, part the latter In practice. major development in 1989, there was a project that consumed
my research own V. efforts, me from my and distracted for about farnesyl project, transferase experi September 20 Unlike recall, however, at I one month. in ment, experiment September 25 or the the end of October least about FT FT in the peptide inhibitor of cluded a November, I aware was beginning Thus, experi September 25 assay. had that Dr. Reiss demonstrated limitations of the all of the ment contained ras, from inhib- derived peptides, short however, above, inde count. As discussed in vitro farnesyl ited transferase physical (testimony pendent evidence above. assay gel-based described Dr. other than from a source Sep- Casey did not discuss Reiss) Dr. testi Dr. Reiss’ must corroborate his declaration. experiment tember 25 prac actual reduction mony to show an did not err when the Board words, Consequently, Casey’s testimo- In other Dr. tice. *10 regarding it that evidence the Despite determined Brown’s argument and citation September experiment physical to relevant did not and testimonial evi- dence, the Board did not address practice. show a reduction to whether September the experiment demonstrat- hand, physical On other evidence conception. ed opinion, Board slip op. at September 25 lab itself—the notebook 17-22. only The Board addressed whether pages autoradiographs that an —show September experiment demonstrat- experiment containing all elements ed conception and September whether the place count on that took date. As dis experiment demonstrated an actual re- above, physical cussed evidence re Moreover, duction to practice. the Board quires no further corroboration to demon noted: conception, “Without the issue of physical strate the content of the evidence diligence by reasonable inventors to Mahurkar, 1577; Price, itself. at F.3d practice reduction to is moot. According- addition, at In F.2d 1195-96. while ly, we have not any considered Dr. Casey’s vague testimony does not cor Id., relating diligence.” slip op. at n. testimony roborate Dr. Reiss’ of an actual 15. practice, Casey’s Dr. testimo ny certainly suggests that Dr. Reiss had Priority of invention “goes to the combining assay idea of the FT with party first to reduce an prac invention to FT peptide the use of inhibitors sometime tice unless the other can show that it before the end of October or the beginning was the first to conceive the invention and Casey’s November 1989. Dr. inde it diligence exercised reasonable in pendent testimony corroborates later reducing Dr. Reiss’ practice.” invention to Price, testimony conception of a before Novem at 1190. Because Brown ber 1989. asserted conception to the Board September invention on and invoked In the Facts section of their brief physical require evidence that did not cor Board, they Brown stated that conceived roboration, testimony as well as by Dr. of the invention September Casey corroborating Dr. Reiss’ assay when that FT activity showed both regarding conception, the Board in erred and an FT activity by inhibition of candi- failing to consider whether the September date inhibitors. Brown Brief at Opening pages lab notebook autoradio Moreover, section, 13. Argument their themselves, graphs especially light under “Brown’s First Case for Alternative independent testimony by Dr. Casey, Priority Conception —‘Simultaneous’ conception by’Brown. demonstrated Like (al- Practice,” argued Reduction Brown wise, failing erred in Board to consider beit in primarily the alternative and diligent whether was from Brown March itself) section title that Brown both con- 1990, the of Barbacid’s actual date reduc ceived and reduced to their inven- practice, tion to until Brown’s date September tion on at 33. Id. April 1990. See Brown Opening Brown also cited Dr. Reiss’ 25 Brief at 34. pages
lab and autoradiographs, notebook Casey’s as well Dr. independent corrob- VI. oration Dr. Reiss’ testimony regarding before end October Board found that Brown’s the beginning of Morgan November 1989. Id. sole to Ms. reference their *11 of reasonable argument to their regard in their section was found
Opening Brief concep- by Brown between their diligence for Dili- “Brown’s Case Facts entitled April filing date of tion and Brown’s (empha- date Thereof’ gence and Corroboration 18,1990. added). that the Board also found sis not Brown’s did brief Argument section Thus, its Board did not abuse testimony at all. Morgan’s
rely on Ms. to consider Ms. it declined discretion when 1.656(b), § on 37 C.F.R. based n to testimony respect Morgan’s with testimony to consider the Board declined prac and to reduction Brown’s respect with Brown’s Morgan Ms. above, reasons discussed tice. For the practice. conception and however, Board did abuse its discre (c) 1.656(b) state that §§ and 37 C.F.R. Morgan’s refusing to consider Ms. tion in junior and senior of a opening brief dili testimony regard with to reasonable contain, (emphasis inter alia party shall until by Brown from March gence added): application on filing patent of their 18,1990. (5) April in num- facts, A statement of relevant to the issues paragraphs, bered appropriate with
presented decision for CONCLUSION to the record. references not consider the the Board did Because (6) may preced- argument, which be An experiment or Dr. Ca- contain summary, which shall ed testimony regard sey’s corroborating with respect with the contentions of Brown, any evidence of conception by raising consider- it is to the issues for diligence by Brown between reasonable reasons hearing, and the ation at final reduction to the date of Barbacid’s actual cases, therefor, with citations filing patent of Brown’s practice and the authorities, statutes, parts of and other (such Ms. April application on on. the record relied above), this Morgan’s discussed (c) (2001). 1.656(b), § 37 C.F.R. priority to Bar- court the award of vacates Accordingly, court remands bacid. Brief, Brown stated Opening In their for further to the Board this case back section, “D. Case under Brown’s the Facts conception and proceedings on Brown’s Thereof’, Diligence for and Corroboration diligence. reasonable Morgan, a labo- that Ms. paragraph Dr. and ratory Goldstein’s technician and REMANDED. VACATED FT as- group, conducted Brown’s research candidate inhibitors
says using various NEWMAN, Judge, Circuit PAULINE number as well as a February 27 and dissenting. In their April days in March priority decision in appeal is from a section, Ms. This Brown referenced Argument Al- patent proceeding. interference say that: “Exten- only Morgan’s work Appeals Board of Patent though found in diligence can be sive evidence of AX39, application in its AX34, AX35, AX36, slipped AX32, AX33, Interferences respect to cor- words, evidentiary rules with AX40, AX46.” In AX41 other roboration, correctly stated and the Board FT Morgan’s as- Brown referred to Ms. standards of the burdens and only applied with inhibitors says using candidate proof. I my colleagues’ dissent from must order of their effective dates. The *12 assignment error to the of Board’s state- proof burden of upon shall be party procedural burdens; ment of the who contends otherwise. departure prece-
court’s from decades of junior If the party establishes, aby pre- practice dent and is unwarranted. ponderance evidence, an invention
date that is earlier than the senior party’s I date, filing effective the presumption is junior rebutted. The party will pre- then panel majority The treats it as a matter vail unless the party senior its meets bur- impression of first to set the burdens of den of proving an even earlier date of proof production and of patent in interfer- invention. ences. These long burdens were set ago; they have been consistently applied by the panel The majority incorrectly holds Office; Patent and Trademark they have junior that the party bears the of burden often been confirmed courts—and the proof at each stage of the proceedings, they are not as the panel majority an- even after the burden shifts to the senior nounces. party. panel Thus the majority errs in holding that “the Board erred stating in The Board stated procedural its se- that the burden of proof shifted to Brown quence and proof by burdens of quoting any point at in this Maj. op. case.” at Gardiner, from USPQ 620, Fisher v. 1333. The did Board not err. The Board (Bd.Pat.Interf.1981): WL correctly Brown, required the par- senior Inasmuch junior as Fisher et al. [the ty, to meet the burden of proving, by a party] have established a reduction to preponderance evidence, practice subject matter counts reduction to before and/or the 1, 2 and prior party’s senior date that proven by junior had been the date, filing the Aymami burden to shifts party Barbacid. party] prove by [the senior to a prepon- panel majority propounds a new derance the evidence a date confusing whereby rule the par- senior subject for that matter earlier than the ty, junior order to defeat party July date established Fisher junior when party has antedated the et al. [Emphasis added.] party’s date, filing senior nonetheless nev- This is a classical statement of the burdens er acquires the proving burden of entitle- apply in priority contest PTO ment to priority. correctly The Board between copending applications: junior placed junior on the party the burden of party must go present first and evidence rebutting the rebuttable of 37 presumption to invention, establish priority of including 1.657(a). § C.F.R. junior If the can- party evidence as appropriate of conception, re- so, not do party produce senior need duction to practice, diligence. The no evidence of its dates of invention. junior burden is on the party overcome However, junior when has estab- presumption,” “rebuttable set lished a date of invention than earlier 1.657(a): § C.F.R. party’s date, senior filing effective pre- A rebutted, presumption sumption is rebuttable shall exist and the burden then that, count, as to each the inventors shifts to the senior party prove its dates made their invention in chronological by submitting of conception In- (Bd.Pat.App & 1993 WL -See appropriate. practice as terf.1993): Bowers, 286- 296 U.S. Del Vecchio (1935) (a 80 L.Ed. 87, 56 S.Ct. junior English if priority, [the As for evidence; it controls is not presumption prior invention proves a date of party] is a lack there only when result date, party] Ausnit’s senior [the evidence). competent prove to Ausnit to shifts the burden proof burden party’s The senior by preponder- earlier date of invention *13 to the evidence unrelated dates is priority ance of the evidence. party’s Each party’s work. junior Perkins, USPQ2d 1752 v. Kwon its evidence of solely showing is based Interf.1988) (affd: 886 (Bd.Pat.App & the other work, unrelated to and is own (Fed.Cir.1989)): 325, 12 USPQ2d 1308 F.2d no junior party bears the proofs; party’s party’s the senior proof as to burden junior party] has estab- [the Since Kwon prac- to conception and dates the prior invention to a date lished after prevail to party senior For the tice. party], senior [the date of Perkins has been rebutted presumption PTO’s to shifts to Perkins establish the burden must party junior party, the senior by the by prepon- a of invention an earlier date in with the its dates accordance establish derance of evidence. junior party. applies that same law 517, 522, 27 Shibuya, v. from Kubota unchanged procedure remains This Dover, (Fed.Cir.1993): 1418, 1422 23 USPQ2d in Greenwood reported (1904): 251, 258 App. D.C. that, the burden It seems to while us junior Moreover, [the as Greenwood seeking to party a initially may be on had his found to have has been party] interference, seeking to or provoke an early as June least conception at as date, a to obtain entitlement upon Dover thrown is burden has been declared once an interference party] prove to senior [the change party and a seeks status to that date. prior motion, is by the burden parties accompanying burdens practice The rules, under the new then on the movant Maddox, Ellis v. described in again were originally pro- party than on the rather (CCPA 308, 312, USPQ obtaining en- voking the interference 1938): titlement. junior case, [the Ellis’ the instant In conflict with 37 do not procedures These date is Febru- earliest claimed party] (b), 1.657(a) panel § as the C.F.R. shows If the evidence ary, 1926. text, In a definitive majority announces. completed the party] senior [the Maddox practice in Gholz summarized Charles date, prior to this of the counts invention the PTO: proof character immaterial what it is his claim that to sustain submitted only Ellis refers 1.657] [§ The above rule by February, completed the invention he junior carry must party the burden jun- that the it follow since would prior date prove an invention met the not have party Ellis would ior par- A filing date. senior party’s senior upon him. imposed burden an invention date prove ty attempting to filing date also to its must see, prior own unchanged: is practice current preponder- Ausnit, any such date prove English v. e.g., anee of the evidence. As to (Fed. facts other USPQ2d 1031, Cir.1993) dates, than invention proof (applying burden of analy- rule-of-reason sis in always them, determining is on the alleging whether party the inventor’s corroborated). testimony has been jun- whether that is the senior or party. ior is, This statute, court’s review “on the record before the Patent and Trade- Gholz, L. Charles Interference Practice mark § Office.” 35 144. A U.S.C. full 6 IRVING KaYTON ET AL, PATENT PRACTICE 24- presented, record has been of generally (1989). This does not conflict undisputed facts. It appellate our obli- 1.657, § with 37 C.F.R. panel major- gation to appeal, decide the obligation announces; ity it, it implements as the particularly compelling view of rapid interprets practices PTO its own evolution of and the technology time and Rule.1 resources consumed by the administrative The Board herein stated pro- the correct patent process. Applying the correct law *14 applied cedure and the correct standard. undisputed respect facts with I respectfully dissent from the court’s as- conception, diligence, and reduction to signment of error to practice, the Board’s statement it follows party that the Brown application and practice.2 and law A established of invention before the warranted, if change, dates only can be made established Barbacid. this court en banc.
II
I agree that the Board erred in law in
its proffered treatment of the evidence of corroboration. Dr. Reiss’ testimonial and DAVIS, John F. Claimant-Appellant, documentary and practice was supported by witnesses who testified variously that Anthony PRINCIPI, Secretary J. they conducted biological chemical and Affairs, Respondent- Veterans analyses, prepared materials, ordered and Appellee. discussed the work in progress and its re- No. 01-7029.
sults, repeated and pur- the work. The pose of the United States requirement Appeals, Court of corroboration probe Federal veracity Circuit. the inventor’s as- by determining, sertions entirety on the Jan. 2002. of the testimonial documentary rec- ord, whether it likely is more than not
that the asserted activities events oc- Symsek,
curred. See Price v. 1. implementation remand, This requires of PTO rules leaving impres- interference on recognition and deference accordance with implications change sion that the of this in a the Administrative Procedure Act. century precedent are neither understood nor considered. I majority take note that the panel does not explain how its new rule should affect this