Craig v. Gemma Benneker
| Decision Date | 25 May 2004 |
| Docket Number | 009,Patent Interference 105 |
| Parties | ANDREW SIMON CRAIG, VICTOR WITOLD JACEWICZ and MICHAEL URQUHART Junior Party[1] v. FRANCISCUS BERNARDUS GEMMA BENNEKER, FRANS VAN DALEN, JACOBUS MARIA LEMMENS, THEODORUS HENDRICUS ANTONIUM PETERS and FRANTISEK PICHA Senior Party[2] |
| Court | Patent Trial and Appeal Board |
Before Metz, Gardner Lane and Moore, Administrative Patent Judges.
DECISION ON PRELIMINARY MOTIONS
METZ ADMINISTRATIVE PATENT JUDGE.
On September 16, 2003, a Motions Panel entered a decision denying SKB's motion for judgment on the grounds that there was no interference-in-fact between the parties' claims. See Paper Number 109. On August 4, 2003, SKB filed notice to Synthon that SKB had filed its preliminary statement. See Paper Number 79. Synthon, the senior party has declined to file a preliminary statement but instead relies on its effective filing date of June 10, 1997, the date Synthon was accorded for their benefit application, now U.S. Patent Number 5, 874, 447.
According to Part G of the Standing Order on setting time periods "without further order of the Board, within one (1) week after the date for filing preliminary statements, a copy of a party's preliminary statement shall be served on each opponent who served a notice under 37 C.F.R. § 1.621(b)." Therefore, SKB's preliminary statement is open on the record. However SKB's preliminary statement fails to overcome the effective filing date of Synthon, the senior party. Ordinarily, judgment would be entered against a junior party which failed to overcome the effective filing date of a senior party. Nevertheless, SKB has filed, inter alia, a motion to deny Synthon the benefit accorded them for their patent and if the motion were granted SKB would become the senior party. Accordingly, we shall first decide SKB's various motions, including the motion to deny Synthon benefit, before we reach the issue of whether it is now appropriate to issue judgment against SKB. See Barton v. Adang, 162 F.3d 1140, 1145, 1146, 49 U.S.P.Q.2d 1128, 1133, 1134 (Fed. Cir. 1998) ().
The oral hearing on preliminary motions was requested by both parties and was held on February 20, 2003, at 10:00 A.M. Both parties attended the hearing and were represented by legal counsel. The following motions have been filed by the parties:
We shall decide first those motions of each party which seek to obtain or deny benefit of an earlier filed application and which seek to redefine the interfering subject matter. These type of motions could have a bearing on which party bears the burden of proof and, also, include the possibility of changing the count, the vehicle by which priority is ultimately determined.[3] Each party to this interference had a full and ample opportunity to file any preliminary motion it desired, including a motion to redefine the interfering subject matter by changing the count or adding a count. Neither party chose to file a motion to change the count or add a count.
A party seeking to change the status quo in an interference by filing a preliminary motion has the burden of establishing entitlement to relief requested. The burden of proof for the moving party is by the preponderance of the evidence standard. Kubota v. Shibuva. 999 F.2d 517, 520-21, 27 U.S.P.Q.2d 1418, 1422 (Fed. Cir. 1993); 37 C.F.R. § 1.637(a), first sentence (1994). The preponderance of evidence burden applies even though a patent is involved in the interference.[4] Thus, the burden rests with the moving party in every instance to establish by a preponderance of the evidence that they are entitled to the relief requested in their motion.
A preponderance of the evidence has been defined as a standard which only requires the fact finder:
to believe that the existence of a fact is more probable than its nonexistence before [he] may find in favor of the party who has the burden to persuade the [judge] of the fact's existence.
Boises v. Benedict, 27 F.3d 539, 541-42, 30 U.S.P.Q.2d 1862, 1864 (Fed. Cir. 1994), quoting from In re Winship, 397 U.S. 358, 371- 72 (1970).
SKB moves under 37 C.F.R. § 1.633(f) to be accorded the benefit of their earlier filed British application UK Application No. 9821732.6, filed on October 6, 1998. The motion is GRANTED.
SKB urges that because it has satisfied the requirements of 37 C.F.R. §1.637(f), including a showing that the earlier filed application for which benefit is sought constitutes a constructive reduction to practice of at least embodiment within the subject matter defined by Count 1, they are entitled to the relief they request. Synthon, in their opposition, concedes that SKB's earlier filed application constitutes a constructive reduction to practice of at least one embodiment within Count 1 (see pages 2 and 5 of the opposition) but opposes the motion to the extent it seeks to be accorded benefit "for claims 1 and 3 of the "927 patent." See page 6 of the opposition.
We agree with SKB and Synthon that SKB's earlier filed UK application constitutes a constructive reduction to practice of at least one embodiment within Count 1. Synthon's argument with respect to whether claims 1 and 3 of SKB's '927 patent are entitled to the benefit of the earlier filed application, is, however, poorly taken. Benefit with respect to priority in an interference is granted with respect to counts not claims. Daniels v. Daum, 214 U.S.P.Q. 911 (Bd. Pat. Int. 1982). All that is necessary for a party to be entitled to benefit of an earlier filed application for priority purposes is compliance with 35 U.S.C. § 112 with respect to at least one embodiment within the scope of the count. Hunt v. Treppschuh, 523 F.2d 1386, 1389, 187 U.S.P.Q. 426, 429 (CCPA 1975); Den Beste v. Martin, 252 F.2d 302, 116 U.S.P.Q. 584 (CCPA 1958); Mori v. Costain, 214 U.S.P.Q. 295, 297 (BPAI 1982); MPEP § 2309.02.
Benefit of earlier filed, prior applications under 35 U.S.C. § 119 and 35 U.S.C. § 120 for determining what is the effective date of an application under 35 U.S.C. § 102(e) is accorded with respect to what is claimed by an applicant. That is, under 35 U.S.C. §§ 119 and 120 the question to be resolved is: does an applicant's disclosure in the specification of the benefit application relied on satisfy the requirements of 35 U.S.C. § 112, first paragraph, with respect to the full scope of the subject matter now being claimed by applicant. With respect to 35 U.S.C. § 119, see In re Gostelli. 872 F.2d 1008, 1010, 1011, 10 U.S.P.Q.2d 1614 (Fed. Cir. 1989): Kawai v. Metlesics, 480 F.2d 880, 885, 178 U.S.P.Q. 158, 162 (CCPA 1973). With respect to 35 U.S.C. § 120, see In re Lukach. 442 F.2d 967, 969, 970, 169 U.S.P.Q. 795, 796 (CCPA 1971); In re Scheiber, 587 F.2d 59, 62, 199 U.S.P.Q. 782, 784 (CCPA 1978).
Accordingly, Synthon's arguments concerning whether SKB's benefit application adequately describes the full scope of SKB's claims 1 and 3 designated as corresponding to the count is simply irrelevant to the subject motion.
SKB seeks relief under 37 C.F.R. § 1.633(g) "for judgment denying benefit of the June 10, 1997, filing date" of Synthon's earlier filed benefit application which matured to U.S. Patent 5, 874, 447. SKB also seeks relief under the same rule requesting that "Synthon be denied benefit of the November 30, 1998, filing date of the '743 application involved in this interference with respect to...
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