Hahn v. Wong, 89-1364

• Decision Date: 28 December 1989
• Docket Number: No. 89-1364,89-1364
• Parties: HAHN, et al., Appellants, v. WONG, Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1028

892 F.2d 1028

13 U.S.P.Q.2d 1313

HAHN, et al., Appellants, v. WONG, Appellee.

No. 89-1364.

United States Court of Appeals Federal Circuit.

Dec. 28, 1989.

Philip D. Sheperd of Dow Chemical Co., Midland, Mich., argued for appellants. With him on the brief was Bernd W. Sandt.

M.P. Haddican of Shell Oil Co., Houston, Tex., argued for appellee. With her on the brief was Douglas Baldwin.

Before BALDWIN and FRIEDMAN, ^* Senior Circuit Judges, and MAYER, Circuit Judge.

FRIEDMAN, Senior Circuit Judge.

This is an appeal from the decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences (Board) that entered summary judgment in an interference because in his initial filing, the party who initiated the interference had not made a prima facie showing of reduction to practice. The Board also refused to consider the additional evidence the party subsequently submitted to bolster his claim because he had not shown good cause why he had not submitted the additional evidence with his original application. We affirm both rulings of the Board.

I

A. A brief description of the procedures and practices of the Patent and Trademark Office in conducting interference proceedings Both the patent statute and the regulations of the Patent and Trademark Office authorize an interference between an application for a patent and an issued patent. 35 U.S.C. § 135(a) (Supp. V 1987) and 37 C.F.R. § 1.606 (1988). If the effective filing date of the application is more than three months after the effective filing date of the patent, as in this case, the applicant is required to file evidence demonstrating that the "applicant is prima facie entitled to a judgment relative to the patentee," and "an explanation stating with particularity" why he "is prima facie entitled to the judgment." 37 C.F.R. § 1.608(b)(1988).

under its new rules, 37 C.F.R. §§ 1.601-1.690 (1988), adopted in 1984, is necessary to understand the issues here.

When an application for an interference is filed, a primary examiner makes a preliminary determination "whether a basis upon which the applicant would be entitled to a judgment relative to the patentee is alleged and, if a basis is alleged, an interference may be declared." 37 C.F.R. § 1.608(b). Cf. Manual of Patent Examining Procedure [hereinafter M.P.E.P.], § 2308.02, last paragraph (5th ed., 8th rev. May 1988) (primary examiner is "merely [to] determine that at least one date prior to the effective filing date of the patent is alleged."). As the Commissioner of Patents and Trademarks explained in his brief amicus curiae in this case, the "one and only one, purpose" of the primary examiner's examination of the application is "to determine whether the applicant alleges a date of invention prior to the effective date of the patent" (emphasis in original). See also M.P.E.P. § 2308.02, last paragraph.

If the primary examiner makes a preliminary determination that the application meets that requirement, the application is referred to an examiner-in-chief to determine whether an interference should go forward. See 37 C.F.R. §§ 1.609 & 1.610(a) (1988). If the examiner-in-chief determines that a prima facie case for priority has been established, the interference proceeds. 37 C.F.R. § 1.617(a) (1988). If however, the examiner-in-chief concludes that a prima facie case has not been shown, as he concluded here, the examiner-in-chief declares an interference but "enter[s] an order stating the reasons for the opinion and directing the applicant, within a time set in the order, to show cause why summary judgment should not be entered against the applicant." Id. If such an order to show cause issues, the applicant "may file a response to the order and state any reasons why summary judgment should not be entered." 37 C.F.R. § 1.617(b). The rule states, however,

Additional evidence shall not be presented by the applicant or considered by the Board unless the applicant shows good cause why any additional evidence was not initially presented with the evidence filed under § 1.608(b).

Id.

A panel of the Board then determines whether (1) summary judgment should be entered against the applicant or (2) the interference should proceed. 37 C.F.R. § 1.617(g).

B. The interference count in this case covers a specific organic chemical compound, which is a solid crosslinkable homopolymer of an olefinic benzocyclobutene monomer. The compound was claimed in U.S. Patent No. 4,667,004 issued to the appellee Wong, the application for which was filed on December 23, 1985. The appellants Hahn, et al. (Hahn), filed their patent application covering the same compound on June 9, 1986. After the Hahn application was rejected on the basis of the '004 Wong patent and other patents issued to Wong, Hahn instituted this interference.

In order to show a prima facie case of priority of invention, Hahn submitted three affidavits. Co-inventor Stephen F. Hahn stated in his affidavit that prior to December 23, 1985, he prepared and crosslinked certain homopolymers which the count covers and recorded the results on enumerated pages in his laboratory notebooks, which were attached to the affidavit as five exhibits. Attached to those laboratory notebook pages were reduced photocopies of plots or graphs resulting from the analyses of the compounds he prepared, done by five different Hahn also submitted two "corroborating" affidavits by two of Stephen Hahn's colleagues at the Dow Chemical Company, where Stephen Hahn worked. David W. Hughes stated that he had "read" and "understood" those laboratory notebook pages, which he described as true photocopies of the original documents he had read, "except that the dates which appeared on the bottom of the original page have been removed," and that he had signed two of the pages. Attached to Mr. Hughes' affidavit were four of the five exhibits attached to Stephen Hahn's affidavit and photocopies of the two pages of the laboratory notebooks he had signed and dated, from which the dates had been removed on the copies supplied to Wong.

                analytical techniques, including infrared spectroscopy.   In the appendix filed with this court, some of the reduced photocopies of graphs have been dated by a machine, while others have been dated by hand, and still others remain undated.   Stephen Hahn's affidavit did not explain the significance of these plots
                

William J. Harris made similar statements with respect to one of the five exhibits.

Neither of these affidavits stated that the experiments described by Stephen Hahn were actually performed at all or on any particular date, explained the meaning of the analyses graphs, or stated that they were what they purported to be.

The examiner-in-chief held that this showing was "insufficient to establish the necessary prima facie case for priority" of invention due to lack of adequate corroboration. He stated:

The corroboration is not adequate as the corroborators merely establish the existence of the particular pages of the notebook. However, the mere existence of the notebook is not enough. Lacking, is "evidence of surrounding facts and circumstances independent of information received from the inventor." The corroborators do not explain the circumstances by which they could ascertain that the work described in the notebook was actually performed by the inventor prior to Wong's effective filing date.

(Citation omitted.) See also Hahn v. Wong, Interference No. 101,987, slip op. at 5 (BPAI Jan. 17, 1989). Pursuant to 37 C.F.R. § 1.617(a), the examiner-in-chief declared an interference and issued to Hahn an order to show cause why summary judgment should not be entered against them.

In their response, Hahn contended that their original submission made a prima facie case of priority of invention. They also submitted additional evidence of priority. To show "good cause" for their failure to submit this additional evidence with their initial filing, Hahn stated:

The additional evidence accompanying this response was not initially presented with the evidence filed under 37 CFR § 1.608(b) because counsel for the Party Hahn did not fully appreciate the kind of corroboration required to demonstrate a prima facie case for a complete reduction to practice before the filing date of the Party Wong. Most notably, counsel did not fully appreciate the requirement for corroboration independent of information from the inventor.

Additionally, although counsel exercised full care and effort, counsel for the Party Hahn did not fully appreciate the significance of the reduced photocopies of plots generated from the polymer analyses shown in Exhibit A, particularly the IR spectrum, as they bear on the issue of the kind of corroboration required in this proceeding to establish a prima facie case.

"Because of the significance of the issues raised," an expanded panel of seven Board members decided the case. Hahn v. Wong, slip op. at 1. The Board, with two members dissenting, held: "(1) that the original showing is inadequate to allow Hahn to proceed because of lack of adequate corroboration; (2) that the additional evidence presented with the reply is not to be considered by us because Hahn has not shown the necessary 'good cause why any additional evidence was not initially presented with the evidence filed under With respect to the inadequacies of Hahn's original showing, the Board agreed with the examiner-in-chief's statement quoted above. Id. at 5. The Board pointed out that "the original affidavits of Hughes and Harris do not establish that the corroborators' 'activity'--i.e., reading and understanding the notebook pages--occurred prior to Wong's effective filing date, December 23, 1985." Id. at 6. The Board also "fail[ed] to see where it is reasonable to conclude from the original affidavits that any independent knowledge can be imputed to the alleged corroborators. Indeed, as we have noted, Hahn does not so allege in his response." Id. at 8 (...