In Re Garner (CAFC 2007-1221)

Harold Garner's 09/998,341 lithography technology was anticipated by 6,480,324 (Quate). So, to overcome the nominal prior art, Garner tried to pull a hat trick of gaining priority by provoking an interference.

During the prosecution of the Garner application, the examiner rejected the claims of the Garner application as anticipated by the Quate patent. To provoke an interference with the Quate patent, Garner amended his application to copy the claims of the Quate patent. Garner, as the junior party, had the burden of establishing prior invention. 37 C.F.R. § 41.202(d).

Garner attempted to establish priority by showing a reduction to practice before Quate's filing date. To that end, Garner issued a declaration in 2001, with photos, along with a declaration of an observer, John Fondon.

In response to a letter sent by the examiner that his 2001 declaration was “insufficient” to provoke an interference under 37 C.F.R. § 41.202(d) (Rule 202(d)), without any substantive changes, Garner retitled his 2001 Rule 131 declaration to be a “Rule 202(d) declaration” re-executed and filed it (2005 Garner declaration). Garner resubmitted the Fondon declaration without change. The Examiner forwarded Garner’s request to provoke an interference to the Board.

The Board thought Garner came up short, and told him to play his cards.

The Board found Garner’s filing insufficient to establish a prima facie showing of priority.3 Per Rule 202(d), the Board declared an interference and issued an Order to Show Cause why judgment should not be entered against him. In response to the Board’s Order to Show Cause, Garner relied on three items that he did not submit in his original Rule 202(d) filing to show priority: (i) a 37 C.F.R. § 1.131 declaration filed on September 2, 2003 in an attempt to overcome a prior art rejection (2003 Garner declaration); (ii) the specification of his provisional application; and (iii) the specification of his utility application.

Never one to get confused by the facts, the Board balked at looking at what it already had, ruling Garner's applications impermissible "new evidence."

The Board found that these three items were “new evidence” that is not permitted under Rule 202(d) without a showing of good cause and that Garner had not attempted to show good cause for his belated reliance. Therefore, the Board issued judgment against Garner.

Garner appealed the Board’s ruling on sufficiency and the Board’s definition of “new evidence.”

An agency gets to play by its own rules, and is subject to court reprimand only when it missed the boat that it built.

We have repeatedly held that “[a]n agency’s interpretation of its own regulations is entitled to substantial deference and will be accepted unless it is plainly erroneous or inconsistent with the regulation.” Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1282 (Fed. Cir. 2005); see also In re Sullivan, 362 F.3d 1324, 1326 (Fed. Cir. 2004) (“We accept the Board’s interpretation of Patent and Trademark Office regulations unless that interpretation is ‘plainly erroneous or inconsistent with the regulation.’”); Eli Lilly Co. v. Bd. of Regents of the Univ. of Wash., 334 F.3d 1264, 1266 (Fed. Cir. 2003) (“An agency’s interpretation of its own regulations is entitled to substantial deference, and that interpretation will be accepted unless it is plainly erroneous or inconsistent with the regulation.”).

Even granted deference, the USPTO is so craven as to rudely ignore its own rules.

Is old hat new evidence? No.

Garner contends that Rule 202 should be interpreted as prohibiting the late filing of newly created evidence only, not evidence that “already existed” and could be found in his application file. In contrast, the PTO contends that the Board’s interpretation of “new evidence,” namely that the 2003 Garner declaration and the provisional and utility patent specifications are new evidence, is not plainly erroneous or inconsistent with the regulation.

We conclude that the Board’s interpretation of “new evidence” is inconsistent with the regulation, as the Board interpreted Rule 202 in a way that requires it to consider the specification under (a), but not under (d), unless the applicant resubmits the specification. Since the specifications were already before the Board in the interference proceeding pursuant to Rule 202(a), they cannot be new evidence under Rule 202(d). Therefore we conclude the Board erred when it found that the specifications constitute “new evidence” under Rule 202(d).

A pyrrhic victory, as Garner still didn't establish a prima facie showing of priority, lacking independent corroborating evidence.

Even with the patent specifications in evidence, Garner failed to establish a prima facie showing of priority. “In order to establish an actual reduction to practice, the inventor must prove that: (1) he constructed an embodiment or performed a process that met all the limitations of the interference count; and (2) he determined that the invention would work for its intended purpose.” Taskett v. Dentlinger, 344 F.3d 1337, 1340 (Fed. Cir. 2003) (quoting Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998)).

In addition, an inventor’s testimony as to the facts of invention must be corroborated by independent evidence. Cooper, 154 F.3d at 1330. “Independent corroboration may consist of testimony of a witness, other than the inventor, to the actual reduction to practice or it may consist of evidence of surrounding facts and circumstances independent of information received from the inventor.” Reese v. Hurst, 661 F.2d 1222, 1225 (CCPA 1981). Sufficiency of corroboration is determined by using a “rule of reason” analysis, under which all pertinent evidence is examined when determining the credibility of an inventor’s testimony. See Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993).

While “the law does not impose an impossible standard of ‘independence’ on corroborative evidence by requiring that every point of a reduction to practice be corroborated by evidence having a source totally independent of the inventor . . . [,]” Cooper, 154 F.3d at 1330 (internal citations omitted), corroboration of the existence of the device is not sufficient in this case to establish corroboration of reduction to practice. It is also necessary to corroborate that the device worked for its intended purpose.

The ace card was supposedly Fondon, but that card was just part of a dead man's hand.

The Fondon declaration states that Fondon saw the device shown in the photographs in Garner’s laboratory in November 1997. Fondon does not testify that the device operated or worked for its intended purpose. In fact, Fondon does not indicate that he ever saw the device operate. At most the Fondon declaration corroborates the existence of a device purportedly shown in the photographs.