In re Garner, Slip Op. 2007-1221 (Fed. Cir., Dec. 5, 2007)
Garner submitted shoddy evidence to prove an earlier invention date and the Examiner refused to declare an interference. At the BPAI, Garner added a few additional documents to his Rule 202 priority filing.
37 C.F.R. § 41.202(d)(2) allows a BPAI judge to declare an interference accompanied with an order to prove why the junior party should “prevail on priority.” Under the rule, “[n]ew evidence in support of priority will not be admitted except on a showing of good cause.” Here, the BPAI excluded the additional documents as “new evidence” that should have been submitted earlier.
On appeal, the CAFC granted deference to the PTO interpretation of its rules, but still found the PTO’s interpretation erroneous.
PTO Deference: Under Star Fruits and other cases, the CAFC has repeatedly held that the PTO is granted deference in interpreting its own regulations. In Lilly v. UW, the court went on to hold that the PTO’s interpretation of its rules “will be accepted unless it is plainly erroneous or inconsistent with the regulation.”
New Evidence: The “new evidence” submitted by Garner was actually evidence already in the patent file history. Namely, he submitted the provisional application; the specification of the non-provisional; and a previously filed 131 declaration for the appealed case. The BPAI considered those filings new evidence because they were not part of the original Rule 202 filing.
On appeal, the CAFC took issue with that evidentiary ruling — instead holding that under Rule 202(a)(5), the specifications are automatically part of the evidence to be considered. The CAFC did allow the 131 declaration to be excluded.
Despite winning the evidentiary ruling, Garner was unable to provide sufficient corroborating evidence of prior invention. He had dated photographs, but no evidence proving that his photographed machine actually worked:
“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 . . . [,]’ 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.” Quoting Cooper v. Goldfarb, 154 F.3d 1321 (Fed. Cir. 1998).
Thus, the CAFC affirmed the BPAI’s Judgment that Garner failed to “make a prima facie showing of priority.”
