Docket Nos. 2013-1565
PROST, BRYSON, MOORE
July 11, 2014
Brief Summary: DC decision regarding § 146 interferences vacated and remaned because US Supreme Court Hyatt decision “permits new evidence to be admitted without regard to whether the issue was raised before the Board.”
Summary: Mr. Troy appealed DC judgment that BPAI properly cancelled the claims of US 7,216,451 in an interference proceeding with Samson. The FC vacated and remanded the decision. The Board declared an interference between the ‘451 patent having a Feb. 11, 2005 priority date and Samson’s US Ser. No. 11/326,665 claiming priority to Jan. 18, 2005. Samson was therefore named the senior party. Mr. Troy alleged reduction to practive in early Feb. 2004 and conception at several earlier dates (as well as inurement and derivation). Samson alleged reduction to practive in late Feb. or early March 2004 and conception in early 2004. The Board concluded Mr. Troy did not prove actual reduction to practive in Feb. 2004 and rejected the inurement and derivation claims. All of the ‘451 claims were therefore cancelled. Mr. Troy presented new evidence to the DC of actual reduction to practice (an affidavit and deposition testimony) in July 2004 and contended he had shown in state court misappropriation of trade secrets by Samson. The DC affirmed the Board decision but refused to consider these new arguments because these had not been presented to the Board. The FC concluded that the US Supreme Court Hyatt (2012) decision “permits new evidence to be admitted without regard to whether the issue was raised before the Board.” It also concluded that this applies to actions under § 145 (ex parte proceedings; Hyatt decided on § 145) and § 146 (interferences) since the two “began in a single statutory section”. Thus, the DC decision was reversed and remanded with instructions to consider the new evidence.