Guthrie v. Espiau

BoxInterferences@uspto.gov 	Paper 94
Telephone: 571-272-9797 	Filed: April 18, 2007
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
CHARLES GUTHRIE, EDMUND SANDBERG,
DONALD WILSON, GREGORY PRIOR, and DAVID SMOLER
Junior Party
(Application 09/818,092),
v.
FREDERICK M. ESPIAU, CHANDRASHEKHAR J. JOSHI,
and YIAN CHANG
Senior Party
(Patent 6,737,809).
_______________
Patent Interference No. 105,393 (SCM)
(Technology Center 2800)
_________________
Before: LEE, LANE, and MEDLEY, Administrative Patent Judges.
MEDLEY, Administrative Patent Judge.
Decision - Rehearing –Bd.R. 127(d)	1
2
A. Introduction	3
On 22 March 2007, Espiau filed “ESPIAU MISCELLANEOUS MOTION 6	4
(Request for Rehearing of Espiau’s Request for Leave to Prove Derivation by	5
Guthrie)” (Paper 90). Espiau seeks rehearing of the “Decision – Interlocutory	6
Motions – Bd.R. 125(b),” (“Decision”), specifically requesting that a panel rehear	7
the Board’s decision denying Espiau’s request to amend its priority statement and	8

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to include derivation with its priority motion. On 3 April 2007, Guthrie filed an	1
opposition (Paper 92).	2
For the reasons that follow, Espiau’s request for rehearing is granted-in-part.	3
B. Discussion	4
A request for rehearing must specifically identify all matters the party	5
believes to have been overlooked, and the place where the matter was previously	6
addressed. Bd.R. 127(d).	7
Espiau argues that Bd.R. 204(a) is limited to priority, that priority and	8
derivation are separate, and that since derivation is a ‘distinct concept,’ Bd.R.	9
204(a) does not prohibit the submission of evidence of derivation without prior	10
notice in a priority statement (Paper 90 at 5-8).	11
In essence, Espiau is in disagreement with the Board’s interpretation of the	12
Board’s Rule 204(a). In the Decision, the Board explained that per Bd.R. 204(a),	13
“a party seeking to raise derivation must include, in its priority statement, a	14
statement that the party intends to establish derivation …” (Paper 86 at 6-7).	15
Bd.R. 204(a)(1) states:	16
A party may not submit evidence of its priority in addition to its	17
accorded benefit unless it files a statement setting forth all bases on	18
which the party intends to establish its entitlement to judgment on	19
priority. (Emphasis added).	20
21
We reaffirm that “[d]erivation is included in the ‘all bases’ provision of priority”	22
(Paper 86 at 6). As also explained in the Decision, the Board’s interpretation is	23
buttressed by the comment to Bd.R. 204(a), which explains that Bd.R. 204(a) “still	24
requires the party to state the bases on which it believes that it is entitled to relief”	25
and that “[s]uch bases might include an intent to prove derivation … .” Federal	26

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Register/Vol. 69, No. 155/Thursday, August 12, 2004/Rules and Regulations,	1
49993.	2
Espiau’s argument that the comments provide contradictory guidance to the	3
requirements of Bd.R. 204 is not persuasive. The comment quoted above directly	4
and clearly states that Bd.R. 204(a) still requires the party to state the bases on	5
which it is entitled to relief and that such bases might include an intent to prove	6
derivation. Nothing identified by Espiau can stand against the weight of that direct	7
instruction. Moreover, while derivation from a third party not involved in the	8
interference may be properly regarded as a patentability issue, and not a priority	9
issue between the two parties in an interference, derivation from the opposing party	10
in an interference is as much a priority issue as any priority issue can be, i.e.,	11
between the two parties who was first? For these reasons, we perceive no	12
ambiguity in the rule, and we will not change that portion of the Decision	13
explaining the requirements of Bd.R. 204(a).	14
Espiau also argues that in its Motion 2, filed on the same day as its priority	15
statement, Espiau provided notice to Guthrie of its intent to prove derivation (Paper	16
90 at 3). Espiau Motion 2, page 2, lines 2-3 states that “[o]n 20 April 2000, two of	17
the Espiau inventors described their invention to three of the individuals named as	18
inventors on the Guthrie ‘092 application” (Paper 34). It is apparent that Guthrie	19
was aware of that statement, since Guthrie responded directly to the quote on page	20
1, lines 9-10 of its Opposition 2 (Paper 50). The statement made in Espiau Motion	21
2, if made in a priority statement and if made along with an alleged date and	22
location of Espiau’s earliest corroborated conception, would be sufficient notice of	23
intent to prove derivation.	24

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We have considered Guthrie’s opposition (Paper 92). Guthrie does not	1
dispute that it was made aware of the date alleged in Espiau Motion 2 regarding	2
derivation. Guthrie has failed to articulate any specific and meaningful prejudice if	3
Espiau is authorized to pursue derivation during the priority phase. Guthrie’s	4
arguments go to the merits of Espiau’s derivation case (Paper 92 at 6-10). The	5
parties’ priority motions (including derivation) are not due yet. Thus, Guthrie’s	6
arguments regarding the merits of Espiau’s derivation case are premature, since	7
Espiau’s derivation case has not been made by way of arguments and supporting	8
evidence. Guthrie will have full opportunity to oppose Espiau’s case for derivation	9
if one is made.	10
The “Decision – Interlocutory Motions – Bd.R. 125(b)” (Paper 86) has been	11
reconsidered. Espiau’s request to prove derivation during the priority phase of the	12
interference is granted. The request for rehearing is otherwise denied as explained	13
above.	14
Ordinarily, Espiau may need to amend its priority statement. In this case,	15
Espiau’s priority statement already includes its date of its alleged conception. The	16
sole purpose of amending its priority statement would be for Espiau to include its	17
alleged date of the communication of the invention to Guthrie. However, that date	18
was provided in Espiau Motion 2 as 20 April 2000. Under the circumstances of	19
this case, the statement made in Espiau Motion 2 will be given the same effect as if	20
it were made in Espiau’s priority statement, and therefore, Espiau is bound by that	21
date and cannot prove an earlier date of a corroborated communication of the	22
invention. Therefore, in this particular case, Espiau will not be required to amend	23
its priority statement.	24
25

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Accordingly, it is	1
ORDERED that Espiau’s miscellaneous motion 6 is granted-in-part as	2
provided in this decision;	3
FURTHER ORDERED that Espiau’s 20 April 2000 alleged date of	4
communication of the invention to Guthrie made in Espiau Motion 2 will be given	5
the same effect as if it were made in Espiau’s priority statement; and	6
FURTHER ORDERED that Espiau is authorized to include in its motion	7
for priority, its case for derivation.	8
/Jameson Lee/ 	)
JAMESON LEE 	)
Administrative Patent Judge 	)
)
/Sally G. Lane/ 	)BOARD OF PATENT
SALLY G. LANE 	) APPEALS AND
Administrative Patent Judge 	) INTERFERENCES
)
/Sally C. Medley/ 	)
SALLY C. MEDLEY 	)
Administrative Patent Judge 	)
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