Rowells v. Vichinsky

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BoxInterferences@uspto.gov 	Paper 19
Telephone: 571-272-9797 	Filed March 6, 2007
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
ROBERT ROWELLS and GREGORY SAELE
Junior Party
(Application 10/745,435),
v.
KEVIN VICHINSKY
Senior Party
(Patent 6,742,489).
Patent Interference No. 105,518 (SCM)
Before: LEE, MEDLEY, and TIERNEY, Administrative Patent Judges.
MEDLEY, Administrative Patent Judge.
Decision – Order to Show Cause – Bd.R. 202(d)	1
2
A. Statement of the Case	3
This interference was declared on 10 January 2007. At that time, the Board	4
determined that Rowells’ Bd.R. 202(d) showing was insufficient to demonstrate	5
that it will prevail on priority. The basis of Rowells’ showing was that Vichinsky	6
derived the invention from Rowells. Although Rowells demonstrated a prior	7
conception, Rowells did not sufficiently demonstrate a corroborated	8
communication of the conception to Vichinsky. Rowells was ordered to show	9
cause why judgment should not be entered against it (Paper 3). On 20 February	10
2007, Rowells filed a response to the order to show cause (Paper 18).	11

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B. Issue	1
The issue before us is whether Rowells’ response to the order to show cause	2
sufficiently demonstrates that Vichinsky derived the invention from Rowells and	3
therefore judgment should not be entered against Rowells?	4
For the reasons that follow, Rowells’ response fails to sufficiently	5
demonstrate that judgment should not be entered against it.	6
C. Findings of fact 1
7
1. Rowells is involved on the basis of application 10/745,435, filed 23	8
December 2003.	9
2. Vichinsky is involved on the basis of patent 6,742,489, granted 1 June	10
2004, based on application 10/244,544, filed 17 September 2002.	11
3. Vichinsky has been accorded benefit for the purpose of priority of	12
application 60/323,072, filed 19 September 2001.	13
4. Rowells earliest constructive reduction to practice is over two years later	14
than Vichinsky’s earliest constructive reduction to practice.	15
5. Count 1, the sole count, is as follows:	16
Rowells application 10/745,435 claim 1	17
6. Rowells claim 1 is as follows:	18
A combined air intake manifold and fuel rail for an internal	19
combustion engine comprising a hollow portion defining an air	20
channel with an open face, and a mounting flange portion having a	21
recess in an underside thereof defining a fuel delivery channel, said	22
manifold adapted to be installed on an engine head with the open face	23
of the air intake channel positioned over a series of air intake ports	24
and the fuel delivery channel overlying an array of fuel inlet openings	25
1 The following findings of fact as well as those contained elsewhere in this
opinion are supported by a preponderance of the evidence.

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in the engine head.	1
2
Order to Show Cause	3
7. Rowells filed a showing under Bd.R. 202(d).	4
8. Rowells’ showing as to how it will prevail on priority is based on	5
derivation (Application 10/745,435, 11 May 2006 Response at Para. 4)	6
9. Rowells’ showing is sufficient to demonstrate that Rowells conceived of	7
the invention prior to Vichinsky’s 19 September 2001 constructive reduction to	8
practice (Paper 3 at 3).	9
10. Rowells’ failed to sufficiently demonstrate that Vichinsky derived the	10
invention from Rowells, as explained per the Order to Show Cause (Paper 3 at 4-5)	11
as follows:	12
Counsel for Rowells argued in the 5 January 2005 response and	13
again in the 11 May 2006 response that the basis for showing priority	14
of invention was that Vichinsky derived the invention from Rowells.	15
Apparently in support of the assertion, Saele testified that on a date	16
prior to 19 September 2001 he disclosed the conception of the	17
invention to certain employees and/or agents of Mann & Hummel,	18
Inc. and/or Mann & Hummel Automotive, Inc. (Saele Declaration,	19
¶¶14-15). 	The Vichinsky patent is assigned to “Filterwerk Mann &	20
Hummel GmbH” and not “Mann & Hummel, Inc.” or “Mann &	21
Hummel Automotive, Inc.” No explanation is provided as to why a	22
disclosure to “Mann & Hummel, Inc.” and/or “Mann & Hummel	23
Automotive, Inc.” agents and/or employees would in effect be a	24
communication of the conception to agents and/or employees of	25
“Filterwerk Mann & Hummel GmbH.” In any event, the	26
communication of the conception must be to the opponent. Based on	27
the record, Rowells has failed to sufficiently demonstrate that the	28
conception of the invention was communicated to Kevin Vichinsky as	29
required.	30
Derivation also requires corroboration. Rowells’ corroborating	31
witness Bergman does not corroborate a communication of the alleged	32
conception to Kevin Vichinsky. Nor do any of the exhibits A through	33

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E provide independent corroborating evidence of a communication of	1
a conception of the invention to Kevin Vichinsky. To the extent that	2
Rowells relies on argument of counsel that is insufficient. Argument	3
of counsel cannot take the place of record evidence. For these	4
reasons, Rowells has failed to sufficiently establish that Vichinsky	5
derived the invention.	6
7
11. Rowells was ordered to show cause why judgment should not be	8
entered against it.	9
12. Rowells was not authorized to file additional evidence in support of any	10
response that it might file, except under a showing of good cause. (Paper 3 at 5).	11
13. Vichinsky was not authorized to file an opposition to any response filed	12
by Rowells (Paper 3 at 6).	13
Rowell’s Response	14
14. Rowells, in its response, argues that (1) the communication of the	15
conception was to Kevin Vichinsky, (2) the communication of the conception to	16
Kevin Vichinsky is corroborated, and (3) Vichinsky has not denied or shown that	17
Kevin Vichinsky did not derive the invention from Rowells (Paper 18).	18
15. Rowells argues that the disclosure of the conception to Mann &	19
Hummel Automotive, Inc. employees or agents by Gregory Saele was corroborated	20
by David G. Bergman in his declaration at paragraphs 5-10 (Paper 18 at 2).	21
16. Paragraphs 4-10 of the Bergman declaration are as follows:	22
4. On a date prior to 19 September 2001, I attended a meeting at the	23
Melrose Park Engineering Offices.	24
5. Exhibit “A” of the Declaration of Gregory Saele is a photocopy	25
(more fully explained in Paragraphs 6-9 below) of three-pages of a	26
typed paper prepared on a date prior to 19 September 2001 as a	27
summary of that meeting.	28
6. I believe Exhibit “A” to be an accurate copy of the corresponding	29
pages of the paper as it was originally prepared, with the exception	30

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that a date, which is prior to 19 September 2001, has been deleted, and	1
I further believe that the content of Exhibit “A” accurately	2
summarizes presentations and discussions at the meeting.	3
7. Exhibit “A” describes possible design options for an I313 Intake	4
Manifold.	5
8. Two of those options are designated on the third page of Exhibit	6
“A” as “Open Channel w/leak path & 4 extra bolts” and “Open	7
Channel w/push-in-place gasket”.	8
9. The “Open Channel” corresponds to an “integral fuel delivery	9
groove” in a face of the manifold that fits against a face of an engine	10
cylinder head.	11
10. Sheet 1/3 of Exhibit “B” of the Declaration of Gregory Saele is a	12
reduced photocopy of an engineering drawing prepared prior to 19	13
September 2001 and showing a view of an intake manifold with open	14
fuel channel as presented in the meeting referred to in Exhibit “A” and	15
Sheet 2/3 of Exhibit “B” is an enlargement of a section of Sheet 1/3 of	16
Exhibit “B”.	17
18
17. Rowells argues that the file history of the Vichinsky patent states that	19
the postal address of Kevin Vichinsky is “c/o Mann & Hummel Automotive, Inc.,	20
6400 Sprinkle Road, Portage, Michigan” (Paper 18 at 2).	21
18. Rowells argues that the postal address is circumstantial evidence that	22
Kevin Vichinsky, on the filing date of the ‘489 patent, was an employee of Mann	23
& Hummel Automotive, Inc.	24
19. Rowells further argues that Vichinsky has not denied that Rowells’	25
conception was disclosed to Mann & Hummel Automotive, Inc. and has not denied	26
that Kevin Vichinsky was an employee of Mann & Hummel Automotive, Inc.	27
(Paper 18 at 2).	28
20. Rowells argues that it is reasonable to conclude that Kevin Vichinsky,	29
as an employee of Mann & Hummel Automotive, Inc. was informed of Rowells’	30
conception by the other employees and/or agents of Mann & Hummel Automotive,	31

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Inc. who were at a meeting that took place on or before September 19, 2001 (Paper	1
18 at 3).	2
21. Rowells argues that the drawings attached to the declaration of Gregory	3
Saele, one of the Rowells inventors is strong circumstantial evidence of derivation.	4
(Paper 18 at 3).	5
22. Rowells argues that the drawings of the ‘489 patent are the same or	6
substantially the same as Rowells’ Exhibits B and D, attached to the Saele	7
Declaration.	8
23. Rowells concludes that based on the record there is strong	9
circumstantial evidence that Kevin Vichinsky derived the invention from Rowells	10
(Paper 18 at 7). 	D. Principles of Law	11
When a question arises as to whether the junior party will prevail on the	12
issue of priority, the junior party may be ordered to show cause why judgment	13
should not be entered against it. Bd.R. 202(d). As stated in Kistler v. Weber, 412	14
F.2d 280, 285, 162 USPQ 214, 218-219 (CCPA 1969):	15
[t]he expense involved in a protracted interference, and the special	16
hardships workable on a patentee involved therein, are notorious, and	17
to minimize both, where possible, would appear to be the laudable	18
purpose of these rules.	19
Rowells as part of its 202(d) showing, successfully demonstrated a	20
conception prior to Vichinsky’s 19 September 2001 accorded benefit date.	21
However, Rowells failed to sufficiently demonstrate a prior actual reduction to	22
practice, diligence, or derivation of the invention (Paper 3). Rowells apparently	23
does not challenge the Board’s determination that Rowells failed to sufficiently	24
demonstrate a prior actual reduction to practice or diligence. Rather, in Rowells’	25

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response to the order to show cause, Rowells argues that its initial showing	1
sufficiently demonstrates derivation of the invention by Kevin Vichinsky.	2
To prove derivation, a party must establish conception of the claimed subject	3
matter and communication of the conception to the opponent. Price v. Symsek, 988	4
F.2d 1187, 1190, 26 USPQ2d 1031, 1033 (Fed. Cir. 1993). As with conception,	5
corroboration is required to support testimony of the communication. Id. at 1196,	6
26 USPQ2d at 1038. See also Davis v. Reddy, 620 F.2d 885, 889, 205 USPQ	7
1065, 1068 (CCPA 1980).	8
Rowells must show that it will prevail on priority by a preponderance of the	9
evidence. Bd.R. 207(a)(2). The burden of showing something by a preponderance	10
of the evidence requires the trier of fact to believe that the existence of a fact is	11
more probable than its nonexistence before the trier of fact may find in favor of the	12
party who carries the burden. Concrete Pipe & Products of California, Inc. v.	13
Construction Laborers Pension Trust for Southern California, 508 U.S. 602, 622,	14
113 S.Ct. 2264, 2279 (1993).	15
E. Analysis	16
In the order to show cause, the Board determined that Rowells did not	17
sufficiently establish a corroborated communication of the conception of the	18
invention. Rowells relied on inventor testimony alone to establish that the	19
conception was disclosed to agents and/or employees of “Mann & Hummel, Inc.”	20
and/or “Mann & Hummel Automotive, Inc.” As stated in the order to show cause,	21
Rowells failed to explain how a disclosure to agents and/or employees of “Mann &	22
Hummel, Inc.” and/or “Mann & Hummel Automotive, Inc.” would in effect be a	23
communication of the conception to agents and/or employees of “Filterwerk Mann	24

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& Hummel GmbH,” the assignee of the Vichinsky application at the time it was	1
filed (ff 10).2
2
In response, Rowells argues that communication of the conception to Mann	3
& Hummel Automotive, Inc. was corroborated by Bergman, directing our attention	4
to paragraphs 5-10 of Bergman’s declaration, and that Kevin Vichinsky worked for	5
Mann & Hummel, Automotive, Inc. at the time the Vichinsky application was filed	6
(ffs 15-18). Although Rowells fails to explain how a disclosure to agents and/or	7
employees of “Mann & Hummel, Inc.” and/or “Mann & Hummel Automotive,	8
Inc.” would in effect be a communication of the conception to agents and/or	9
employees of “Filterwerk Mann & Hummel GmbH,” for purposes of this decision,	10
we assume without deciding that “Mann & Hummel Automotive, Inc.” was the	11
company that Kevin Vichinsky worked for at the time of the invention.	12
Nowhere in paragraphs 5-10 of his declaration is it apparent that Bergman	13
corroborates a communication of the conception to Mann & Hummel Automotive,	14
Inc. employees or agents as alleged. Those parts of Bergman’s declaration refer to	15
a meeting that was held prior to 19 September 2001 and a discussion of the	16
meeting minutes – a three page document labeled Exhibit A (ff 16). There is no	17
discussion by Bergman that, for example, employees or agents of Mann &	18
Hummel Automotive, Inc. attended the referred to meeting and that the conception	19
was conveyed to such employees or agents. Note, that even the declaration of	20
inventor Gregory Saele in the Rowells application does not support an argument	21
that any Mann & Hummel Automotive, Inc. employees or agents attended the	22
meeting. Rowells does not explain how Bergman’s paragraphs 5-10 corroborate a	23
2 ff denotes finding of fact.

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communication of the conception to Mann & Hummel Automotive, Inc. employees	1
or agents.	2
Rowells’ argument that Bergman’s testimony corroborates communication	3
of the conception to Mann & Hummel Automotive, Inc. employees or agents is not	4
supported by paragraphs 5-10 of Bergman’s declaration. To the extent that	5
Rowells relies on attorney argument to support the assertion, attorney argument	6
cannot replace record evidence. A communication of the conception has not taken	7
place merely because counsel argues that it did. Even if supporting evidence exists	8
somewhere in the record, it is counsel’s role to identify such evidence. It would be	9
misplaced to expect the Board to search through the entire record in pursuit of	10
something that might support counsel’s assertions.	11
In any event, communication to employees or agents of Mann & Hummel	12
Automotive, Inc., even if established, does not automatically demonstrate passing	13
of that information from the agents or employees in receipt of the information to	14
the named inventor of the Vichinsky patent – Kevin Vichinsky. For instance,	15
Rowells has not shown that a Mann & Hummel Automotive, Inc. employee or	16
agent even worked on the same project or reported to the same supervisor as Kevin	17
Vichinsky. It is not enough that Kevin Vichinsky worked for a company as	18
another employee or agent of the same company. At the very least, Rowells should	19
have established a connection between an employee or agent of Mann & Hummel	20
Automotive, Inc. and Kevin Vichinsky.	21
Rowells also argues that the similarities between the Vichinsky patent	22
drawings and the drawings attached to the inventor Saele’s declaration provide	23
strong corroborating evidence that the conception was communicated to Kevin	24
Vichinsky (Paper 18 at 3-6). Rowells acknowledges that the Vichinsky patent	25

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drawings and the drawings attached to Saele’s declaration are not the same (e.g.,	1
“Figure 1 of the ‘489 patent is a substantial duplicate of … Exhibit D,” “the air	2
intake manifold disclosed in the ‘489 patent and shown in Figures 2 and 4 of the	3
‘489 patent, is substantially the same as the intake manifold shown in … Exhibits	4
B-1 and B-2.”). A comparison of the drawings of the ‘489 patent with the Exhibits	5
B and D attached to Saele’s declaration reveal that while there are some	6
similarities, there are also some differences.	7
Even if some of the drawings of the Vichinsky patent are similar to some of	8
the drawings attached to Saele’s declaration, that alone does not demonstrate that	9
Vichinsky derived the invention from Rowells. Although Rowells sufficiently	10
demonstrated that it conceived the invention prior to the accorded benefit date of	11
Vichinsky, that does not mean that Rowells is the first to conceive the invention.	12
Vichinsky could properly demonstrate conception prior to Rowell’s conception. In	13
other words, Rowells has not sufficiently demonstrated that it is more likely than	14
not, e.g., by a preponderance of the evidence, that Vichinsky derived the invention	15
from Rowells. The drawings, even if similar, do not demonstrate, by a	16
preponderance of the evidence, that a corroborated communication of the	17
conception was conveyed to Kevin Vichinsky.	18
Rowells argues that the absence of any disclaimer by Kevin Vichinsky that	19
he did not receive the conception from the employees and/or agents of Mann &	20
Hummel Automotive, Inc. raises a strong presumption that Rowells’ invention was	21
communicated to Kevin Vichinsky. No such presumption exists. Vichinsky was	22
specifically ordered not to file any papers in response to the order to show cause	23
(Paper 3 at 6). Indeed, Vichinsky need not respond. The burden of going forward	24
in this interference lies on Rowells alone. Bd.R. 202(d).	25

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Lastly, we address Rowells argument that it is “reasonable to conclude” that	1
Kevin Vichinsky was informed of the Rowells conception (Paper 18 at 3). As	2
discussed above, Rowells must demonstrate by a preponderance of the evidence	3
that Kevin Vichinsky derived the invention from Rowells. A preponderance of the	4
evidence is not based on mere possibilities.	5
Based on the record, Rowells has not demonstrated by a preponderance of	6
the evidence, e.g. that it is more probable than not, that Kevin Vichinsky derived	7
the invention from Rowells. Judgment is entered against Rowells in a separate,	8
concurring paper.	9
10
/Jameson Lee/ 	)	11
JAMESON LEE 	)	12
Administrative Patent Judge 	)	13
)	14
)	15
/Sally C. Medley/ 	)BOARD OF PATENT	16
SALLY C. MEDLEY 	) APPEALS AND	17
Administrative Patent Judge 	) INTERFERENCES	18
)	19
)	20
/Michael P. Tierney/ 	)	21
MICHAEL P. TIERNEY 	)	22
Administrative Patent Judge 	)	23
24
cc (via e-mail):	25
26
jfflan@fitcheven.com	27
sgparm@fitcheven.com	28
jdevans@crowell.com	29
mjacobs@crowell.com	30
31