Hillman v. Shyamala

THIS OPINION IS BINDING PRECEDENT OF THE TRIAL SECTION.
Trial Section Motions Panel
BOX INTERFERENCE
WASHINGTON DC 20231
Telephone: 703-308-9797
Facsimile: 703-305-0942
Paper No. 50
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
JENNIFER L. HILLMAN
(5,756,332 and 09/007,306),
Junior Party,
v.
VENKATAKRISHNA SHYAMALA
(08/886,572),
Senior Party.
_______________
Interference No. 104,436
_______________
Entered: 25 April 2000
_______________
Before McKELVEY, Senior Administrative Patent Judge	, SCHAFER,
LEE, and TORCZON, Administrative Patent Judges	.
TORCZON, Administrative Patent Judge	.
DECISION ON RECONSIDERATION
INTRODUCTION
Hillman requests reconsideration of a panel decision (Paper
No. 38) denying Hillman's preliminary motions 5-8. The decision
has been reconsidered, but relief from that decision is	denied.

Interference No. 104,436 Paper No. 50
Hillman v. Shyamala Page 2
FINDINGS OF FACT
1. Hillman's involved 5,756,332 patent issued from
Hillman's 08/774,169 application, which has a filing date of
26 December 1996.
2. The Hillman 332 patent was not accorded the benefit of
any other application when this interference was declared.
3. Hillman's involved 09/007,306 application has a filing
date of 15 January 1998.
4. The Hillman 306 application was accorded the benefit of
Hillman's 169 application, which has a filing date of 26 December
1996.
5. Jennifer L. Hillman is the sole named inventor on the
332 patent.
6. Jennifer L. Hillman is the sole named inventor on the
306 application.
7. Hillman moved to be accorded the benefit of patent
application 08/216,595 for the present count (Prel. Mot. 5 (Paper
No. 33)) and contingently for a proposed count (Prel. Mot. 7
(Paper No. 35)).
8. Hillman has moved for the benefit of patent application
08/499,410 for the present count (Prel. Mot. 6 (Paper No. 34))
and contingently for a proposed count (Prel. Mot. 8 (Paper
No. 36)).

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Hillman v. Shyamala Page 3
9. The 595 application names Jeffrey J. Seilhamer, Angelo
M. Delegeane, and Colleen Jernigan as inventors (595 Paper
No. 7).
10. The 595 application does not name Jennifer L. Hillman
as a co-inventor.
11. The 410 application names Jeffrey J. Seilhamer, Angelo
M. Delegeane, and Colleen Kelleher as inventors (595 Paper
No. 3).
12. The 410 application does not name Jennifer L. Hillman
as a co-inventor.
13. Hillman did not contend in its motions that Jennifer
Hillman is or should be named as an inventor of either the 595 or
the 410 applications.
14. In its request for reconsideration, Hillman does not
contend that Jennifer Hillman is or should be named as an
inventor of either the 595 or the 410 applications.
15. Hillman did not contend in its preliminary motions that
anyone else is or should be named as an inventor of either the
332 patent or the 306 application.
16. In its request for reconsideration, Hillman does not
contend that anyone else is or should be named as an inventor of
either the 332 patent or the 306 application.

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Hillman v. Shyamala Page 4
17. A motions panel of the Board denied Hillman's motions
for benefit, without waiting for an opposition, because Hillman
failed to set forth a prima facie case for relief (Paper No. 38
at 3).
DISCUSSION
Hillman argues that compliance with 37 CFR § 1.637(f) is all
that is required in a motion for benefit. This proposition is
simply wrong. As the format of Hillman's motions indicate,
counsel was aware of at least some of the requirements of 37 CFR
§ 1.637(a):
A party filing a motion has the burden of proof to show
that it is entitled to the relief sought in the motion.
Each motion shall include a statement of the precise
relief requested, a statement of the material facts in
support of the motion, in numbered paragraphs, and a
full statement of the reasons why the relief requested
should be granted. If a party files a motion for
judgment under Sec. 1.633(a) against an opponent based
on the ground of unpatentability over prior art, and
the dates of the cited prior art are such that the
prior art appears to be applicable to the party, it
will be presumed, without regard to the dates alleged
in the preliminary statement of the party, that the
cited prior art is applicable to the party unless there
is included with the motion an explanation, and
evidence if appropriate, as to why the prior art does
not apply to the party.
The salient points of the rule in this context are that the
movant has the burden of proof and that the motion must contain a
full statement of the reasons why the relief requested should be
granted. Moreover, the requirements of 37 CFR § 1.637 are

Interference No. 104,436 Paper No. 50
Hillman v. Shyamala Page 5
The interference rules were promulgated under the authority of	1
35 U.S.C. § 6 (1984). 37 CFR Part 1, subpart E. Former section 6 did not
provide substantive rulemaking authority. E.g., Merck & Co. v. Kessler, 80
F.3d 1543, 1549, 38 USPQ2d 1347, 1351 (Fed. Cir. 1996).
procedural, not substantive. It would be impossible to list all	1
of the substantive requirements for each kind of motion
specifically and exhaustively. Consequently, 37 CFR § 1.637
should be construed to set a minimum procedural requirement,
which includes among other things that the movant provide a full
statement of reasons on which it intends to rely in support of
its motion.
The previous decision held that:
Some overlap in inventorship is a requirement for
benefit under 35 U.S.C. § 120. In re Chu, 66 F.3d 292,
297, 36 USPQ2d 1089, 1093 (Fed. Cir. 1995). Although
the scope of disclosure requirements are different for
priority benefit, Hunt v. Treppschuh, 523 F.2d 1386,
1389, 187 USPQ 426, 429 (CCPA 1975) (a single enabled
embodiment within the scope of the count will suffice
to accord benefit), Hillman has not provided any reason
why the overlapping inventorshiprequirement does not
apply to priority benefit. More fundamentally, Hillman
has provided no nexus between its inventor, Jennifer L.
Hillman, and the disclosures in the 595 and 410
applications. Neither the Board nor Shyamala should
have to wait until Hillman's reply to discover what
that nexus may be.
(Paper No. 38 t 3-4, emphasis in original.) Hillman agrees that
not all § 120 requirements apply to claims to priority benefit,
but complains that the decision:
assumes, without statutory, rule or case citation, that
all requirements of 35 U.S.C. § 120 are imported into

Interference No. 104,436 Paper No. 50
Hillman v. Shyamala Page 6
E.g., Hyatt v. Boone, 146 F.3d 1348, 1352, 47 USPQ2d 1128, 1130 (Fed.	2
Cir. 1998) ("When a party to an interference seeks the benefit of an
earlier-filed United States patent application, the earlier application must
meet the requirements of 35 U.S.C. § 120 and 35 U.S.C. § 112 ¶ 1 for the
subject matter of the count.") (footnotes omitted).
Hillman correctly notes that the Board must provide a rationale for	3
its decision (Paper No. 41 at 9, citingIn re Gartside, 203 F.3d 1320,
53 USPQ2d 1769 (Fed. Cir. 2000)). Hillman has no less a duty to provide a
rationale for its preliminary motion.
37 C.F.R. §1.633(f) and 37 C.F.R. §1.637(f), including
the requirement of overlapping inventorship.
First, Hillman's argument attempts to shift the burden from the
movant to the Board and the opponent. As noted in the decision,
such a shift is not proper and will not be permitted. Second,
the case law makes clear that the requirements of § 120 generally
apply to claims for priority benefit. The Board has noted, and	2
Hillman agrees, that the scope of disclosure for a claim of
priority benefit is not the same as it is for claims of § 120
benefit. Nevertheless, the burden for showing any other
departure from the general applicability of § 120 requirements to
priority benefit determinations rests entirely on the movant.
Hillman has made no effort to meet this burden.	3
Finally, in the request for reconsideration, Hillman points
to its preliminary statement and the common assignment of the 332
patent and the 306, 595, and 410 applications as providing a
basis for granting the preliminary motions. It is sufficient to

Interference No. 104,436 Paper No. 50
Hillman v. Shyamala Page 7
Cf. Carbino v. West, 168 F.3d 32, 34 (Fed. Cir. 1999) (A late or	4
improper presentation of an argument—even on a question of law—need not, and
ordinarily should not, be considered).
Cf. Ernst Haas Studio, Inc. v. Palm Press, Inc.	, 164 F.3d 110, 112,	5
49 USPQ2d 1377, 1379 (2d Cir. 1999) (declining invitation to scour record to
make out a case for a party).
E.g., Kridl v. McCormick, 105 F.3d 1446, 1451, 41 USPQ2d 1686, 1688	6
(Fed. Cir. 1997) (Notebook prepared under supervision of inventor provides
evidence of conception).
E.g., Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co.	, 973 F.2d	7
911, 915-17, 23 USPQ2d 1921, 1924-26 (Fed. Cir. 1992) (no joint invention
where inventors at same firm worked separately).
note that none of these arguments were made in,or were readily	4
apparent from, the motions. Moreover, Hillman's arguments are	5
not consistent with its purpose. Hillman wants the benefit of
the 595 and 410 "applications which constitute the earliest
proofs of conception of an embodiment within the scope of the
Counts" (Paper No. 41 at 8). As evidence of conception, the 595
and 410 applications appear to be analogous to a colleague's
notebook rather than a benefit application. Even for evidence	6
of conception, the party relying on such evidence must establish
a nexus between the evidence and theinventor's conception.
Common ownership by itself does not establish any nexus.	7
ORDER
Upon reconsideration of the decision on motions (Paper
No. 38), it is—

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Hillman v. Shyamala Page 8
ORDERED that Hillman's request for relief from the decision
be denied.
FRED E. McKELVEY, Senior
Administrative Patent Judge
RICHARD E. SCHAFER
Administrative Patent Judge
JAMESON LEE
Administrative Patent Judge
RICHARD TORCZON
Administrative Patent Judge
BOARD OF
PATENT
APPEALS AND
INTERFERENCES

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Hillman v. Shyamala Page 9
Counsel for Hillman
(real party in interest, Incyte Pharmaceuticals):
Steve B. Kelber
Sharon E. Crane
LONG, ALDRIDGE & NORMAN, L.L.P.
701 PENNSYLVANIA AVE NW FL 6
WASHINGTON DC 20004
Fax: 202-624-1298
Counsel for Shyamala
(real party in interest, Chiron Corporation):
Debra A. Shetka
Thomas E. Ciotti
MORRISON & FOERSTER LLP
755 PAGE MILL RD
PALO ALTO CA 94304-1018
Fax: 650-494-0792