Federal Circuit: Board can't use its own expertise as evidentiary substitute in interferences
May 15, 2007
The Federal Circuit today held that during inter partes proceedings, the Board of Patent Appeals and Interferences (the Board) cannot, under the Administrative Procedure Act (APA), rely on its own expertise when making factual findings if there is no evidence of record supporting its conclusion. The court did not opine whether this limitation extended to ex parte proceedings.

The Board found that the senior party had derived the invention from a disclosure of the junior party based on two drawings allegedly given to the senior party by the junior party. However, there was no evidence in the record that one of ordinary skill in the art could, based on the drawings, construct and successfully operate the invention, one of the requirements of a finding of derivation. The Board instead, without the testimony of anyone skilled in the art or citation to record evidence, made the finding that the disclosure of the drawings was sufficient for one of ordinary skill in the art to construct the invention. The Federal Circuit held this was inadequate based on the requirements of the APA, and as a result, reversed and remanded with instructions to enter judgment for the senior party.

More details of Brand v. Miller after the jump.

The invention at issue relates to methods of cutting veneer from logs of wood, and permits more efficient use of logs by making the machines more tolerant of logs of varying cross-sectional profile. The two parties claimed the same invention, but disclosed two different ways of achieving the invention's benefits in their respective disclosures. The interference count reads:

A method for cutting veneer sheets from a tapered flitch, comprising the steps of providing a staylog for a veneer slicing machine having a veneer slicing knife; attaching a flitch having a tapered veneer producing face to the staylog with the tapered veneer producing face affixed in a stable, parallel relationship with the veneer slicing knife; and cutting veneer sheets with the veneer slicing knife from the tapered veneer producing face of the flitch.

The Board found that, based on the disclosure of two drawings allegedly illustrating the invention from the junior party (Miller) to the senior party (Brand), Brand had derived the invention from Miller's disclosure. In order to prove derivation, a party must prove both that (1) the party conceived the invention first, and (2) there was some communication of that conception to the patentee sufficient to enable the patentee to construct and successfully operate the invention.

Here, the dispute focused on the second requirement. There was no evidence of record regarding whether one of ordinary skill in the art would have been able to "construct and successfully operate" the invention based on the disclosed drawings. This lack of evidence notwithstanding, the Board found, based on its own expertise, that one of ordinary skill in the art would have been able to do so.

The Federal Circuit reversed. The court discussed the history of the APA, and found other cases where other agencies were not permitted, under the APA, to rely upon their own expertise when coming to conclusions. This is because "[t]he requirement for administrative decisions based on substantial evidence and reasoned findings—which alone make effective judicial review possible—would become lost in the haze of so-called expertise." As a result, the court held that:

in the context of a contested case, it is impermissible for the Board to base its factual findings on its expertise, rather than on evidence in the record, although the Board's expertise appropriately plays a role in interpreting record evidence. We do not—and need not—decide here the extent to which the Board in ex parte proceedings is so limited.

Because the Board's findings were admittedly not based on any record evidence, the court reversed the priority determination. Interestingly, the court did not remand to give Miller an opportunity to adduce evidence of what one of ordinary skill in the art would have been able to do with the drawings allegedly disclosed to Brand, instead the court remanded with instructions to enter judgment in the interference for Brand.

The question remains: why didn't Miller, the party trying to prove derivation, provide evidence of what one of ordinary skill in the art would have been able to do with the two drawings? Other evidence of derivation was presented, namely that Miller explicitly told Brand how to construct the invention, but the BPAI found this unconvincing because it was uncorroborated. Introduction of evidence of what one of ordinary skill in the art would be able to do with an alleged disclosure appears to be highly desirable, if not mandatory, when claiming derivation, based on this decision.

To read the full decision in Brand v. Miller, click here.

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