Bronshtein v. Roser

Informative decision only: persuasive authority, not binding precedent. When a party moves under 37 CFR § 1.633(b) for judgment of no interference-in-fact, it bears the burden under 37 CFR § 1.637(a), by a preponderance of the evidence, of showing that the subject matter of its claims (presumed to be prior art) neither anticipates nor renders obvious the subject matter of any opponent's claim corresponding to the count. Where the movant relies on the absence of an inherent limitation, it must make out a prima facie case that the limitation is not necessarily present, and a theoretical possibility not tied to the claimed invention does not carry that burden. No prior precedent directly addressed this issue in the text; the Board applied the interference rules and Federal Circuit law to a motion for no interference-in-fact. For the movant, here the patentee Bronshtein, the decision shows that the presumption from the declared interference is hard to overcome, and that narrowing a motion to a single claim limitation leaves no room to rely on other distinctions. For the opponent, here Roser, it shows that a movant's failure on anticipation by inherency and on obviousness leaves the interference intact and can moot a contingent motion to amend claims. The Board relied on Case v. CPC International, Inc., 730 F.2d 745 (Fed. Cir.), cert. denied, 469 U.S. 872 (1984), on burden and the meaning of no interference-in-fact, on Bruning v. Hirose, 161 F.3d 681 (Fed. Cir. 1998), on the preponderance standard, and on In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997), and Continental Can Co. v. Monsanto Co., 948 F.2d 1264 (Fed. Cir. 1991), on inherency. LEGAL TEST OR STANDARD: The movant must show by a preponderance of the evidence that there is no interference-in-fact between any of its claims corresponding to the count and any opponent claim corresponding to the count. One way is to show that the subject matter of its claims, presumed to be prior art, does not anticipate or render obvious the subject matter of any opponent claim corresponding to the count. Anticipation requires that a reference disclose every limitation, explicitly or inherently. Inherency is a question of fact and requires that the missing matter be necessarily present and so recognized by those of ordinary skill, not shown by probabilities or possibilities. Claim construction is a question of law, and expert testimony is weighed only to the extent it helps with technical facts. TRIGGERING FACTS: Bronshtein, a patentee, moved for no interference-in-fact against Roser's application. By litigation choice it relied only on step (b) of Roser claim 10, evaporating a portion of the solvent to obtain a syrup, and offered to disclaim claim 3 if the motion were granted. The Board rewrote Bronshtein dependent claim 3 in independent form with its evaporation step at a pressure higher than 7.6 Torr. Roser's expert credibly testified that such solutions must pass through a syrup state. Bronshtein's expert gave an opinion that was not tied to the Bronshtein patent and did not disclose its underlying basis. Bronshtein's examples all included a drying step before boiling. KEY QUOTE: "A party in an interference seeking to overcome the presumption of the existence of an interference-in-fact may file a preliminary motion for judgment of no interference-in-fact." (Paper 55, p. 20) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed Case v. CPC International, Inc., 730 F.2d 745 (Fed. Cir.), cert. denied, 469 U.S. 872 (1984), and Bruning v. Hirose, 161 F.3d 681 (Fed. Cir. 1998). PRACTICE TIP: When moving for no interference-in-fact, support the motion with a complete showing that your claims neither anticipate nor render obvious each opposing claim. Tie any inherency or technical argument to your own disclosure and examples, and have your expert state the underlying facts and data. Do not rest on one limitation or on theoretical possibilities.