Sever v. Glickman

Informative decision only: persuasive authority, not binding precedent. When a junior party applicant whose showing under Rule 608(b) was found insufficient responds to a Rule 617(a) order to show cause, it must prove by clear and convincing evidence that it is prima facie entitled to a patent, which for a derivation or fraud theory requires first showing conception and corroborated communication of the conception to the patentee. Without derivation there can be no showing of materiality or intent, so fraud and inequitable conduct accusations cannot keep the interference going, and summary judgment is entered against the applicant. No prior Board precedent is named as being modified; the Board applies Basmadjian v. Landry for the clear and convincing standard and Kistler v. Weber (CCPA) for the purpose of Rules 608(b) and 617. For an applicant opposing a patentee, the decision makes clear that an interference is not a cancellation proceeding and cannot be used to litigate fraud on the PTO or inequitable conduct against the patentee unless derivation is first established. For the patentee, it confirms that Rule 608(b) shields it from the expense and hardship of an interference, and that the applicant cannot file a preliminary motion seeking judgment against it in response to a show cause order. The Board relied on Price v. Symsek and Davis v. Reddy on derivation and corroboration, Estee Lauder v. L'Oreal on attorney argument, and Ewing v. Fowler Car Co. (Supreme Court) on the absence of a right to oppose another's grant. LEGAL TEST OR STANDARD: The applicant must show by clear and convincing evidence that it is prima facie entitled to a patent vis-a-vis the patentee, where its effective filing date is after the patent's issue date (Basmadjian v. Landry; 37 CFR 1.657(b)). To prove derivation, a party must establish conception of the claimed subject matter and communication of the conception to the opponent, with corroboration of the communication. Fraud requires (1) a false representation or deliberate omission of a material fact, (2) made with intent to deceive the examiner, (3) on which the examiner justifiably relied, and (4) but for which the patent would not have been granted (C. R. Bard v. M3 Systems). TRIGGERING FACTS: Sever's application was filed 28 June 1999, after Glickman's patent issued 27 April 1999, so Rule 608(b) applied. An order to show cause under Rule 617(a) issued with the declaration because Sever had not shown prima facie entitlement. Sever conceded priority was not at issue and relied on fraud and derivation, but submitted no new evidence and offered only attorney argument. It did not show communication to Glickman, corroboration of the communication to Glickman's attorney, or that conception preceded the alleged communication. KEY QUOTE: "The condition precedent to addressing the fraud issue is for Sever to establish that Glickman did derive the invention from Sever." (Paper 33, p. 9) PRIOR PRECEDENT AFFECTED: No prior Board precedent is overruled or modified. The Board follows Basmadjian v. Landry, 54 USPQ2d 1617, 1624 (Bd. Pat. App. & Int. 1997), on the clear and convincing standard, and Kistler v. Weber, 412 F.2d 280 (CCPA 1969), on the purpose of Rules 608(b) and 617. PRACTICE TIP: When responding to a Rule 617(a) show cause order, file actual evidence, with corroboration, that addresses each deficiency the order identified, such as conception, communication and timing. Do not rely on attorney argument or fraud accusations, and do not seek judgment against the patentee through a preliminary motion.