Stiller v. Heid

Informative decision only: persuasive authority, not binding precedent.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, the movant (both parties, if the motion is joint, and even if unopposed) bears the burden under 37 CFR § 1.637(a) and must make a prima facie showing of two-way non-obviousness under 37 CFR § 1.601(n), including some evidentiary basis on the scope and content of the prior art and the level of ordinary skill. Merely comparing the parties' claims and identifying differences, even with declarations that the claims do not recite or suggest the added limitations, does not carry that burden. No prior precedent directly addressed this issue in the text; the Board treats § 1.601(n) as incorporating the § 103 obviousness inquiry and applies it to no-interference-in-fact motions. For the opposing party in an interference, a deficient motion does not have to be rebutted, because the burden of production and persuasion shifts to the opponent only after the movant makes a prima facie case, and the opponent could then offer prior art showing obviousness. For a movant seeking a no interference-in-fact judgment, including joint movants, the decision means that an unopposed or agreed motion will be denied unless it includes evidence on the prior art and the level of skill, though here denial was without prejudice to renewing within 21 days. The Board relied on Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966), Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448 (Fed. Cir. 1985), and Aelony v. Arni, 547 F.2d 566 (CCPA 1977). LEGAL TEST OR STANDARD: The movant must establish prima facie that two-way patentability is lacking, i.e., that all of the claims of one party are new and non-obvious when the opponent's claims are taken as prior art (37 CFR § 1.601(n)). Obviousness is analyzed under Graham: (1) the scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the pertinent art; and (4) secondary considerations, if any, of nonobviousness. The movant need not prove that no prior art exists, but must provide some evidentiary basis on the scope and content of the prior art and the level of ordinary skill. The standard applies to opposed and unopposed motions. Once a prima facie case is made and the motion is opposed, the burden of production and persuasion shifts to the opponent. TRIGGERING FACTS: Declaration of an interference raises a rebuttable presumption of interference-in-fact. The parties filed a joint motion under 37 CFR § 1.633(b) for no interference-in-fact. They showed that none of the claims were identical and that Heid's claims had limitations absent from Stiller's claims, and they identified benefits of those limitations. Their joint declaration (Exhibit 1001) said that, based on knowledge and experience, Stiller's claims did not recite or suggest the limitations. They offered no evidence on the scope and content of the prior art or the level of ordinary skill. KEY QUOTE: "Merely comparing a party's claims with the opponents and identifying differences without providing evidence relating to the scope and content of the prior art and the level of ordinary skill in the art does not meet the burden of establishing prima facie non-obviousness." (Paper 38, p. 5) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The Board followed Aelony v. Arni, 547 F.2d 566, 192 USPQ 486 (CCPA 1977), for the point that comparing claims and identifying differences is insufficient, and applied Graham v. John Deere Co., 383 U.S. 1 (1966), and Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448 (Fed. Cir. 1985). PRACTICE TIP: Before filing a § 1.633(b) motion, alone or jointly, support it with evidence such as testimony from a skilled person (for example, an inventor) addressing the prior art and the level of skill. The testimony should say the declarant knows of no prior art or other reasons that would suggest modifying the opponent's claims to account for the differences, and that the modifications are not conventional, routine, or well known. Do not rely on claim comparison and conclusory declarations, even if the motion is agreed.