Sauer, Inc. v. Kanzaki Kokyukoki Mfg.

Informative decision only: persuasive authority, not binding precedent. When a party in an interference moves under 37 CFR § 1.634 to correct inventorship as provided by § 1.48, it bears the burden under 37 CFR § 1.637(a) of proving by a preponderance of the evidence that it is entitled to the correction, and merely filing the papers required by § 1.48(a) does not entitle it to relief. Where the movant's declarants have given changing inventorship positions without a meaningful explanation, the Board may find their testimony not credible and deny the motion, and may then grant the opponent's § 102(f) motion that the movant admitted was effectively unanswerable. No prior precedent directly addressed the burden on a § 1.634 inventorship-correction motion in the text, but the Board treated Hillman v. Shyamala, 55 USPQ2d 1220 (Bd. Pat. App. & Int. 2000), as a similar rejected argument that rule compliance alone suffices, and it called Ellsworth v. Moore, 61 USPQ2d 1499 (Bd. Pat. App. & Int. 2001), relevant but not controlling. For the opposing party, a § 102(f) motion built on the other side's own witnesses and documents can succeed if the correction motion fails, and a failed correction can lead directly to judgment. For the movant, the 1997 elimination of the § 1.48 statement of how the error occurred does not mean no explanation is needed. A party who files successive correction motions, each with a new declaration from the same inventor, must explain why the facts now support a different inventive entity or risk denial and adverse judgment. The Board relied on Stark v. Advanced Magnetics, Inc., 29 F.3d 1570 (Fed. Cir. 1994), for the need for diligence during an interference, on Kubota v. Shibuya, 999 F.2d 517 (Fed. Cir. 1993), for the movant's burden, and on Concrete Pipe, 508 U.S. 602 (1993), for the preponderance standard. LEGAL TEST OR STANDARD: The movant under 37 CFR § 1.634 has the burden of proof under 37 CFR § 1.637(a) and must prove entitlement to the correction by a preponderance of the evidence, meaning it is more probable than not. Rule 1.637(a) requires a full statement of the reasons why the relief should be granted. If two plausible possibilities can be inferred from the evidence, neither is proved. The § 1.48(a) paper requirements are procedural only and do not guarantee the outcome. TRIGGERING FACTS: Kanzaki's application named Okada as sole inventor after earlier correction. After Sauer moved under § 102(f) based on Kanzaki's own evidence, Kanzaki moved to add Fujisaki and Ohashi. Okada, Azuma and Nemoto had supported sole inventorship in September 2000. Okada's belief changed three times on counsel's advice, with no explanation of the basis. Kanzaki did not substantively contest Sauer's alternative argument that others communicated significant features to Okada. Kanzaki also had been warned earlier that failing to correct an admitted error could lead to adverse judgment. KEY QUOTE: "Compliance with those procedural requirements does not guarantee any particular outcome on the substantive determination." (Paper 292, p. 34) PRIOR PRECEDENT AFFECTED: Follows the reasoning of Hillman v. Shyamala, 55 USPQ2d 1220 (Bd. Pat. App. & Int. 2000), which rejected the argument that compliance with 37 CFR § 1.637(f) alone requires granting a motion. Distinguishes Ellsworth v. Moore, 61 USPQ2d 1499 (Bd. Pat. App. & Int. 2001), as relevant but not controlling, because there the inventor with conflicting declarations was named by both parties. Cites Behr v. Talbott, 27 USPQ2d 1401 (Bd. Pat. App. & Int. 1992), on burden of proof. PRACTICE TIP: When moving to correct inventorship in an interference, do not rely on the § 1.48(a) papers. Support the motion with a full, evidence-backed explanation of why the inventorship position changed, including testimony from the inventor and counsel where earlier declarations said otherwise. Do not rely on a pending correction motion to moot an opponent's § 102(f) motion, and raise any new evidence for your own motion by miscellaneous motion, not in a reply.