Hillman v. Shyamala

When a party moves for benefit of an earlier application in an interference, the movant bears the burden of proof under 37 CFR § 1.637(a) and must include in the motion a full statement of the reasons why the relief should be granted; compliance with 37 CFR § 1.637(f) alone is not enough. The Board will not shift that burden to the Board or the opponent, and the movant must show any departure from the general applicability of 35 U.S.C. § 120 requirements (such as overlapping inventorship) to priority benefit, other than the scope of disclosure, which differs. Arguments not made in, or readily apparent from, the motion will not rescue it on reconsideration. No prior Board precedent is named as being modified; the decision construes 37 CFR § 1.637 as setting a minimum procedural requirement and rejects the view that § 1.637(f) is all a benefit motion needs. For the opposing party in an interference, a deficient benefit motion can be denied without waiting for an opposition, and the opponent need not wait for the reply to learn the movant's theory. For the movant, the motion must itself state the facts and reasons, including the nexus between the movant's inventor and the earlier application's disclosure and why any § 120 requirement such as overlapping inventorship should not apply. The Board relied on Hyatt v. Boone, 146 F.3d 1348 (Fed. Cir. 1998), for the rule that the earlier application must meet § 120 and § 112 ¶ 1 for the subject matter of the count, and on In re Chu, 66 F.3d 292 (Fed. Cir. 1995), for the need for some overlap in inventorship under § 120. LEGAL TEST OR STANDARD: Under 37 CFR § 1.637(a), the movant has the burden of proof to show it is entitled to the relief sought, and the motion must include a statement of the precise relief requested, a statement of the material facts in numbered paragraphs, and a full statement of the reasons why the relief should be granted. The Board construed § 1.637 as a minimum procedural requirement. The requirements of § 120 generally apply to priority benefit, except that scope of disclosure differs, and the movant bears the burden of showing any other departure. TRIGGERING FACTS: Hillman moved for benefit of two applications (the 595 and 410 applications) that named other inventors and did not name Jennifer Hillman, the sole inventor of the involved 332 patent and 306 application. Hillman did not contend in its motions or on reconsideration that she is or should be named as an inventor of either earlier application, or that anyone else should be named on its own involved patent or application. Hillman gave no reason why overlapping inventorship should not apply and showed no nexus between its inventor and the earlier disclosures. A motions panel denied the motions without waiting for an opposition, and reconsideration was denied. KEY QUOTE: "Nevertheless, the burden for showing any other departure from the general applicability of § 120 requirements to priority benefit determinations rests entirely on the movant." (Paper 50, p. 6) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: Put every fact and reason supporting benefit in the motion itself, including the nexus between your named inventor and the earlier application's disclosure, and explain any claimed exception to § 120 requirements such as overlapping inventorship. Do not rely on § 1.637(f) compliance, the preliminary statement, common ownership, or new arguments raised in reply or on reconsideration.