G.N. v. S.W.

When a party moves in an interference, including an unopposed preliminary motion filed after settlement to substitute a count, the party bears the burden under 37 CFR § 1.637(a) to show entitlement to the relief, and the Board will not credit conclusory expert testimony or search the record to fill gaps in the party's proof. To show that subject matter is separately patentable (so that a count may be narrowed), the movant must establish the Graham factors, including the scope and content of the prior art, differences from it, and the level of skill, and a lack of overlap in claim scope does not by itself show no interference-in-fact. No prior Board precedent is named as being overruled; the order applies existing rules and states Board policy on scope-of-count motions. For the opposing party, the order shows that an unopposed motion is not automatic and that the Board will test the movant's showing itself, though it will not argue the movant's case. For the moving party (here GN, who sought to narrow the count to exclude one-vector claims), the motion fails unless it presents a developed, record-cited showing of separate patentability that addresses all relevant prior art, including the examiner's Rule 609(b) statement. The Board relied on Aelony v. Arni, 547 F.2d 566 (CCPA 1977), Graham v. John Deere Co., 383 U.S. 1, 17 (1966), In re O'Farrell, 853 F.2d 894 (Fed. Cir. 1988), and Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089 (Fed. Cir. 1997). LEGAL TEST OR STANDARD: The movant has the burden of proof under 37 CFR § 1.637(a), by a preponderance of the evidence, even if the motion is unopposed or the interference is settled. To show separate patentability the movant must establish (1) the scope and content of the relevant prior art, (2) any difference between the subject matter of the claims at issue and the prior art and (3) the level of skill in the art (Graham). The movant must also show that, given the other party's subject matter as presumed prior art, a skilled person would not have found the claims prima facie obvious, including no reasonable expectation of success (O'Farrell). Expert opinions that do not disclose underlying facts or data may be given little or no weight. TRIGGERING FACTS: After settlement, GN filed an unopposed preliminary motion to substitute proposed Count A, which would drop one-vector claims 3 and 22 from the count on the theory that they are separately patentable from SW's two-vector claims. GN relied on a declaration of Dr. RS and part of the SW prosecution history. The expert did not state what he understood 'one of ordinary skill in the art' to mean, and did not address the prior art or the contrary conclusion in the examiner's Rule 609(b) statement. GN's argument also left it to the Board to search the record. KEY QUOTE: "The fact that a motion is not opposed does not operate to relieve a party from the burden of proof imposed on all parties filing motions by 37 CFR § 1.637(a)." (Paper 39, p. 15) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board follows Aelony v. Arni, 547 F.2d 566, 192 USPQ 486 (CCPA 1977), on non-overlapping claims still being the same patentable invention, and applies Graham v. John Deere Co., 383 U.S. 1, 17 (1966), In re O'Farrell, 853 F.2d 894 (Fed. Cir. 1988), and Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089 (Fed. Cir. 1997). PRACTICE TIP: Treat an unopposed or post-settlement motion to change the count like a contested one. Support it with a concise argument tied by citation to the record, set out a full Graham analysis, and have any expert state the level of skill, the facts or data underlying the opinion, and the prior art considered, including the examiner's Rule 609(b) statement. Do not ask the Board to comb through the exhibits.