Sauer, Inc. v. Kanzaki Kokyukoki Mfg.

When a party moves under 37 CFR § 1.633(c)(1) to change the count to one broader than the sum of what each party has claimed, the Board will not adopt the count without a compelling reason, and a mere showing that the movant's best or earliest proofs lie outside the existing count is not enough. A movant relying on that ground must, in the motion itself, at a minimum (1) proffer its best proofs, (2) show those proofs lie outside the current count, and (3) show the proposed count is not excessively broad for what it needs for those proofs. No prior Board precedent is named as being overruled; the Board says it is "confirming" two principles on motions to broaden the count, and it cites LeVeen v. Edwards only by "Cf." on timeliness. The opposing party gains protection because a movant cannot expand the count past the combined claims on a bare assertion, and cannot raise first at oral argument that its earliest proofs are outside the count. The movant, here the junior party Sauer, must put its full showing in the opening preliminary motion, and must also address any prior art overcome during its own prosecution if it drops a limitation it relied on. The Board cited Packard Press Inc. v. Hewlett-Packard Co., 227 F.3d 1352 (Fed. Cir. 2000) only with "Cf." on the point that arguments made too late come too late. LEGAL TEST OR STANDARD: Without a compelling reason, the Board will not adopt a count broader than the sum of what each party has claimed; this is allowed only in a "very rare and special situation," and more than the movant's best or earliest proofs lying outside the existing count is required. A preliminary motion to broaden on that basis "(1) should make a proffer of the party's best proofs, (2) show that such best proofs indeed lie outside of the scope of the current count, and (3) further show that the proposed new count is not excessively broad with respect to what the party needs for its best proofs." The movant must also show a genuine need for the change and give the opponent a fair opportunity to respond. The movant proposing a broader count must also account for any patentability question over prior art that is self-apparent from its own prosecution history. TRIGGERING FACTS: Sauer moved to substitute proposed count 2, which dropped the means-for-fastening limitation present in both Sauer's claim 1 and Kanzaki's claim 7, so the count was broader than either party's claim. Sauer had added that limitation during prosecution of its parent application to overcome an examiner's prior art rejection and argued it distinguished the prior art. Sauer's motion called the limitation "trivially obvious" and said only that it was "arguably not shown" in its earliest proofs, with no analysis. Sauer first said at oral argument that its earliest proofs lacked a fastening means. KEY QUOTE: "We do not totally foreclose the possibility that in a very rare and special situation a count might be adopted which is broader in scope than the sum of what each party has claimed." (Paper 165, p. 4) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board cites Packard Press Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351 (Fed. Cir. 2000) and LeVeen v. Edwards, 57 USPQ2d 1406 (Bd. Pat. App. & Int. 2000) with "Cf." on the point that the showing came too late. PRACTICE TIP: If you want a broader count because your best or earliest proofs fall outside the existing count, put a full showing in the preliminary motion itself: the proofs, why they fall outside the count, and why the new count is no broader than needed. Also address any prior art you overcame in prosecution by relying on a limitation you now want to drop. Do not leave this to reply or oral argument, and consider whether a motion under 37 CFR § 1.633(c)(5) to add a corresponding claim to the opponent is the better route.