Genise v. Desautels

Informative decision only: persuasive authority, not binding precedent. When a moving party in an interference relies on a prior art reference or on a general incorporation by reference, the Board will not search the record or credit evidence the motion does not cite and explain, and the moving party must itself show, in the motion, how the evidence meets each claim limitation. A reference or incorporated patent must be shown to disclose the limitation, with inherency explained rather than assumed, and a general incorporation by reference cannot supply written description unless the host document "identif[ies] with detailed particularity what specific material it incorporates." No prior precedent directly addressed this issue in the text; the decision applies existing Federal Circuit and CCPA law to the burden on a preliminary motion in an interference. For the party attacking patentability or benefit, here Genise and Desautels as movants, the motion must itself explain how the cited evidence meets the claim language, because the Board will not rely on unexplained exhibits, conclusory expert declarations, or arguments first made in a reply. For the opponent, the decision shows that a bare, unexplained motion can be denied for failure to make a prima facie case without reaching the opposition. The Board relied on Federal Circuit and CCPA authority including Advanced Display Systems v. Kent State University, 212 F.3d 1272 (Fed. Cir. 2000), Kubota v. Shibuya, 999 F.2d 517 (Fed. Cir. 1993), Continental Can Co. v. Monsanto Co., 948 F.2d 1264 (Fed. Cir. 1991), and Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555 (Fed. Cir. 1991). LEGAL TEST OR STANDARD: The moving party bears the burden of proof by a preponderance of the evidence (37 CFR § 1.637; Kubota v. Shibuya) and must make out a prima facie case in the motion itself. Anticipation requires that a single reference disclose, expressly or inherently, each and every limitation; inherency must be established and explained, not assumed, and cannot rest on probabilities or possibilities. For benefit, the earlier application must satisfy 35 U.S.C. § 112, first paragraph, for at least one embodiment within the count, and the attacker bears the burden. Incorporation by reference requires that the host document identify with detailed particularity what specific material is incorporated and clearly indicate where it is found. TRIGGERING FACTS: Genise cited four lines of Schulze for the claimed step of predicting a zero torque value and did not explain how the adjustment occurred. It did not cite the Caulfield affidavit paragraph that Desautels' claim 17 allegedly met, and counsel could not point to any explanation when asked twice at oral argument. Genise's proposed claim 144 relied on a general incorporation of the Steeby patent for a predicted value based on shaft speed decrease, and its motion 3 analyzed combined dependent claims rather than the count. Desautels' benefit attack failed on enablement because it did not discuss undue experimentation, but succeeded on written description because the '830 application only generally incorporated Braun and Steeby, which did not describe predicting. KEY QUOTE: "Genise must direct us to the evidence and explain how the evidence helps to establish its position." (Paper 66, p. 13) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board treated In re Graves, 69 F.3d 1147 (Fed. Cir. 1995), as dicta on anticipation, and followed Advanced Display Systems v. Kent State University, 212 F.3d 1272 (Fed. Cir. 2000), on incorporation by reference. PRACTICE TIP: Put every element of your showing in the opening motion: cite the specific passages of each reference and exhibit, explain how they meet each claim limitation, and show the claim analysis against the count itself, not against dependent claims or combinations. Do not count on the reply, a record exhibit, or an expert paragraph the motion never cites, and do not rely on a general incorporation by reference for written description.