LeVeen v. Edwards

When a party files a preliminary motion for judgment under 37 CFR § 1.633(a) relying on a § 102(a) or § 102(e) reference and the opponent alleges in its preliminary statement a date of invention prior to the reference's prior art date, the Trial Section, acting under 37 CFR § 1.610(e), will give the opponent two choices: (1) call attention to the preliminary statement and ask that decision on the motion be deferred to the priority phase, or (2) present proofs under 37 CFR § 1.131 with its opposition. The preliminary statement is a pleading that can support deferral but is not evidence for the party filing it, and the opponent must elect, bearing the consequences (including unpatentability and count adjustment if a Rule 131 showing fails). The decision holds that the Chairman's 1990 notice (1118 Off. Gaz. Pat. & Tm. Office 19-20), which suggested a preliminary statement might not be considered, was overtaken by the 1995 rule amendments, and it follows the deferral approach of Goutzoulis v. Athale, 15 USPQ2d 1461 (Comm'r Pat. 1990). For the moving party, a prior art motion may be deferred to the priority phase rather than decided on the pleadings, and the opponent can defeat it only by antedating. For the opponent with an earlier alleged date, it gains a clear choice: defer and put on antedating and priority proofs together, or file Rule 131 proofs now. The Board noted that antedating and priority are different, and cited Eaton v. Evans, 204 F.3d 1094 (Fed. Cir. 2000), for what establishes an actual reduction to practice for priority, and In re Wertheim and In re Alton on prior art status of a parent filing date. LEGAL TEST OR STANDARD: Pursuant to 37 CFR § 1.610(e), "When (1) a preliminary motion for judgment under 37 CFR § 1.633(a) against an opponent relies on a § 102(a) or § 102(e) reference and (2) the opponent alleges in its preliminary statement a date of invention prior to the prior art dates of the reference, the opponent will be given two choices." Choice one: call attention to the preliminary statement and ask that decision be deferred to the priority phase. Choice two: present proofs under 37 CFR § 1.131 with the opposition. TRIGGERING FACTS: Edwards moved for judgment that LeVeen claims 43 and 44 were anticipated under § 102(e) by Edwards '267 (filed August 12, 1994), or obvious. LeVeen's preliminary statement alleged an actual reduction to practice before that date, and LeVeen conceded anticipation if '267 is prior art but offered no evidence beyond the statement. Edwards did not show that '267 was prior art as of its parent '439 application's November 8, 1993 filing date, so the motion was deferred only as to anticipation based on the August 12, 1994 date. KEY QUOTE: "A first choice will be for the opponent to call attention to its preliminary statement and ask that a decision on the preliminary motion be deferred to the priority phase of the interference." (Paper 241, p. 13) PRIOR PRECEDENT AFFECTED: Follows Goutzoulis v. Athale, 15 USPQ2d 1461, 1463 (Comm'r Pat. 1990), on deferral to the priority phase. Holds Edwards' reliance on the Notice of the Chairman, Interferences--Preliminary Motions for Judgment, 1118 Off. Gaz. Pat. & Tm. Office 19-20 (Sep. 11, 1990), misplaced because the 1995 rule amendments overtook it. Traces Forsyth v. Richards and Simons v. Dunlop practice. Applies In re Wertheim and In re Alton on a parent's filing date. PRACTICE TIP: If you face a prior art preliminary motion and your preliminary statement alleges an earlier invention date, decide early between deferral and a Rule 131 showing with your opposition. Weigh the risk that a failed Rule 131 showing makes claims unpatentable and narrows the count, which can make priority proofs inadmissible. Never rely on the preliminary statement as evidence, and discuss other options with the APJ in an inter partes conference call.