Guthrie v. Espiau

Informative decision only: persuasive authority, not binding precedent. Under Bd.R. 204(a)(1), a party may not submit evidence of priority beyond its accorded benefit unless it files a statement setting forth "all bases" on which it intends to establish entitlement to judgment on priority, and derivation from the opposing party is included in those bases. But where the party's earlier motion already gave the date of the alleged communication to the opposing party, and the opposing party showed no specific prejudice, the Board may give that statement the same effect as if made in the priority statement and permit derivation without a formal amendment. No prior Board precedent is named in the text on this issue. The decision reaffirms the Board's reading of Bd.R. 204(a), supported by the 2004 rulemaking comment, that derivation is within the "all bases" provision. The opposing party in an interference should expect that a party who wants to prove derivation from it must give notice in its priority statement, and should show specific, meaningful prejudice if it opposes late notice. The party seeking to prove derivation gets some relief: the Board may treat an earlier filed statement as the equivalent of a priority statement, but the party is then bound by the date it gave. The decision cites no Federal Circuit, CCPA or Supreme Court authority. LEGAL TEST OR STANDARD: Bd.R. 204(a)(1): "A party may not submit evidence of its priority in addition to its accorded benefit unless it files a statement setting forth all bases on which the party intends to establish its entitlement to judgment on priority." Derivation is included in the "all bases" provision. Ordinarily the party may need to amend its priority statement. Here the Board excused the amendment because the date was already given in an earlier motion and the opposing party showed no specific and meaningful prejudice. TRIGGERING FACTS: Espiau, the senior party, sought to prove derivation by Guthrie, the junior party, during the priority phase. Its priority statement already gave its conception date but not the date it communicated the invention to Guthrie. Espiau Motion 2, filed the same day as the priority statement, gave that date as 20 April 2000, and Guthrie responded directly to it in Opposition 2. The priority motions were not yet due. Guthrie's arguments went only to the merits of derivation. KEY QUOTE: "Under the circumstances of this case, the statement made in Espiau Motion 2 will be given the same effect as if it were made in Espiau's priority statement, and therefore, Espiau is bound by that date and cannot prove an earlier date of a corroborated communication of the invention." (Paper 94, p. 4) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board reaffirmed its earlier Decision on interlocutory motions under Bd.R. 125(b) (Paper 86) on the requirements of Bd.R. 204(a), and modified only its result, granting rehearing in part. PRACTICE TIP: If you intend to prove derivation from the opposing party, say so in your priority statement and give the date and location of your earliest corroborated conception and of the communication. Do not rely on Bd.R. 204(a) being read as limited to priority, and do not count on the relief the Board gave here, which was specific to this case.