Wang v. Kovesdi

Informative decision only: persuasive authority, not binding precedent. When a party moves under 37 CFR 1.628(a) to correct a preliminary statement after seeing its opponent's statement, and the correction carries its invention dates back to dates earlier than the opponent's, the movant must show by a stricter, more convincing showing that it was not negligent and that the error could not have been avoided by due care, and that correction is essential to the interest of justice. A declaration that does not establish a thorough search and the movant's diligence in preparing the original statement is insufficient, and the motion is denied. No prior Board precedent is named as being overruled; the Board applies the existing rule and CCPA case law on correcting preliminary statements to a party that moved after seeing its opponent's dates. For the opposing party in an interference, the decision supports opposing such a motion by pointing to the movant's access to its dates, its inadequate search, and its own expended effort on preliminary motions and statement. For the movant, a single attorney declaration with unexplained assumptions of completeness, no testimony from archivists or other custodians, and an omitted search of in-house patent files will not carry the burden, and the movant's argument that it would lose priority otherwise is not enough. The Board relied on CCPA authority including Methudy v. Roy, Holslag v. Steinert, Myers v. Roethel and Winter v. Lebourg for the due-care and stricter-showing requirements. LEGAL TEST OR STANDARD: Under 37 CFR 1.628(a), a material error arising through inadvertence or mistake may be corrected by motion, supported by an affidavit stating the date the error was first discovered, accompanied by the corrected statement, and filed as soon as practical after discovery. If filed on or after the date set for service of preliminary statements, the motion must also show that correction of the error is essential to the interest of justice. Case law requires evidence that the movant was not negligent in preparing the original statement and that the error could not have been avoided by the exercise of due care. Relevant inquiries include why the amendment is needed and how an opponent can be prejudiced. A stricter, more convincing showing is needed where the movant has had access to the opponent's dates or priority testimony has been taken. TRIGGERING FACTS: Wang filed its preliminary statement on the same day as Kovesdi, then moved to substitute a corrected statement moving its conception, first description, reduction to practice and diligence dates from November 1993 to October 1992 or January 1993, earlier than Kovesdi's April 8, 1993 dates, after having access to Kovesdi's statement. The only support was the declaration of one patent attorney, who reviewed notebooks she assumed were complete while the company was archiving its notebooks, and who found her predecessor's notes suggesting other notebooks existed. The search covered the library and the offices of the CEO, R&D and human resources, but not in-house patent files. KEY QUOTE: "Put another way, Wang’s failure to consider in house patent files naming a Wang inventor and/or deletion adenovirus subject matter raises serious doubts about the thoroughness of its search, despite the many places it says were searched." (Paper 75, p. 8) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board follows Methudy v. Roy, 65 F.2d 171 (CCPA 1933), Holslag v. Steinert, 143 F.2d 661 (CCPA 1944), Myers v. Roethel, 90 F.2d 122 (CCPA 1937), Winter v. Lebourg, 394 F.2d 575 (CCPA 1968), Fleming v. Bosch, 181 USPQ 761 (Bd. Pat. Interf. 1973), and Rose v. Frazer, 61 USPQ2d 1606 (BPAI 2001). PRACTICE TIP: If you must correct a preliminary statement, especially after seeing the opponent's dates, support the motion with testimony from the actual records custodians and anyone else who searched, explain what confirmed completeness, and show that every plausible source, including in-house patent files, was searched before the original statement was filed.