Basmadjian v. Landry

When an applicant's Rule 608(b) showing is reviewed in an interference summary judgment proceeding under 37 CFR § 1.617, the applicant must establish a prima facie case, meaning facts shown by a preponderance of the evidence (clear and convincing evidence where the applicant's effective filing date is after the patent's issue date) that would entitle the applicant to judgment if the patentee relies only on its filing date and offers no rebuttal. Facts alleged in affidavits are generally accepted as true absent a good reason, but conclusions of law (e.g., that the applicant was "diligent") are not, and the evidence is not necessarily viewed in the applicant's favor. No prior precedent is named as directly addressing the standard; the Board clarifies that the CCPA's observation in Schwab v. Pittman, made before Anderson v. Liberty Lobby, Inc., does not control the substantive evidentiary standard. For an applicant (the party challenging the patentee), the decision means the Rule 608(b) showing must itself carry a preponderance, with non-self-authenticating documents such as notebooks explained with particularity, and it is not read like a Rule 56 non-movant's evidence. For the patentee, summary judgment is a real merits resolution, not a default; the patentee files only a statement without evidence, and the rationale must match the order to show cause. The Board relied on Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986), Celotex Corp. v. Catrett, 477 U.S. 317 (1986), Hahn v. Wong, 892 F.2d 1028 (Fed. Cir. 1989), and Schendel v. Curtis, 83 F.3d 1399 (Fed. Cir.), which the Board treated as not deciding the affidavit-as-true question. LEGAL TEST OR STANDARD: The applicant must make out a prima facie case, i.e., prove at least so much of its case as would entitle it to judgment if the patentee relied only on its effective filing date and did not rebut. The evidentiary standard is preponderance of the evidence, or clear and convincing evidence where the applicant's effective filing date is after the issue date of the patent. Facts alleged in affidavits are generally accepted as true absent a good reason; legal conclusions are not. Additional evidence with a response is considered only on a showing of good cause under 37 CFR § 1.617(b). Only a merits panel can enter summary judgment. TRIGGERING FACTS: A junior party applicant with an effective filing date more than three months after the patentee's filed a Rule 608(b) showing; an APJ found no prima facie case and issued an order to show cause under 37 CFR § 1.617(a). Here the applicant relied on conception plus diligence through a constructive reduction to practice, but its unexplained laboratory notebook left unexplained gaps (June 29 to September 28, 1992 and October 5 to November 13, 1992). Late evidence was offered with no showing it was unavailable earlier. KEY QUOTE: "We believe the appropriate evidentiary standard to be applied in determining whether an applicant has met its prima facie burden is preponderance of the evidence, or where the applicant's effective filing date is after the issue date of the patent, clear and convincing evidence." (Paper 22, p. 20) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The Board treats Schwab v. Pittman, 451 F.2d 637 (CCPA 1971), as made prior to Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986). It follows Hahn v. Wong, 892 F.2d 1028 (Fed. Cir. 1989) for the definition of prima facie case and the good cause standard, and notes Schendel v. Curtis, 83 F.3d 1399 (Fed. Cir. 1996) left open whether affidavit facts are accepted as true. PRACTICE TIP: Build the Rule 608(b) showing to carry a preponderance on its own, with every non-self-authenticating exhibit explained with particularity and every period of the diligence window accounted for by fact detail. Put all available evidence in the original showing, because later evidence requires good cause, and do not rely on legal conclusions or first-time reply arguments.