Rowells v. Vichinsky

Informative decision only: persuasive authority, not binding precedent. When a junior party responding to a Bd.R. 202(d) order to show cause relies on derivation, it must show by a preponderance of the evidence conception plus a communication of that conception to the opponent, and the communication must itself be corroborated by evidence, not by inventor testimony or attorney argument alone. Testimony or documents that show only a disclosure to other employees or agents of a company, without a connection to the named opponent-inventor, similarity of drawings, or the opponent's silence, do not suffice. No prior precedent directly addressed this issue in the text; the Board applies Price v. Symsek and Davis v. Reddy to a Bd.R. 202(d) showing. For the party seeking to prove derivation (here the junior party), the decision shows that proving prior conception is not enough: it must be able to point to record evidence that the conception reached the actual opponent, and counsel must identify that evidence, since the Board will not search the record. For the opposing party (here the senior party), the decision confirms it need not respond to the order to show cause, no presumption arises from its silence, and the burden of going forward rests on the junior party alone. The Board relied on Price v. Symsek, 988 F.2d 1187, 1190, 26 USPQ2d 1031, 1033 (Fed. Cir. 1993) and Davis v. Reddy, 620 F.2d 885, 889, 205 USPQ 1065, 1068 (CCPA 1980) for the communication and corroboration requirements, Kistler v. Weber, 412 F.2d 280, 285, 162 USPQ 214, 218-219 (CCPA 1969) for the purpose of the rules, and Concrete Pipe & Products of California, Inc. v. Construction Laborers Pension Trust for Southern California, 508 U.S. 602, 622, 113 S.Ct. 2264, 2279 (1993) for the preponderance standard. LEGAL TEST OR STANDARD: To prove derivation, a party must establish conception of the claimed subject matter and communication of the conception to the opponent; as with conception, corroboration is required to support testimony of the communication. The party must show it will prevail on priority by a preponderance of the evidence under Bd.R. 207(a)(2), meaning the fact is more probable than its nonexistence. The junior party carries the burden of going forward under Bd.R. 202(d). TRIGGERING FACTS: The junior party showed conception before the senior party's accorded benefit date of 19 September 2001 but relied on derivation. Its inventor testified to disclosure to employees or agents of Mann & Hummel entities, while the patent was assigned to Filterwerk Mann & Hummel GmbH. The corroborating declarant did not say that those employees attended the meeting or that the conception was conveyed to them. The junior party showed no link between those employees and the named inventor Kevin Vichinsky, and offered only similar drawings, the opponent's silence and a claim that it was reasonable to conclude he was informed. KEY QUOTE: "A preponderance of the evidence is not based on mere possibilities." (Paper 19, p. 11) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The Board follows Price v. Symsek, 988 F.2d 1187, 1190, 26 USPQ2d 1031, 1033 (Fed. Cir. 1993), Davis v. Reddy, 620 F.2d 885, 889, 205 USPQ 1065, 1068 (CCPA 1980), and Kistler v. Weber, 412 F.2d 280, 285, 162 USPQ 214, 218-219 (CCPA 1969), as cited in the decision. PRACTICE TIP: In a Bd.R. 202(d) showing based on derivation, support each element with specific record evidence: independent corroboration that the conception was communicated to the named opponent personally, or a documented connection (same project, same supervisor) to the recipients, with pinpoint citations to that evidence rather than argument or inference.