Schaenzer v. Knight

Informative decision only: persuasive authority, not binding precedent. When all parties to an interference settle and jointly move for relief such as designating claims as not corresponding to the count, the Board treats the motion like any other: the movants bear the burden of proof under 37 CFR § 1.637(a), the original claim designation is presumed correct, and the motion must be supported by sufficient evidence and sound legal rationale, not counsel's argument or the parties' shared wish. A joint motion lacking such support is denied, and the Board will not rubber stamp it. No prior precedent directly addressed this issue in the text; the Board relies on its own earlier decision on Joint Preliminary Motion 1 and on the rules. For an opposing party in an interference, agreement between the parties does not relieve it of the burden to prove the relief sought, so a settlement carve-out will not be granted on a stipulation. For a party hoping to keep claims by settlement, the decision warns that it must submit real evidence, such as expert testimony with underlying facts, plus a diligent search and candid prior art representations; here judgment was entered against the junior party on all its claims 1-15. The Board cited Knorr v. Pearson, Meitzner v. Mindick, In re Lindner, Rohm and Haas Co. v. Brotech Corp., Crown International v. Solutia, Inc. and Borror v. Herz for evidentiary points. LEGAL TEST OR STANDARD: Under 37 CFR § 1.637(c)(4)(ii), a motion to designate a claim as not corresponding to a count must "[s]how that the claim does not define the same patentable invention as any other claim whose designation in the notice declaring the interference as corresponding to the count the party does not dispute." Under 37 CFR § 1.637(a), the movant bears the burden of proof. The initial designation is presumed correct. The same applies to a joint motion, which needs sufficient evidence, not attorney argument. TRIGGERING FACTS: The parties settled and filed a joint preliminary motion to designate junior party claims 3-9 as not corresponding to the count, so the junior party could avoid the effect of adverse judgment, with senior party agreement. The motion was first filed without evidence, then re-filed with a conclusory declaration from a non-inventor employee of the real party in interest. Counsel's supplemental representation was of novelty of the whole combination, not of the features relied on. The real party in interest admitted it had not interviewed employees, reviewed records or files, or searched prior art. KEY QUOTE: "The board does not rubber stamp the wishful thinking of a party, even if it is jointly wished by all parties in the interference, without sufficient supporting evidence and legally sound rationale." (Paper No. 41, p. 17) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board cited Charlton v. Rosenstein, Interference No. 104,148, 2000 WL 1568294 (Bd. Pat. App. & Int. 2000), only for the scope of review of a three-judge panel motion decision, and relied on Knorr v. Pearson, Meitzner v. Mindick and In re Lindner for the point that attorney argument is not evidence. PRACTICE TIP: Do not file a joint settlement-driven motion to redefine claim correspondence on stipulation or counsel's say-so. Support it with evidence, including expert testimony disclosing underlying facts, address the prior art the movant itself previously cited, and make the specific prior art representations and searches the Board expects, before the motion deadline.