Bamberger v. Cheruvu

Informative decision only: persuasive authority, not binding precedent. When an applicant in an interference asserts that a patent claim is unpatentable, the applicant bears the burden of proving its case by a preponderance of the evidence, not clear and convincing evidence. The Board left open whether the higher standard applies where the junior party application was filed after the senior party patent issued, and also held that a patent claim whose patentability is under consideration gets its broadest reasonable construction consistent with the specification. No prior precedent directly addressed this issue in a binding way; the Board noted its holding is consistent with other non-binding merits-panel decisions (Behr v. Talbott, Schrag v. Strosser, Lamont v. Berguer). For the party moving under 37 CFR 1.633(a) to show an opponent's claims unpatentable, the burden is the examiner's preponderance burden, not the civil-action clear and convincing burden, so the evidentiary bar is lower, though the movant must still prove its case and cannot rely on the Board to search the record. For the patent owner, the presumption of validity does not apply, claims are read broadly, and narrowing is available only through a reissue application added to the interference under 37 CFR 1.633(h). The Board relied on Federal Circuit and CCPA authority: In re Caveney, In re Etter and In re Sneed on the examiner's preponderance burden, American Hoist & Derrick Co. v. Sowa & Sons, Inc. and Ryco, Inc. v. Ag-Bag Corp. on the clear and convincing standard in civil actions, and Price v. Symsek on priority. LEGAL TEST OR STANDARD: The party asserting unpatentability bears the burden of proof under 37 CFR 1.637(a) and must meet it by a preponderance of the evidence. The presumption of validity has not been held to apply in PTO proceedings, and 35 U.S.C. 282 itself does not impose a clear and convincing burden, which the Board said was judicially created for infringement civil actions. Claims of the patent under attack receive their broadest reasonable construction consistent with the specification. For anticipation the movant must show that the reference describes each and every element, expressly or by inherency. For obviousness it must satisfy Graham v. John Deere Co. TRIGGERING FACTS: Bamberger, a junior party applicant whose application was copending with the application that matured into the Cheruvu patent, moved under 37 CFR 1.633(a) for judgment that Cheruvu claims 22-35 were unpatentable under 35 U.S.C. 102 or 103 over the Welborn patent. Cheruvu argued without authority that its claims should be construed narrowly. The Board reserved cases where the junior party application was filed after the senior party patent issued, where the priority burden is clear and convincing under Price v. Symsek. KEY QUOTE: "We hold that an applicant asserting unpatentability of a patent claim in an interference bears a burden of proving its case by a preponderance of the evidence." (Paper No. 409, p. 7) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board stated that its holding is consistent with other non-binding precedent by other merits panels: Behr v. Talbott, 1992 Pat. App. LEXIS 31 (Bd. Pat. App. & Int. July 1, 1992); Schrag v. Strosser, 21 USPQ2d 1025, 1027 (Bd. Pat. App. & Int. 1991); and Lamont v. Berguer, 7 USPQ2d 1580, 1582 (Bd. Pat. App. & Int. 1988). PRACTICE TIP: When moving for judgment of unpatentability, structure the motion under 37 CFR 1.637(a) with claim limitations annotated by parenthetical cites to exactly where the reference describes each one, explicitly identified differences, and an obviousness explanation covering the level of skill and objective evidence. Also build an inherency case from experiments that duplicate the reference's explicit examples, because the Board declined to search the record or credit unrepresentative experiments, and Bamberger lost on the lower burden.