Kopf-Sill v. Yager

Informative decision only: persuasive authority, not binding precedent. When a party seeks to belatedly file preliminary motions asserting unpatentability over prior art that the opponent already asserted against the movant's own claims, the Board will dismiss the motion if the movant relies only on the 37 CFR § 1.637(a) presumption and gives no explanation of why timely motions could not have been filed, because good cause under 37 CFR § 1.645(b) is not shown. The § 1.637(a) presumption applies automatically by operation of the rule once the Board holds that the preliminary motion makes out a prima facie case of unpatentability, so a motion to invoke it is unnecessary and inappropriate. No prior precedent directly addressed this issue in the decision text; the Board relies on the rule and on a cited 1992 notice of proposed rulemaking. For the opposing party in an interference, the decision means you cannot use a late motion to get the benefit of the § 1.637(a) presumption, and you cannot treat the other side's art-based motion as a reason to excuse your own untimeliness. For the party that filed the art-based motion, the presumption is not triggered by silence alone. It arises only if the Board holds that the motion makes out a prima facie case, and it then applies against that party without any motion by the opponent. The decision cites no Federal Circuit, CCPA or Supreme Court authority. LEGAL TEST OR STANDARD: Two parts. (1) The presumption of 37 CFR § 1.637(a) is triggered by the movant's failure to explain why the art does not apply, coupled with a holding by an APJ or panel that the preliminary motion has made out a prima facie case of unpatentability over the prior art. A prima facie case is made out when the prior art, without consideration of any other evidence, teaches or suggests the claimed subject matter. (2) A belated preliminary motion requires good cause for failing to timely file, under 37 CFR § 1.645(b), shown by a sufficient explanation of why a timely motion could not have been filed during the time set for preliminary motions. TRIGGERING FACTS: Kopf-Sill filed preliminary motions under § 1.633(a) asserting Yager's claims unpatentable over Kaltenbach alone or with Ramsey, without explaining why that art does not apply to Kopf-Sill's claims. Kopf-Sill's preliminary statement alleged no date earlier than the 35 U.S.C. 102(e) dates of either patent. Yager then sought leave to belatedly file seven preliminary motions making substantially the same unpatentability assertions against Kopf-Sill's claims. Yager gave no explanation for its delay other than the presumption, and Kaltenbach had been of record in the file history of Kopf-Sill's involved patent. KEY QUOTE: "Where the presumption arises, it applies automatically against the movant by operation of the rule." (Paper 81, p. 3) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The decision cites Patent Interference Practice, Notice of Proposed Rule Making, 57 Fed. Reg. 2698, 2699 (January 23, 1992), reprinted at 1135 Off. Gaz. Pat. Off. 37 (Feb. 11, 1992). PRACTICE TIP: Do not file a motion to invoke the § 1.637(a) presumption, and do not rely on it to excuse a late motion. File your own preliminary motions on prior art you know of within the time set, and if you are late, explain specifically why a timely motion could not have been filed, with attention to art already in the opponent's file history.