LeVeen v. Edwards

When a party's interference preliminary motion for judgment under 37 CFR § 1.633(a) fails to follow the procedures in the Notice Declaring Interference (no incorporation of arguments by reference, facts set out in the motion, claim-element mapping, explicit identification of differences for obviousness) or fails to state facts and reasoning making out anticipation or a prima facie case of obviousness, the Board may dismiss the motion in its discretion. The Board will not assume the role of counsel by searching the record or prior art for a theory not set out in the motion, and the movant is normally not given a second opportunity to make out its case. No prior precedent directly addressed this issue as far as the text shows; the Board treats the Notice Declaring Interference procedures as enforceable and says it has noticed a trend of sloppy motions and of counsel avoiding identification of differences from the prior art. For a party attacking an opponent's claims, a motion that relies on declarations for argument, states only that references are prior art, or omits element-by-element mapping and any difference can be dismissed outright, and the opponent need not be burdened with a second round. For the patent owner or opposing party, the decision means a deficient motion can be defeated on procedure and failure to state a claim, and the Board did not even consider the opposition or reply. The Board relied on Atlas Powder Co. v. IRECO Inc. (anticipation requires every limitation in a single reference), Smith Industries Medical Systems, Inc. v. Vital Signs, Inc. and In re Kotzab (known elements alone do not establish obviousness; motivation is needed), Graham v. John Deere Co. (obviousness is a question of law), and Packard Press Inc. v. Hewlett-Packard Co. (arguments raised first at oral argument come too late). LEGAL TEST OR STANDARD: The Board dismissed under its discretion where the motion was not presented in a procedurally proper fashion and failed to state a claim for relief under 37 CFR § 1.633(a). Procedural requirements from the Notice Declaring Interference: arguments in one paper shall not be incorporated by reference to another paper; a motion sets out in order (1) the precise relief requested, (2) the evidence relied on, (3) the facts in separately numbered paragraphs with citations to evidence, and (4) an argument why relief should be granted; for anticipation each claim is reproduced with braces giving column and line or figure references for each element; for obviousness a similar procedure is used, and any difference shall be explicitly identified, with an explanation why the claim as a whole would have been obvious notwithstanding any difference. Substantively, anticipation requires a single reference describing each and every limitation, and obviousness requires a prima facie case including a reason, motivation, suggestion or teaching to combine. TRIGGERING FACTS: Edwards' preliminary motion 1 sought judgment that LeVeen claims 43 and 44 were anticipated under 35 U.S.C. § 102(e) or unpatentable under § 103. It incorporated argument from two declarations of fact witnesses, listed nine facts that at best showed the references were prior art, used parallel columns rather than braces in a reproduced claim, omitted two CVs from its exhibit list, never said where the reference described the plurality of retractable electrodes limitation, identified no difference from the prior art, and offered no motivation to combine. Counsel had no answer at oral argument about where the declarations accounted for the retractable electrodes. KEY QUOTE: "We cannot do our job if the parties do not do their job." (Paper 240, p. 27) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board cited Ex parte Braeken, 54 USPQ2d 1110 (Bd. Pat. App. & Int. 1999) (non-binding precedent) only to contrast ex parte practice, where a remand to develop facts is possible, with interferences. PRACTICE TIP: In an interference preliminary motion, follow the Notice Declaring Interference format exactly. Put all facts and argument in the motion itself with no incorporation by reference, map every claim element to the reference with specific citations, explicitly identify each difference from the prior art for obviousness, and state the motivation to combine, because you will likely get only one chance.