When Can APJs Use Their Common Sense In Inter Partes Proceedings?

Brand v. Miller, 487 F.3d 862 (Fed. Cir. 2007) sharply limited the ability of the APJs to rely on their own technical expertise in deciding interferences. Two panels of APJs have reacted to the Federal Circuit's opinion in Brand v. Miller, and their opinions indicate that this issue will be with us for years to come. In this Analysis, Charles L. Gholz discusses Brand and the subsequent opinions, Robertson v. Timmermans, 90 U.S.P.Q.2D 1898 (PTOBPAI 2008) and Rilo v. Benedict, 2009 Pat. App. LEXIS 6 (Pat. App. 2009). He writes:

What the Panel Said in Rilo v. Benedict

     In Rilo v. Benedict, Int. No. 105,684, Benedict had filed a motion for a judgment of no interference-in-fact. Rilo did not oppose that motion. Nevertheless, a panel of the board consisting of APJs Torczon, Lane, and Tierney denied that motion. Benedict then sought rehearing, relying heavily on Brand. Again, Rilo did not oppose-and again the panel turned Benedict down.

     In a section of its opinion entitled "Acceptable fact finding in view of Brand", APJ Torczon acknowledged that the court had said in Brand that "it is impermissible for the Board to base its factual findings [in inter partes matters] on its expertise, rather than on evidence in the record...." However, he explained that:

Benedict has specifically identified [only] two instances where the decision is said to overstep the limits set in Brand. In each instance, Benedict cites to pages from the "Analysis" portion of the decision discussing whether something was obvious to try. * * * The request does not address the pages of facts and findings at the beginning of the decision, which include specific findings with citations to the record about what the art knew regarding the problems and solutions discussed.

     According to Judge Torczon:

The decision under rehearing is readily distinguishable from the decision faulted in Brand. The Brand court specifically noted the lack of support for the Board's [factual] findings. By contrast, Benedict has not identified a single enumerated [factual] finding that lacks support in the record or fails as a reasonable inference from the record. While the Board in Brand merely held the only relevant testimony to be unconvincing, the decision in this case explicitly cited and even adopted some of the expert testimony [that is, the testimony of Benedict's expert witness].

(footnotes omitted)

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