Brown v. Barbacid - 276 F.3d 1327 (Fed. Cir. 2002)

Rule:

Both parties must be given an opportunity to submit evidence regarding priority in an interference proceeding. Once all evidence has been submitted, the United States Patent and Trademark Office Board of Patent Appeals and Interferences must assess, in light of all the evidence presented by both parties, whether the junior party has met its ultimate burden of proving priority by preponderance of the evidence.

Facts:

In an interference over a new assay to identify anti-cancer compounds, the United States Patent and Trademark Office Board of Patent Appeals and Interferences denied the senior party's request for reconsideration after it awarded priority to a junior party on the grounds that the senior party had not reduced the invention to practice before the junior party's conception date. On appeal, the senior party argued that the board erred when it shifted to them the burden of proof; denied authentication to their lab notebooks and autoradiograph; and excluded a technician's testimony related to their earlier conception and reduction to practice.

Issue:

Did the Board properly award priority to the junior party on the grounds that the senior party had not reduced the invention to practice before the junior party's conception date? 

Answer:

No.

Conclusion:

The court vacated the award and remanded the case for a determination of whether the junior party proved priority by a preponderance of evidence. The court held that the burden of proof did not shift to the senior party, and that the lab notebook pages and autoradiographs themselves, in light of independent testimony, demonstrated conception by the senior party. The court further held that the technician's testimony did not corroborate the senior party's conception and reduction to practice.  However, the technician's testimony corroborated the senior party's reasonable diligence before filing of the patent application.