Ex Parte Skulnick

Board of Patent Appeals and Interferences

Jan 27, 2004

29137628 (B.P.A.I. Jan. 27, 2004)

THIS DOCUMENT WAS NOT WRITTEN FOR PUBLICATION
AND IS NOT BINDING PRECEDENT OF THE BOARD
Filed by: Merits Panel Paper No. 34
Interference Trial Section
Mail Stop INTERFERENCE
Board of Patent Appeals and Interferences JAN 2 7 2004
United States Patent and Trademark office P T
P.O. Box 1450 PAT & T.M. I OFFICE 1830AFRD OF PATENI' APPEALS
Alexandria, Virginia 22313-1450 AND INTERFERE,,1CES
Tel: 703-308-9797 Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
THOMAS CHAFFEE
Junior Party
(Application 29/155,070)1,
V.
STEVE SKULNICK
Senior Party
(Patent No. D 452,466)2.
Patent Interference No, 105,125
Before SCHAFER, LEE and TORCZON, Administrative Patent Judges.
LEE, Administrative Patent Judge.
Memorandum Opinion and Judgmen
Filed July 31, 2002.
2 Issued December 25, 2001 and filed on February 27, 2001.
1
Interference No. 105,1.25
Chaffee v. Skulnick
A. Introduction
This interference between a design patent application and a design patent was declared on
July3l,2003. On even date therewith, the administrative patent judge entered an order under
37 CFR § 1.617(a) requiring junior party Chaffee to show cause why judgment should not be
entered against junior party Chaffee on the ground that Chaffee's submission under 37 CFR
§ 1.608(b) did not demonstrate a prima facie case that the junior party is entitled to priority.
Junior party Chaffee filed a response (Paper No. 13) to the show cause order, and senior party
Skulnick filed a statement under 37 CFR § 1.617(d) (Paper No. 26). An oral hearing was held
on September 17, 2003.
B. Findings of fact
The Claims and the Disclosure
I Junior party Thomas A. Chaffee is involved in this interference on the basis of its
design patent application 29/155,070, filed January 31, 2002, titled "BOAT FENDER."
2. Senior party Steve Skulnick is involved in this interference on the basis of its design
Patent No. D 452,466, based on application 29/137,628, filed February 27, 2001, titled "BOAT
FENDER." The patent was issued on December 25, 2001.
3. Junior party's design patent application contains a single claim which reads
I claim the ornamental design for BOAT FENDER, as shown and described."
4. Senior party's design patent contains a single claim which reads "The ornamental
design for a boat fender, as shown and described."
2
Interference No. 105,125
Chaffee v. Skulnick
5. Junior party's design application contains sixteen figures, showing various views of
the disclosed design.
6. Senior party's design patent also contains sixteen figures, showing various views of
the disclosed design.
7. The sixteen figures in junior party's design application are identical to the sixteen
figures in the senior party's design patent, with one-to-one correspondence to each other by
figure number.
8. In the specification of the involved application or patent of each party, the written
description of each of the figures is substantively the same as that contained in the specification
of the involved application or patent of the other party, although the precise wording is not the
same.
The Count
9. The single count, Count 1, of this interference is as follows:
The sole claim of junior party Chaffee's application 29/155,070
or
The sole claim of senior party Skulnick's Patent No. D 452,466
The Disclosed Boat Fender Design
10. Figure 1 in each party's specification illustrates the boat fender design as seen from
a front view of the invention.
11. Figure 2 in each party's specification illustrates the boat fender design as seen from
a rear view of the invention.
3
Interference No. 105,125
Chaffee v. Skulnick
12. Figure 3 in each party's specification illustrates the boat fender design as seen from
a top view of the invention.
13. Figure 4 in each party's specification illustrates the boat fender design as seen from
a bottom view of the invention.
14. Figure 5 in each party's specification illustrates the boat fender design as seen from
a left side view of the invention.
15. Figure 6 in each party's specification illustrates the boat fender design as seen from
a right side view of the invention.
16. Figure 7 in each party's specification illustrates the boat fender design as seen from
the front, top, and right side of the invention.
17. Figure 8 in each party's specification illustrates the boat fender as shown in Figure
7 but also with a dock and pilings shown in dotted lines.
18. Figure 9 in each party's specification illustrates the boat fender design with an
alternative wear surface as seen from the front of the invention.
19. Figure 10 in each party's specification illustrates the boat fender design of Figure 9
but as seen from the Tear.
20. Figure I I in each party's specification illustrates the boat fender design of Figure 9
but as seen from the top.
21. Figure 12 in each party's specification illustrates the boat fender design of Figure 9
but as seen from the bottom.
4
Interference No. 105,125
Chaffee v. Skulnick
22. Figure 13 in each party's specification illustrates the boat fender design of Figure 9
but as seen from the left side.
23. Figure 14 in each party's specification illustrates the boat fender design of Figure 9
but as seen fi7om the right side.
24. Figure 15 in each party's specification illustrates the boat fender design of Figure 9
but as seen from the front, top, and right.
25. Figure 16 in each party's specification illustrates the boat fender design of figure
15 but with a dock and pilings shown in dotted lines.
26. When provoking an interference with senior party's involved patent, junior party
Thomas J. Chaffee filed a submission entitled "SHOWING UNDER 37 C.F.R. § 1.608(b)."
27. In his showing under 37 CFR § 1.608(b), junior party Thomas J. Chaffee alleges
that he actually reduced the boat fender design invention to practice prior to the effective filing
date of senior party's involved patent, February 27, 2001, and further had shipped the
constructed device to senior party Steve Skuhrick prior to February 27, 2001,
28. In his showing under 37 CFR § 1.608(b), junior party Thomas J. Chaffee submitted
paper copies of photographic images stored in a computer and stated in a declaration as follows:
"The attached photographs, which were all taken prior to February 27, 2001, show a prototype of
the boat fender that 1 constructed prior to February 27, 2001."
29. In his showing under 37 CFR § 1.608(b), junior party Thomas J. Chaffee submitted
paper copies of e-mail correspondences and stated in a declaration as follows: "The attached
5
Interference No. 105,125
Chaffee v. Skulnick
e-mail correspondence is all dated prior to February 27, 2001 and provides further evidence that
the prototypes were not only constructed prior to February 27, 2001, but also shipped to Mr.
Steve Skulnick prior to February 27, 2001, which is the filing date of U.S. Patent No. D 452,466
for which Mr. Skulnick is named as an inventor."
30. In his showing under 37 CFR § 1.608(b), junior party Thomas J. Chaffee submitted
copies of what appear to be U.S. Express mail shipping forms and stated in a declaration as
follows: "The attached shipping receipts provide additional evidence that prototypes were
shipped to Mr. Skulnick from my company, prior to February 27, 2001."
31. None of the photographs, e-mail correspondences, and shipping forms attached to
junior party Thomas J. Chaffee's declaration is labeled with an Exhibit or other Reference
number for specific identification.
32. None of the photographs show the top, bottom, rear, and either side view of the
subject boat fender in the images; only the design from the front view is clearly visible.
33. Although there are other items in the background of two of the three photographs,
which could also be boat fenders, junior party Thomas J. Chaffee did not refer to them, in
contrast to the boat fender up close, in focus, at the center of the photographs, and held in the
hand of a person, as his invention, and the designs of those background items are also not clearly
visible. There does not appear to be a full view of any of them from any angle.
6
Interference No. 105,125
Chaffee v. Skulnick
34. None of the three US Express Mail shipping forms is legible. It is not apparent
from the face of the shipping forms who is the sender, who is the receiver, what is being sent,
when it is being sent, the address of the sender, the address of the receiver, and the mailing date.
35 Junior party Thomas J. Chaffee's declaration is accompanied by a declaration of
Kenneth R. Gill, Jr., who stated: "On various dates prior to February 27, 2001, 1 personally
witnessed Mr. Thomas Chaffee as he designed and constructed the prototype boat fenders shown
in the attached photographs (attached as Exhibit A)." The photographs are three and are the
same as the three discussed above and attached to junior party Thomas J. Chaffee's declaration.
None of the photographs reveal the design on the top, bottom, rear, and either side of the subject
boat fender shown in focus and at the approximate center of the photograph.
36. Junior party Thomas J. Chaffee's declaration is also accompanied by a declaration
of Timothy J. King who stated: "On various dates prior to February 27, 2001, 1 personally
witnessed Mr. Thomas Chaffee as he designed and constructed the prototype boat fenders shown
in the attached photographs (attached as Exhibit A)." The photographs are three and are the
same as the three discussed above and attached to junior party Thomas J. Chaffee's declaration.
None of the photographs reveal the design on the top, bottom, rear, and either side of the subject
boat fender shown in focus and at the approximate center of the photograph.
C. Decision
At issue is 37 CFR § 1.617(a), which states:
7
Interference No. 105,125
Chaffee v. Skulnick
§ 1.617 Summary Judgment Against Applicant
(a) An administrative patent judge shall review any evidence filed by an
applicant under § 1.608(b) to determine if the applicant is prima facie entitled to
a judgment relative to the patentee. If the administrative patent judge determines
that the evidence shows the applicant is prima facie entitled to a judgment
relative to the patentee, the interference shall proceed in the normal manner under
the regulations of this part. If in the opinion of the administrative patent judge'the
evidence fails to show that the applicant is prima facie entitled to judgment
relative to the patentee, the administrative patent judge shall, concurrently with
the notice declaring the interference, enter an order stating the reasons for the
opinion and directing the applicant, within a time set in the order, to show cause
why summary judgment should not be entered against the applicant. (Emphasis in
original).
In turn, 37 CFR § 1.608(b), in pertinent part, states as follows:
When the effective filing date of an application is more than three months
after the effective filing date of a patent, the applicant, before an interference will
be declared, shall file evidence which may consist of patents or printed
publications, other documents, and one or more affidavits which demonstrate that
applicant is prima facie entitled to a judgment relative to the patentee and an
explanation stating with particularity the basis upon which the applicant is prima
facie entitled to the judgment. Where the basis upon which an applicant is
entitled to judgment relative to a patentee is priority of invention, the evidence
shall include affidavits by the applicant, if possible, and one or more
corroborating witnesses, supported by documentary evidence, if available, each
setting out a factual description of acts and circumstances performed or observed
by the affiant, which collectively would prima facie entitle the applicant to
judgment on priority with respect to the effective filing date of the patent.
(Emphasis in original).
Despite the name of Rule 1.617, "Summary judgment against applicant," the junior party
applicant, the non-movant, has the burden of proof to show why it is entitled to judgment on
priority. See 37 CFR § 1.608(b); Schendel v. Curtis, 83 F.3d 1399, 1402, 38 USPQ2d 1743,
1746 (Fed. Cir. 1996). The policy behind requiring a junior party who has filed an application
8
Interference No. 105,125
Chaffee v. Skulnick
more than three months after the filing date of a senior party patentee to make a prima facie
showing that demonstrates that the junior party is entitled to a judgment relative to the patentee is
discussed in Kistler v. Weber, 412 F.2d 280, 285, 162 USPQ 214, 218-219 (CCPA 1969). In
Kistler v. Weber, the Court of Customs and Patent Appeals dismissed junior party's argument
that then Rule 228 (parallel to Rule 617) and then Rule 204(c) (parallel to Rule 608(b)) place an
undue burden on the junior party or are contrary to the rights of the first inventor. ThcCCPA
stated that:
The expense involved in a protracted interference, and the special hardships workable on
a patentee involved therein, are notorious, and to minimize both, where possible, would
appear to be the laudable purpose of these rules. Kistler v. Weber, 412 F.2d 280, 285,
162 USPQ 214, 218-219 (CCPA 1969).
Further, a junior party applicant who fails to demonstrate a prima facie showing under
Rule 608(b) may file additional evidence only under very limited circumstances. 37 CFR
§ 1.617(b). The policy behind Rule 617(b) is articulated in the Notice of Final Rule, Patent
Interference Proceedings, 49 Fed. Reg. 48416, 48423 (Dec. 12, 1984) as follows:
The "good cause" showing required by § 1.617(b) imposes a stricter standard than was
required under the prior rules. The stricter standard is necessary to encourage applicants
copying claims from a patent to better prepare their initial showings under § 1.608(b).
Under current practice, the Board of Patent Interferences has found that substantial time
is lost in issuing orders to show cause based on an inadequate initial showing only to
have an adequate showing made with the response to the order to show cause. Under the
"good cause" standard, ignorance by a party or counsel of the provisions of the rules or
the substantive requirements of the law would not constitute good cause.
See also, Hahn v. Wong, 892 F.2d 1028,13 USPQ2d 1313 (Fed. Cir. 1989).
9
Interference No. 105,125
Chaffee v. Skulnick
The proof standards applicable to Rule 617 "summary judgment" proceedings are
discussed in Basmadiian v. Landry, 54 USPQ2d 1617 (Bd. Pat. App. & hat. 1997). In attempting
to meet a party's own burden of proof, it is the responsibility of that party to precisely identify
and clearly explain the evidence on which it relies. Dana CoER. v. American Axle & Mfg.,
279 F-3d 1372, 1377, 61 USPQ2d 1609, 1612 (Fed. Cir. 2002); Biotee Biologische
Naturven2ackunizen v. Bioco1p., Inc., 249 F.3d 1341, 1353, 58 USPQ2d 1737, 1746 (Fed. Cir.
200 1) (refusing to impose duty on fact-finder to search record for possible evidence).
Priorit
Priority of invention belongs to the first party to reduce the invention to practice unless
the other party can establish that it was the first to conceive the invention and that it exercised
reasonable diligence in later reducing the invention to practice. Eaton v. Evans, 204 F.3d 1094,
1097, 53 USPQ2d 1696, 1698 (Fed. Cir. 2000); CoWer v. Goldfarb, 154 F.3d 1321, 1327, 47
USPQ2d 1896, 1900-01 (Fed. Cir. 1998). Junior party Thomas J. Chaffee asserts that it had
actually reduced the claimed invention to practice prior to the senior party's filing date, February
27, 2001, and does not rely on any assertion of reasonable diligence from conception to reduction
to practice.
To establish an actual reduction to practice, it must be established that (1) the party
constructed an embodiment that met every element of the count and (2) the embodiment worked
for its intended purpose. Eaton v. Evans, 204 F.3d at 1097, 53 USPQ2d at 1698. There can be
no actual reduction to practice if the constructed embodiment lacks an element recited in the
10
Interference No. 105,125
Chaffee v. Skulnick
count or uses an equivalent. As was stated by the Court of Appeals for the Federal Circuit in
Hitzeman v. Rutter, 243 F.3d 1345, 1354, 58 USPQ2d 1161, 1167 (Fed. Cir. 2001), "nothing is
better settled in patent law than that in interference cases express limitations in counts may not be
ignored," citing McBride v. Tegple, 109 F.2d 789, 799, 44 USPQ 523, 533 (CCPA 1940). All
limitations in interference counts are regarded as material to the invention covered by the counts.
Hitzeman, 243 F.3d at 1354, 58 USPQ2d at 1167; Meitner v. Corte, 537 F.2d 524, 530, 190
USPQ 407, 412 (CCPA 1976).
The Original Rule 608(b) Evidence
Junior party Thomas J. Chaffee's originally submitted evidence under 37 CFR § 1.608(b)
fails to establish a prima facie case of entitlement to judgment relative to the senior party
patentee because the submitted photographs do not show the top, bottom, rear, and lateral side
views of the ornamental design of the boat fender being illustrated in the photographs. We find
that the photographs do not illustrate a boat fender embodying all of the ornamental design
features of the count as defined by either the junior party's sole application claim or the senior
party's sole patent claim. The design claim of both parties include ornamental features on the
top, bottom, rear, and lateral sides of the boat fender. For instance, both lateral sides must have a
circular contour, and one side has a small circular pattern enclosing an elongated finger.' The
3 The small pattern enclosing an elongated finger is not illustrated in broken lines to
indicate something that is a part of the environment but not a part of the claimed design. See
Manual of Patent Examining Procedure § 1503.02 IN. There is no basis to assume that it depicts
a purely functional element and not some part of the ornamental design. Even counsel for the
junior party admitted during oral argument that he is not sure that it depicts a functional valve.
I I
Interference No. 105,125
Chaffee v. Skulnick
back of the fender is flat and gets narrower linearly towards the middle from each end. At oral
argument, counsel for the junior party characterized the fender as having an hour glass shape but
wherein the indentation does not go all the way around. Transcript at 8. The photographs do not
show all portions of the boat fender including design features. Thus, even assuming that prior to
February 27, 2001, junior party Thomas J. Chaffee had constructed the boat fender which is the
subject of the photographs submitted, that is not sufficient to establish a prima facie case of
actual reduction to practice of the ornamental design according to the count.
At oral argument, counsel for junior party Chaffee argued that based on the front
elevational view shown in the photographs accompanying the original Rule 608(b) submission
one with ordinary skill in the art would presume that the back of the boat fender is flat, rather
than a "C" or an "X" shape (Transcript at 18). The argument is without support in the original
Rule 608(b) submission. There was no testimony from any technical person in that regard.
Counsel for Chaffee offered no reason at oral argument why the back of the illustrated boat
fender cannot be "C" or "X" shaped, different from the flat-back design of the count.
Actual reduction to practice also cannot be established by the uncorroborated testimony
of the inventor alone. Lacotte v. Thomas, 758 F.2d 611, 613, 225 USPQ 633, 634 (Fed. Cir.
1985). The inventor's testimony must be corroborated by independent evidence. Coope ,
154 F.3d at 1330, 47 USPQ2d at 1903. However, the same problems discussed above regarding
the inventor's testimony also exist with respect to the corroborating testimony of the witnesses
Kenneth R. Gill, Jr. and Timothy J. King. The photographs they referred to also do not reveal
12
Interference No. 105,125
Chaffee v. Skulnick
the top, bottom, rear, and side views of the subject boat fender being shown. Here, the testimony
of Messrs. Gill and King do not have sufficient nexus to a boat fender having all the ornamental
design features of the count. Furthermore, the testimony of both Kenneth R. Gill, Jr. and
Timothy J. King is ambiguous as to whether they had witnessed a finished article or a completed
design as shown in the photographs. Both stated: "On various dates prior to February 27, 2001, 1
personally witnessed Mr. Thomas Chaffee as he designed and constructed the prototype boat
fenders shown in the attached photographs (attached as Exhibit A)." The phrase "as he. . . "
reasonably suggests that there was a work in progress and it is not reasonably clear whether the
witnesses had seen any completed design or finished article. It is not reasonably clear whether
the witnesses had seen the design from all top, bottom, front, rear, and each lateral view since the
photographs do not show all those views.
To the extent that junior party Thomas J. Chaffee is also asserting entitlement to
judgment based on alleged derivation of the invention by the senior party, neither conception of
the subject matter of the count by the party nor communication of the subject matter of the count
from the junior party to the senior party has been shown. In order to establish conception, a party
must show possession of every feature recited in the count, and that every limitation of the count
must have been known to the inventor at the time of the alleged conception. Hitzeman, 243 F.3d
at 1354, 58 USPQ2d at 1167; Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.
Cir. 1985). The same deficiencies of junior party's submitted photographs with respect to
demonstrating an actual reduction to practice are also deficiencies with respect to demonstrating
13
Interference No. 105,125
Chaffee v. Skulnick
conception of the subject matter of the count. The same deficiencies of the testimony from
Kenneth R. Gill, Jr. and Timothy J. King in the context of corroborating an actual reduction to
practice are also deficiencies with respect to corroboration of the invention's conception. The e
mail correspondences submitted by the junior party have been examined but they do not help to
remedy the plethora of deficiencies discussed thus far. In particular, the e-mail correspondences
do not reveal the ornamental content of any subject design discussed in the communications.
Also, it is not altogether clear who is sending e-mail messages to whom, because the
submission contains what appears to be a series of forwarded messages without a continuous
chain connecting the first to the last and because some individuals are identified only by a
screen-name. It is also not clear who all the individuals are that are listed as a sender or an
addressee or are referred to in the body of the messages and what their relationships are relative
to either Thomas J. Chaffee or Steve Skulnick. Simply put, the context of the messages are not
explained by the junior party. It is not the role of the board to put together the evidence like
pieces of ajig-saw puzzle in favor of one party or another. It is incumbent upon the junior party
to explain its evidence. Note further that the dates of the e-mail messages have all been redacted
orblackedout. The e-mail messages are of minimal help to the junior party's case.
Regarding the alleged shipping of prototypes from the junior party to the senior party,
none of the U.S. Express Mail shipping forms submitted by the junior party is legible. Innoneof
the three shipping forms submitted can any of the following information be read: Who is sending
the shipment, who is the addressee, the date of the shipment, and the content of the shipment.
14
Interference No. 105,125
Chaffee v. Skulnick
There also is no testimony from any corroborating witness who had seen the design of any
prototype being packaged for shipment from the junior party to the senior party. It is altogether
uncertain just what was shipped from the j unior party to the senior party, if anything, and when.
Based on the evidence originally submitted, Chaffee failed to demonstrate prima facie
entitlement to priority, not even under the more lenient standard of proof by a preponderance of
the evidence. Note that Chaffee's applicable burden of proof in this case under 37 CFR
§ 1.657(c) is by the more stringent standard of clear and convincing evidence.
No Good Cause for Accepting Additional Evidence
Only in very limited circumstances may additional evidence be submitted. Note 37 CFR
§ 1.617(b) which provides that "[a]dditional evidence shall not be presented by the applicant or
considered by the Board unless the applicant shows good cause why any additional evidence was
not initially presented with the evidence filed under § 1.608(b)." For a discussion of the meaning
of "good cause" one should refe r, inter alia, to:
I . Notice of Final Rule, Patent Interference Proceedings, 49 Fed. Reg.
48416, 48423 (Dec. 12, 1984):
The "good cause" showing required by § 1.617(b) imposes a stricter standard than
was required under the prior rules. The stricter standard is necessary to encourage
applicants copying claims from a patent to better prepare their initial showings
under § 1.608(b). Under current practice, the Board of Patent Interferences has
found that substantial time is lost in issuing orders to show cause based on an
inadequate initial showing only to have an adequate showing made with the
response to the order to show cause. Under the "good cause" standard, ignorance
by a party or counsel of the provisions of the rules or the substantive requirements
of the law would not constitute good cause.
15
Interference No. 105,125
Chaffee v. Skulnick
2. Hahn v. Wong, 13 IJSPQ2d 1211 (Bd. Pat. Aýp. & Int.), affd, 892
F.2d 1028, 13 USPQ2d 1313 (Fed. Cir. 1989).
3. Huston v. Ladner, 973 F.2d 1564,1567, 23 USPQ2d 1910,1913
(Fed. Cir. 1992) (allegations that party's attorney misrepresented his competence
and ability to present party's prima facie showing under 37 CFR § 1.608(b), and
that attorney acted in reckless and grossly negligent manner in filing original
evidence are not sufficient to establish "good cause" under 37 CFR § 1.617(b)).
Citing Ing v. Chiou, 200 USPQ 558 (Comm'r Pat. & Trademarks 1978), junior party
Chaffee, on page 4 of its response to the show cause order, argues that because it had reasonably
believed that its original showing under 37 CFR § 1.608(b) was sufficient, good cause exists for
allowing it to submit additional evidence. In Ing, sqpr , it was held that the board's finding that
the applicant had a good enough excuse for not having initially submitted other affidavits did not
constitute an abuse of discretion. That left open the possibility that the board also could have
found the excuse unsatisfactory. It was stated in Iniz, 200 USPQ at 559: "It goes without saying
that the sufficiency of any 'showing' made pursuant to the above-quoted portion of the rule must
be made on a case-by-case basis."
Here, even assuming that junior party Chaffee thought that its initial submission was
sufficient to demonstrate a prima facie entitlement to priority, that belief has not been shown to
have been reasonable. That the photographs included in the original Rule 608(b) showing do not
illustrate all sides of the claims design is indisputable and has not been disputed by Chaffee.
16
Interference No. 105,125
Chaffee v. Skuhrick
Also, that the sides of the claimed design corresponding to the sides not illustrated in the
photographs include ornamental features is patently evident and not reasonably disputable. Even
counsel for Chaffee has not argued that there are no ornamental designs on the top, bottom, back,
and lateral sides of the claimed boat fender design. Chaffee's apparent belief that not all of the
design features of the claimed design need to be specifically accounted for in a Rule 608(b)
showing is unreasonable as well as inexcusable.
We further reject Chaffee's argument presented on pages 6-7 of its response to the show
cause order to the effect that the interference should be allowed to proceed because additional
evidence, which would likely be conclusive, is in the possession of Skulnick and can only be
obtained through testimony. At the outset, that amounts to a complete disregard of the
requirements of 37 CFR § 1.608(b). In effect, Chaffee is saying that while he does not have
sufficient evidence to make out at least a prima facie case that he is entitled to priority relative to
Skuhrick, the interference should be allowed to proceed because he believes that eventually
during the production of testimony during the interference evidence in his favor will be revealed.
We are without authority to relieve Chaffee from the requirements of 37 CFR § 1.608(b), and
even if we do have that authority, we can see no reason to apply 37 CFR § 1.608(b) to other
junior party applicants who attempt to provoke an interference with a patentee but not to Chaffee.
Moreover, while Skulnick may possess the actual prototype sent by Chaffee, if any, that
does not explain why Chaffee could not include in its original showing evidence of the
ornamental designs on the top, bottom, back, and lateral sides of the boat fender it had made.
17
0
Interference No. 105,125
Chaffee v. Skulnick
The testimony of Chaffee and of his corroborating witnesses could simply describe Chaffee's
complete design and even make reference to the drawings in Chaffee's application or Skulnick's
patent. Any evidence that might be in the possession of Skulnick is unnecessary and
superfluous. In any event, there has been no reasonable showing by Chaffee that evidence in
support of Chaffee will be forthcoming if and when testimony of Skulnick is taken. We have
been given no reason to expect that Skulnick will testify that prior to February 27, 2001, he
received a boat fender from Chaffee which embodied the entirety of the claimed design in
Chaffee's involved application or Skulnick's involved patent.
Also at oral argument, counsel for junior party Chaffee indicated that because "of the
simplicity of the invention" (Transcript at 23) he thought the evidence in the original Rule 608(b)
submission was sufficient. The argument is without merit. Even assuming that the claimed
design constitutes a simple invention, that does not mean some part of it need not be accounted
for in Chaffee's Rule 608(b) submission. Moreover, the design may be deemed "simple"
whether the back of the design is flat, "C" shaped, or "X" shaped. Characterizing the invention
as simple does not reveal the ornamental designs, if any, which are on the top, bottom, back, and
lateral sides of the fender whose front elevational view is illustrated in Chaffee's original Rule
608(b) submission and does not excuse Chaffee's failure to account for such features.
For the foregoing reasons, Chaffee has shown no good cause why we should allow it a
further opportunity to present additional evidence under 37 CFR § 1.608(b).
18
Interference No. 105,125
Chaffee v. Skulnick
D. Order and Judgment
Upon consideration of the record, it is
ORDERED that the showing under 37 CFR § 1.608(b) submitted byjunior party
Thomas J. Chaffee fails to establish that the junior party is prima faci entitled to a judgment vis
a-vis senior party patentee Steve Skultrick;
FURTHER ORDERED that Chaffee has shown no good cause to be given an additional
opportunity to submit further evidence under 37 CFR § 1.608(b);
FURTHER ORDERED that judgment as to the subject matter of the count is herein
entered against junior party Thomas J. Chaffee;
FURTHER ORDERED that junior party Thomas J. Chaffee is not entitled to the sole
claim in its involved design patent application;
FURTHER ORDERED that if there is a settlement agreement, the parties should note
the requirements of 35 U.S.C. § 135(c) and 37 CFR § 1.666; and
FURTHER ORDERED that a copy of this judgment be filed in the respective involved
application or patent of the parties.
19
Interference No. 105,125
Chaffee v. Skulnick
Aichard E. Schafer
Administrative Patent Judge
BOARD OF PATENT
eson Lee APPEALS
(ýtministrative Patent Judge AND
INTERFERENCES
Richard Torczoný
Administrative Patent Jud
20
Interference No. 105,125
Chaffee v. Skulnick
By Federal Express:
Attorney forjunior party Thomas J. Chaffee:
Terry S. Callaghan, Esq.
Price, Heneveld, Cooper
DeWitt & Litton
695 Kenmoor, S.E.
Grand Rapids, Michigan 49546
Attorney for senior party Steve Skulnick:
Matthew W. Stavish, Esq.
Liniak Berenato Longacre & White
6550 Rock Spring Drive
Suite 240
Bethesda, Maryland 20852
21