Yamada et al.

Board of Patent Appeals and Interferences

Jan 7, 2002

07986571 (B.P.A.I. Jan. 7, 2002)

The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 40
Filed by: Trial Section Merits Panel
Administrative Patent Judge
Box Interference Filed
Washington, D.C. 20231 7 January 2002
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES NIALED
WEN-FOO CHERN JAN 7 - 2002
Junior Party PAT. & T.M. OFFICE
(Patent 5,182,529), BOARD OF PATENT APPEALS
AND INTERFERENCES
V.
HITOSHI YAMADA, TAMIHIRO ISHIMURA,
and YOSHIO OHTSUKI
Senior Party
(Application 07/986,571).
Patent Interference No. 104,624
Before McKELVEY, Senior Administrative Patent Judge, and LEE and
MEDLEY, Administrative Patent Judges.
MEDLEY, Administrative Patent judae.
FINAL DECISION AND JUDGMENT UNDER 37 CFR 15 1.658(a)
A. Introduction
This interference was declared on September 11, 2000. The
parties agreed to proceed directly to the priority phase of the
interference. Chern filed a principal brief alleging a prior
date of invention (Paper 24). Yamada filed an opposition brief
to Chern's principal brief (Paper 27). Chern filed a reply brief
(Paper 30). Yamada filed a principal brief (Paper 28). Yamada's
principal brief does not allege an earlier date of invention.
Yamada's principal brief attacks Chern's case on priority. Chern
filed an opposition to Yamada's principal brief (Paper 29).
Yamada filed a reply (Paper 31). Oral argument was held on 7
December 2001.
B. Findings of fact
1. Chern is involved on the basis of Patent 5,182,529,
('529), granted 26 January 1993, based on application 07/847,331,
filed 6 March 1992.
2. Yamada is involved on the basis of application
07/986,571, filed 7 December 1992.
3. Yamada has been accorded benefit for the purpose of
priority of Japanese application 3-324809, filed 9 December 1991.
4. Chern real party in interest is Micron Technology, Inc.
(Paper 9).
5. Yamada real party in interest is Oki Electric Industry
Co., Ltd. (Paper 5).
6. The interfering subject matter pertains to a ring
oscillator comprising an odd number of inverters.
7. Each inverter has an output and a primary and a
secondary input.
2
8. The output of each inverter is connected to the primary
input of a succeeding inverter.
9. The secondary input of each inverter is connected to the
output of the Mth proceeding inverter, where M is an odd integer,
equal or greater than three.
10. Count 1, the sole count of the interference, is
identical to claim 1 of Chern and is as follows:
A ring oscillator for use in a charge pump comprising N
inverter stages each having a primary input, a secondary
input, and an output, wherein N is an odd integer,
the output of each inverter stage is coupled to the
primary input of the following inverter stage in a serially
connected ring fashion such that the output of a last
inverter stage is coupled to the primary input of a first
inverter stage and forms an oscillating signal output, and
the secondary input of each stage is coupled to the
output of an Mth preceding inverter stage, wherein M is an
odd integer greater or equal to three.
11. An example of a circuit of the count is shown in
Chern's '529 patent Fig. 8 as follows:
20 210 211 212 213
X X A X X 11 X X X X X X X
41'c
4 It'o-
is
PUMP Fig.6
3
12. Chern Fig. 8 shows a ring oscillator 10c for use in a
charge pump 14.
13. There are an odd number of inverter stages equal to 13.
14. The output of each inverter stage X is coupled to the
primary input A of the succeeding inverter stage.
15. The output of the last inverter stage 213 is coupled to
the primary input of the first inverter stage 201.
16. The secondary input of each stage B is coupled to the
output X of a 7" preceding inverter stage (seven being greater
than three).
17. The following claims were originally designated as
corresponding to count 1:
Chern: 1-20
Yamada: 1-8, 18, 24, 25 and 30-35
18. The following claims were originally designated as not
corresponding to count 1:
Chern: none
Yamada: none
Chern principal brief
19. Chern alleges a date of conception that is prior to
Yamada's foreign priority date of December 9, 1991 (Paper 24 at
6).
20. Chern alleges that it was diligent from prior to
December 9, 1991 to March 6, 1992, when Chern 5,182,529 was filed
4 -
(Paper 24 at 6).
Chern's conception
21. Chern alleges a date of conception on 14 May 1991
(Paper 24 at 6).
22. Chern submits a drawing (Chern Ex. 2002) that is dated
14 May 1991 in support of the alleged conception.
23. The drawing is dated, but not signed.
24. Chern Submits the affidavit of Wen-Foo Chern (the sole
Chern inventor) who alleges that he made the drawing on 14 May
1991 (Ex. 2002, 91 5).
25. Wen-Foo Chern states that he prepared an Invention
Disclosure form with an attached drawing and notes, which he
signed and dated on 26 July 1991 (Ex. 2001, $ 7, Ex. 2002).
26. Attached to the Invention Disclosure form is a drawing
dated 14 May 1991, and a copy of hand written notes dated 26 July
1991 (Ex. 2002).
27. The Invention Disclosure form is signed by Wen-Foo
Chern and dated 26 July 1991 (Ex. 2002).
28. The Invention Disclosure form is also signed in the
place for "WITNESSý', and dated 1 August 1991.
29. Thomas M. Trent (Trent) testifies that the "WITNESS"
signature was made by him (Chern Ex. 2010, 1 3).
30. Trent states that he "read the INVENTION DISCLOSURE and
attachments and understood the construction and operation of the
5
invention described in the INVENTION DISCLOSURE" (Chern Ex. 2010,
91 3)
31. Trent states that he reviewed the attachments prepared
by Wen-Foo Chern and that the attachments included a circuit
drawing dated 14 May 1991, and recognized that the notes were
written in Wen-Foo Chern's handwriting and dated 26 July 1991
(Ex. 2010, 191 3 and 5).
32. The Invention Disclosure form that Trent refers to in
his affidavit is "Exhibit A" (Ex. 2010, 91 3).
33. The Invention Disclosure form that Wen-Foo Chern refers
to in his affidavit is "Exhibit A" (Ex. 2001, T 7).
34. on the top of Chern Ex. 2002 (the Invention Disclosure
form) the heading states "Trent Affidavit Exh. A"; "Chern
Affidavit Exh. A".
35. Accordingly, the Invention Disclosure (including
attachments) that Trent and Chern refer to in their respective
affidavits is the one submitted as Ex. 2002.
36. The drawing, dated 14 May 1991-attached to the
Invention Disclosure form is as follows'.:
The drawing, as seen here, does not include the
handwritten notes at the top of the drawing as shown in Ex. 2002.
6
L L I t
I I I : e -T t F- I I L #-ý r r
PC NG PC NG PC PONG POW POW KNO PCM PGM MW M NG N
C D C D C C 0 a D C 0 C 0 C D C D C a C D
A X A A X A
X A , A X A X A X
LPWR A LP R C LPWR D LPWR I
L
OSC INV OSC INV OSC INV 0 0 1.;r INVI 0S INV 0 Mcw Sc li Sc I
Y Sý'A- C Twsc Vp 6ý N
a z
LPWR OSC -,a
bbi
A
-x
LOW POWER VBB OSC -1 5/17/9, 11 1
37. The drawing shows an oscillator connected to a charge
pump.
38. The oscillator is made up of inverter circuits
(annotated as LPWR OSC INV), with the output of each inverter
circuit X connected to the input B of a succeeding inverter.
39. A secondary input A of each inverter is connected to
the output X of a 7t' proceeding inverter.
40. There are 13 inverters, where the output of the last
inverter N is connected to the primary input B of the first
inverter.
Chern acts of diligence
41. Chern alleges that the following events took place from
7
the time inventor Chern completed and signed the Invention
Disclosure form (26 July 1991) to the time that the application
for the involved Chern patent was filed (6 March 1992):
(a) 1 August 1991 - Chern discloses invention to Trent, who
signs Invention Disclosure (Ex. 2002, Ex. 2010, 1 3);
(b) 6 August 1991 - Invention Disclosure is marked received
prior to review by the Patent Review Committee at Micron (Ex.
2002) ;
(c) 9 August 1991 - Invention Disclosure is assigned Micron
Docket No. 91-339 ('339) (Ex. 2003);
(d) 13 August 1991 -'339 is sent to Review Committee (Ex.
2003);
(e) 20 August 1991 - committee approves '339 for application
drafting and filing (Ex. 2003; Ex. 2010, TT 4-7);
(f) "on or about" 25 September 1991 - Counsel for Marger
Johnson McCollom & Stolowitz, Peter J. Meza (Meza) is assigned to
prepare a patent application for '339 (Chern Ex. 2003);
(g) "on or about" 27 September 1991 - Meza receives from
Micron '339 and another Invention Disclosure form for another
Chern invention ('341) (Ex. 2011, 91 5);
(h) "on or about" 27 September 1991 - Meza reviews '341 and
'339 and determines that the Invention Disclosures for both are
8
incomplete (Ex. 2011, 91% 5-7 )2;
(i) "on or about" 1 October 1991 - Meza prepares a letter
(Ex. 2012), requesting that Micron resend '339 and '341, and
requesting Wen-Foo Chern's new home and business phone and fax
numbers' (Ex. 2011, 91 7) ;
(j) "sometime after" I October 1991 - Meza receives a
complete copy of '339, including a written description of the
invention, a copy of a'14 May 1991 circuit drawing, and
handwritten notes describing concepts of the invention (Ex. 2011,
91 8)
(k) "sometime prior" to 24 October 1991 - Meza makes
attempts to find Wen-Foo Chern and contact him. Meza contacts
Wen-Foo Chern and the two set a date of 2 November 1991 to meet
and discuss '339 and '341 (Ex. 2011, 91 9);
(1) "on or about" 24 October 1991 - Meza prepares a letter
(Ex. 2004) to Chern outlining their 2 November 1991 meeting. The
letter identifies five pending or proposed applications for
discussion, including '339. Wen-Foo Chern receives the letter
"on or about" 24 October 1991 (Ex. 2001, 9j 13);
(m) 2 November 1991 - Meza and Chern meet to discuss those
Meza does not state what documents he originally
received. Meza does not state why the '339 and '341 disclosures
were incomplete, e.g. what was missing.
3 Chern left Micron in August 1991 to work for Ramtr6n
International Corporation (Ramtron) (Ex. 2001, T 12).
9
cases identified in the letter (Ex. 2004). The subject matter of
'339 is discussed in preparation for preparing and filing a
patent application (Ex. 2011, 1 12);
(n) "on or prior to" 18 November 1991 - Meza prepares
amendment and assignment in another Micron case (90-145) (Ex.
2011, 91 14);
(o) "on or about" 21 November 1991 - Meza prepares letter
(Ex. 2014) to Micron regarding another Micron case (90-128) (Ex.
2011, 91 15);
(p) 26 November 1991 - Meza's second child is born
schedule and activities are reduced (Ex. 2011, 1 16);
(q) "on or about" 2 December 1991 - Meza receives Notice of
Allowance in another Micron case (90-145) (Ex. 2011, 91 14);
(r) 3 December 1991 - Meza prepares amendment in another
Micron case (90-128) (Ex. 2011, 11 1'7);
(s) "on or about" 5 December 1991 - Meza prepares letter
(Ex. 2013) to Micron regarding Notice of Allowance received in
(90-145);
(t) "on o r about" 6 December 1991 - Meza prepares a letter
to Micron (Ex. 2005) and Chern regarding '340 (ex. 2011, T 19);
(u) "on or about" 6 December 1991 Chern receives draft of
'340 application;
(v) 9 December 1991 Yamada files Japanese application
10 -
3-324809';
(w) "on or about" 18 December 1991 - Meza prepares a letter
to Micron (Ex. 2017) regarding Micron (91-095) application (Ex.
2011, 91 20);
(x) 21 December 1991 - 29 December 1991 Meza takes vacation
(Ex. 2011, 1 21);
(y) "on or about" 30 December 1991 Meza prepares a letter
to Micron (Ex. 2018) regarding a Micron application (91-130) (Ex.
2011, 91 22);
(z) 30 Deceinber 1991 - Meza works on preparing drawings and
claims for '339 (Ex. 2011, j 23; Ex. 2021);
(aa) 31 December 1991 - Meza completes '339 drawings and
works on claims (Ex. 2011, 1 23; Ex. 2021);
(bb) 1 January 1991 - New Year's Day. Meza takes the day
off (Ex. 2011, 91 23);
(cc) 2 January 1991 - Meza prepares background, summary and
description of drawings for '339 (Ex. 2011, 1 23; Ex. 2021);
(dd) 3 January 1992 - Meza prepares claims (Ex. 2011, 91 23;
Ex. 2021);
(ee) 4 January - 5 January 1992 - weekend. Meza performs no
work (Ex. 2011, 91 23);
(ff) 6 January 1992 - Meza completes draft of '339 (Ex.
4 Yamada has been accorded benefit for the purpose of
priority of Japanese application 3-324809, filed 9 December 1991.
2011, $ 23; Ex. 2021) and prepares letter to Chern (Ex. 2021) and
Micron (Ex. 2019);
(gq) 10 January 1992 - Meza revises letters to Chern (Ex.
2006) and Micron (Ex. 2019) (Ex. 2011, 91 23);
(hh) "on or about" 10 January 1992 - Chern receives a first
draft of the '339 application (Ex. 2001, 1 16);
(ii) 10 January 1992 - 4 February 1992 - Chern reviews draft
application for '339 and provides comments to Meza (Ex. 2001,
17);
(jj) 24 January 1992 - Meza and Chern speak on phone
regarding the '339 draft application (Ex. 2011, 1 25; Ex. 2001,
17; Ex. 2021);
(kk) 10 February 1992 - Meza speaks with Micron
representative to report the status of several cases, including
'339 (Ex. 2011, $ 26; Ex. 2021);
(11) "sometime prior to" 13 February 1992 - Meza receives
written comments from Chern regarding '339. Meza works on
rewrite that day (Ex. 2011, 1 27, Ex. 2021);
(mm) 14 February 1992 - Meza finishes second draft and
prepares letter to Chern (Ex. 2011, $ 2ý; Ex. 2021; Ex. 2008);
(nn) 17 February 1992- Meza has conference call with Micron
representative regarding '339 (Ex. 2021)',
5 Meza does not testify as to the phone call. Chern directs
us to Meza's billing record (Ex. 2021). The entry there is as
- 12 -
(oo) "on or about" 24 February 1992 - Chern receives letter
from Meza enclosing final draft and declaration and assignment
documents for '339 (Ex. 2001, 1 18; Ex. 2008);
(pp) 24 February 1992 - 26 February 1992 - Chern reviews
final draft (Ex. 2001, 11 19);
(qq) 26 February 1992- Chern executes documents and sends
executed documents to Meza (Ex. 2001, 1 19, Ex. 2009);
(rr) 6 March 1992 Meza files application for '339 (Ex.
2011, 91 29).
C. Decision
Chern has the burden of establishing priority by a
preponderance of the evidence. 37 CFR § 1.657(b).
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). Here, Chern does not allege an earlier
actual reduction to practice. Rather, Chern relies on its
6 March 1992 filing date to demonstrate a constructive reduction
to practice. Chern's constructive reduction to practice is after
Yamada's Japanese 9 December 1991 filing date.
follows: "PJM Telephone conference with J. Smith".
- 13 -
Chern may prevail if Chern can establish that it was the
first to conceive the invention and that it exercised reasonable
diligence from a time prior to Yamada's conception until its own
reduction to practice. 35 U.S.C. § 102(g); 204 F.3d at 1097, 53
USPQ2d at 1698. Chern must establish that it conceived prior to
Yamada's 9 December 1991 Japanese filing date and that Chern was
reasonably diligent from a time prior to 9 December 1991 until
Chern's effective filing date of 6 March 1992.
Conception
Conception is the formation in the inventor's mind of a
definite and permanent idea of the complete and operative
invention as it is thereafter to be applied in practice. Cooper
v. Goldfarb, 154 F.3d 1321, 1327, 47 USPQ2d 1896, 1901 (Fed. Cir.
1998). The inventor must recognize and appreciate the invention
at the time, i.e., there is no nunc pro tune conception. Breen
v. Henshaw, 472 F.2d 1398, 1401, 176 USPQ 519, 521 (CCPA 1973).
Corroboration is required to prove conception. Price v. Symsek,
988 F.2d 1187, 1190, 26 USPQ2d 1031, 1033 (Fed. Cir. 1993).
Chern alleges that it conceived of the invention and had
independent corroboration of the conception by at least August 1,
1991. To demonstrate conception and corroboration of the
conception, Chern relies on the Tnvention Disclosure (Ex. 2002)
and the affidavits of Chern (Ex. 2001) and Trent (Ex. 2010).
Yamada makes several arguments as to why Chern has fa,-,,d to
14
establish, by a preponderance of the evidence, its conception.
The first of these is that the Invention Disclosure fails to
describe the invention with particularity (Paper 27 at 2, Paper
28 at 5).
Specifically, Yamada argues that the Invention Disclosure
(Ex. 2002):
[F]ails to describe every feature recited by the count with
particularity because it lacks explanations of the cryptic
statements therein regarding the operation of the circuits
discussed and depicted[,] the numerous components cited and
depicted, how the components in the circuits operate
individually and together, how the experimental measurements
were obtained and what they mean, and how the documents of
Exhibit 2002 relate to each other. In addition, several
contradictions exist between the documents of Exhibit 2002,
and no explanation is provided regarding these
contradictions. (Paper 28 at 6).
Yamada has failed to sufficiently explain why the Invention
Disclosure does not, by itself, describe with particularity the
elements of the count. Specifically, Yamada has failed to
sufficiently explain why the "first circuit diagrarff'6 of the
drawing attached to the Invention Disclosure form fails to show
the elements of the count.
Yamada does not specifically address whether the "first
circuit diagrarr(' does or does not illustrate the elements of the
6 The "first circuit diagramý' is what Yamada refers to as
the portion of the drawing that includes the inverters connected
together and connected to the charge pump. The remaining
depictions in the drawing and handwritten notes are not part of
what Yamada has labeled the "first circuit diagrarff' (Paper 28 at
10).
15 -
count'. Instead, Yamada argues that the drawing itself, fails to
provide an explanation of how any of the circuit diagrams or
handwritten notations in the drawing relate to the invention of
the count (Paper 28 at 12).
It is not apparent why such an explanation is necessary.
The "first circuit diagram" of the drawing shows the elements of
the count. The "first circuit diagram" shows a ring oscillator
comprisingan odd number (13) of inverters (labeled LPWR OSC
INV). The oscillator is connected to a charge pump.
Specifi.cally the output of the last inverter (annotated as "N")
is connected to a charge pump (annotated as "Z"). The output of
the last inverter is also connected to an input of the first
inverter. The output of each inverter X is connected to the
input B of a succeeding inverter. A secondary input A of each
inverter is connected to the output X of a 7t' proceeding
inverter. (Findings 36-40).
A picture can be worth a thousand words. The "first circuit
diagram" by itself, without further explanation, describes an
embodiment within the scope of the count, Yamada has failed to
sufficiently demonstrate why one having ordinary skill in the art
would need an explanation to understand what the drawing shows.
ý During oral argument, counsel for Yamada indicated that
the "first circuit diagramý' did show the elements and connections
recited in the count.
16
Drawings alone may provide a written description of an invention
as 35 U.S.C. § 112 requires. Vas-Cath, Inc. v. Mahurkar, 935
F.2d 1555, 1565, 19 USPQ2d 1111, 1118 (Fed. Cir. 1991). If
drawings alone are sufficient to satisfy the written description
requirement of 35 U.S.C. 112, T 1, then obviously certain
drawings do not need further explanation.
Yamada additionally argues that (1) there is no indication
that the drawing was attached to the Invention Disclosure form
(Paper 28 at 9), and (2) the drawing is unsigned and not
witnessed (Paper 28 at 11).
Apparently, Yamada is challenging the authenticity of the
drawing'. Chern has provided the declarations of Wen-Foo Chern
and Trent to establish that Wen-Foo Chern made the drawing and
that the drawing was attached to the Invention Disclosure form
that both Wen-Foo Chern and Trent signed (Findings 30-35).
Chern, then has sufficiently authenticated the drawing for it to
be admissible in evidence.
During an interference, a party is given an opportunity to
object to the admissibility of an opposing parties evidence
(Paper 1, Notice Declaring Interference, T 33). Yamada did not
8 F.R.E. 901(a) sets out the general rule for
authentication:
The requirement of authentication or identification as
a condition precedent to admissibility is satisfied by
evidence sufficient to support a finding that the'matter in
question is what its proponent claims.
- 17
object to the evidence submitted by Chern. Furthermore, Yamada
did not cross examine Wen-Foo Chern or Trent. Based on the
record before us, Yamada has failed to sufficiently demonstrate
that the facts presented by Chern are inaccurate.
Yamada further argues that the "third note" of the
handwritten notes attached to the Invention Disclosure form (Ex.
2002, R-14) does not describe and is contradictory to what is
shown in the "first circuit diagram" (Paper 28 at 17). Yamada
fails to sufficiently demonstrate that the third note refers to
the "first circuit diagram". Part of the "third note" is a block
circuit diagram with annotations that are referenced in the
handwritten notes. The same annotations do not appear in the
"first circuit diagram". Accordingly, a more reasonable
interpretation of the "third note" is that it refers to that
circuit that is part of the "third note" and not the "first
circuit diagram". Yamada has failed to sufficiently demonstrate
otherwise.
Yamada makes several additional arguments regarding (1) the
other circuits on the drawing, (2) the handwritten notes on the
drawing, (3) the handwritten notes attached to the Invention
Disclosure form and, (4) the handwritten notes made on the
Invention Disclosure form. Essentially, Yamada argues that the
information provided for in items 1-4 is inaccurate, incomplete,
inconsistent, and fails to describe the count (Paper 28 at 7-22).
The additional arguments made by Yamada regarding items (1)
18 -
(4) fail to demonstrate that.the "first circuit diagram" does not
provide a written description of the count. As stated above,
Yamada does not argue that the "first circuit diagram" does not
describe the count. Yamada does not argue that the components
shown in the "first circuit diagram" are not what they appear to
be.
Not every single paragraph or separate note within the four
corners of Chern's Invention Disclosure must describe the same
circuit, or describe the elements of the count. All that is
necessary is that somewhere within the document there exists a
description for at least one embodiment of the subject matter of
the count. Accordingly, we need not and have not considered each
additional argument made regarding items (l)-(4).
Yamada argues that the affidavits that Chern has submitted
fail to explain with particularity the Invention Disclosure as
required by Rule 671(f) (Paper 28 at 22).
Wen-Foo Chern indicates that he made the drawing that is
attached and a pa rt of the Invention Disclosure (Findings 24, 33
and 34). Trent indicates that he read and understood the
Invention Disclosure (Finding 30). Trent further states that the
Invention Disclosure he saw included the drawing that is part of
Chern Ex. 2002 (Findings 31 and 32).
While Wen-Foo Chern does not describe how each element of
the count relates to the elements in, for exýiaple, the "fii ý.
circuit diagram", he does state that the drawing demonstrates
19 -
conception of the invention of his involved patent (Ex. 2001,
5). Trent states that Wen-Foo Chern disclosed an invention to
him (e.g., the Invention Disclosure) that is embodied in the
Chern involved patent (Ex. 2010, $ 3). In its brief, Chern
argues that "[e]ven a casual comparison between Chern's
rudimentary drawing (R-13) and the '529 patent drawing Figure 8
leaves no doubt that the invention originally conceived by Chern
on May 14, 1991 corresponds precisely to the invention of the
count in this interference" (Paper 24 at 16).
Rule 671(f) states that:
The significance of documentary and other exhibits
identified by a witness in an affidavit or during oral
deposition shall be discussed with particularity by a
witness.
Rule 671(f) specifies that the significance of the exhibit
be discussed with particularity. Both Wen-Foo Chern and Trent
discuss the significance of the Invention Disclosure as discussed
above. The purpose for having exhibits described with
particularity is so that what the exhibits show, in substance,
can be understood. The level or extent of "particularity" is not
specified, and rightfully so. It need only be sufficient for a
fair understanding of the substance of the exhibit. Here, the
"first circuit diagram" shown in the exhibit requires no further
explanation. Yamada has failed to sufficiently demonstrate that
something else is required.
Yamada lastly argues that the drawing and notes of the
20
Invention Disclosure are not corroborated (Paper 28 at 27).
Yamada argues that it is unclear that Chern made the drawing and
notes, since neither were signed by Chern or witnessed. As
explained above, Chern did sign the Invention Disclosure, and
Chern testified that (1) the drawing and notes were his and that
(2) the drawing and notes were attached to, and a part of, the
Invention Disclosure (Findings 33-35).
The testimony of Trent corroborates Chern's story. Trent
testifies that he signed the Invention Disclosure and that the
drawing and notes were part of the Invention Disclosure that he
signed (Findings 32, 34 and 35). Trent further testifies that he
is able to recognize Chern's handwriting and that the handwritten
notes were made by Wen-Foo Chern (Finding 31). The Information
Disclosure, which includes the drawing and notes, was signed by
both Trent and Chern. It is not apparent, and Yamada has failed
to explain, why every page of the Information Disclosure need be
signed.
Yamada, through counsel, argues that-it may be that the
drawing and notes attached to the Invention Disclosure were
really not the work of Chern (Paper 28 at 28). Yamada further.
argues that it is doubtful that Trent could, after ten years, be
able to recognize Wen-Foo Chern's handwriting, or that Chern's
handwriting was so distinct to make it memorable to Trent. The
arguments are based on attorney argument alone. Yamada did not
cross examine Wen-Foo Chern or Trent to determine if there was
21
more to the story than that conveyed by Chern. Yamada has not
presented a sufficient basis for us to find that the drawing and
the notes are not the work of Chern.
Yamada further argues that the record is unclear as to
whether the drawing and notes were actually attached to the
Invention Disclosure or even existed contemporaneously with the
Invention Disclosure (Paper 28 at 30). Yamada directs us to that
portion of the Invention Disclosure form (paragraph 3) that
states the following:
INFORMATION CONCERNING THE INVENTION: Attach complete
description, including drawings or sketches and articles
relevant to the invention. (Ex. 2002, R-11),
Yamada argues that below this statement is a space to list
or discuss any attachments that may be attached to the Invention
Disclosure form. Yamada points out that although all of the
other parts of the form are complete with handwritten entries,
there is nothing in the space provided below part 3. Yamada
submits that this lack of entry below part 3 indicates that, at
the time Wen-Foo Chern and Trent signed the Invention Disclosure
form, there were no attachments. The fact that Meza did not
receive a complete Tnvention Disclosure (Finding 41(g)-(i)),
Yamada argues, further indicates that the drawing and notes were
not originally attached to the Invention Disclosure form (Paper
28 at 31).
Yamada's arguments are not persuasive. First, and foremost,
22
both Chern and Trent testify that when they signed the Invention
Disclosure, the drawing and notes were attached to the form
(Findings 30-35). That there were no handwritten entries below
part 3 on the form is not an indication that something was not
attached. The other parts of the form end in a colon (:), or
question mark (?), or ask for'an entry to be made (Please
identify related invention disclosures ... ). Unlike all of the
other parts of the form that invite entry of notes, the third
part ends with a period. There is no invitation to provide
comments below part 3. Part 3 asks the reader to attach, not
describe, drawings, descriptions, etc. All indicating that no
entry was required.
Meza testifies that the Invention Disclosure Was incomplete
(Ex. 2011, 1 7). Meza does not indicate why the Invention
Disclosure was incomplete. Thus, Yamada is guessing that the
drawing and notes were not attached to the Invention Disclosure
form when it was sent to Meza. Even if the drawing and notes
were not attached at the time Meza received the Invention
Disclosure, that does not negate the fact that both Chern and
Trent testified that the drawing and notes were attached at the
time Trent signed the Invention Disclosure on I August 1991.
For the reasons given above, Chern has established by a
preponderance of the evidence that it conceived of the invention
of the count at least by 1 August 1991, which is prior to
Yamada's effective filing date of 9 December 1991. Yamada has
23 -
failed to sufficiently rebut Chern's prima facie showing.
Diligence
Chern need show diligence from a time prior to 9 December
1991, until its filing date of 6 March 1992, e.g. the "critical
period". 35 U.S.C. § 102(g). Chern submits evidence of events
that allegedly demonstrate that Chern was diligent during the
critical period (Finding 41).
1
There is at least one particular time period during the
critical period that is troublesome. Wen-Foo Chern testifies
that he received a draft of his '339 application on or about 10.
January 1991 (Finding 41(hh)). Wen-Foo Chern further testifies
that from 10 January to 4 February he reviewed the draft and
provided comments to Meza. There is evidence of a phone call
between Meza and Wen-Foo Chern that occurred on 24 January 1992
(Finding 41(jj)). Meza testifies that sometime prior to 13
February 1992, he received written comments from Wen-Foo Chern
regarding '339 (Finding 41(11)).
Based on the evidence presented by Chern, Chern has failed
to sufficiently demonstrate that it was diligent during at least
the time from 10 January 1992 until 13 February 1992. During at
least part of that time, Wen-Foo Chern states that he reviewed
the '339 draft application. Chern provides no convincing
explanation as to why it took Wen-Foo Chern approximately one
month to review the draft application and to ýeturn it to M:--.
Absent a convincing explanation, we decline to speculate or make
24 -
any inferences.
At first glance, it would appear that this case is analogous
to Sletzinger v. Lincoln, 410, F.2d 808, 161 USPQ 725 (CCPA
1969), where a determination was made that a period of almost two
weeks (from June 27 to July 9) was not toolong for inventors to
review a draft application. In Sletzinger, however, three
inventors reviewed the draft application. Here, there was only
one. More importantly, in Sletzinger, evidence was presented to
excuse the inference that the amount of time to review the draft
application was excessive. Specifically, Judge Rich, speaking
for the CCPA stated:
That the total period of review by the inventors was not
unreasonable in view of the length of the application and
the nature of the technical subject matter appears clear
from the affidavit of the Patent Department Section Head ...
(Emphasis added). 410 F.2d at 812, 161 USPQ at 728.
In Sletzinger, the Patent Department Section Head provided
testimony regarding how long it would take a single inventor to
review an application. The Patent Department Section Head
additionally explained that the inventors were aware of the
importance of careful review. The Patent Department Section Head
also stated that the application was lengthy and the subject
matter technically difficult.
In contrast, Chern has failed to direct us to evidence that
would account for the approximately one month period of time
duringwhich Wen-Foo Chern had the draft application in his
Possession. Based on the record, there is no demonstration that
- 25 -
the application was lengthy, or that the subject matter was
particularly difficult. Indeed, the final product, e.g. the
Chern patent is less than four pages in text (absent the
drawings). There is no testimony from any "Patent Department
Head" to testify that it would normally take so much time for an
inventor to review a patent application in this art.
Absent such an explanation, we can only come to the
conclusion that Chern has not sufficiently shown that it was
diligent during that time. The reasonable diligence standard
"balances the interest in rewarding and encouraging invention
with the public's interest in the earliest possible disclosure of
innovation." Griffith v. Kanamaru, 816 F.2d 624, 626, 2 USPQ2d
1361, 1362 (Fed. Cir. 1987). Here, Chern has failed to
sufficiently demonstrate that it was reasonably diligent such as
to provide the public with the earliest possible disclosure of
its invention. Where the first to conceive has failed to
demonstrate that it was reasonably diligent during the critical
period, there is no reason, or justificati-on, to allow it to
prevail over another who is the second to conceive but who has
made prompt disclosure by the filing of a patent application.
Our decision is consistent with the one in D'Amico V. Koike,
347 F.2d 867, 146 USPQ 132 (CCPA 1965), where an unexplained one
month period of time during the critical period was found to be
excessive. In D'Amico, Judge Rich, again speaking for the CCPA
stated that:
26 -
We agree with the general principles which appellant
seems to be advocating, namely, that a rule of reason should
be followed in cases of this kind and that courts should be
somewhat liberal in determinations of diligence of attorneys
and of their clerical and stenographic staffs, since the law
cannot presume that such people can immediately begin and
expeditiously perform'their duties as soon as work appears
on their desks. Nevertheless we think that appellant is
attempting to use those principles as substitutes for record
evidence, of which there is very little.
As we view this appeal, appellant asks us to rule that
even after a patent application is in draft form, with
finished drawings, the acts of (1) considering and approving
the application by a supervisory attorney, (2) final
checking, (3) placing the approved and checked draft
application in final form, and (4) preparing the formal
papers for execution constitute "reasonable diligence,"
within the meaning of 35 U.S.C. 102(g), if performed within
a period of two months.
Obviously such a ruling must depend on a great number
of circumstances such as, but not limited to, complexity of
the invention, length of the application, detail of the
drawings, experience, workload and availability of the
attorney, availability of the draftsman and the inventor
during the period involved, size of the attorney's staff,
procedure and policy in reviewing the application,,type and
thoroughness of the review, number of people involved in
preparing the application and their location, and the number
of changes which the subject application underwent.
Certainly, evidence as to all these factors need not be
of record; possibly evidence as to only one or two would
suffice in certain cases. However, in the present appeal we
kno -w essentially nothing about the handling of the
application during the two-month period except that (a)
Breen did in fact "consider and approve" theapplication,
and (b) the other work, i.e., checking, placing in final
form, and preparing the formal papers, was done sometime.
There is no end to the inferences which might be drawn from
the scanty record before us and we prefer not to indulge in
them, but we cannot overlook the fact that Koike's priority
date falls nearly midway in this two-month period and it is
certainly possible that all of D'Amico's activity took place
during the period prior to October 29, whereupon the
application lay idle for nearly one month awaiting execution
by the inventor. Be that as it may, that month is the
critical month and the record contains no evidence, even of
the weakest sort, whether in it anything occurred.
Like D'Amico, Chern provides little evidence as to what
27
occurred during the approximately one month period that Wen-Foo
Chern had the draft application, or why it took Wen-Foo Chern so
long to review the draft application. We only know that on 24
January 1992, Meza and Wen-Foo Chern discussed the application.
There are other unaccounted for gaps during the critical
period. From 2 November 1991 until 30 December 1991, Meza did no
work on the '339 application. Chern argues that Meza was working
through his backlog on other cases, and on related cases (Paper
24 at 19). While the diligence law permits an attorney to work
in this manner', the law also specifies that "the attorney has
the burden of keeping good records of the dates when cases are
docketed as well as the dates when specific work is done on the
applications." Bey v. Kollonitsch, 806 F.2d 1024, 1028, 181 USPQ
967, 970 (Fed. Cir. 1986).
Here, there is no account for the time from 6 December 1991
until 18 December 1991. Meza states that "on or about" 6
December 1991 he prepared a letter to Chern regarding a draft
application '340 (Finding 41(t)). Based on the record, no work
was performed until 18 December 1991, at which time Meza prepared
a letter to Micron regarding an unrelated application (91-095)
(Finding 41(w))'. Chern argues that Meza worked on the 91-095
application, an older case on Meza's docket, prior to the time
9 See Bey v. Koiionitsch, 806 F.2d 1024, 1028, 181 usPQ 967,
970 (Fed. Cir. 1986), for a discussion regarding reasonable
diligence and work on related cases.
28 -
Meza prepared the letter on 18 December 1991 (Paper 24 at 17).
In support of its argument, Chern directs us to the letter Meza
sent to Micron regarding the 91-095 draft application (Ex. 2017).
The letter by itself, however, does not indicate that Meza
worked on the application for substantial parts of every working
day from 6 December 1991 until 18 December 1991. The letter
merely indicates that Meza sent a draft application to Micron.
Meza does not testify that he was working on the 91-095
application during the time of 6 December 1991 until 18 December
1991. Chern fails to direct us to evidence that indicates that
Meza was working on the 91-095 application, or indeed, that Meza
Was doing anything from 6 December 1991 until 18 December 1991.
There is also a gap of time from when Meza completed the
final draft of '339 on 14 February 1992 until "on or about" 24
February 1992, when Wen-Foo Chern received the final application
for execution. Chern argues that on 17 February 1992, Meza had a
conference call with a Micron representative regarding the '339
application (Finding 41(nn)). Meza does not testify as to the
conference call. Chern relies solely on the billing records for
'339 that indicate that a call took place between Meza and
J. Smith on 17 February 1992. Assuming that a call was made to
discuss the status of '339, there is no account for the other
nine days, or the rest of the time on 17 February 1992.
These two additional gaps alone may not '-e enough to
conclude that Chern failed to sufficiently demonstrate that it
29 -
was diligent. However, when coupled with the approximately one
month period of time that the draft application was in Wen-Foo
Chern's possession, we conclude that Chern has failed to
sufficiently demonstrate that it was diligent during the critical
period.
D. Judgment
Upon consideration of the record, it is
ORDERED that judgment on priority as to Count 1 (Paper 1,
page 49), the sole count in the interference, is awarded against
junior party WEN-FOO CHERN.
FTJRTHER ORDERED that junior party WEN-FOO CHERN is not
entitled to a patent containing claims 1-20 (corresponding to the
count) of U.S. patent 5,182,529 issued 26 January 1993, based on
application 07/847,331, filed 6 March 1992.
30
FURTHER ORDERED that if there is any settlement agreement
which has not been filed, attention is directed to 35 U.S.C.
§ 135(c) and 37 CFR § 1.661.
FRED E. MCKELVEY, Senior
Administrative Patent Judge
)BOARD OF PATENT
MESON LEE APPEALS AND
dministrative Patent Judge INTERFERENCES
f .7-f4EbLEY
Administrative Pate Judge
31
cc (via federal express):
Attorney for Chern:
Thomas J. D'Amico, Esq.
DICKSTEIN SHAPIRO MORIN & OSHINSKY LLP
2101 L Street, N.W.
Washington, D.C. 20037
Attorney for Yamada:
Robert J. Frank, Esq.
VENABLE
1201 New York Avenue, N.W.
Suite 1000
Washington, D.C. 20005-3917
32