United States: Judge Young Affirms Interference Decision By Board Of Patent Appeals And Interferences In Patent Dispute Concerning Hand Guard Rails For Firearms

Stephen P. Troy, Jr. v. Samson Mfg. Corp., C.A. No. 11-10384, 2013 WL 1807013 (D. Mass. Apr. 30, 2013) (Young, D.J.) [Interference; Priority of Invention]

Stephen P. Troy, Jr. ("Troy") sought review of a decision of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office ("PTO") in Patent Interference No. 105,698. The interference was a dispute over priority between U.S. Patent No. 7,216,451 ("the '451 patent") filed by Troy and U.S. Patent Application No. 11,326,665 ("the '665 application") filed by Samson Manufacturing Corporation ("Samson"). The Court (Young, D.J.) affirmed the Board's decision.

The '665 application and the '451 patent relate to a modular handguard rail for a firearm. During the interference, Troy was declared the "junior party." The Board also determined that Samson's earliest constructive-reduction-to-practice date was January 18, 2005 ("the Critical Date").

During the Board proceedings, Troy failed to show actual reduction to practice of an embodiment of the invention prior to the Critical Date. Troy also failed to show earlier conception of the invention and, thus, could not prove inurement or derivation. The Board held that Troy failed to establish priority of the '451 patent over the '651 application. As a result, Troy filed a civil action under 35 U.S.C. §146 requesting that the District Court review the Board's decision on priority.

Troy sought to introduce six affidavits as new evidence to address evidentiary gaps in the record before the Board. Citing Federal Circuit and Supreme Court precedent, the Court stated that it would consider newly proffered evidence not available at the time of the Board proceedings, but would not consider new evidence related to issues not before the Board. The District Court reviewed the Board's conclusions of law de novo and reviewed underlying factual determinations for clear error.

Burden of Proof

Troy argued that the Board misplaced the burden of proof for priority and that Samson should have been deemed the junior party. Troy claimed that the '665 application was filed using confidential drawings and images of the invention that belonged to Troy. Troy also argued that Samson should have been denied senior party status because of inequitable conduct. Troy contended that this was not a new issue because he challenged the priority determination by seeking leave to file a motion for judgment of inequitable conduct, which the Board denied.

The Court found that it was not clear that the Board had the opportunity to address this issue during the interference, and Troy failed to demonstrate why the Court should exercise its discretion and consider a new issue. The Court refused to speculate as to the content of the alleged inequitable conduct motion because it was not corroborated. The Court also found that Troy failed to articulate where, in the record, he presented arguments relating to the inequitable conduct.

Actual Reduction to Practice

Troy bore the burden of establishing priority of invention in the District Court by showing an actual reduction to practice of the invention prior to Samson's Critical Date. In order to establish an actual reduction to practice, Troy needed to demonstrate that (1) he constructed an embodiment or performed a process to meet every element of the claim and (2) the embodiment or process operated for its intended purpose.

Troy claimed that an actual reduction to practice occurred between January and February 2004 and attempted to introduce a new affidavit to supplement prior testimony submitted to the Board. The Court disregarded this evidence and stated that, without adequate corroboration, the new testimony remained insufficient to prove an actual reduction to practice.

Troy further attempted to rely on various photographs, invoices, and testimony in support of an actual reduction to practice. For example, Troy relied on photographs of the Troy Rail. However, the photographs did not include the five elements contained in the claim. Additionally, the photographs were undated and thus insufficient to corroborate Troy's testimony. Troy also attempted to introduce an invoice dated February 2, 2004 for orders of the Troy Rail taken during a trade show, but the invoice merely listed orders without describing specific components. Finally, Troy sought to introduce an affidavit of a manager of a weapons and accessories review website and a deposition of a draftsperson who prepared drawings for Troy's weapons manufacturing firm. Because the testimony concerned events that occurred after the latest reduction-to-practice date Troy claimed in the interference, the Court found that Troy was precluded from raising these issues. Had Troy desired to claim a reduction-to-practice date after February 2004, he should have done so during the interference proceeding.

Conception

Because Troy failed to establish an actual reduction to practice, he argued that he was entitled to judgment on the basis of inurement and derivation. "Inurement involves a claim by an inventor that, as a matter of law, the acts of another person should accrue to the benefit of the inventor." As a result, for inurement, Troy was required to show, among other things, that Samson was working, either implicitly or explicitly, on his behalf. To show derivation, Troy must show communication to Samson that would have enabled Samson to construct and successfully operate the invention. Both of Troy's inurement and derivation theories required him to establish conception. Troy failed to do so.

As explained by the Court, Troy needed to prove possession of every feature in the claim by a preponderance of the evidence. Troy attempted to rely on undated drawings, solid model images, and the purchase of extrusion die necessary for manufacturing his design. However, the Court found that this evidence was uncorroborated and did not demonstrate all elements of the claim.

Originally published October 8, 2013.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

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