In an appeal of an interference decision, the U.S. Court of Appeals for the Federal Circuit reversed a decision of the Board of Patent Appeals and Interferences (the Board) of the U.S. Patent and Trademark Office (USPTO) because the Board impermissibly relied on its own expertise to reach a conclusion not supported by substantial evidence in the record. Robert D. Brand v. Thomas A. Miller, Case No. 06-1419 (Fed. Cir., May 14, 2007) (Dyk, J.).
U.S. Patent No. 5,865,232 naming as inventor Thomas Miller of Miller Veneers is directed to a method of more efficiently cutting wood veneer from logs. U.S. patent application Serial No. 09/377,120 names Robert Brand, of Capital Machine Co., as an inventor and claims the same invention. Miller was one of Capital’s customers, and the two companies had had a close working relationship. Miller argued that he was the first to conceive and reduce to practice. Miller further argued that Brand had derived the invention from Miller.
The Board denied Miller’s priority claim, which he did not appeal. Miller based his derivation argument on two drawings that he had allegedly shown Brand before Brand’s conception of the invention. The Board accepted Miller’s argument, reasoning that one skilled in the art would have recognized the suitability of the subject of one of the drawings for securely supporting a component in a position depicted in the other drawing. Furthermore, the Board held that one of the drawings alone was sufficient to teach one of ordinary skill in the art how to practice the invention. However, the Board did not cite any testimony or any support in the written record to support its conclusions.
On appeal, the Federal Circuit found that the Board’s decision was not supported by the evidence in the record. According to the Court, because the dispute was "a contested proceeding involving ‘resolution of conflicting, private claims to a valuable privilege,’ it is particularly important that the agency’s decision on issues of fact be limited to the written record made before the agency." The Court noted that a patent interference is a contested case, and the Board must act as an "impartial adjudicator." The Court reminded the Board that "it is impermissible for the Board to base its factual finding on its expertise, rather than on evidence in the record, although the Board’s expertise appropriately plays a role in interpreting record evidence." Here, the Board found that a person of skill in the art would have determined how to make the invention from drawings without any testimony to that effect. Thus, the Court concluded that the Board "substituted" rather than "interpreted" the evidence.
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