remaining claims, to Sibner at the time of the invention3.
Sibner relies on its Exhibit A to demonstrate the matter asserted. Exhibit A is copy of an
unsigned agreement and an e-mail message from Jeffrey Sibner to Ms. Orzechowski, stating that
the agreement was executed on “7/11/96.” The agreement is apparently not an assignment of
rights to any invention, but rather is a confidentiality agreement between Stardent and Jeffrey
Sibner. The agreement explains that Stardent wishes to form a business relationship with Sibner,
and largely sets forth terms for protecting Stardent proprietary information from exploitation by
Sibner. Sibner has not directed our attention to any section of the agreement where it is
indicated that Gilbert was under an obligation to assign the subject matter involved in this
interference. Nor has Sibner explained why the agreement as a whole reflects that Gilbert was
under an obligation to assign.
That counsel for Sibner would represent such an agreement as demonstrating an
obligation to assign is disturbing and frustrating. Sibner must show good cause why judgment
should not be entered against it. Submitting an unsigned, apparently non relevant agreement to
the board falls far short from the good cause standard required.
We make no comment on Sibner’s proposed amendment for the Gilbert application. To
the extent that the assignee of the Gilbert application, now said to be Jeffrey Sibner seeks to
make such changes, he may do so during ex parte prosecution. The terminal disclaimers
3 35 U.S.C. §103(c) provides:
Subject matter developed by another person, which qualifies as prior art only
under subsection (f) or (g) of section 102 of this title, shall not preclude
patentability under this section where the subject matter and the claimed
invention were, at the time the invention was made, owned by the same person or
subject to an obligation of assignment to the same person. (Emphasis added).
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