Interference No. 103,208
Hoshino et al. v. Tanaka
The APJ correctly stated that the burden is on Hoshino to
demonstrate separate patentability of the proposed counts, and
not on Tanaka to demonstrate lack of separate patentability.
The
APJ denied Hoshino’s Motion H2 on the basis that Hoshino
failed to demonstrate separate patentability of the proposed
new counts. The APJ expressly stated (Decision at 9) that his
decision on Hoshino’s Motion H2 was reached without reliance
on the evidence submitted by Tanaka in support of Tanaka’s
opposition to Motion H2, i.e., the Larky and Fisher
declarations. The APJ also held that evidence accompanying
Hoshino’s reply could not bolster inadequate showings in
Hoshino’s prima facie case for relief.
The APJ did not specifically discuss the evidence submitted by
Hoshino in a reply to Tanaka’s opposition to Motion H2.
On page 7 of the attachment to the notice declaring the
interference, the parties were specifically reminded that:
With respect to all motions brought under the
new interference rules, the moving party bears the
burden of making out a prima facie case of
entitlement to the relief sought. Kubota v.
Shibuya, ___ F.2d ____, 17 USPQ2d 1418, 1422-23
(Fed. Cir. 1993); Patent Interference Practice
Burden of Proof - Notice of Proposed Rulemaking, 58
Fed. Reg. 528 (Jan. 6, 1993), 1147 O.G. 11 (Feb. 2,
- 16 -
Page: Previous 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 Next
Last modified: November 3, 2007