Interference No. 103,586
Brown filed a motion for judgment (Brown Motion 1) against Barbacid on the
grounds that the Barbacid patent claims are unpatentable under 35 U.S.C. § 112, first
paragraph for violation of the best mode.
Brown, as movant, bears the burden of proof as to the relief requested. Kubota v.
Shibuya, 999 F.2d 517, 520, 27 USPQ2d 1418, 1420 (Fed. Cir. 1993) and 37 C.F.R. §
1.637(a). The burden of proof on a preliminary motion is preponderance of the evidence.
See Kubota, 999 F.2d at 519 n. 2, 27 USPQ2d at 1420, n. 2 and Schrag v. Strosser, 21
USPQ2d 1025, 1027 (Bd. Pat. App. & Int. 1991)
We, as a panel, have carefully reviewed the Brown motion and the arguments
therein, and we find that Brown have not sustained their burden of proof to establish that
16
the Barbacid claims are in violation of the best mode. 35 U.S.C. § 112, first paragraph.
The first paragraph of 35 U.S.C. § 112 provides, in relevant part, that the
specification “shall set forth the best mode contemplated by the inventor of carrying out his
invention. 35 U.S.C. § 112.
Best mode is a question of fact. Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d
1524, 1535-1536, 3 USPQ2d 1737, 1745 (Fed. Cir.), cert. denied, 484 U.S. 954 (1987).
The purpose of the best mode requirement is to ensure that the public, in exchange for the
37 C.F.R. § 1.655 was amended to emphasize that a panel of the Board will16
resolve the merits of an interference as a panel without deference to any interlocutory
order. The abuse of discretion standard applies only to interlocutory procedural orders.
See Consideration of Interference Rulings at Final Hearing in Interference Proceedings.
F.R. Vol 64, No. 50 (March 16, 1999) pp. 12900-12902.
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