Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 53
Interference parties are reminded that fraud and inequitable
conduct must be established by clear, unequivocal and convincing
evidence, and the party asserting misconduct carries a heavy burden of
persuasion. Driscoll v. Cebalo, 731 F.2d 878, 221 USPQ 745 (Fed. Cir.
1984); Norton v. Curtiss, 433 F.2d 799, 167 USPQ 532 (CCPA 1970).
Accordingly, unless evidence filed with a preliminary motion for judgement
(37 CFR 1.639(a)) prima facie meets this standard of proof, the motion
may be denied. If a party asserts that testimony is necessary to support
or oppose the motion (37 CFR 1.639(c)), the requirements set forth in
Hanagan v. Kimura, 16 USPQ2d 1791 (Comr. 1990), must be complied
with; for example (16 USPQ2d at 1794):
A proper request under § 1.639(c) must describe the
nature of the testimony being sought. The description must
be of sufficient detail so that the Examiner-in-Chief can
determine whether or not there is a need for the requested
testimony.
If a person is to be called as a fact witness, a
declaration by that person stating the facts should be filed
new.
If the other party is to be called, or if evidence in the
possession of the other party is necessary, an explanation of
the evidence sought, what it will show, and why it is needed
must be supplied.
Preliminary motions in the nature of "fishing expeditions," or based
on broad assertions or argument of counsel, will not be permitted. Cf.
Price v. Folsom, 208 USPQ 56 (Comr. 1980).
Neither Rule 56 nor the PTO advocate any change to Kingsdown.
Further, under 35 U.S.C. § 135(a), "[t]he Board of Patent Appeals and
Interferences shall determine questions of priority of the inventions and may determine
questions of patentability." Assuming arguendo that the inequitable conduct issue is
not necessary to decide priority, a determination of inequitable conduct is committed to
our discretion. Accord Critikon. Inc. v. Becton Dickinson Vascular Access, Inc., 120
F.3d 1253, 1255, 43 USPQ2d 1666, 1668 (Fed. Cir. 1997).
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