Interference No. 105,058
Schaenzer v. Knight
engineer whose answer supports the relief requested. An unexplained failure by the party with
the burden of proof to produce the most probative evidence can, itself, be very telling. Cf
Crown International v. Solutia, Inc., 289 F.3d 1367, 1377 n.4, 62 USPQ2d 1917, 1923 n.4 (Fed.
Cir. 2002) (expressing frustration with a party's failure to generate test data to support its
argument); accord Borror v. Herz, 666 F.2d 569, 573-74, 213 USPQ 19, 23 (CCPA 198 1)
(considering the effect of missing inventor testimony). Had the testimony of the inventors been
submitted, there would have been no issue with regard to selective production of testimony.
Because the administrative patent judge was disturbed by the potential of selective
production of testimony, counsel for the junior party was asked to cure the problem by making a
written representation, on behalf of the real party in interest, that the particular features specified
in Schaenzer's claims 3 and 4 and relied on for patentable distinction were not known in the art
at the time of the applicant's invention. SeeFactý32. Counsel for the junior party agreed. See
Fact T 33. Joint preliminary motion 3 was then supplemented by a filing on September 17, 2003.
(Paper No. 40). In that supplement, however, rather than representing that the particular features
added by claims 3 and 4 and relied on for patentable distinction, i.e., a mesa including a plateau
adapted to couple light to the data surface through an evanescent field (claim 3) and a mesa
having a tapered side wall (claim 4), were not known, the representation was made that the
entirety of the subject matter of claims 3 and 4 including the features of independent claim I and
dependent claim 2, whichever the case may be, were novel. As such, the representation actually
made by counsel for the junior party is substantively very different from and not an equivalent by
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