Interference No. 105,125
Chaffee v. Skulnick
§ 1.617 Summary Judgment Against Applicant
(a) An administrative patent judge shall review any evidence filed by an
applicant under § 1.608(b) to determine if the applicant is prima facie entitled to
a judgment relative to the patentee. If the administrative patent judge determines
that the evidence shows the applicant is prima facie entitled to a judgment
relative to the patentee, the interference shall proceed in the normal manner under
the regulations of this part. If in the opinion of the administrative patent judge'the
evidence fails to show that the applicant is prima facie entitled to judgment
relative to the patentee, the administrative patent judge shall, concurrently with
the notice declaring the interference, enter an order stating the reasons for the
opinion and directing the applicant, within a time set in the order, to show cause
why summary judgment should not be entered against the applicant. (Emphasis in
original).
In turn, 37 CFR § 1.608(b), in pertinent part, states as follows:
When the effective filing date of an application is more than three months
after the effective filing date of a patent, the applicant, before an interference will
be declared, shall file evidence which may consist of patents or printed
publications, other documents, and one or more affidavits which demonstrate that
applicant is prima facie entitled to a judgment relative to the patentee and an
explanation stating with particularity the basis upon which the applicant is prima
facie entitled to the judgment. Where the basis upon which an applicant is
entitled to judgment relative to a patentee is priority of invention, the evidence
shall include affidavits by the applicant, if possible, and one or more
corroborating witnesses, supported by documentary evidence, if available, each
setting out a factual description of acts and circumstances performed or observed
by the affiant, which collectively would prima facie entitle the applicant to
judgment on priority with respect to the effective filing date of the patent.
(Emphasis in original).
Despite the name of Rule 1.617, "Summary judgment against applicant," the junior party
applicant, the non-movant, has the burden of proof to show why it is entitled to judgment on
priority. See 37 CFR § 1.608(b); Schendel v. Curtis, 83 F.3d 1399, 1402, 38 USPQ2d 1743,
1746 (Fed. Cir. 1996). The policy behind requiring a junior party who has filed an application
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