Interference No. 105,313
Tomita v. Godil
prohibited in the absence of a showing of good cause, no different from any other additional
evidence tending to show an actual reduction to practice. See, e.g., In re Zurko, 258 F.3d 1379,
1385-86, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001) (“As an administrative tribunal, the Board
clearly has expertise in the subject matter over which it exercises jurisdiction. This expertise
may provide sufficient support for conclusions as to peripheral issues. With respect to core
factual findings in a determination of patentability, however, the board cannot simply reach
conclusions based on its own understanding or experience – or on its assessment of what would
be basic knowledge or common sense. Rather, the Board must point to some concrete evidence
in the record in support of these findings.”); Fromson v. Antiec Printing Plates, Inc., 132 F.3d
1437, 1448, 45 USPQ2d 1269, 1277 (Fed. Cir. 1997)(Mayer, C.J., concurring – “But, I am
neither an expert in the field nor one of ordinary skill in the art despite how much I think I
‘know’ about a process I once studied. Nor do my colleagues on this court or the district court
possess such expertise, and even if they did, they would have to defer to the record made in the
case.”)
If the second declaration of James Hunter is necessary to explain the material in party
Tomita’s original Rule 608(b) submission, e.g., how it would have been read and understood by
one with ordinary skill in the art, it should have been included in that submission, not provided
for the first time in the response to the show cause order. Thus, even if the second declaration
indeed takes on the character alleged by party Tomita, it is not entitled to consideration.
In any event, the second declaration of James Hunter is not what party Tomita purports it
is. It is not a declaration which is limited to an opinion on how Tomita’s original Rule 608(b)
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