Before Michel, Plager, and Schall, Circuit Judges. Michel, Circuit Judge.
NOTE: Pursuant to Fed. Cir. R. 47.6, this Disposition is not citable as precedent. It is a public record. The Disposition will appear in tables published periodically.
George H. Cavanagh, III appeals from the decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences ("BPAI" or "Board"), entering judgment against Cavanagh on the issue of priority in Interference No. 102,668. See Cavanagh v. McMahon, No. 102,668 (BPAI Feb. 10, 1998). The Board held that Cavanagh, the Junior Party in the interference, failed to prove by a preponderance of the evidence that he reduced his invention to practice prior to the filing date of Garfield W. McMahon and Dennis F. Jones (collectively, "McMahon"), the Senior Party in the interference. In an earlier decision, the Board held that Cavanagh's invention was not unpatentable due to McMahon's alleged disclosure of his invention at a meeting prior to Cavanagh's alleged date of reduction to practice. McMahon cross-appeals from that decision, arguing that Cavanagh's invention was rendered unpatentable due to the public disclosures made at the meeting. Because we hold that the Board properly entered judgment against Cavanagh for failure to prove an actual reduction to practice of his invention prior to McMahon's priority date (the filing date of the patent application), we affirm the Board's decision on this ground, rejecting Cavanagh's appeal. We need not address McMahon's alternative bases for affirmance. We dismiss McMahon's cross-appeal due to our affirmance of McMahon's entitlement to priority.
This interference was declared on August 28, 1991 between claims 1 through 28 of Cavanagh's United States Patent Application Serial No. 07/451,931 and claims 1 through 20 of McMahon's United States Patent No. 4,922,470 ("the '470 patent"), filed November 15, 1988. Cavanagh provoked the interference by copying the claims of the '470 patent in his application. The subject matter involves electro-acoustic transducers used to generate acoustic waves in water. The only Count of the interference reads as follows:
"An electro-acoustic transducer, comprising: first means for producing acoustic signals in response to a stimulus, said first means comprising a plurality of staves, each stave having two ends, with predetermined shapes, forming an enclosure;
second means for producing said stimulus, coupled to said first means; and a spaced apart pair of polygonal shaped end plates, each of said staves secured from one end plate to the other said end plate." Cavanagh, slip op. at 2.
McMahon filed a motion pursuant to 37 C.F.R. § 1.633(a) (1998) for judgment against Cavanagh's claim to priority on the grounds of unpatentability over alleged disclosures made at a November 16-20, 1987 meeting of the Acoustical Society of America in Miami, Florida ("the Miami meeting"). On July 30, 1992, the Administrative Patent Judge ("APJ") granted the motion. At a "first" final hearing limited to the patentability issue, the Board reversed the APJ's decision granting the motion, holding that McMahon's disclosures did not anticipate or render obvious the invention of Cavanagh's application.
Several years later, a "second" final hearing was held by the Board for the purpose of deciding the priority issue. The issue at that hearing was whether Cavanagh's testing of his prototype and related activities prior to McMahon's November 15, 1988 filing date constituted his actual reduction to practice of the subject matter of the Count. Although the Board acknowledged that Cavanagh had made a prima facie case of actual reduction to practice, which entitled him to contest McMahon's priority claims in an interference, the Board concluded that Cavanagh failed to meet the higher preponderance of the evidence standard required in the interference proceeding itself. In particular, the Board concluded that Cavanagh had not proven successful testing of the invention before McMahon's filing date, and that even if Cavanagh had successfully tested the invention, he did not prove any recognition of success of the testing prior to McMahon's filing date.
Although the Board held that it need not consider McMahon's arguments as to the unpatentability of Cavanagh's invention, it again considered the issue and again held that Cavanagh's claims were not unpatentable over the disclosures made at the Miami meeting.
Cavanagh appeals the Board's decision to award priority to McMahon, while McMahon cross-appeals the Board's decision denying McMahon's motion to hold the invention of Cavanagh's application claims unpatentable. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A) (1994).
Our review of the Board's ultimate determination on the issue of reduction to practice is de novo, while our review of underlying factual determinations by the Board is for clear error. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 592, 44 USPQ2d 1610, 1613 (Fed. Cir. 1997).
As an initial matter, Cavanagh argues that he satisfied his burden of proving priority by a preponderance of the evidence because (1) the APJ, by declaring the interference, determined that he had met his burden of proving a prima facie case of priority, and (2) McMahon failed to present evidence to rebut Cavanagh's arguments during the interference. Cavanagh Reply Br. at 1-3. Cavanagh's argument is flawed, because the declaration of an interference under a prima facie standard does not preclude a finding that Cavanagh's evidence failed to establish, by a preponderance of the evidence, actual reduction to practice prior to McMahon's filing date. See Bosies v. Benedict, 27 F.3d 539, 544, 30 USPQ2d 1862, 1866 (Fed. Cir. 1994) (interference declared, but junior party failed to prove priority by a preponderance of the evidence). It is axiomatic that different standards are applied in reviewing evidence for purposes of declaring an interference (prima facie standard) and in a final hearing for purposes of determining the ultimate issue of priority of invention (preponderance of the evidence standard). See 37 C.F.R. § 1.608(b) (1998) (applicant must show it is "prima facie entitled" to a judgment "before an interference will be declared"); 37 C.F.R. § 1.657(b) (1998) ("In an interference . . . a junior party shall have the burden of establishing priority by a preponderance of the evidence."); Estee Lauder Inc., 129 F.3d at 592, 44 USPQ2d at 1612-13 ("The primary question before us is whether Estee Lauder established by a preponderance of the evidence that it successfully reduced its invention to practice before the April 13, 1987, critical date."). Satisfying the prima facie standard does not necessarily satisfy the preponderance of the evidence standard as well, even when the Senior Party, here McMahon, does not present testimony of its own. See, e.g., In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583-84 (Fed. Cir. 1996) (implying that mere argument can suffice to rebut a prima facie case in a patentability context: "[t]o overcome a prima facie case, an applicant must show that the invention as claimed is adequately described to one skilled in the art. `After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of the evidence with due consideration to persuasiveness of argument.'" (citation omitted) (emphasis added)). Thus, Cavanagh cannot establish priority by a preponderance of the evidence simply by relying on the declaration of an interference based on his meeting a prima facie burden. Cavanagh also challenges the Board's finding that Cavanagh failed to prove successful testing of the invention for its intended purpose. *fn1 Cavanagh contends that the Board employed "overly strict" testing requirements when it concluded that "there must be a relationship between the test conditions and the intended functional setting . . . and the tests must prove that the invention will perform satisfactorily in the intended functional setting." Cavanagh, slip op. at 20 (quoting Koval v. Bodenschatz, 463 F.2d 442, 447, 174 USPQ 451, 455 (CCPA 1972)). Cavanagh conceded that some testing was necessary, but argues that only a minimal amount of testing was necessary to show that the invention worked for its intended purpose.
The Board found that Cavanagh's evidence of testing was inadequate because no witness, including Cavanagh, explained why the test conditions modeled the intended working environment or explained what the data generated by the tests meant. See id. at 20-21. We discern no clear error in this finding. The testing results in question appear on a graph without any indication of what the testing environment was, or what the data on the graph represents. *fn2 The testimony relied on by Cavanagh also fails to explain how the testing depicted on this graph can be viewed as successful, other than by accepting his conclusory assertions that it was successful. Cavanagh also relies on a memorandum he sent to his superior, with some allegedly successful test results attached. However, as the Board found, the superior "failed to explain why the test data [attached to the memorandum] persuade him that the tests described therein were successful." Id. at 22. In addition, the person allegedly performing the test made no reference to the test ...