Representative Cases

The U.S. Court of Appeals for the Federal Circuit issued a precedential opinion ordering that judgment be entered for Brinks Hofer Gilson & Lione client, Capital Machine Co., Inc., on the issue of priority. The Federal Circuit's opinion reversed an earlier decision by the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences (USPTO) and held that Capital Machine Co. is entitled to a patent on its inventive methods of cutting veneer from wooden logs.

The Federal Circuit reversed the USPTO because it found that the [USPTO] impermissibly relied on its own expertise in determining the question of derivation. At the USPTO, Miller argued that Capital Machine derived the invention from Miller because Miller had shown Capital Machine several drawings depicting certain elements of the invention. Miller, however, failed to provide any evidence that those drawings communicated the complete invention to Capital Machine, which is required to establish derivation. Although the USPTO acknowledged that Miller Veneers failed to provide this evidence, the USPTO nevertheless found that those drawings communicated the invention to Capital Machine. Therefore, the USPTO concluded Capital Machine derived the invention from Miller Veneers. The Federal Circuit, however, reversed and the decision teaches that in the context of a contested case, it is impermissible for the [USPTO] to base its factual findings on its expertise, rather than on evidence in the record.