Appeals Board Must Base Decisions On Record, Not Its Own Expertise

In an appeal of an interference decision, the U.S. Court of Appeals for the Federal Circuit reversed a decision of the Board of Patent Appeals and Interferences (the Board) of the U.S. Patent and Trademark Office (USPTO) because the Board impermissibly relied on its own expertise to reach a conclusion not supported by substantial evidence in the record. Robert D. Brand v. Thomas A. Miller, Case No. 06-1419 (Fed. Cir., May 14, 2007) (Dyk, J.).

U.S. Patent No. 5,865,232 naming as inventor Thomas Miller of Miller Veneers is directed to a method of more efficiently cutting wood veneer from logs. U.S. patent application Serial No. 09/377,120 names Robert Brand, of Capital Machine Co., as an inventor and claims the same invention. Miller was one of Capital’s customers, and the two companies had had a close working relationship. Miller argued that he was the first to conceive and reduce to practice. Miller further argued that Brand had derived the invention from Miller.