BELLOWS et al.v.XU et al.

Patent Trial and Appeal Board

Jun 21, 2018

13909153 (P.T.A.B. Jun. 21, 2018)

BoxInterferences@uspto.gov Filed: June 21, 2018
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

QING XU,
DANIEL CORSO,
and ALEX SORIANO,

Junior Party,
(Application 13/829,667)
v.

WILLIAM B. BELLOWS,
JONATHAN M. PACELLA, JONATHAN K. MOUNTZ,
JENNIFER E. CRAIG, and NATHANAEL SAINT,
Senior Party,
(Patent 8,844,072)

Patent Interference No. 106,036
(Technology Center 3600)

Before SALLY GARDNER LANE, JAMES T. MOORE, and DEBORAH KATZ,
Administrative Patent Judges.

LANE, Administrative Patent Judge.

Judgment - Bd.R. 127(a)

2

In view of the Decision on Priority denying Xu Motion 2 for judgment on the
basis of priority of invention (Xu Motion 2, Paper 168; Decision on Priority,
Paper 208), it is
ORDERED that judgment on priority of invention as to Count 1 (Declaration
(Paper 1, 5), the sole count of the interference, is entered against junior party Qing
Xu, Daniel Corso, and Alex Soriano;
FURTHER ORDERED that the junior party claims corresponding to
Count 1, i.e., claims 19, 26, 27, 29-31, 34 and 35 of application 13/829,667
(Declaration, Paper 1, 4), are FINALLY REFUSED; 35 U.S.C. § 135(a);1
FURTHER ORDERED that the parties are directed to 35 U.S.C. § 135(c)
and to Bd. R. 205 regarding the filing of settlement agreements;
FURTHER ORDERED that a copy of this judgment shall be entered into the
administrative record of the involved junior party application and the involved
senior party patent; and
FURTHER ORDERED that, if a party seeks judicial review, the party must file
a notice with the Board within seven days of initiating judicial review. Bd. R. 41.8(b).
We direct the parties’ attention to Biogen Idec MA, Inc., v. Japanese Foundation for
Cancer Research, 785 F.3d 648, 657 (Fed. Cir. 2015).

1 Any reference to a statute is to statute that was in effect on March 15, 2013
unless otherwise indicated. See Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011).
3

Attorney for Xu:

Daniel A. Crowe
Marie L. Riley
BRYAN CAVE LLP
dacrowe@bryancave.com
marie.riley@bryancave.com

N. Andrew Cain
Robert D. Gravois
Scott P. Amy
THOMAS HORSTEMEYER LLP
Andrew.crain@thomashorstemeyer.com
Robert.gravois@thomashorstemeyer.com
Scott.amy@thomashorstemeyer.com

Attorney for Bellows:

Timothy P. McAnulty
Barbara C. McCurdy
Robert C. MacKichan
Roger D. Taylor
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
Timothy.mcanulty@finnegan.com
Barbara.mccurdy@finnegan.com
Robert.mackichan@finnegan.com
Roger.taylor@finnegan.com

BoxInterferences@uspto.gov Entered: June 21, 2018
Tel: 571-272-979

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

QING XU,
DANIEL CORSO,
and ALEX SORIANO,

Junior Party,
(Application 13/829,667)
v.

WILLIAM B. BELLOWS,
JONATHAN M. PACELLA, JONATHAN K. MOUNTZ,
JENNIFER E. CRAIG, and NATHANAEL SAINT,
Senior Party,
(Patent 8,844,072)

Patent Interference No. 106,036
(Technology Center 3600)

Before SALLY GARDNER LANE, JAMES T. MOORE and DEBORAH KATZ,
Administrative Patent Judges.

LANE, Administrative Patent Judge.

Decision –Motions – Bd. R. 121(a)

Interference 106,036

2

I. Introduction 1
We have before us for decision Xu Motion 2 for judgment on the basis of 2
priority of invention. (Xu Motion 2, Paper 168). Bellows opposed. (Bellows 3
Opposition 2, Paper 189). Xu replied. (Xu Reply 2, Paper 191).1 4
Bellows also filed a miscellaneous motion seeking the exclusion of certain 5
evidence. (Bellows Motion 5, Paper 202). Xu opposed. (Xu Opposition 5, 6
Paper 205). Bellows replied. (Bellows Reply 5, Paper 207). 7
We also have pending before us a Xu Request for rehearing. (Xu Request 8
for rehearing, Paper 192; Board Order, Paper 190). Decision on the Request for 9
rehearing was deferred so that Xu’s arguments in the Request could be considered 10
in view of the issues raised in Xu Motion 2. (Board Order, Paper 206). 11
We GRANT Xu Motion 2 and DISMISS Bellows Motion 5 and the 12
Xu Request for rehearing. 13
14
II. Findings of fact 15
The record supports the following findings of fact, as well as the other 16
findings of fact set forth elsewhere in this decision, by a preponderance of the 17
evidence. 18
Parties 19
1. Junior party Xu is involved in the interference on the basis of its 20
application 13/829,667 (’667), filed March 14, 2013. (Declaration, Paper 1). 21

1 The panel determined that no oral argument was needed and none was
ordered.
Interference 106,036

3

2. Xu indicates that its real party in interest is Kids II, Inc. (Real Party 1
Notice, Paper 5). 2
3. Senior party Bellows is involved in the interference on the basis of its 3
patent 8,844,072 (’072), issued on September 30, 2014 from application 4
13/909,153, filed June 04, 2013. (Declaration, Paper 1). 5
4. Bellows indicates that its real party in interest is Wonderland 6
Nurserygoods Company Limited. (Real Party Notice, Paper 10). 7
Count 8
5. The count, Count 1, is claim 1 of the Bellows patent (Declaration, 9
Paper 1, 4) which reads: 10
An infant supporting apparatus comprising: 11
12
a base frame including a first and a second leg frame 13
portion pivotally connected with each other about a first pivot axis, 14
wherein the first leg frame portion includes two first leg segments and 15
a first foot portion connected with and extending between the two first 16
leg segments, the second leg frame portion includes two second leg 17
segments and a second foot portion connected with and extending 18
between the two second leg segments, the two first leg segments being 19
respectively connected pivotally with the two second leg segments 20
through two pivot structures that define the first pivot axis, the first 21
and second foot portions extending along the first pivot axis and 22
positionable on a ground surface to provide support for the infant 23
supporting apparatus; 24
a support frame assembled with the base frame, wherein 25
the support frame includes a first and a second support frame portion 26
pivotally connected with each other about a second pivot axis spaced 27
Interference 106,036

4

apart from the first pivot axis, the first and second pivot axes being 1
vertically aligned with each other; and 2
a resting support suspended from the first and second 3
support frames for receiving the placement of a child; 4
wherein when the infant supporting apparatus stands on a 5
ground surface in a deployed state, the second pivot axis is located 6
below the first pivot axis, and the second pivot axis is at a position 7
that is closer to the first pivot axis than the ground surface. 8
9
(Bellows Clean Copy of Claims, Paper 12). 10
11
6. The following claims are designated as corresponding to count 1: 12
Xu: 19, 26, 27, 29-31, 34 and 35 13
Bellows: 1-9, 11-13, 15-21 and 23-25 14
(Declaration, Paper 1, 4). 15
Benefit and priority 16
7. The parties were accorded benefit of the following applications: 17
Xu: US 61/762,039 filed February 7, 2013 18
19
Bellows: US 61/689,389, filed June 5, 2012 20
21
(Declaration, Paper 1, 5). 22
8. Bellows relies upon its earliest constructive reduction to practice date 23
of June 5, 2012, and has not filed a motion seeking judgment on the basis of 24
priority. (Bellows Priority Statement, Paper 50, 1). 25
26
Interference 106,036

5

III. Discussion 1
A person shall be entitled to a patent unless another inventor shows earlier 2
invention and the inventor has not abandoned, suppressed, or concealed the 3
invention. 35 U.S.C. § 102(g). 2 “Priority of invention goes to the first party to 4
reduce an invention to practice unless the other party can show that it was the first 5
to conceive of the invention and that it exercised reasonable diligence in later 6
reducing that invention to practice.” Priority, conception, and reduction to 7
practice are questions of law based on subsidiary fact findings. Cooper v. 8
Goldfarb, 154 F.3d 1321, 1327 (Fed.Cir.1998). Parties are presumed to have 9
invented interfering subject matter, i.e., the subject matter of the count, in the order 10
of the dates of their accorded benefit for the count. Bd. R. 207(a)(1). 11
To be sufficient a motion must provide a showing, supported with 12
appropriate evidence, such that, if unrebutted, it would justify the relief sought. 13
The burden of proof is on the movant. Bd. R. 208(b). Here Xu must prove its 14
priority case by a preponderance of the evidence. Bd. R. 207(a)(2). 15
A count is given its broadest reasonable interpretation. If it becomes 16
necessary to resolve an ambiguity in the count then it is appropriate to look to the 17
originating specification. DeGeorge v. Bernier, 768 F.2d 1318, 1321-22 (Fed. Cir. 18
1985). (“Interference counts are given the broadest reasonable interpretation 19
possible, and resort to the specification is necessary only when there are 20

2 Any reference to a statute in this decision is to the statute that was in
effect on March 15, 2013 unless otherwise indicated. See Pub. L. 112-29, § 3(n),
125 Stat. 284, 293 (2011).

Interference 106,036

6

ambiguities inherent in the claim language or obvious from arguments of counsel 1
…[and] [i]f there is such ambiguity, resort must be had to the specification of the 2
patent from which the copied claim came. (citations omitted).”); Sockman v. 3
Switzer, 379 F.2d 996, 1000. Here the originating specification is the involved 4
patent of senior party Bellows since Xu copied Bellows ’072 claim 1 (as Xu 5
claim 19). (Xu ’667 application, amendment entered August 14, 2014; See also 6
Examiner Interview Summary entered May 12, 2015). 7
8
A. Summary of parties’ positions 9
1. Xu 10
Xu argues that it conceived of an invention of Count 1 by August 8, 2011, 11
which is prior to Bellows’ earliest constructive reduction to practice date of 12
June 5, 2012. (Xu Motion 2, Paper 168, 1:16-18; FF3s 7,8). Further Xu contends 13
that it reduced to practice this invention by October 26, 2011, also prior to 14
Bellows’ earliest constructive reduction to practice date. (Xu Motion 2, Paper 168, 15
2:7-9; FFs 7,8). Xu does not allege or show diligence between its alleged 16
conception date and its alleged actual reduction to practice or earliest constructive 17
reduction to practice. 18
While Xu did not file an application on its invention until February 7, 2013, 19
Xu argues that it did not abandon, suppress or conceal the invention because its 20
inventors were engaged in continuous design and development efforts. (Xu 21
Motion 2, Paper 169, 2:25-3:3). 22

3
Finding of fact.
Interference 106,036

7

2. Bellows 1
Bellows argues that Xu has not shown an earlier conception of an invention 2
of the Count by the Xu inventors as of August 8, 2011 for at least the reason that 3
Xu failed to show that the Xu conception sketches (Ex. 2027) would have 4
conveyed a complete conception to one skilled in the art. (Bellows Opposition 2, 5
Paper 189, 6:15-8:5). Bellows further argues that Xu has not shown that the 6
prototype Xu relies upon for an actual reduction to practice worked for its intended 7
purpose. (Bellows Opposition 2, Paper 189, 8:6-16). Finally Bellows argues that 8
Xu abandoned, suppressed or concealed the invention when it delayed filing an 9
application on its invention. (Bellows Opposition 2, Paper 189, 9:5-23). 10
11
B. Xu argument for conception and reduction to practice 12
According to Xu in June of 2011 its inventor Mr. Qing “Jonas” Xu, then an 13
art and design student, began working at Kids II as a summer intern where he was 14
supervised by inventor Mr. Alex Soriano. Xu asserts that Mr. Soriano asked 15
Mr. Xu to design a folding frame for an elevated infant rocker. Xu further asserts 16
that Mr. Xu completed the requested sketches and the sketches were reviewed by 17
Mr. Soriano. According to Xu, after some back and forth where Mr. Soriano asked 18
for changes to the design, Mr. Xu and Mr. Soriano conceived of an elevated infant 19
rocker that met each and every limitation of Count 1. (Xu Motion 2, Paper 168, 20
6:5-8:5, citing Xu declaration, Ex. 2021, ¶¶ 5-11; Burns Declaration, Ex. 2061, 21
¶¶ 3-6; emails and attachments at Ex. 2022-2027). 22
Interference 106,036

8

As evidence of the conception Xu points to the following sketches (Xu 1
sketches, Ex. 2027), said to have been completed by Mr. Xu by August 8, 2011.4 2
3
4
Above are shown sketches of an infant seat (Xu sketches, Ex. 2027). 5

4 Xu filed copies of emails between Mr. Xu and Mr. Soriano, as well as
attachments to these emails, to corroborate the dates and contents of the
communications between these two inventors. Xu filed a declaration from
Mr. Chris Conrad, currently the IT Manager at the law firm representing Xu in the
interference. (Conrad Declaration, Ex. 2062, ¶ 2). Mr. Conrad is said to have over
15 years of experience in end user desktop and application support. (Conrad
Declaration, Ex. 2062, ¶ 2). Mr. Conrad testified that his review of the metadata of
the cited files confirms the dates and contents asserted by Xu. (Conrad Declaration,
Ex. 2062, ¶¶ 3-6).
Interference 106,036

9

According to Xu in September of 2011 Mr. Stephen Burns, who was vice-1
president of development at Kids II, authorized engagement of Kika, a firm Kids II 2
routinely used for such tasks, to produce a working prototype of the conceived 3
invention. The communication of the conception is said to have been from Kids II 4
product designer Alex Pusch to Kika representative Cindy Tsai via email that 5
contained renderings of the infant rocker conceived by Xu. According to 6
Mr. Pusch that email had attached to it “a PowerPoint presentation that contained 7
renderings of the elevated infant rocker concept shown in Exhibit 2027 (referring 8
to Ex. 2030).” Below are two images from the PowerPoint attachment: 9

Above are two images from the PowerPoint attachment (Ex. 2030) 10
Interference 106,036

10

(Xu Motion 2, Paper 168, 15:12-16:4, citing Pusch Declaration, Ex. 2028, ¶¶ 4-18, 1
Burns Declaration, Ex. 2061, ¶¶ 8-17; email and attachment at Ex. 2029; 2
Ex. 2030). 3
Mr. Pusch’s testimony does not clearly indicate that the Xu sketches 4
themselves (Ex. 2027) were attached to the email. In its Motion 2 Xu does not 5
provide a comparison between the images sent to Kika and the Xu sketches; 6
instead Xu only asserts that the Xu conception was communicated to Kika via 7
these PowerPoint attachment images. Mr. Pusch testifies that he understood these 8
images to have been given to him by Mr. Soriano. (Pusch Deposition, Ex. 1031, 9
39:7-10) 10
Mr. Pusch also testified that CAD files containing 3D surface data for the 11
elevated infant rocker concept shown in Exhibit 2027 were “uploaded.” These 12
uploaded CAD files do not appear to be in the record of this proceeding. (Pusch 13
Declaration, Ex. 2028, ¶ 6; Pusch Deposition, Ex. 1031, 37:12-17) 14
Xu asserts that, after some back and forth via email between Kika and 15
Kids II, primarily between Ms. Tsai and Mr. Pusch and some with the inclusion of 16
inventors Mr. Soriano and Mr. Daniel Corso, Ms. Tsai informed Kids II via email 17
that a working prototype was complete. That email is said to have contained a 18
number of images of the prototype. Those images include the following: 19
Interference 106,036

11

1
Above are images of a prototype of an infant supporting device (Ex. 2046, 2
1-3, 7). 3
4
(Xu Motion 2, Paper 168,16:5-17:11, citing Pusch Declaration, Ex. 2028, ¶¶ 7-8, 5
11-15; emails and attachments at Ex. 2031-2035, 2038, 2039-2041, 2043-2046; 6
Burns Declaration, Ex. 2061 at ¶¶ 11-12,14,15). 7
Mr. Soriano is said to have requested a video of the prototype for further 8
evaluation. According to Xu, the next day, October 27, 2011, two videos were 9
emailed from Kika to Xu, screen shots of which are included in the Xu Motion. 10
(Xu Motion 2, Paper 168, 18:8-19:8, citing Ex. 2028 at ¶ 16; Ex. 2061 at ¶ 16; 11
emails at Ex. 2048, Ex. 2049; DVD, Ex. 2050, Titles 1-2; screen shots at Xu 12
Motion 2, Paper 168:21 1-6). 13
According to Xu the prototype made by Kika, as shown in the images 14
pointed out to us in its Motion 2 and the video, is an embodiment meeting each 15
Interference 106,036

12

and every element of the invention of Count 1 that is said to have been completed 1
by October 26, 2011.5 2
3
C. Discussion of Xu’s arguments 4
Since Xu does not assert diligence, Xu must show that it actually reduced to 5
practice an invention of the Count prior to Bellows’ earliest constructive reduction 6
to practice date of June 5, 2012. Xu’s priority showing depends on whether Xu has 7
shown it reduced to practice by October 26, 2011 based on the Kika prototype 8
since Xu does not assert any other actual reduction to practice. 9
An actual reduction to practice requires proving that (1) the inventors 10
constructed an embodiment that met all the limitations of the interference count; 11
and (2) the inventors determined that the invention would work for its intended 12
purpose. Cooper v. Goldfarb, 154 F.3d 1321, 1327 (ed. Cir. 1998), citing UMC 13
Elecs. Co. v. United States, 816 F.2d 647, 652 (Fed.Cir.1987). As the moving 14
party Xu has the burden of proving that the Kika prototype was a reduction to 15
practice of the Count. Bd. R. 121(b). The Xu motion must be supported with 16
appropriate evidence such that, if unrebutted, it would justify the relief sought. 17
Bd. R. 208(b). 18

5
Xu relies upon emails between Mr. Soriano and Kika, as well as
attachments to these emails, to corroborate the dates and contents of their
communications. We note that Mr. Conrad testified that his review of the metadata
of the cited files confirms the dates and contents asserted by Xu. (Conrad
Declaration, Ex. 2062, ¶¶ 7-23).
Interference 106,036

13

1. Actual reduction to practice 1
Xu relies upon the prototype said to have been completed by Kika by 2
October 26, 2011 (images at Ex. 2046; DVD, Ex. 2050) as its reduction to 3
practice of its August 8, 2011 conception. Xu does not assert that any of its 4
inventors worked on or directed construction or testing of the prototype. (Xu 5
Declaration, Ex. 2021, ¶ 13 (“I was not personally involved in the creation of any 6
physical prototypes of the elevated infant rocker depicted in Exhibits 2023 and 7
2027 [since] my internship at Kids II ended in September 2011, and I understand 8
that no physical prototypes of the elevated infant rocker were created while I was 9
an intern at Kids II.”); Xu Deposition, Ex. 1033, 42:19-43:4, Burns Deposition, 10
Ex. 1032, 70:4-6). Accordingly we understand Xu to be relying upon inurement 11
to establish a reduction to practice even though Xu did not argue specifically for 12
inurement in its Motion 2. 13
“Inurement involves a claim by an inventor that, as a matter of law, the acts 14
of another person should accrue to the benefit of the inventor.” Cooper v. 15
Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998). Inurement cannot occur though if 16
the inventors did not have a conception of the invention. Cooper v. Goldfarb, 240 17
F.3d 1378, 1384 (Fed. Cir. 2001), citing Genentech, Inc. v. Chiron Corp., 220 F.3d 18
1345, 1354 (Fed.Cir.2000). (“As to whether Cooper can obtain the benefit of 19
Goldfarb's recognition that the material worked for the intended purpose of the 20
invention, there are ‘at least three requirements that must be met before a non-21
inventor's recognition of the utility of an invention can inure to the benefit of the 22
inventor’: (1)’the inventor must have conceived of the invention;’ (2) ‘the inventor 23
must have had an expectation that the embodiment tested would work for the 24
Interference 106,036

14

intended purpose of the invention;’ and (3) ‘the inventor must have submitted the 1
embodiment for testing for the intended purpose of the invention’.” ) 2
For conception the inventors must have both the idea of the invention’s 3
structure and an operative method of making it. Amgen, Inc. v. Chugai 4
Pharm. Co., 927 F.2d 1200, 1206 (Fed. Cir. 1991); Gunter v. Stream, 573 F.2d 77, 5
79 (CCPA 1978). A question for conception is “whether the inventors had formed 6
the idea of their use for that purpose in sufficiently final form that only the exercise 7
of ordinary skill remained to reduce it to practice.” Burroughs Wellcome Co. v. 8
Barr Laboratories, Inc., 40 F.3d 1223, 1231 (Fed.Cir.1994); Sewall v. Walters, 21 9
F.3d 411, 415 (Fed. Cir. 1994). (“Conception is complete when one of ordinary 10
skill in the art could construct the apparatus without unduly extensive research or 11
experimentation.”). 12
Thus for the acts of others to amount to a reduction to practice by the 13
inventors, i.e., to inure to the benefit of the inventors, the inventors must have 14
provided sufficient information such that the construction of the invention only 15
called for ordinary skill in the art and not additional creation. See Dawson v. 16
Dawson, 710 F.3d 1347, 1352, citing 1 Robinson on Patents 532 (1890) (“At that 17
point [of conception], ‘all that remains to be accomplished, in order to perfect the 18
art or instrument, belongs to the department of construction, not creation.’”) 19
20
2. Evidence of conception 21
As evidence of conception Xu relies upon Mr. Xu’s sketches labelled 22
“Elevated Infant Seat Concept-2” reproduced above. (Xu sketches, Ex. 2027). Xu 23
argues that these sketches disclosed each and every element of Count 1 as early as 24
Interference 106,036

15

August 8, 2011. Xu Motion 2 provides arguments directing us, through annotated 1
versions of the Xu sketches, to where Xu alleges that each element of the Count is 2
found. (Xu Motion 2, Paper 168, 8:12-15:1). Xu’s position is supported almost 3
entirely by attorney argument. We do not consider this attorney argument as 4
persuasive evidence. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595, (Fed. 5
Cir. 1997). Although cited by Xu as supporting evidence, neither the testimony of 6
Mr. Xu nor Mr. Burns (Ex. 2021 and Ex. 2061, respectively) provides meaningful 7
analysis of where each element of the infant seat of the Count is found in the Xu 8
sketches and Xu does not argue that either is one of ordinary skill6 in the art. Mr. 9
Xu does not compare his sketches to the Count at all. 10
Mr. Burns asserts in a conclusory manner that the Xu sketches contain the 11
limitations of the Count without any explanation or support for his assertions. 12
(Burns Declaration, Ex. 2061, ¶ 357). Even were we to consider Mr. Burns to be 13

6 We previously found that one ordinarily skilled in the art would have
educational training in the field of mechanical engineering or industrial design
along with practical experience in the field including product design and
development. (Decision on Motions, Paper 122, 7:10-14, citing Xu Opposition 1,
Paper 83, citing Singhose Declaration, Ex. 2008, ¶ 36 and Bellows Motion 1,
Paper 48, citing Ransil Declaration, Ex. 1003 at ¶ 11). Even though Xu did not so
argue, Mr. Xu’s declaration testimony suggests that he may be so qualified.
(Xu Declaration, Ex. 2021, ¶¶ 4 and 5). Mr. Burns’ declaration testimony does not
provide his educational background or explain in any depth his practical
experience. (Burns Declaration, Ex. 2061, ¶¶ 1-3).

7 Xu Motion 2 cites to ¶¶ 33-34 of the Burns Declaration in support of
Xu’s position but we believe that Xu intended to cite to ¶ 35 since this is where
Mr. Burns asserts that the Xu sketches contain the features of Xu claim 19, copied
form Bellows claim 1 which is Count 1.
Interference 106,036

16

an expert in the art, we would not find his testimony sufficient since Mr. Burns 1
does not disclose the underlying facts or data upon which his opinion is based. 2
Fed. R. Evid. 705; Bd. R. 158(a); Standing Order, Paper 2, ¶ 158.1. (Opinions 3
expressed without disclosing the underlying facts or data may be given little, or no, 4
weight). 5
Also lacking in Xu Motion 2 is a citation to evidence to show that it would 6
have taken only ordinary skill to construct the infant seat from the information 7
provided in theXu sketches. For example, we have not been directed to testimony 8
from one skilled in the art indicating that construction of a prototype based on the 9
Xu sketches would have required only ordinary skill. Nor have we been directed 10
to testimony from anyone at Kika who worked toward constructing the prototype 11
such that we may determine if Xu provided “an operative method of making it” to 12
those having skill in the art. 13
The Xu sketches appear to us to show a fairly simple device and we would 14
not be surprised if one skilled in the art would be able to construct it without need 15
for more than ordinary skill. However, without being directed to evidence of how 16
one skilled in the art would view the Xu sketches or evidence of what efforts were 17
required to construct the prototype, we cannot conclude that the Xu conception was 18
complete. Brand v. Miller, 487 F.3d 862, 869 (Fed. Cir. 2007) (impermissible for 19
the Board to base its factual findings on its expertise, rather than on evidence in the 20
record). This evidence need not, but often does, consist of testimony. Regardless 21
of its form we must be directed to some type of persuasive, credible evidence that 22
is sufficient to support the relief sought. Bd. R. 208(b) (showing must be supported 23
Interference 106,036

17

with appropriate evidence). The argument of Xu counsel cannot take the place of 1
evidence lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d at 595. 2
Xu does not support its conception showing with appropriate evidence, such 3
that, if unrebutted, it would justify the relief sought. Bd. R. 208(b). Since Xu has 4
not shown conception the efforts of Kika toward reduction to practice cannot inure 5
to Xu’s benefit. Xu therefore has not shown a reduction to practice8 that is earlier 6
than Bellows’ earliest constructive reduction to practice. To the extent Xu Reply 2 7
directs us to evidence to make out Xu’s prima facie case for conception we do not 8
consider that evidence nor would it be fair to Bellows for us to do so. 9
Bd. R. 122(b); Standing Order, Paper 2, ¶ 122.5.9 10
We deny Xu Motion 2 for Xu’s failure to meet its burden of proof without 11
need for consideration of the Bellows’ opposition. Nevertheless, we exercise 12
discretion to discuss several of Bellows’ opposition arguments as these arguments 13
further demonstrate Xu’s failure to meets its burden to show that only ordinary 14
skill was required to reduce to practice the infant seat shown in the Xu sketches. 15

8 We need not, and do not, decide whether the prototype made by Kika
is a reduction to practice of Count 1 since we determine that the efforts of Kika do
not inure to the Xu inventors benefit regardless.
9 We do not consider that portion of Xu Reply 2 that presents argument
and evidence needed to set forth a prima facie basis for relief. In particular in its
Reply Xu attempts to address a deficiency in its prima facie showing by citing to
declaration testimony relied upon by Bellows during the motions phase of the
proceeding. (Xu Reply 2, Paper, 191, 5:6-17). We consider this improper reply.
Even were we to consider it, that testimony indicates only that pivots were known
in the art and does not meet Xu’s burden to show that only ordinary skill in the art
was needed to construct the prototype from the Xu sketches.

Interference 106,036

18

3. Bellows Opposition 1
Bellows argues that evidence shows that Kika’s involvement implicates 2
more than ordinary skill was needed to make the prototype from the Xu sketches. 3
In support of its argument Bellows points to, inter alia, the following portion 4
of Mr. Xu’s deposition testimony: 5
Q: And does this sketch show anything about how that red 6
button is made, what is contained from a mechanical standpoint? 7
A: So as a designer, you can suggest, oh, here’s the red button; 8
when you press this button you can close and open the — open this 9
rocker. So it’s kind of like just visually reminder, you can put feature 10
here, you can put the feature on there. 11
Q: But this sketch was not designed to tell someone how to do 12
that, is that correct? 13
A: It’s not sketched to tell someone how to do it. 14
15
(Bellows Opposition 2, Paper 189, 13:11-19, citing Xu Deposition, Ex. 1033, 16
28:25-29:11). 17
Mr. Xu’s testimony indicates that the sketches, on their own, would not have 18
shown how to construct the prototype as shown in the sketches and in particular 19
the red button which we understand to be a pivot.10 20

10
The Count does not expressly require a locking pivot mechanism. The
record shows that both the alleged conception and prototype were intended to
contain a locking pivot and that this is what Kika was asked to design. (See, e.g.,
PowerPoint attachment, Ex. 2030; quote attached to email, Ex. 2032). Xu does not
Interference 106,036

19

Bellows also directs us to Mr. Pusch’s testimony indicating that Kika was 1
engaged “to develop a pivot mechanism for the prototype of the elevated infant 2
rocker concept shown in [the Xu sketches] Exhibit 2027.” (Bellows Opposition 2, 3
Paper 189, 29:24-25:3, citing Pusch Declaration, Ex. 2028, ¶ 7). As we noted 4
above Xu does not direct us to testimony regarding the extent of what efforts were 5
required for Kika to develop this mechanism. Without being presented with 6
evidence to establish the extent of Kika’s efforts or other evidence sufficient to 7
show that only ordinary skill was required, we cannot conclude that the Xu 8
sketches were a conception of Count 1. 9
Bellows also points to the testimony of Mr. Burns indicating that Kids II 10
only gave Kika “surface data” that “doesn’t represent anything beyond the 11
surface”—or “skin” and that Kika typically designs the components of the product 12
when making a prototype. (Bellows Opposition 2, Paper 189, 14:20-15:9, citing 13
Burns Deposition, Ex. 1032, 70:7-23).11 14
Bellows notes that, “consistent with this process” Mr. Burns testified as 15
follows: 16
Q: For the elevated infant rocker, did Kika actually design the 17
pivots that were implemented in that product? 18
A: Yes. 19
20

direct us to evidence of what would have been required by one skilled in the art to
construct the prototype either with or without the locking feature.
11 The filed transcript of the deposition of Mr. Burns (Ex. 1032), which
is the transcript we cite in this decision, is marked “working copy”.
Interference 106,036

20

(Bellows Opposition 2, Paper 189, 15:13-27, citing Burns Deposition, Ex. 1032, 1
71:2-5). 2
The above evidence cited by Bellows confirms that Kika played a significant 3
part in designing the prototype, especially the pivot mechanism. We cannot 4
determine, on the record before us, that the Xu inventors provided sufficient 5
information such that the completion of the prototype called only for ordinary skill 6
and not additional creation. See Dawson, 710 F.3d at 1352. That is, without 7
evidence of the extent of Kika’s efforts or other convincing evidence of what 8
would have been required to construct the prototype from the perspective of one 9
skilled in the art, we are unable to conclude that the Xu sketches amounted to a 10
conception of the Count. 11
12
D. Bellows Motion to suppress evidence 13
Bellows filed a motion to suppress certain evidence relied upon by Xu in its 14
Motion 2. (Bellows Motion 5, Paper 202). We deny the Xu motion even if we 15
consider the evidence Bellows wishes to have suppressed. Accordingly the 16
Bellows Motion to suppress evidence is DISMISSED as moot. 17
18
E. Xu Request for rehearing 19
Xu requests rehearing of the decision of the Board denying its request to file 20
new declaration testimony on the issue of abandonment, suppression and 21
concealment. (Xu Request for rehearing, Paper 192; Board Order, Paper 190). 22
Decision of the Request for rehearing was deferred to be considered with the 23
briefing on the issues raised in Xu Motion 2. (Board Order, Paper 206). 24
Interference 106,036

21

We do not find it necessary to reach the issue of whether Xu abandoned, 1
suppressed, or concealed its invention since Xu has not shown a reduction to 2
practice that is earlier than Bellows earliest constructive reduction to practice. 3
Accordingly the Request for rehearing is DISMISSED as moot. 4
5
IV. Conclusion 6
For reasons discussed above, Xu has not shown it conceived or reduced to 7
practice an invention of Count 1 prior to Bellows earliest constructive reduction to 8
practice. Accordingly, Xu cannot prevail on the issue of priority. 35 U.S.C. § 9
102(g). 10
11
V. Order 12
It is 13
ORDERED that Xu Motion 2 is DENIED, 14
FURTHER ORDERED that Bellows Motion 5 is DISMISSED; 15
FURTHER ORDERED that the Xu Request for rehearing is 16
DISMISSED; and 17
FURTHER ORDRED that judgment against Xu on the issue of
priority will be entered in a separate paper.

Interference 106,036

22

Attorney for Xu: 1
2
Daniel A. Crowe 3
Marie L. Riley 4
BRYAN CAVE LLP 5
dacrowe@bryancave.com 6
marie.riley@bryancave.com 7
8
N. Andrew Cain 9
Robert D. Gravois 10
Scott P. Amy 11
THOMAS HORSTEMEYER LLP 12
Andrew.crain@thomashorstemeyer.com 13
Robert.gravois@thomashorstemeyer.com 14
Scott.amy@thomashorstemeyer.com 15
16
Attorney for Bellows: 17
18
Timothy P. McAnulty 19
Barbara C. McCurdy 20
Robert C. MacKichan 21
Roger D. Taylor 22
FINNEGAN, HENDERSON, FARABOW, 23
GARRETT & DUNNER, LLP 24
Timothy.mcanulty@finnegan.com 25
Barbara.mccurdy@finnegan.com 26
Robert.mackichan@finnegan.com 27
Roger.taylor@finnegan.com 28