STEPHEN P. TROY, JR., Plaintiff-Appellant,
SAMSON MANUFACTURING CORPORATION, Defendant-Appellee
Appeal from the United States District Court for the District of Massachusetts in No. 11-CV-10384, Judge William G. Young.
DAMIAN R. LAPLACA, Nelson Kinder Mosseau PC, of Boston, Massachusetts, argued for plaintiff-appellant.
LAURA L. CARROLL, Burns & Levinson LLP, of Boston, Massachusetts, argued for defendant-appellee. With her on the brief was ZACHARY R. GATES. Of counsel was HOWARD SUSSER.
ROBERT J. MCMANUS, Associate Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, argued for amicus curiae. With him on the brief were NATHAN K. KELLEY, Solicitor, THOMAS W. KRAUSE, Special Counsel for IP Litigation. Of counsel on the brief were STUART F. DELERY, Assistant Attorney General, MARK R. FREEMAN and SAMANTHA L. CHAIFETZ, Attorneys, Commercial Litigation Branch, Civil Division, United States Department of Justice, of Washington, DC.
Before PROST, Chief Judge, BRYSON and MOORE, Circuit Judges.
Moore, Circuit Judge.
Stephen P. Troy, Jr. appeals from the district court's judgment in a civil action under 35 U.S.C. § 146 and challenges the court's conclusion that the Board of Patent Appeals and Interferences (Board) properly cancelled the claims of U.S. Patent No. 7,216,451 ('451 patent) in an interference proceeding with Samson Manufacturing Corp. (Samson). Because the district court erred in refusing to consider evidence pertinent to the determination of priority, we vacate and remand .
The Board declared an interference between Mr. Troy's '451 patent and Samson's U.S. Patent Application No. 11/326,665 ('665 application). The '451 patent claims priority to a provisional application filed on February 11, 2005. The '665 application claims priority to a provisional application filed on January 18, 2005. Because the '665 application has an earlier priority date than the '451 patent, Samson was named the senior party. Mr. Troy's priority motion alleged reduction to practice
in early February 2004, conception at several dates prior to February 2004, inurement, and derivation. Samson's priority motion alleged reduction to practice in late February or early March 2004 and conception in early February 2004. The Board concluded that Mr. Troy failed to prove actual reduction to practice in February 2004, and also rejected Mr. Troy's claims of inurement and derivation because he did not establish prior conception. The Board therefore entered judgment against Mr. Troy and ordered all claims of the '451 patent cancelled.
Mr. Troy challenged the Board's decision in district court under § 146. Mr. Troy proffered new evidence of prior conception at the various conception dates he asserted at the Board and new evidence of actual reduction to practice in February 2004. He also introduced new evidence of actual reduction to practice in July 2004--the Chin affidavit and the Conley deposition testimony. Additionally, Mr. Troy argued Samson engaged in " inequitable conduct" by including in its provisional application confidential drawings that Samson misappropriated from Mr. Troy. Mr. Troy contended that he proved in state court that Samson misappropriated his company's trade secrets, which included the subject matter of the count. He argued that this state court finding of misappropriation established that Samson " derived its alleged invention from Troy." J.A. 4527; see Troy Indus., Inc. v. Samson Mfg. Corp., 81 Mass.App.Ct. 1122, 963 N.E.2d 777 (Table), 2012 WL 931641 (Mass.App. Ct. 2012).
The district court affirmed the Board's order canceling all claims of Mr. Troy's patent. Troy v. Samson Mfg. Corp., 942 F.Supp.2d 189, 201 (D. Mass. 2013). After reviewing the record before the Board and some of the new evidence proffered by Mr. Troy, the district court concluded that Mr. Troy failed to carry his burden of showing prior conception or February 2004 reduction to practice. The court, however, refused to consider the Chin affidavit or the Conley deposition. It concluded that this evidence, which pertained to an alleged July 2004 reduction to practice, was barred because " [a] party is generally precluded from raising issues or theories of law in a Section 146 proceeding that were not previously raised before the board." Id. at 198. The court also rejected as a new issue Mr. Troy's argument that Samson used Mr. Troy's confidential proprietary drawings in its provisional application, which Troy alleged demonstrated Samson's inequitable conduct. The district court concluded that Mr. Troy " failed . . . to articulate where in the record he actually presented arguments to the Board regarding the alleged inequitable conduct of Samson." Id. at 197. In a different part of its opinion, the district court acknowledged that Mr. Troy proved in state court " (1) that Samson improperly submitted to the PTO as its own at least one drawing of Troy's and (2) that Samson violated a confidentiality agreement with Troy Industries in the course of developing ...