BPAI Cannot Base Factual Findings in Inter Partes Cases On Its Own Expertise

Brand v. Miller, [2006-1419](May 14, 2007)[DYK, Michel, Archer] The Federal Circuit reversed the BPAI’s conclusion that Brand derived the subject matter of the interference from Miller, and remanded.
SIGNIFICANCE: In inter partes proceedings, the BPAI cannot rely upon its own expertise, but is limited to the record.
BRIEF: Noting that adjudicatory proceeding before the Board are governed by the APA, and even though the BPAI’s proceedings are not formal adjudications, review of those proceedings is still governed by the substantial evidence standard of Section 706 of the APA. The Federal Circuit held that in the context of a contested case, “it is impermissible for the Board to base its factual findings on its expertise, rather than on evidence in the record, although the Board’s expertise appropriately plays a role in interpreting record evidence.” (The Federal Circuit expressly did not decide to what extent the BPAI’s use of its expertise is constrained in ex parte proceedings.) LOF: Noting that derivation is a question of fact, on the issue of communication of the invention from Miller to Brand, the Federal Circuit found that the Board improperly substituted its own opinion for evidence for evidence of knowledge of one of ordinary skill in the art. The Federal Circuit noted that there was no citation to the record for the BPAI’s conclusion of what one of ordinary skill in the art would have recognized from the information provided by Miller to Brand, and concluded that it was not supported by substantial evidence.