The Trial Section Should Have An Analog To FRCP 50 (a)(1)

Jun 2005 – Article
Intellectual Property Today, Vol. 12, No. 6 at page 30

In Genise v. Desautels, 73 USPQ2d 1393 (PTOBPAI) 2004) (non-precedential) (opinion by APJ Lee for a panel that also consisted of SAPJ McKelvey and APJ Moore), both the junior party and the senior party had put on extensive (and, no doubt, expensive) priority cases. Moreover, according to their counsel, each party had cross-examined the other party’s witnesses--also at great expense. Finally, counsel for both parties showed up at final hearing and argued both priority cases. However, in its opinion, the trial section ruled that it did not have to consider the senior party’s priority evidence because the junior party had not proved that any of its three alleged actual reductions to practice had been achieved using the way recited in the court, and the senior party was, therefore entitled to prevail on the basis of its filing date. The panel’s holding no doubt saved their Honors a great deal of work--at least in the short term. (Of course, if they are reversed on judicial review, they--or their successors--will ultimately have to decide the issues that they didn’t decide the first time around. But is this any way to run a railroad?