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Interference Decision Finding Patent Specifications To Have Presented “New Evidence” Was Harmless Error

Client Alert | 1 min read | 12.11.07

In In re Garner (No. 2007-1221; Interference No. 105,455; December 5, 2007), the Federal Circuit affirms the decision of the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences (“Board”), ruling against applicant Garner in a patent interference. Garner attempted to provoke an interference by copying claims from a patent issued to Quate and Stern (“Quate patent”). As the Quate patent had an earlier effective filing date than the Garner application, Garner, as the junior party, had the burden of establishing prior invention under 37 C.F.R. § 41.202(d)(1) (“Board Rule 202(d)(1)”). The Board found Garner’s initial filing insufficient to establish a prima facie showing of priority and issued a show-cause order under Board Rule 202(d)(2). In response to the show-cause order, Garner submitted several pieces of evidence, including the specification of his provisional application and the specification of his utility application. The Board rejected Garner’s submission, ruling that he had presented “new evidence” without the necessary showing of good cause.

On appeal, Garner argued that the Federal Circuit must review de novo the Board’s interpretation of its regulations and that the specifications he submitted in response to the show-cause order should not be considered new evidence. The panel rejects Garner’s assertion concerning de novo review, stating that it reviews regulations under a substantial deference standard. Using this standard, the panel determines that Garner’s patent specifications could not constitute new evidence given that they were already in the record pursuant to Board Rule 202(a)(5), and, therefore, the Board’s interpretation of Board Rule 202(d)(2) was erroneous. The panel, however, rules that the Board’s error was harmless, as consideration of Garner’s patent specifications would not have changed the Board’s decision on priority.

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Client Alert | 4 min read | 08.07.25

File First, Facts Later? Eleventh Circuit Says That Discovery Can Inform False Claims Act Allegations in Amended Complaints

On July 25, 2025, the Eleventh Circuit Court of Appeals issued its decision in United States ex. rel. Sedona Partners LLC v. Able Moving & Storage Inc. et al., holding that a district court cannot ignore new factual allegations included in an amended complaint filed by a False Claims Act qui tam relator based on the fact that those additional facts were learned in discovery, even while a motion to dismiss for failure to comply with the heightened pleading standard under Federal Rule of Civil Procedure 9(b) is pending.  Under Rule 9(b), allegations of fraud typically must include factual support showing the who, what, where, why, and how of the fraud to survive a defendant’s motion to dismiss.  And while that standard has not changed, Sedona gives room for a relator to file first and seek out discovery in order to amend an otherwise deficient complaint and survive a motion to dismiss, at least in the Eleventh Circuit.  Importantly, however, the Eleventh Circuit clarified that a district court retains the discretion to dismiss a relator’s complaint before or after discovery has begun, meaning that district courts are not required to permit discovery at the pleading stage.  Nevertheless, the Sedona decision is an about-face from precedent in the Eleventh Circuit, and many other circuits, where, historically, facts learned during discovery could not be used to circumvent Rule 9(b) by bolstering a relator’s factual allegations while a motion to dismiss was pending.  While the long-term effects of the decision remain to be seen, in the short term the decision may encourage relators to engage in early discovery in hopes of learning facts that they can use to survive otherwise meritorious motions to dismiss....