Johnston v. Beachy

INTERFERENCE TRIAL SECTION PRECEDENTIAL OPINION
The opinion in support of the decision being entered
today is binding precedent of the Interference Trial
Section of the Board of Patent Appeals and
Interferences. The opinion is otherwise not binding
precedent. The decision was entered on 10 March 1999.
Paper No. 40
Filed by: Trial Section
Box Interference Entered
Washington, D.C. 20231 10 March 1999
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
S. J.,
Junior Party,
v.
R. B.,
Junior Party,
v.
F. M.,
Senior Party
_______________
Patent Interference No. 104,DDD
_______________
Before: McKELVEY, Senior Administrative Patent Judge, and
SCHAFER, LEE and TORCZON, Administrative Patent Judges.
McKELVEY, Senior Administrative Patent Judge.

ORDER--NON-RECEIPT OF FILES
A. Findings of fact
The record supports the following findings by a
preponderance of the evidence.
1. The interference was declared on 21 December 1998.
2. The NOTICE DECLARING INTERFERENCE (Paper 1) set a
period of fourteen (14) days within which the parties were to
order involved and benefit files. See Paragraph 9. The NOTICE
also set a 2 March 1999 conference call to set dates for taking
action in the interference.
3. R.B. placed an order for copies of files on
4 January 1999 (Paper 10).
4. F.M. placed an order for copies of files on
5 January 1999 (Paper 4).
5. S.J.'s original counsel placed an order for copies
of files on 4 January 1999 (Paper 15).
6. S.J. designated new lead counsel on 19 January
1999 (Paper 17).
7. On 22 January 1999, an ORDER (Paper 23) was
entered by the Trial Section notifying counsel that the requests
for copies of files were being forwarded to the Office of Public
Records of the Patent and Trademark Office.

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8. The ORDER entered 22 January 1999 states in part
(page 2):
FURTHER ORDERED that, if within eighteen (18) days, a party
does not receive a copy of the requested files, the party
should notify the Trial Section via fax (703-305-0942) that
the files have not been received.
9. S.J.'s new counsel placed a second order for
copies of files on 26 January 1999 (Paper 25).
10. Eighteen (18) days after entry of the ORDER
(Paper 23) by the Trial Section was 9 February 1999.
11. As of the close of business on 9 February 1999, no
fax had been received suggesting that a party had not received
all files ordered.
12. On 18 February 1999, R.B. filed a paper (Paper 30)
indicating that some material in certain files had not been
received.
13. A COMMUNICATION and ORDER entered 25 February 1999
(Paper 32) responded to the R.B. paper (Paper 30).
14. On 26 February 1999, S.J. notified the board that
certain material had not been received (Paper 34).
15. During a conference call held on 2 March 1999, the
judge designated to handle the interference was further advised
that certain files had not been received. See also

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a. R.B. LIST OF PRELIMINARY MOTIONS (Paper 36,
page 3) and
b. S.J.'s LIST OF PRELIMINARY MOTIONS (Paper 35,
page 2, first paragraph).
16. Times for taking action during the preliminary
motion phase of the interference have been set. See ORDER--
FILING OF PRELIMINARY MOTIONS AND STATEMENTS entered 2 March 1999
(Paper 38).
B. Discussion
The Trial Section was created in October 1998. Notice of
the Chief Administrative Patent Judge of 6 November 1998,
Interference Practice--New Procedures for Handling Interference
Cases at the Board of Patent Appeals and Interferences, 1217 Off.
Gaz. Pat. & Tm. Office 18 (1 December 1998).
One purpose for creating the Trial Section was to make the
interlocutory phase of interferences more efficient. One problem
expressed by the interference bar prior to creation of the Trial
Section was delay in receiving orders of files of involved and
benefit files in interferences. To remedy the delay, the Trial
Section adopted a policy of requiring orders for files to be
placed with the Trial Section. No files are released to any
person by the Clerk's Office until all parties have filed
requests for files or the Trial Section determines that a party

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will not file a request. The files and requests are then
forwarded to the Office of Public Records (OPR), which has
fourteen (14) days to fill orders. An ORDER is entered in the
interference advising the requestors that the files and requests
have been sent to OPR. All orders are transmitted to a requester
by OPR via an overnight delivery service.
It is always the responsibility of parties, normally through
counsel, to obtain copies of the involved and benefit files. The
Trial Section--to a point--will help counsel obtain the needed
copies of files. As can be readily appreciated from the practice
adopted by the Trial Section, it is committed to timely filling
of orders. Hence, as a matter of policy, the Trial Section
requires that it be notified of non-receipt of copies of files
within eighteen (18) days of the ORDER notifying the requestors
that files have been transmitted to OPR. If no notice is
received, the interference proceeds with a scheduled conference
call to set dates.
Despite the Trial Section's establishment of a practice
designed to help the interference bar expeditiously receive its
requests for files, counsel in this case did not timely notify
the Trial Section of non-receipt of files. The Trial Section,
like the Trademark Trial and Appeal Board, cannot be expected to

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act on matters not timely raised by counsel. Cf. Keebler Co. v.
Murray Bakery Products, 866 F.2d 1386, 1388, 9 USPQ2d 1736, 1738
(Fed. Cir. 1989) (prescience is not a required characteristic of
the board and the board need not divine all possible
afterthoughts of counsel).
As noted earlier, if counsel do not assume their
responsibility of notifying the Trial Section within the eighteen
(18) day period, then there is little the Trial Section can do to
see that counsel timely obtain copies of needed files. Rather,
the interference proceeds as though the files have been received.
Moreover, times for taking action are not delayed due to (1) an
untimely request for files or (2) a failure to timely notify the
Trial Section that a timely request has not been timely filed.
So it is in this case.
C. Order
Upon consideration of the record, and for the reasons given,
it is
ORDERED that the failure of the parties to timely
notify the Trial Section within the eighteen (18) days required
by the ORDER entered 22 January 1999 shall not be a basis for
changing the time periods for set for taking action in this
interference.

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FURTHER ORDERED that this opinion shall be published on
the PTO Web Page without identification of the names of the
parties, their counsel, the applications and/or patents involved
or the interference number.
______________________________
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
______________________________)
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
) BOARD OF PATENT
______________________________) APPEALS AND
JAMESON LEE ) INTERFERENCES
Administrative Patent Judge )
)
)
______________________________)
RICHARD TORCZON )
Administrative Patent Judge )