Ashurst v. Brugger

BoxInterferences@uspto.gov 	Paper 44
Telephone: 571-272-9797 	Filed: April 25, 2007
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
IAN C. ASHURST, IGNATIUS LOY BRITTO,
CRAIG STEVEN HERMAN, LI LI-BOVET, and
MICHAEL THOMAS RIEBE
Junior Party
(Patent 6,532,955, 6,511,652, 6,511,653, and 6,546,928),
v.
FRANCOIS BRUGGER and ANGELIKA STAMPF
Senior Party
(Application 10/424,633).
Patent Interference No. 105,482 (SCM)
Decision - Miscellaneous - Bd.R. 104(a)
A. Introduction
On 17 April 2007, Ashurst filed “ASHURST MOTION 3 (Miscellaneous	1
Motion for Discovery)” (Paper 43), in which Ashurst seeks leave to obtain	2
additional discovery from Brugger. For the reasons that follow, Ashurst Motion 3	3
is denied.	4
B. Findings of fact	5
1. This interference is in the preliminary phase.	6
2. Motions and oppositions have been filed.	7

2
3. The interference is in the time prior to the cross-examination of those	1
witnesses relied on in support of oppositions, and prior to the filing of replies.	2
4. Prior to the filing of oppositions, and during the cross examination	3
deposition of one of Brugger’s witnesses (Dr. Singh), a disagreement arose and a	4
conference call was had with me.	5
5. During that call, an agreement was reached and a ruling was made as to	6
the specific questions that counsel for Ashurst could ask Dr. Singh (Ex. 1086 page	7
206, line 15 to page 208, line 5).	8
6. Ashurst never sought reconsideration of that ruling.	9
7. Some days after the filing and serving of oppositions, a conference call	10
was held on 16 April 2007.	11
5. During the call, Ashurst requested leave to file a miscellaneous motion	12
for discovery.	13
6. Counsel for Ashurst represented that the discovery Ashurst sought was	14
not necessary for the impending cross-examination deposition of Brugger’s	15
witness, Dr. Gupta.	16
7. Counsel for Ashurst also represented that the previous cross-examination	17
of Dr. Singh was adequate and that Ashurst was not seeking reconsideration of the	18
Board ruling made during the cross-examination deposition of Dr. Singh.	19
8. Ashurst was authorized to file a miscellaneous motion for discovery.	20
9. Ashurst filed its request for discovery the next day.	21
10. In its request, Ashurst seeks discovery of the following (Paper 43 at 9-	22
10):	23
1. Provide the names and titles of the three persons at Novartis who	24
have the most knowledge regarding the properties of the coatings on	25
the inside of a metered dose inhaler (MDI) tested at Novartis.	26
27

3
2. Provide the names and titles of the three persons at Novartis who	1
have the most knowledge regarding the interaction of the coatings	2
defined in 1 above with a hydrofluorocarbon (HFA) propellant and/or	3
drug.	4
5
3. Does Novartis have any data (either generated internally at	6
Novartis or provided from a third party – other than information	7
provided by Ashurst in this proceeding) regarding the properties	8
(short-term coating quality, long-term coating quality, adhesion of	9
coating to MDI can, drug deposition properties, etc.) of any of the	10
coatings defined in 1 above or any of the interactions defined in 2	11
above?	12
13
4. If the answer to 3 is yes, does Novartis have any documents or	14
information that show that (1) coatings comprising a fluorocarbon	15
polymer (with no non-fluorocarbon polymer) have any inferior	16
properties as compared with (2) coatings comprising both a	17
fluorocarbon polymer and a non-fluorocarbon polymer?	18
19
5. If the answer to 4 is yes, please identify all properties for which	20
some data exists that coatings (1) are inferior to coatings (2).	21
22
6. When did anyone at Novartis (including but not limited to the	23
inventors named in the Brugger patent application, research and	24
development personnel working at Novartis, etc.) first become aware,	25
either directly by personal observation or experience or indirectly	26
from a third party, of any problems with a coating applied on the	27
inside of an MDI that comprised fluorocarbon polymer with no non-	28
fluorocarbon polymer?	29
30
7. Does Novartis have any documents that suggest that a coating on	31
the inside of an MDI comprised of a fluorocarbon polymer (with no	32
non-fluorocarbon polymer) has any properties, or lacks any properties,	33
that would cause possible FDA regulatory concerns?	34
35
11. Ashurst argues that the request is necessary to “rebut the testimony of	36
Dr. Gupta either directly or on cross-examination” (Paper 43 at 7, lines 21-22).	37

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12. Yet, Ashurst also states that “cross-examination of Dr. Gupta on this	1
inconsistency will not suffice since he does not have access to the pertinent	2
information” (Paper 43 at 1, lines 11-12).	3
13. Ashurst also argues that there is a high probability that the requested	4
information exists, that Dr. Singh knows who has the requested information, but	5
that previous attempts to obtain information from Dr. Singh were unsuccessful	6
(Paper 43 at 8, lines 1-3; at 5, lines 4-7).	7
14. However, in other parts of its brief, Ashurst states that it received	8
adequate cross-examination of Dr. Singh (Paper 43 at 1, lines 5-6; at 7, lines 10-	9
11).	10
15. Ashurst argues that the discovery is necessary, since Brugger’s	11
opposition and declaration of Dr. Gupta are inconsistent with testimony provided	12
by Dr. Singh (Paper 43 at 1, lines 6-7).	13
C. Discussion	14
A party requesting additional discovery must show that the additional	15
discovery is in the interests of justice. Bd.R. 150(c)(1). The standard for granting	16
discovery requests is high and requires specific bases for expecting that the	17
discovery will be productive. SO ¶150.2. As with any motion filed with the	18
Board, the movant bears the burden to demonstrate that it is entitled to the	19
requested relief.	20
A party cannot be granted relief when the relief requested is not clearly	21
articulated or is not meaningful in the first instance. Ashurst makes inconsistent	22
statements regarding why the requested discovery is necessary. For example,	23
Ashurst indicates that the discovery is necessary to properly cross examine Dr.	24
Gupta (ff 11), while also representing that the requested information is not	25
necessary to cross examine Dr. Gupta (ffs 6 and 12). Ashurst also indicates that	26

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the prior cross examination of Dr. Singh was sufficient (ffs 7 and 14), while also	1
representing that Ashurst was denied, during cross examination, enough latitude to	2
gain certain requested information from Dr. Singh and that the discovery is	3
necessary to gain access of information known to Dr. Singh (ff 13).	4
Ashurst must take a position in order for the Board to properly determine if	5
such a position justifies granting the requested relief. Since Ashurst has failed to	6
clearly and consistently articulate why it needs the information in the first place,	7
the Board will not grant the request.	8
Additionally, Ashurst’s request appears to be nothing more than what the	9
Board refers to as a “fishing expedition.” The Board has a long history of not	10
embarking upon such expeditions. See e.g., Shiokawa v. Maienfisch, 58 USPQ2d	11
1479 (Bd. Pat. App. & Int. 2001).	12
Ashurst has failed to sufficiently demonstrate that the requested information	13
is necessary for a resolution of the issues raised by the parties. That there are	14
inconsistencies between Brugger’s motions and its oppositions or between	15
statements made by witnesses, is not cause enough to authorize the discovery	16
requested. Ashurst could properly direct the Board to any alleged inconsistencies	17
as part of any response to any paper filed by the opponent. Thus, there is no	18
apparent reason why anything more is necessary.	19
Moreover, Ashurst's requested discovery is quite extensive and goes beyond	20
the issues raised in this interference. For example, it is not apparent why data	21
regarding properties of short-term coating quality, long-term coating quality,	22
adhesion of coating to MDI can, drug deposition properties, etc. of any of the	23
coatings that Novartis has ever tested with respect to a MDI is not beyond the	24
scope of this proceeding. For example, Ashurst has failed to adequately show how	25
any of the properties of any coating ever tested by Novartis for a MDI is relevant to	26

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the count, the proposed count or any of the claims involved in this interference.	1
Thus, the Board concludes that the request is too broad and overreaching.	2
For all of these reasons, Ashurst miscellaneous motion 3 is denied.	3
4
5
/Sally C. Medley/	6
Administrative Patent Judge	7
8
cc (via e-mail):	9
10
jkelly@oblon.com	11
gregory.houghton@novartis.com	12
mailroom@bskb.com	13
usciprtp@gsk.com	14
parmenio@kirkland.com	15
16