B.M. v. H.G

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 The opinion is otherwise not
binding precedent.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 26 April 1999.
Paper 34
Filed by: Trial Section Motions Panel
Box Interference Entered
Washington, D.C. 20231 26 April 1999
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
B. M.,
Junior Party,
(Patent 5,xxx,xxx),
v.
H.G.,
Senior Party
(Application 08/yyy,yyy).
_______________
Patent Interference No. 104,CCC
_______________
Before: McKELVEY, Senior Administrative Patent Judge	, and
SCHAFER, LEE and TORCZON,Administrative Patent Judges	.
McKELVEY, Senior Administrative Patent Judge	.
ORDER
DENYING REQUEST FOR EXTENSION OF TIME
A. Introduction

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The parties, through a conference call, sought an extension
of time to take action during the preliminary motion phase of
this interference. Events which transpired in connection with
the attempt to obtain an extension of time raise important issues
with respect to the administration of justice in connection with
interferences. We take this opportunity to discuss those issues
with the view to assisting those who practice before the PTO in
interference matters.
B. Background and findings of fact
Trial Section practice
1. In an effort to improve the administration of
interferences in the PTO, the Chief Administrative Patent Judge
determined that a Trial Section should be created. Notice of the
Chief Administrative Patent Judge of November 6, 1998,
"Interference Practice--New Procedures for Handling Interferences
Cases at the Board of Patent Appeals and Interferences," 1217
Off. Gaz. Pat. & Tm. Office 18 (Dec. 1, 1998).
2. Consistent with the objectives sought to be
accomplished by the Chief Judge, the Trial Section has developed
procedures for handling interferences. Those procedures include
the use of standard forms for (1) declaring interferences, (2)
taking action during the preliminary motion phase of an

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interference and (3) taking action during the priority testimony
and final hearing phase of the interference.
3. Times for taking action are almost always set
during a conference call after counsel have previously submitted
a list of proposed preliminary motions to be filed by the party
each represents.
4. Through the use of a conference call, times for
taking action can be set which avoid conflicts, such as (1) other
obligations of counsel and the judge in other cases and (2)
matters, such as scheduled vacations and other obligations of a
personal nature.
5. The following times for taking action are set
during the preliminary motion phase of an interference:
a. TIME PERIOD 1--for filing and serving
preliminary motions (37 CFR § 1.636(a))
b. TIME PERIOD 2--for filing and serving
preliminary motions pursuant to 37 CFR
§ 1.633(i) and (j) responsive to a
preliminary motion filed by an opponent
(37 CFR § 1.636(b)).
c. TIME PERIOD 3--for filing and serving
oppositions to all preliminary motions,
including preliminary motions filed pursuant
to 37 CFR § 1.633(i) and (j).

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d. TIME PERIOD 4--for filing replies to all
oppositions.
e. TIME PERIOD 5--for filing:
(1) a request for a hearing;
(2) motions to suppress evidence relied upon
by an opponent in connection with
preliminary motions; and
(3) observations by a cross-examining party
with respect to cross-examination of an
opponent's affiants following filing of
replies.
f. TIME PERIOD 6--for filing:
(1) oppositions to an opponent's motion to
suppress and
(2) a response to observations by a cross-
examining party with respect to cross-
examination of an opponent's affiants
following filing of replies.
g. TIME PERIOD 7--for filing replies to
oppositions to motions to suppress.

The record includes (1) an original and three copies of each	1
exhibit, including affidavits, and deposition transcript; (2) three copies
of preliminary motions, oppositions and replies previously filed should be
filed with the board, with each copy of each motion, its opposition and its
reply any observations and any response to observations being filed in a
separate folder and (3) any ZIP® disk and/or CD-ROM which a party elects to
file.
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h. TIME PERIOD 8--for filing the record upon
which preliminary motions will be decided.	1
6. Counsel for the parties are expressly authorized
to stipulate different times (earlier or later) for TIME PERIODS
1 through 6. Counsel are expressly precluded from stipulating an
extension of TIME PERIOD 7.
7. The order setting times for taking action during
the preliminary motion phase does not authorize counsel to
stipulate any extension of TIME PERIOD 8.
Events in this interference
8. The interference was declared on November 25,
1998, by an administrative patent judge assigned to the Trial
Section.
9. A conference call with counsel to set dates for
taking action during the preliminary motion phase of the
interference took place on January 15, 1999. Participating in
the conference call were counsel for B.M., counsel for H.G. and

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the administrative patent judge designated to handle the
interference.
10. A summary of the conference call is set out in an
order entered the day of the conference call (Paper 26, page 2):
The conference call was for the purpose of setting
times for taking action during the preliminary motion phase
of the interference. In view of the posture of the case,
the issue of priority of invention will be resolved when
preliminary motions are filed. Hence, at the time
preliminary motions are decided, the board will enter a
final decision. Accordingly, if the parties wish oral
argument, they should ask for a hearing on preliminary
motions. See TIME PERIOD 5, infra.
B.M. indicated an intent to file a preliminary motion
for benefit (37 CFR § 1.633(f)) of an earlier filed ***
[foreign] application. H.G. will oppose.
H.G. indicated an intent to file a preliminary motion
to add two (possibly more) claims to the H.G. application
involved in the interference and to designate at least one
of those claims as corresponding to the count (37 CFR
§ 1.633(c)(2)). Understandably at this point, B.M. could
not indicate whether it would oppose.
B.M. is advised that its list of issues was timely
received.
As currently advised, the parties do not expect to rely
on testimony, although it was recognized that neither had
seen the other's preliminary motion. If there comes a time
when testimony is relied onand an opponent wishes to cross-
examine, counsel should place a conference call so that the
dates set herein may be appropriately adjusted.

A truism of interference practice is that no two interferences are	2
substantively or procedurally the same. Hence, it is not always necessary to
set dates for each of TIME PERIODS 1 through 8. One of the benefits of a
conference call, after parties submit lists of proposed preliminary motions to
be filed, is that times can be set which accomplish in any given interference
the goal of just, speedy and inexpensive interferences as set out in 37 CFR
§ 1.601.
Originally the date was set at April 23, 1999, but was reset during a	3
conference call to April 29, 1999.
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11. The following dates were set for taking action:
a. TIME PERIOD 1--February 16, 1999.
b. TIME PERIOD 2--Not needed.	2
c. TIME PERIOD 3--March 17, 1999.
d. TIME PERIOD 4--April 16, 1999.
e. TIME PERIOD 5--April 16, 1999 (for the sole
purpose of requesting an oral hearing.
f. TIME PERIOD 6--Not needed.
g. TIME PERIOD 7--Not needed.
h. TIME PERIOD 8--April 29, 1999.	3
12. It should be emphasized that these times for
taking action were set based on representations of, and agreement
between, counsel during a telephone conference call.
13. There came a time during the interference when
counsel stipulated changes in some of the times for taking
action. See the NOTICE OF STIPULATION OF DIFFERENT TIMES
(Paper 31, filed March 17, 1999).

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14. Based on the stipulation, the times for taking
action became (differences shown inbold):
a. TIME PERIOD 1--February 16, 1999.
b. TIME PERIOD 2--Not needed.
c. TIME PERIOD 3--April 17, 1999.
d. TIME PERIOD 4--May 16, 1999.
e. TIME PERIOD 5--May 16, 1999.
f. TIME PERIOD 6--Not needed.
g. TIME PERIOD 7--Not needed.
h. TIME PERIOD 8--April 29, 1999.
15. A curious aspect of the stipulation is that it has
TIME PERIOD 8 expiring prior to TIME PERIOD 5. In other words,
filing of the record and other documents (which includes replies)
is to take place before the reply is filed!
16. Judges, like attorneys, must manage cases. In
the case of interferences before the Trial Section, judges
assigned to the Trial Section docket cases for action based on
TIME PERIOD 8. When TIME PERIOD 8 arrives, the case is taken up
for action. Hence, there may be little, if any, need to review
stipulated extensions of time.
17. Nevertheless, in this particular case, the
stipulation was approved, but only as to TIME PERIOD 3. It could
not be otherwise approved given that TIME PERIOD 5 was stipulated

In a large number of interferences, TIME PERIOD 8 never arrives	4
because the parties settle before TIME PERIOD 8.
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to be after TIME PERIOD 8 and, as noted earlier, there is nothing
in the order setting times which authorizes counsel to stipulate
a change to TIME PERIOD 8.
C. Discussion
The Trial Section practice, as outlined above, was adopted
with the view to (1) having counsel participate in the setting of
times, (2) allowing counsel the flexibility to change certain
times for taking action and (3) permit the Trial Section to know
when a case can be taken up for action. The times are set taking
into consideration whether the Trial Section can reach the matter
if and when TIME PERIOD 8 actually comes to pass.	4
The Trial Section counts on the interference bar to make
things happen by TIME PERIOD 8. Understandably when there may be
as many as eight separate actions which are authorized to occur,
there may come a time when a change in a date for taking action
is necessary. For this reason, counsel are allowed to change
dates. But, counsel cannot change the dates of TIME PERIOD 7 or
TIME PERIOD 8. TIME PERIOD 7 cannot be changed by stipulation
because the order setting the times specifically says that TIME
PERIOD 7 cannot be changed. TIME PERIOD 8 cannot be changed by

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stipulation, because nothing in the order authorizes a stipulated
change to TIME PERIOD 8.
If the Trial Section, consistent with the objectives of the
Chief Judge's notice of November 6, 1998, is to accomplish a
just, speedy and inexpensive resolution of interferences, the
Trial Section must have control over its docket.Compare
Rosemount, Inc. v. Beckman Instruments, Inc.	, 727 F.2d 1540,
1549-50, 221 USPQ 1, 10 (Fed. Cir. 1984) (discussing a need for
the exercise of discretion by a tribunal in carrying out its
duty of managing the administrative process, the business of the
tribunal and the administration of justice in a fair and even-
handed manner).
It may be true that in the recent past there have been
certain delays in the resolution of issues in interferences, both
at the preliminary motion and final hearing stages. The Chief
Judge has designed, and is taking action to implement, a program
which hopefully will minimize delays in resolution of
interferences, But, the Chief Judge, Trial Section and the board
cannot do it alone. Making the interference process work in a
just, speedy and inexpensive manner (37 CFR § 1.601) requires the
assistance of the interference bar. As a general proposition,
the Trial Section can report that the interference bar has been
of considerable assistance in implementing the Chief Judge's
program. Furthermore, under the practice adopted by the Trial

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Section, interferences have been more or less running themselves
in an efficient manner during the preliminary motion phase, in
large measure due to effective lawyering by the interference bar.
If, however, it becomes apparent that a particular
interference or a particular attorney requires "special
attention," then the Trial Section is prepared to take whatever
action is necessary to give special attention. The costs are
likely to go up for the party or parties requiring special
attention.
The Trial Section appreciates the effort being made by the
interference bar to help the Chief Judge achieve the objectives
of his program. Hopefully, the information contained in this
opinion will serve to assist the bar in understanding how the
Trial Section is attempting to implement the Chief Judge's
program. In particular, a stipulation cannot extend TIME PERIODS
1 through 6 beyond TIME PERIOD 7 or TIME PERIOD 8.
D. Order
Upon consideration of the oral request for an extension of
time made during a conference call on April 20, 1999, it is, for
the reasons given,
ORDERED that the request isdenied.

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FURTHER ORDERED that the time for complying with all
remaining TIME PERIODS, including TIME PERIOD 8 is 	April 29, 1999.
FURTHER ORDERED that all papers due on April 29, 1999,
must reach the Office of the Clerk by noon on April 29, 1999.
FURTHER ORDERED that the opinion in support of this
order shall be published on the PTO Web Page without
identification of the parties, counsel, application numbers 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 	)
26 April 1999
Arlington, VA