Singh v. Brake

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 not otherwise binding
precedent. The decision was entered on November 10,
1998.
Paper No. 168
Filed by: Trial Section
Box Interference
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
ARJUN SINGH,
Junior Party,
(Application 07/552,719),
v.
ANTHONY J. BRAKE,
Senior Party
(Patent 4,870,008).
_______________
Patent Interference No. 102,728
_______________
Before: McKELVEY, Senior Administrative Patent Judge, and
SCHAFER and LEE, Administrative Patent Judges.
McKELVEY, Senior Administrative Patent Judge.
MEMORANDUM OPINION AND ORDER

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A. Introduction
The Chief Judge has referred (Paper 167) the above-
identified interference to the Trial Section for consideration of
a request (Paper 166) filed by Singh for additional time (1) to
file a request for reconsideration or (2) file an appeal to the
Federal Circuit or seek judicial review in a district court of
a final decision entered by a merits panel on August 31, 1998
(Paper 164).
B. Findings of fact
1. A final decision by a merits panel was entered in
this interference on August 31, 1998 (Paper 164).
2. According to the last page of the opinion in
support of the final decision, copies of the opinion were to be
mailed to both:
a. Thomas E. Ciotti, Esq., of Morrison &
Foerster, 755 Page Mill Road, Palo Alto, CA
94304-1018 (counsel for Brake) and
b. R. Danny Huntington, Esq., of Burns, Doane,
Swecker & Mathis, P.O. Box 1404, Alexandria,
VA 22314-1404.
3. The last day for filing a request for
reconsideration was September 30, 1998. 37 CFR § 1.658(b).

For some reason, Brake's opposition (Paper 165) was entered in the	1
interference file ahead of Singh's request (Paper 166).
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4. The last day for filing an appeal to the Federal
Circuit or seeking judicial review in a district court was
November 2, 1998. 37 CFR § 1.304(a).
5. On November 4, 1998, Singh filed a document styled
PETITION TO RESTART PERIOD FOR ACTION (Paper 166).
6. According to the petition, on November 3, 1998,
counsel for Singh received a phone call from counsel for Brake.
7. As a result of the phone call, counsel for Singh
is said to have learned for the first time that the final
decision had been entered on August 31, 1998.
8. In the petition, counsel for Singh "states that
[as of November 4, 1998, a copy of the opinion in support of] the
Final Decision dated August 31, 1998 was not received in the
office of ***" counsel for Singh.
9. On November 5, 1998, Brake filed a document
styled BRAKE OPPOSITION TO PETITION TO RESTART PERIOD FOR ACTION
(Paper 165). The opposition was filed by facsimile in response	1
to a telephone call to counsel for Brake from Yolunda Townes, a
paralegal in the Trial Section, making inquiry as to whether the
Singh petition would be opposed.
10. According to Brake, "Singh has failed to
provide evidence adequate to justify grant of the petition ***"
(Paper 165, page 3).

Personnel of the law firm picked up a copy of the final decision at the	2
Office of the Clerk on November 5, 1998.
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11. A telephone conference call was held on
Monday, November 9, 1998, at approximately 1:30 p.m.
(13:30 hours E.D.T.), involving:
a. R. Danny Huntington, Esq., counsel for Singh;
b. Thomas E. Ciotti, Esq., counsel for Brake;
and
c. Fred E. McKelvey, Senior Administrative
Patent Judge.
12. During the telephone conference call,
Mr. Huntington orally represented that there is no indication in
the records of his law firm (Burns, Doane, Swecker & Mathis) that
a copy of the final decision had been received by the law firm
prior to November 4, 1998.2
13. During the telephone conference call,
Mr. Ciotti suggested that the evidence filed to date by Singh
was not sufficient to show excusable neglect. See 37 CFR
§ 1.304(a)(3)(ii).
14. Nevertheless, there is no reasonable basis
for doubting the truthfulness of the representations made by
Mr. Huntington.
15. As of close of business on November 4, 1998, a
copy of the final decision had not been received by Burns, Doane,
Swecker & Mathis.

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C. Discussion
There is a presumption that a copy of the opinion of the
merits panel was mailed to the addressees at the addresses listed
on the last page of the opinion. Stated in other terms, there is
a presumption that personnel at the Patent and Trademark Office
carried out their duties in a regular manner. Haley v.
Department of the Treasury, 977 F.2d 553, 558 (Fed. Cir. 1992):
There is a strong presumption in the law that
administrative actions are correct and taken in good
faith." Sanders v. United States Postal Serv., 801
F.2d 1328, 1331 (Fed. Cir. 1986). More specifically,
"[i]t is well established that there is a presumption
that public officers perform their duties correctly,
fairly, in good faith, and in accordance with law and
governing regulations and the burden is on the
plaintiff to prove otherwise." Parsons v. United
States, 670 F.2d 164, 166 (Ct. Cl. 1982) (citing United
States v. Chemical Found., Inc., 272 U.S. 1, 14-15
(1926)).
It is the normal practice at the board to place decisions to
be mailed in the board's outgoing mail box.
It is the normal practice of the Mail Room of the Patent and
Trademark Office to pick up outgoing mail twice a day.
It is further the normal practice of the Mail Room to cause
all outgoing mail to be deposited with the U.S. Postal Service.
There is also a presumption that a properly addressed piece
of mail placed in the U.S. Postal Service, First Class mail,

Something is established by a "preponderance of the evidence" when the	3
existence of a fact is more probable than its nonexistence. Concrete Pipe &
Products of California, Inc. v. Construction Laborers Pension Trust for Southern
California, 508 U.S. 602, 622, 113 S.Ct. 2264, 2279 (1993).
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postage pre-paid, was received by the addressee. Hoffenberg v.
Commissioner of Internal Revenue, 905 F.2d 665, 666 (2d Cir.
1990).
However, both presumptions are rebuttable, not conclusive.
As is readily apparent by manner in which mail is sent by the
board via the Mail Room and from there through the U.S. Postal
Service to an addressee that there are several possible steps
during which a piece of mail inadvertently might be misplaced
before it is able to reach an intended addressee.
An intended addressee of the opinion, Mr. R. Danny
Huntington, Esq., has represented that a copy of the opinion was
not received by his law firm. There is no reason to doubt the
objective truth of the representations made by Mr. Huntington.
It is true that more documentary evidence might have been
submitted in support of non-receipt of the opinion. However, it
should be emphasized that Singh in this particular matter is
undertaking to prove a "negative," i.e., that some event did not
happen. The proof of a negative is generally difficult. Under
the facts of this case, Mr. Huntington's oral representations
during the telephone conference call, coupled with the
representation in the petition, constitute more than a sufficient
basis upon which to find, by a preponderance of the evidence,3

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that the copy of the opinion intended for Mr. Huntington was not
received by his law firm (Burns, Doane, Swecker & Mathis) prior
to November 4, 1998. There is no reason to complicate the record
in this interference with additional evidence, particularly given
the principle that interference cases are to be resolved in "a
just, speedy, and inexpensive" manner. 37 CFR § 1.601.
During the telephone conference call, it was suggested by
Mr. Ciotti that a declaration normally is needed to establish
non-receipt of the opinion under the excusable neglect standard
of 37 CFR § 1.304(a)(3)(ii). But, the request is not being
construed solely as a request for an extension of time to take an
appeal. Rather, the request is viewed as asking the board to
reset the date of the final decision given that Mr. Huntington
did not receive a copy of the opinion. Extending the time for
taking an appeal under 37 CFR § 1.304(a)(3)(ii) would not extend
the time for filing a request for reconsideration, which is
governed by the good cause standard of 37 CFR § 1.645(b) for
filing belated papers. Hence, the excusable neglect standard
of 37 CFR § 1.304(a)(3)(ii) applies only in part. Moreover,
under the circumstances of this case, the representations by
Mr. Huntington constitute a sufficient basis upon which to find
that there was excusable neglect or that there was good cause.
D. Order

During the conference call, it was initially suggested that the date	4
might be December 10, 1998.
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Upon consideration of the record, and for the reasons given,
it is
ORDERED that the date of the FINAL DECISION (Paper 164)
is reset to November 5, 1998--the date by which both parties had
received a copy of the opinion in support of the final decision.
ORDERED that on or before December 7, 1998, Singh	4
is authorized to file a request for reconsideration (37 CFR
§ 1.658(b)) of the final decision entered August 31, 1998.
FURTHER ORDERED that should Singh elect not to file a
request for reconsideration, then the time for filing an appeal
to the Federal Circuit or seeking judicial review in a district
court will expire January 5, 1999.
______________________________
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
______________________________)
RICHARD E. SCHAFER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
______________________________)
JAMESON LEE )
Administrative Patent Judge )

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cc (via facsimile and First Class Mail)
Attorney for Singh
(real party in interest
Genentech, Inc.):
R. Danny Huntington, Esq.
BURNS, DOANE, SWECKER & MATHIS
P.O. Box 1404
Alexandria, VA 22314-1404
Fax: 703-836-2021
Attorney for Brake
(real party in interest
Chiron Corporation):
Thomas E. Ciotti
MORRISON & FOERSTER
755 Page Mill Road
Palo Alto, CA 94304-1018
Fax: 650-494-0792
Via First Class Mail only:
Francis A. Paintin, Esq.
WOODCOCK, WASHBURN, KURTZ, MACKIEWICZ & NORRIS
One Liberty Place - 46th Floor
Philadelphia, PA 19103-7301
Robert P. Blackburn, Esq.
CHIRON CORPORATION
4560 Horton Street
Emeryville, CA 94608