Perego v. Drehmel

BoxInterferences@uspto.gov 	Paper 63
Tel: 571-272-9797 	Filed: 	March 9, 2007
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
RICHARD E. PEREGO, STEFANOS SIDIROPOULOS
and ELY TSERN
Junior Party
(Patent 6,502,161),
v.
ROBERT ALLEN DREHMEL, KENT HAROLD HASELHORST,
RUSSELL DEAN HOOVER and JAMES ANTHONY MARCELLA
Senior Party
(Application 11/203,652).
Patent Interference No. 105,467 (SCM)
(Technology Center 2100)
Order - Miscellaneous - Bd.R. 104(a)
A. Conference call	1
A telephone conference call was held on 8 March 2007 at approximately	2
11:00 a.m., involving:	3
1. 	Ms. McCurdy, counsel for Perego,	4
2 	Mr. Sharrott, counsel for Drehmel, and	5
3. 	Sally Medley, Administrative Patent Judge. 1
6
1 Also present with counsel for Perego was Mr. Modi. Present with Mr. Sharrott
was Mr. Fisher. A court reporter was present.

B. Relevant discussion during conference call	1
Counsel for Perego requested the call to discuss a Drehmel exhibit that was	2
served 6 March 2007. Apparently, Perego objected to some of Drehmel’s exhibits	3
per SO ¶ 155.1. In response, Drehmel made an attempt to overcome the objections	4
by resubmitting certain amended exhibits per SO ¶ 155.1.3. Counsel for Perego	5
explained that one of the amended exhibits, the declaration of Desi Rhoden	6
(Exhibit 1002), added “new arguments” not previously raised and that the amended	7
exhibit was confusing since it was difficult to ascertain what was new and what	8
was original. For these reasons, Counsel for Perego requested that the exhibit be	9
excluded.	10
Counsel for Drehmel explained that the substitute Exhibit 1002 was different	11
from the original Exhibit 1002 only to the extent necessary to overcome Perego’s	12
original objections. Counsel for Drehmel also indicated that Perego was provided	13
a comparison of the two documents, so that Perego could readily ascertain the	14
differences between the old exhibit and the new one.	15
Perego’s assertion that the substitute Exhibit 1002 contains new arguments	16
is not well understood. Exhibit 1002 is a declaration in support of Drehmel’s	17
opposition briefs. Briefs contain arguments. Evidence should not contain	18
arguments. To the extent that Drehmel’s Exhibit 1002 contains new factual points	19
not previously presented, Perego failed to articulate why any of the alleged new	20

facts necessitate striking the exhibit from the record. Any new facts were	1
presumably made in order to overcome the objections made by Perego. Presenting	2
new facts in order to overcome an objection is not per se improper. If a party	3
objects to evidence, then the opponent may properly respond and present	4
supplemental evidence in order to overcome the objection. As a result, new facts	5
will likely be presented.	6
Drehmel does not seek to amend, change, or add new arguments to its	7
already filed oppositions. Moreover, Perego has not cross examined Desi Rhoden.	8
Perego will have opportunity to cross examine Desi Rhoden based on the amended	9
declaration. For these reasons, Perego’s request to strike Exhibit 1002 on the basis	10
that the exhibit presents new “arguments” is denied. Perego may of course move	11
to strike Exhibit 1002 at the appropriate time (Time Period 5) on the basis that the	12
supplemental exhibit fails to overcome the original objections.	13
During the call it became apparent that the parties have not labeled their	14
supplemental evidence (exhibits) in the same way. Apparently Drehmel has	15
labeled its supplemental exhibits with the same exhibit number as its original	16
exhibit, while Perego has labeled its supplemental evidence with a new number.	17
Drehmel’s approach is the correct one. A supplemental exhibit should be given the	18
same exhibit number as the original exhibit. The supplemental exhibit then	19

replaces the original exhibit. In this way, the briefs already filed need not be	1
amended to refer to any new exhibit numbers.	2
/Sally C. Medley/
Administrative Patent Judge
cc (via e-mail):
azupcic@fchs.com
barbara.mccurdy@finnegan.com