Tropix, Inc. v. Lumigen Inc.

The opinion in support of the decision being
entered today is binding precedent of the Trial Section.
Paper 56
Filed by: Trial Section Motions Panel
Box Interference Entered
Washington, D.C. 20231 28 February 2000
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
TROPIX, INC.
Junior Party,
(Application 09/059,373),
v.
LUMIGEN, INC.
(Hashem Akhavan-Tafti, Zahra Arghavani
Renuka Desilva and Kumar Thakur),
Senior Party
(Patent 5,721,370).
_______________
Patent Interference No. 104,459
_______________
Before: McKELVEY, Senior Administrative Patent Judge	, and
SCHAFER, LEE and TORCZON,Administrative Patent Judges	.
McKelvey, Senior Administrative Patent Judge	.
ORDER DENYING REQUEST FOR DISCOVERY
LUMIGEN MISCELLANEOUS MOTION 1 (Paper 53) seeks relief under
37 CFR § 1.639(c) (for testimony and discovery) and under 37 CFR

A preliminary motion may not be based on derivation from an opponent.	1
37 CFR § 1.633(a)(2).
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§ 1.687(c) (for additional discovery). Tropix has opposed (Paper
54) and Lumigen has filed a reply (Paper 56).
The motion is denied-in-part and dismissed-in-part.
A. Background
Lumigen has indicated its intent to file a preliminary
motion for judgment (37 CFR § 1.633(a)) alleging inequitable
conduct on the part of Tropix.
Lumigen also has indicated its intent to submit proof that
the Tropix inventors derived (35 U.S.C. § 102(f)) certain subject
matter from the Lumigen inventors through employees of Bayer
Corporation. Lumigen has been authorized to present derivation
proofs concurrently with its preliminary motions.	1
1. Derivation
To establish derivation, a party must show a conception
prior to an opponent and a communication to the opponent prior to
the opponent's conception. See Price v. Symsek, 988 F.2d 1187,
1190, 26 USPQ2d 1031, 1033 (Fed. Cir. 1993) (to prove derivation,
a party must establish prior conception of the claimed subject
matter and communication of the conception to the opponent);
Hedgewick v. Akers, 497 F.2d 905, 908, 182 USPQ 167, 169 (CCPA

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1974) (same). See also Stelos Co. v. Hosiery Motor-Mend Corp.	,
295 U.S. 237 (1935).
According to Lumigen, the Lumigen inventors communicated an
invention to employees of Bayer Corporation who in turn
communicated the invention to Tropix inventors. Further
according to Lumigen, the Bayer-Tropix communication occurred on
or about 17 December 1996 during conversations between (1) Bayer
Corporation employees Andrew Klawitter and Robert Parnell and
(2) Tropix inventor Irena Bronstein and Tropix employee Nancy
Watters.
Lumigen has requested discovery of various documents. The
documents are said to be pertinent to proof of communication of a
fluorinated dioxetane to the Tropix inventors. The documents
sought are set out in requests for documents numbers 1-3, 8-10
and 15-18:
1. All documents relating to any information
discussed during a teleconference on or about December 17,
1996 between Dr. Irena Bronstein and Ms. Nancy Watters of
Tropix, Inc., and Mr. Andrew Klawitter and Dr. Robert
Parnell of Bayer Corporation, including, without limitation,
notes taken during that teleconference, and any subsequent
memoranda, correspondence, electronic mail messages, etc.
relating to any information discussed during that
teleconference.

At one time, the "Oblon" firm represented Tropix and its inventor	2
Bronstein.
Since we are otherwise denying discovery, we do not reach any issue	3
of attorney-client privilege with respect to invention disclosures requested
by Lumigen. See In re Spalding Sports Worldwide, Inc.	, ___ F.3d ____, __
USPQ2d ____, Misc No. 595 (Fed. Cir. Feb. 11, 2000) (an invention record
constitutes a privileged communication, as long as it is provided to an
attorney for the purpose of securing primarily legal opinion, or legal
services, or assistance in a legal proceeding).
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2. All documents generated between about December 17,
1996 and January 28, 1997, relating to a decision to file,
and/or reasons for filing the '050 application on January
28, 1997, adding claims purporting to cover fluorinated
dioxetane compounds.
3. All documents, including correspondence, sent to
or from Tropix and the Oblon firm, relating to the reasons	[2]
for filing, and/or the filing of, the '050 application.
8. Any invention disclosures or similar documents	[3]
created prior to January 28, 1997, evidencing conception or
relating to the subject matter claimed in any claim of the
Tropix '050 application or the '373 application which calls
for fluorine on the R location of the structural formula
depicted.
9. All documents relating to the origin of, and/or
showing the structural formulas depicted in each of the
following claims: claims 4 and 6 of the '133 patent
(LX-5007, i.e., '050 application claims 40 and 42), and
claim 41 (now cancelled) and claim 42 of the '373
application (LX-5001, LX-5002), which documents were
generated prior to initial presentation of each such claim
during prosecution.

Watters litigation is a reference toWatters v. Tropix, Civil Action	4
98-1212 in the Middlesex Superior Court in the Commonwealth of Massachusetts.
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10. All documents generated on or before November 3,
1997, relating to a decision to file and/or the reasons for
filing an "Amendment, 37 C.F.R. § 1.312" filed on November
3, 1997 in the '050 application (LX-5019), adding claims
purporting to cover fluorinated dioxetane compounds.
15. All documents created or generated between
December 17, 1996 and April 14, 1998, relating to any
analysis of whether any of claims 37-42 presented during
prosecution of the '050 application, and/or any of claims
37-42 presented during prosecution of the involved '373
application, were described in the disclosure of prior
application 619,526 filed January 18, 1991, and/or complied
with the first paragraph of 35 U.S.C. § 112.
16. All documents created or generated on or after
December 17, 1996 which mention one or more of Bayer
Corporation, Andrew F. Klawitter, or Robert D. Parnell, by
name, initials or abbreviation.
17. All testimony of Dr. Irena Bronstein and Ms. Nancy
Watters given in the Watters litigation, by deposition or	[4]
at a hearing.
18. All documents relating to the Watters litigation,
other than those requested in Request No. 17, including
testimony, production documents and pleadings, which relate

On the issue of derivation, all cross-examination will take place in	5
a trial setting at the board in Arlington, Virginia, over which at least one
administrative patent judge assigned to the Trial Section will preside.
"Additional discovery" is a term of art in interference practice and	6
is discovery to which a party may be entitled under *** [Rule 687(c)] in
addition to discovery to which the party is entitled as a matter of right ***
under other rules governing interferences. 37 CFR § 1.601(a).
The scope of discovery under Rule 687(c) was intended to be the same	7
as that under former Rule 287(c). Notice of Final Rule, 49 Fed. Reg. 48416,
48417 (col. 2) (Dec. 12, 1984) ("[t]he scope of the additional discovery would
be the same as under current practice.").
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to or mention Bayer Corporation, Andrew F. Klawitter or
Robert G. Parnell, by name, initials or abbreviation.
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Lumigen contends in its motion for discovery that it has
established a prima facie case of derivation (motion, page 22).
Nevertheless, Lumigen states (motion, page 23):
However, to supplement the proofs now in hand, and/or
to assist in the cross-examination of any witnesses
proffered by Tropix on the issue of derivation at the
June 12-13, 2000 evidentiary hearing, Lumigen seeks	[5]
additional discovery *** in the form of a limited
number of reasonably framed documents requests.
Whether a party is entitled to "additional discovery"under	6
37 CFR § 1.687(c) [Rule 687(c)] is discretionary with the board.
Cochran v. Kresock, 530 F.2d 385, 396, 188 USPQ 553, 561 (CCPA
1976) (interpreting former 37 CFR § 1.287(c) (1984), the
predecessor to Rule 687(c)). To be entitled to additional	7

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discovery, a party must establish that the interest of justice
requires ordering the discovery sought.
If Lumigen has made out a prima facie case of derivation, as
it asserts in its motion, then it is somewhat difficult to
understand why additional discovery is needed at this time to
"supplement" Lumigen's proofs in hand. Accordingly, it would not
be in the interest of justice to require Tropix at this time to
produce the documents requested. Compliance with discovery can
be expensive for the party required to produce discovery. In
this case, there is no apparent reason why discovery is needed,
if as Lumigen asserts, it has made out a prima facie case of
derivation. Under the facts of this case, ordering discovery
would be inconsistent with the proposition that the rules should
be interpreted to secure a just, speedy and inexpensive
determination of interferences. 37 CFR § 1.601.
Lumigen also says that it seeks discovery to be prepared for
cross-examination of any witness Tropix may call. At the outset,
since Tropix has yet to indicate whether it will rely on the
testimony of any witness, there is no certainty that there will
be cross-examination. Furthermore, preparation for cross-
examination is not per se a sufficient reason to authorized
discovery in interference cases. Compare Schubert v. McKernan,
188 USPQ 496, 499 (Bd. Int. 1975) (applying former 37 CFR
§ 1.287(c)).

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The Lumigen requests for documents are typical of requests
under the Federal Rules of Civil Procedure. Recently, we have
observed an increased number of what we would characterize as
routine additional discovery requests which seem to be patterned
after discovery which may be available under the Federal Rules of
Civil Procedure. We perceive that there is a recently developed
assumption on the part of the patent bar that Federal Rules of
Civil Procedure discovery somehow is in vogue in interference
cases before the board.
We believe it worthwhile to re-emphasize that additional
discovery under Rule 687(c) is not discovery under the Federal
Rules of Civil Procedure. See Discovery before the Board of
Patent Interferences, 58 J. Pat. Office Soc'y 186, 193-194
(1976), citing Frilette v. Kimberlin, 508 F.2d 205, 211, 184 USPQ
266, 270 (3d Cir. 1974) (in banc) (Patent Office discovery not as
liberal as the Federal Rules of Civil Procedure) and	Sheehan v.
Doyle, 513 F.2d 895, 898 n.4, 185 USPQ 489, 491 n.4 (1st Cir.
1975). The CCPA best said it when it noted that the additional
discovery rule "does not bestow the right to discovery of
unlimited scope." Cook v. Dann, 522 F.2d 1276, 1276, 1888 USPQ
175, 176 (CCPA 1975).
With respect to the issues of derivation and priority,
it should be manifest to all that in all but the most unusual
cases, the "evidence" of derivation and priority is in the hands

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of the party with the burden of proof. As applied to the facts
of this interference, it is Lumigen which knows (1) when and
where its inventors conceived and precisely what was conceived
and (2) when and how that conception was communicated to Tropix.
If and when Tropix indicates that it will rely on the
testimony of witnesses, Lumigen will be entitled to obtain
discovery under 37 CFR § 1.687(b). Lumigen worries that Tropix
may not be able to produce any Rule 687(b) discovery in
Arlington, Virginia, where any evidentiary hearing may take
place. We are not as concerned as Lumigen about any inability of
Tropix to produce needed documents. Tropix is on notice of
documents which Lumigen may seek during cross-examination by
virtue of Lumigen's requests 1-3, 8-10 and 15-18. Tropix would
be well advised to have those documents available in the event
needed in Arlington, Virginia, to comply with any Lumigen
Rule 687(b) request which might be granted at the evidentiary
hearing. Moreover, immediately prior to the hearing, each party
should serve a list of possible documents which it might seek
under Rule 687(b) at the evidentiary hearing. Failure to serve a
list may be a basis for denying a Rule 687(b) request. Failure
of a party to have a document identified in an opponent's list
may be a basis for inferring that the document contains
information which is not favorable to the position of the party
who does not produce the document.

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2. Inequitable conduct
Inequitable conduct is becoming altogether too routine in
interference cases. The statute (35 U.S.C. § 135(a)) gives the
board jurisdiction over priority and patentability. A plausible
argument can be made that inequitable conduct is neither priority
nor patentability; rather, inequitable conduct is an equitable
issue. See Gardco Mfg. v. Herst Lighting Co.	, 820 F.2d 1209,
1212, 2 USPQ2d 2015, 2018 (Fed.Cir. 1987) (defense of inequitable
conduct is equitable in nature). We decline at this time to
resolve the argument. Rather, at this time we exercise our
discretion to determine when inequitable conduct may be raised.
It is plain on the record that numerous preliminary motions
raising patentability will be filed by both parties. If an
appropriate number of preliminary motions are granted and it
turns out that all of the Tropix claims are unpatentable, then
inequitable conduct becomes moot. If some Tropix claims survive
the preliminary motion phase, Tropix may still lose on priority,
in which case all claims corresponding to the count or counts
become unpatentable to Tropix under 35 U.S.C. § 102(g). In this
case, we are inclined to authorize a preliminary motion based on
inequitable conduct to be filed, if at all, no earlier than a
date after a decision on preliminary motions. Accordingly, there

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is no need to authorize discovery or testimony on the issue of
inequitable conduct at this time.
A discussion on whether, and if so when, additional
discovery under Rule 687(c) and discovery and/or testimony under
Rule 639 may be appropriate will best take place during a
conference call to set the times for taking action during the
priority testimony phase of the interference.
B. Order
Upon consideration of Lumigen Miscellaneous Motion 1, and
for the reasons given, it is
ORDERED that the additional discovery requested under
Rule 687(c) in connection with derivation isdenied.
FURTHER ORDERED that the motion is otherwisedismissed.
______________________________
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 )

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104,459
cc (via fax and First Class Mail):
Attorney for Tropix, Inc.
Steven B. Kelber, Esq.
Sharon E. Crane, Esq.
LONG, ALDRIDGE & NORMAN, LLP
Sixth Floor
701 Pennsylvania Avenue, N.W.
Washington, D.C. 20004
Tel: 202-624-1200 (main)
Fax: 202-624-1298
E-mail: skelber@lanlaw.com
Attorney for Lumigen, Inc.
J. Frank Osha, Esq.
Mark Boland, Esq.
SUGHRUE, MION, ZINN, MACPEAK & SEAS, PLLC
2100 Pennsylvania Avenue, N.W.
Suite 800
Washington, D.C. 20037-3202
Tel: 202-293-7060
Fax: 202-293-7860
E-mail: fosha@sughrue.com
E-mail: mboland@sughrue.com
Richard S. Handley
LUMIGEN, INC.
24485 West Ten Mile Road
Southfield, MI 48034
Tel: 810-351-5600