Rose v. Frazer

1 The style of the motion fails to comply with the requirements of § 25 of
the STANDING ORDER (Paper 2), which requires, inter alia, that "[a]ll motions,
including Rule 633 preliminary motions, of a party shall be consecutively
numbered starting with number 1." An appropriate style, given that it is Rose's
eighth motion, would have been
ROSE MISCELLANEOUS MOTION 8
(Motion in limine to exclude evidence)
The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 73
Filed by: Trial Section Motions Panel
Box Interference Filed
Washington, D.C. 20231 29 March 2002
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
ROBERT C. ROSE, WILLIAM BONNEZ
and RICHARD C. REICHMAN,
Junior Party,
(Application 08/207,309)
v.
IAN FRAZER and JIAN ZHOU,
Senior Party.
(Application 08/185,928)
Patent Interference 104,773 (McK)
_______________
Before: McKELVEY, Senior Administrative Patent Judge, and
GARDNER-LANE and MEDLEY, Administrative Patent Judges.
McKELVEY, Senior Administrative Patent Judge
MEMORANDUM OPINION and ORDER
(Decision on motion in limine)
Pending before the panel is ROSE MOTION IN LIMINE TO EXCLUDE
FRAZER EXHIBITS (Paper 62).1

2 Exhibits numbered in the 1000's are Frazer Exhibits. Exhibits numbered
in the 4000's are Rose Exhibits.
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Rose seeks a ruling on the admissibility of (1) Ex 10262
(a declaration of Dr. Jian Zhou), (2) Ex 1027 (a photocopy of a
micrograph), (3) ¶ 26 of a declaration of Dr. Margaret A. Stanley
(Ex 1029) and (4) ¶ 24 of a declaration of Dr. Kathrin Jansen
(Ex 1041).
I.
Exhibit 1026
A. Findings of fact
1. Exhibit 1026 is a declaration of Dr. Jian Zhou.
2. The Zhou declaration is dated 03/20/98, which we
take to mean 20 March 1998.
3. On or about 30 March 1998, the Zhou declaration
was initially served by Frazer on Rose in Interference 103,929 as
an exhibit in support of a preliminary motion filed in that
interference.
4. Interference 103,929 was administratively
terminated on 17 October 2001 without a decision on preliminary
motions.
5. This, and five other interferences, were declared
in place of administratively terminated Interference 103,929.
6. During the preliminary motions period of this
interference, Frazer again served the Zhou declaration (Ex 1026).
7. The parties agree that Dr. Zhou died, Rose telling
us that death occurred in March of 1999.

3 "Hearsay" is a statement, other than one made by the declarant while
testifying at the trial or hearing, offered in evidence to prove the truth of the
matter asserted. Fed. R. Evid. 801(c). A "statement" includes a written
assertion of a person, if it is intended by the person as an assertion. Fed. R.
Evid. 801(a).
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8. In administratively terminated Interference
103,929, Rose did not have an opportunity to cross-examine
Dr. Zhou before his death.
9. According to the Zhou declaration:
a. Dr. Zhou is "the first-named author" of a
"paper" identified as Zhou et al., "Expression of Vaccinia
Recombinant HPV 16 L1 and L2 ORF Proteins in Epithelial Cells Is
Sufficient for Assembly of HPV Virion-like Particles," 185
Virology 251-257 (1991) (Ex 4045).
b. Dr. Zhou tells us that he "was involved in
the preparation of the electron micrographs shown in this paper".
c. Dr. Zhou further tells us that "[t]he
electron micrograph submitted as *** Exhibit 1027 is the electron
micrograph shown as the inset in Figure 5 of the Zhou et al.
paper".
B. Discussion
To the extent that the Zhou declaration is being offered to
prove the truth of statements contained therein, it is
inadmissible as hearsay.3
Based on Fed. R. Evid. 804(b)(1), Frazer maintains that the
Zhou declaration is not hearsay. Fed. R. Evid. 804(b)(1):
The following are not excluded by the hearsay rule if
the declarant is unavailable as a witness:

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(1) Former testimony. Testimony given as a
witness at another hearing of the same or a different
proceeding, or in a deposition taken in compliance with
law in the course of the same or another proceeding, if
the party against whom the testimony is now offered,
or, in a civil action or proceeding, a predecessor in
interest, had an opportunity and similar motive to
develop the testimony by direct, cross, or redirect
examination.
Frazer argues that Rose had an opportunity to cross-examine
Dr. Zhou in administratively terminated Interference 103,929.
While superficially plausible, Frazer's argument cannot withstand
penetrating analysis.
An opponent (Rose in this case) has a right to cross-examine
the affidavit testimony of any witness relied upon by a party
(Frazer in this case) in an interference. It is true that Frazer
presented the Zhou declaration during the preliminary motion
phase of Interference 103,929. However, in that interference, a
time period for taking cross-examination had not been set or
authorized.
In October 1998, the Chief Administrative Patent Judge
established the Trial Section within the Interference Division of
the board. Notice of the Chief Administrative Patent Judge of
Nov. 6, 1998, "Interference Practice--New Procedures for Handling
Interference Cases at the Board of Patent Appeals and
Interferences," 1217 Off. Gaz. Pat. & Tm. Office 18 (Dec. 1,
1998).

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The Zhou declaration was initially served prior to creation
of the Trial Section. In interferences declared prior to
creation of the Trial Section, a preliminary motions phase of an
interference normally did not include a time within which an
opponent could request an opportunity to cross-examine an affiant
relied upon by a party in connection with the preliminary motion.
Accordingly, generally preliminary motions were decided by a
single judge prior to cross-examination of affiants. If during
the "testimony" period, generally set after a decision on
preliminary motions, an opponent desired cross-examination of an
affiant relied upon by a party, cross-examination could be
undertaken as a matter of right. If cross-examination produced
meaningful evidence, an opponent could ask for a decision on a
preliminary motion to be reviewed by a 3-judge panel at final
hearing in light of the "new evidence" in the form of cross-
examination. In Interference 103,929, a testimony period was
never set. Hence, Rose never had an opportunity as a matter of
right to cross-examine Dr. Zhou because a decision on preliminary
motions was never entered prior to termination of the
interference.
One of the changes made by the Trial Section was to
authorize cross-examination of a party's affiant prior to the
time an opponent had to oppose any motion relying on the
affiant's testimony. As applied to a party's preliminary motion,
an opponent was given a right to cross-examine prior to filing an
opposition to the preliminary motion. Indeed, failure to cross-

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examine constitutes waiver of a right to cross-examine. Creation
of the Trial Section and implementation of its procedures changed
the timing for taking cross-examination. Moreover, contested
preliminary motions in Trial Section-declared interferences are
generally decided by a 3-judge panel. A decision on preliminary
motions by a 3-judge motions panel governs further proceedings in
the interference and any request for review at final hearing
amounts to a request for reconsideration. No further evidence
related to the preliminary motion, including additional cross-
examination, is authorized or permitted after a decision on
preliminary motions.
Frazer, relying on 37 CFR § 1.639(c), also maintains that
Rose could have asked for leave to take cross-examination prior
to any "testimony" period which might have been set. We agree
that theoretically Rose could have moved to take cross-
examination, but it is highly unlikely that it would have been
granted.
Rule 639(c) talks in terms of "evidence in the form of
testimony that is unavailable to the party ***". Evidence, in
the form of cross-examination of Dr. Zhou, would have been
available to Rose during the "testimony" period which would have
been set after a decision on preliminary motions. Even if Rule
639(c) could be construed to permit Rose to cross-examine
Dr. Zhou, it is unlikely that any motion to take cross-
examination would have been granted. Rather, in pre-Trial
Section-declared interferences, the board would have decided

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preliminary motions prior to authorizing what then would have
been regarded as premature cross-examination.
Lastly, we would observe that cross-examination is a
fundamental right in interferences. Rose would have had an
opportunity as a matter of right to cross-examine Dr. Zhou during
a "testimony" period. However, Rose had no right to do so under
Rule 639(c).
In reaching our decision, we have not overlooked Frazer's
arguments based on Fed. R. Civ. P. 32(a)(3)(A) and court opinions
interpreting that rule. First, Fed. R. Civ. P. 32(a)(3)(A) does
not apply to interference proceedings. Second, the rule deals
with depositions, not trial testimony. No discovery deposition
was authorized in either this interference or terminated
Interference 103,929. The Zhou declaration is not a discovery
deposition; rather, it is "direct" testimony in an interference.
Cross-examination of direct testimony takes place in an
interference when a time is set for cross-examination. Third, we
can agree that Dr. Zhou's untimely death is not the "fault" of
Frazer. However, Rose had a right to cross-examine and death has
prevented cross-examination.
Exhibit 1026, the Zhou declaration, is excluded from
evidence.

4 Ex 4073 constitutes portions of a transcript of Dr. Sun's cross-
examination deposition.
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II.
Exhibit 1027
A. Findings of fact
1. According to Frazer, Exhibit 1027 is a photocopy
of a "micrograph" referred to in the Zhou declaration. See
Part (I)(A)(9)(b) & (c), supra, where Dr. Zhou tells us that he
"was involved in the preparation of the electron micrographs
shown in *** [his] paper" and that "[t]he electron micrograph
submitted as *** Exhibit 1027 is the electron micrograph shown as
the inset in Figure 5 of the Zhou et al. paper".
2. According to Rose, Ex 1027 is not admissible
because it has not been authenticated except through Dr. Zhou's
excluded hearsay.
3. Frazer responds with a declaration of Dr. Xiao Yi
Sun (Ex 1109).
4. Rose has cross-examined Dr. Sun (Ex 4073).
5. Based on (1) the Rose motion (Paper 62), (2) the
Frazer opposition (Paper 67), (3) the Rose reply (Paper 68),
(4) the Sun declaration (Ex 1109) and (5) the Sun cross-
examination (Ex 4073),4 the following becomes manifest:
b. Dr. Sun is the widow of Dr. Zhou (Paper 67,
page 5, ¶ 14; Paper 68, page 2, ¶¶ 11-14).
c. Dr. Sun is a second named co-author of the
"paper" identified earlier as Zhou et al., "Expression of
Vaccinia Recombinant HPV 16 L1 and L2 ORF Proteins in Epithelial

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Cells Is Sufficient for Assembly of HPV Virion-like Particles,"
185 Virology 251-257 (1991) (Ex 4045).
d. Dr. Sun "was involved in the experimental
work described in that paper" (Ex 1109, page 1, ¶ 3).
e. According to Dr. Sun (Ex 1109, page 1, ¶ 5):
I agree with the statement in paragraph 2 of Dr. Zhou's ***
[d]eclaration [Ex 1026] that the electron micrograph ***
[Ex] 1027 *** is the electron micrograph shown as an inset
to Figure 5 of Zhou 1991 [Ex 4045].
f. Further according to Dr. Sun (Ex 1109,
page 2, ¶ 8):
The electron micrograph image of the inset of Figure 5 is
taken from the center of *** [Ex] 1027, which is a larger
electron micrograph image.
6. Rose, based on cross-examination, makes the
following points:
a. Ex 1027 is "not a micrograph, but a photocopy
of something" (Paper 68, page 3, ¶ 5).
b. At the time she signed her declaration
(Ex 1109), Dr. Sun had not compared Ex 1027 to any original
micrograph (Ex 4073, page 20:11-15).
c. Dr. Sun did not prepare the original
micrograph (Ex 4073, page 16:17:19).
d. The current whereabouts of the original
micrograph apparently remains a mystery (Paper 68, page 3, ¶ 7).

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7. During her cross-examination deposition, Dr. Sun
testified that "I did have a good photocopy myself" (Ex 4073,
page 20:17-18). She also testified that she knew who prepared
the original micrograph (Ex 4073, page 16:17-19). Dr. Sun also
seems to be confident that the particle shown in Ex 1027 is the
same particle that was shown in the 1991 Zhou paper (Ex. 4045)
(Ex 4073, page 21:05-16).
8. Ex 1027 is a photocopy of an original micrograph.
B. Discussion
According to Fed. R. Evid. 901(a), "[t]he requirement of
authentication *** as a condition precedent to admissibility is
satisfied by evidence sufficient to support a finding that the
matter in question is what its proponents claims." A document
may be authenticated by the "[t]estimony of [a] witness with
knowledge" stating "that a matter is what it is claimed to be."
Fed. R. Evid. 901(b)(1).
In this case, we find that Dr. Sun's testimony to be
sufficient to authenticate Ex 1027. Ex 1027, therefore, will not
be excluded from evidence.
III.
Parts of Stanley and Jansen testimony
A. Findings of fact
1. Rose claims that the testimony in ¶ 26 of a
declaration of Dr. Margaret A. Stanley (Ex 1029) is inadmissible
because that testimony is said to be based (at least in part) on
the inadmissible hearsay declaration of Dr. Zhou.

5 Some of the exhibits in this interference may contain counsel's
handwritten interlineations. Those interlineations were authorized by the board
so that exhibit numbers and other identifying information in exhibits filed in
Interference 103,929 could be used in this interference and would conform to
exhibit numbers in this interference, without the need for re-execution of
declarations.
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2. The testimony sought to be excluded is as follows
(matter in strikeout in declaration as filed in Interference
103,929 which has been replaced with matter in bold in this
interference; matter in [brackets] added) (Ex 1029, page 9):5
Moreover, I have reviewed the declaration of Dr. Jian Zhou
of March 20, 1998 (which I am informed was submitted in the
instant interference [, i.e., Interference 103,929,] on
March 30, 1998) and have reviewed the electron micrograph
attached as Exhibit B thereto (the Zhou declaration and its
exhibits are attached submitted as Frazer Exhibit I 1026 &
1027. This micrograph also corresponds to the VLP shown in
Figure 5 of the Frazer priority application and Frazer
application. Based on the 50 nm size bar shown at the
bottom of the micrograph shown in Exhibit B [, i.e., Ex
1027,] of the Zhou declaration, it is my assessment that the
VLP shown measures approximately 45 nm in diameter. Based
on this diameter and the regular array of capsomeres shown
in this micrograph, the particle is a VLP.
3. Rose also claims that the testimony in ¶ 24 of a
declaration of Dr. Kathrin Jansen (Ex 1041) is inadmissible
because that testimony is said to be based on the inadmissible
hearsay declaration of Dr. Zhou.
4. The Jansen testimony is essentially the same as
the Stanley testimony (Ex 1029, ¶ 26; Ex 1041, ¶ 24).

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B. Discussion
The admissibility of the Stanley and Jansen testimony is
governed by Fed. R. Evid. 703. Rule 703 states that "[t]he facts
or data *** upon which an expert bases an opinion or inference
may be those *** made known to the expert at *** the hearing. If
of a type reasonably relied upon by experts in the particular
field in forming opinions or inferences upon the subject, the
facts or data need not be admissible in evidence in order for the
opinion or inference to be admitted."
The record supports a finding that Stanley and Jansen
consider Ex 1027 to be a copy of a micrograph and that they
reasonably rely on micrographs to form opinions in their field.
Accordingly, ¶ 26 of Ex 1029 and ¶ 24 of Ex 1041 will not be
excluded from evidence.
According to Rose, Dr. Stanley testified that "I certainly
would not measure anything on a photocopy" (Ex 1074, page 209,
lines 4-5). Further according to Rose, Dr. Stanley's cross-
examination establishes that an expert would not rely on a
photocopy of an electron micrograph. Basically, what Rose is
arguing is that the testimony of Dr. Stanley is not entitled to
much weight, because on cross she allegedly contradicts the basis
upon which she gave her direct. The fact (assumed for the
purpose of deciding the motion) that the Stanley and Jansen
testimony may be entitled to little, if any, weight is not a
basis for excluding that testimony from evidence.

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IV.
Additional observations
A. Weight to be given admissible evidence
One problem we have had in considering the motion in limine
is that we do not know precisely (1) for what purpose each
exhibit might be used and (2) the context in which Frazer relies
on the exhibits.
While we have not excluded Ex 1027 or portions of Ex 1029
and Ex 1041 from evidence, we here make it clear that we have not
determined what weight, if any, will be accorded to any of the
exhibits. Ultimately we will determine how much, if any, weight
is to be accorded to those exhibits when we enter a decision on
preliminary motions. Hence, our determination of admissibility
should not be construed as a decision to accord any degree of
weight to the exhibits.
B. Exhibit 1027
The board has received a document styled FRAZER SUBMISSION
OF FRAZER EXHIBIT 1027 (Paper 71).
Apparently, two versions of Ex 1027 have been used.
A first version is Exhibit B attached to Dr. Zhou's
declaration filed in Interference 103,929.
A second version is what Frazer characterizes as a "more
legible copy" which has been filed along with the document
mentioned above. According to Frazer, the "more legible copy"
was served on Rose at a deposition which took place on 8 March
2002.

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The board will assume that the second version, i.e., the
"more legible copy", will be the copy which is filed when
exhibits are filed during TIME PERIOD 8 of the preliminary motion
phase of this interference.
V.
Order
Upon consideration of ROSE MOTION IN LIMINE TO EXCLUDE
FRAZER EXHIBITS (Paper 62), and for the reasons given, it is
ORDERED that the motion is granted only to the extent
that Ex 1026 is excluded from evidence.
FURTHER ORDERED that the motion is otherwise denied.
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
SALLY GARDNER-LANE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
SALLY C. MEDLEY )
Administrative Patent Judge )

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Counsel for Rose
(real party in interest
assignee The University of Rochester,
Strong Memorial Hospital;
licensees, MedImmune, Inc., and
SmithKline Beecham PLC):
Michael L. Goldman, Esq.
Edwin V. Merkel, Esq.
NIXON PEABODY LLP
Counsel for Lowy
(real party in interest
assignee United States of America, as represented
by the Department of Health and Human Service;
licensees MedImmune, Inc. and Merck & Co., Inc.):
Ned A. Israelsen, Esq.
Brenton R. Babcock, Esq.
Nancy W. Vensko, Esq.
KNOBBE, MARTENS, OLSON & BEAR LLP
Counsel for Schlegel
(real party in interest
assignee Georgetown University School of Medicine;
licensees MedImmune, Inc. and SmithKline Beecham PLC):
Elliot M. Olstein, Esq.
CARELLA, BYRNE, BAIN, GILFILLAN, CECCHI,
STEWART & OLSTEIN
Counsel for Frazer
(real party in interest
assignee CSL Limited (Australia) and University of
Queensland (Australia); licensee Merck & Co., Inc.):
Beth A. Burrous, Esq.
George C. Quillin, Esq.
Stephen A. Bent, Esq.
FOLEY & LARDNER