Rabbani v. Notomi

BoxInterference@uspto.gov 	Paper 145	1
Tel: 	571-272-4683 	Entered 25 January 2008	2
3
UNITED STATES PATENT AND TRADEMARK OFFICE	4
BOARD OF PATENT APPEALS AND INTERFERENCES	5
____________________	6
7
ELAZAR RABBANI, JANNIS G. STAVRIANOPOULOS,	8
JAMES J. DONEGAN, JACK COLEMAN and MARLEEN WALNER,	9
10
Junior Party	11
(Application 10/306,990),	12
13
v.	14
15
TSUGUNORI NOTOMI and TETSU HASE,	16
17
Senior Party	18
(Patent 6,410,278 B1)	19
(Patent 6,974,670 B2).	20
____________________	21
22
Patent Interference 105,427—McK	23
Patent Interference 105,432—McK	24
Technology Center 1600	25
____________________	26
27
Before: McKELVEY, Senior Administrative Patent Judge, and TORCZON	28
and MOORE, Administrative Patent Judges.	29
30
McKELVEY, Senior Administrative Patent Judge.	31
32
MEMORANDUM OPINION and ORDER	33
Denying Rabbini Miscellaneous Motion 5	34
35
A. Statement of the case	36
The interference is in the priority phase.	37
Rabbani filed a motion for judgment based on priority of invention.	38

2
The motion and evidence in support of the motion were served on	1
Notomi.	2
Notomi filed an opposition.	3
The opposition and evidence in support of the opposition were served	4
on Rabbani.	5
During a conference call on 29 November 2007, it came to the	6
attention of the Board that Rabbani intended to file a reply.	7
In support of the reply, Rabbani indicated an intent to rely on	8
declaration evidence to "counter" declaration evidence offered by Notomi in	9
its opposition.	10
Since evidence relating to priority is almost always in the possession	11
of the party offering the evidence, a suggestion was made by Notomi that the	12
probably reason to file declaration evidence in support of a reply on the issue	13
of priority connection was to overcome some shortcoming in the initial	14
priority case made out in the motion.	15
The suggestion made considerable sense to the Board.	16
The Federal Rules of Evidence apply to interference proceedings.	17
37 C.F.R. § 41.152(a) (2007).	18
Fed. R. Evid. 403 provides that evidence may be excluded if its	19
probative value is outweighed by the danger of unfair prejudice or by	20
considerations of undue delay, waste of time, or needless presentation of	21
cumulative evidence. The rule is consistent with Board policy, established	22
through a rule promulgated by the Director, that interference rules are to be	23
interpreted to achieve a just, speedy, and inexpensive resolution of an	24
interference. 37 C.F.R. § 41.1(b) (2007).	25
The rules also preclude raising new arguments in replies. 37 C.F.R.	26
§ 41.122(b) (2007).	27

3
The Board authorized Rabbani to file a motion in limine seeking a	1
determination whether declaration evidence could be filed with any Rabbani	2
reply. 37 C.F.R. § 41.155(d) (2007)	3
Rabbani's motion is before the Board as RABBANI	4
MISCELLANEOUS MOTION 5. Paper 139.	5
Notomi has filed an opposition. Paper 140.	6
A reply was not authorized.	7
B. Discussion	8
In support of its opposition, Notomi has offered the testimony of	9
Dr. Gerald F. Joyce (Ex 2042).	10
In the motion, Rabbani characterizes Dr. Joyce as Notomi's "expert".	11
Paper 139, page 1:17.	12
According to Rabbani, Dr. Joyce "has not meaningfully addressed the	13
substance of the evidence [offered by Rabbani] supporting Rabbani's motion	14
[judgment based on] … priority." Paper 139, page 1:17-18.	15
Further according to Rabbani, "Dr. Joyce prefers to disregard	16
Rabbani's submitted evidence and even denies the existence of … notebook	17
data as being evidence." Paper 139, page 1:18-19.	18
Instead, it is said by Rabbani that "Dr. Joyce relies on scientifically	19
unsupported opinions and blanket assertions that Dr. Donegan's notebooks	20
do not describe the methods of the Counts. The proffered declaration	21
testimony will set the record straight." Paper 139, page 1:19-21.	22
The declaration evidence would consist of declarations by	23
(1) Dr. Jim Donegan (a named inventor who previously has testified) and	24
(2) Dr. Keith Backman (a brand new witnesses who did not earlier testify).	25
Paper 139, page 1:23.	26

4
According to Rabbani, Dr. Donegan would generally testify to the	1
evidence in his laboratory notebooks (Ex 1073 and Ex 1074), which are said	2
to support an actual reduction to practice. Paper 139, page 2:1-2.	3
Further according to Rabbani, Dr. Backman would testify as to the	4
conclusions that one of ordinary skill in the art would reach from an	5
examination of Dr. Donegan's lab notebooks.	6
Rabbani represents that Notomi's opposition relies extensively on	7
Dr. Joyce's declaration testimony to support its arguments that Rabbani has	8
not adequately made out its priority case. Paper 139, page 2:12-14.	9
Pointing out the obvious, Rabbani argues that it could not have	10
earlier presented the proffered declaration evidence because Dr. Joyce had	11
not yet testified when Rabbani filed its motion for judgment. Paper 139,	12
page 2:17-20.	13
It is well-established practice at the Board that in presenting a motion	14
for relief, a moving party must make out a prima facie case for relief. See,	15
e.g., Stampa v. Jackson, 78 USPQ2d 1567, 1571, 1574 (Bd. Pat. App. & Int.	16
2005); Stice v. Campbell, 76 USPQ2d 1101, 1110 (Bd. Pat. App. & Int.	17
2004); Glaxo Wellcome, Inc. v. Cabilly, 58 USPQ2d 1859, 1861 (Bd. Pat.	18
App. & Int. 2001); LeVeen v. Edwards, 57 USPQ2d 1416, 1422 (Bd. Pat.	19
App. & Int. 2000). If a prima facie case is not made out in the motion, it	20
cannot be made out in a reply. 37 C.F.R. § 41.122(b) (2007) (first sentence).	21
In the case of priority, where priority evidence is generally in the possession	22
of the moving party, there should be little, if any, occasion to file declaration	23
evidence in support of a reply. Since an opponent has no right to respond to	24
a reply, there exists a real danger, whether intentionally or inadvertently, that	25
a moving party supplementing its priority case when filing declaration	26
evidence in support of the reply will raise new factual issues.	27

5
In its motion, Rabbani explains why it believes testimony is needed to	1
"reply" to paragraphs 3 and 5-15 of the Joyce declaration testimony. In	2
deciding the motion, we have not read Dr. Joyce's testimony. Rather, we	3
have considered the motion on the basis of the representations made by	4
Rabbani in the motion.	5
Paragraph 3 of the Joyce testimony	6
According to Rabbani, in ¶ 3 of the Joyce testimony, Dr. Joyce states	7
that the quality of the copies of the lab notebooks is very poor and what	8
appear to be photographs of gels are so poorly reproduced that Dr. Joyce	9
could not clearly see much of what is on them. 	Paper 139, page 3:1-3.	10
Rabbani proposes to have Dr. Donegan and Dr. Backman testify that	11
one skilled in the art would be able to discern features on the pages of the	12
lab notebooks and photographs of the gels. It was Rabbani's obligation to	13
put clear documents in front of the Board and to explain those documents	14
with its motion for priority. If Rabbani is to be believed, then according to	15
Rabbani, Dr. Joyce had some trouble with the documents apparently finding	16
them not to be clear enough to decipher. The "remedy" was to cross-	17
examine Dr. Joyce to determine precisely what Dr. Joyce could not decipher	18
Rabbani proposes to have not one witness, but two witnesses, tell us	19
that the documents are clear. The need for two witnesses is not satisfactorily	20
explained and seems inconsistent with both Fed. R. Evid. 403 and 37 C.F.R.	21
§ 41.1(b) (2007). No imagination is needed to figure out that Rabbani's use	22
of two witnesses would mean that Notomi might have to cross-examine two	23
witnesses, which at this stage of the interference strikes us as unduly	24
burdensome. Moreover, if it turned out on cross-examination that the	25
documents are clear, then Notomi would have to recall Dr. Joyce to obtain	26
his observations with respect to the reply testimony of the two witnesses.	27

6
One can speculate that there would never be an end to the need to get more	1
evidence. Rabbani's witnesses should have testified why the documents	2
make out a prima facie case. Dr. Joyce testified why they do not. We have	3
to determine whether to credit Rabbani's witnesses or Dr. Joyce. We do not	4
need any help from a reply witnesses to do so. Presumably Notomi pointed	5
out in its opposition why Dr. Joyce is the more credible witness. Rabbani	6
may point out in its reply why Dr. Joyce is not the more credible witness.	7
According to Notomi's opposition, Notomi objected to the	8
admissibility of the "unclear" lab notebooks. Paper 140, page 4:6-7.	9
Rabbani did not exercise its options of responding with "clear" lab	10
notebooks. 37 C.F.R. § 41.155(b)(2) (2007). Having failed to exercise its	11
option, Rabbani is in no position at this point to come in with clear lab	12
notebooks or attempt to explain what Notomi characterizes as "unclear" lab	13
notebooks.	14
Paragraph 5 of the Joyce testimony	15
Rabbani tells us that reply testimony is needed to establishing that the	16
lab notebook (Ex 1073) contains evidence that a PCR experiment	17
successfully produced sequences containing a portion of the HBV template	18
with sequences on either end capable of forming stem-loops under suitable	19
conditions. What Rabbani now seeks to establish at the reply stage should	20
have been established at the motion stage.	21
Paragraph 6 of the Joyce testimony	22
In paragraph 6, Dr. Joyce is said to have been unable to find any data	23
indicating why bands produced actually correspond to a single-stranded	24
molecule having a stem-loop structure at each end. If that data is necessary	25
to an actual reduction to practice, then it should have been fully presented as	26
part of the motion for judgment.	27

7
Paragraph 7 of the Joyce testimony	1
In paragraph 7, Dr. Joyce is said to have been unable to find that as of	2
June 1998 that Dr. Donegan knew the nature of what is referred to as a 210	3
base pair piece. Assuming knowledge of the nature of the 210 base pairs	4
piece is relevant, it should have been fully discussed in the motion for	5
judgment.	6
Paragraph 8 of the Joyce testimony	7
Rabbani indicates that Dr. Joyce cited a portion of a Donegan lab	8
notebook which states that one of the things "we haven't clear [sic]	9
established" is the nature of the high MW DNA that appears after	10
amplification. Rabbani further indicates that based on the cited portion,	11
Dr. Donegan may not have known for certain what his results signified. The	12
reply declaration testimony would show, says Rabbani, that the overall	13
results support a conclusion that the higher molecular weight (high MW)	14
amplification products were concatemeric in nature and therefore	15
Dr. Donegan appreciated what he had.	16
A statement in a lab notebook which an opponent might reasonably be	17
expected to discuss to maintain that an inventor did not appreciate the nature	18
of the invention is something which needs to be dealt with in direct	19
testimony. Waiting until the reply stage of an interference to see if an	20
opponent might rely upon a negative inference in a lab notebook amounts, in	21
effect, to sandbagging the opponent. Invariably, new argument is likely to	22
creep into the reply if the matter is not address when the motion is presented.	23

8
Paragraph 9 of the Joyce testimony	1
According to Rabbani, Dr. Joyce states that he found nothing at	2
page 162 of Ex 1073 to indicate that at the time Dr. Donegan performed	3
experiments recorded there that he believed that any of the amplification	4
products corresponded to an amplicon with a stem-loop at each end.	5
Rabbani tells us that the reply declaration testimony will reveal that	6
Dr. Joyce considered only one page of several pages describing the relevant	7
experiment. Presumably the direct priority evidence discusses the "several"	8
pages. An attorney in a reply can state why Dr. Joyce should not be credited	9
by noting that he considered only one page of several pages.	10
Paragraph 10 of the Joyce testimony	11
Dr. Joyce is said to have stated that Dr. Donegan does not point to any	12
evidence in his notebook or elsewhere to support an assertion in his	13
declaration. The reply declaration evidence would tell us where	14
Dr. Donegan did so in addition to explaining scientifically why what was	15
pointed to justifies Rabbani's priority case. Again, this issue may be	16
addressed in the reply argument. Dr. Donegan either pointed to evidence in	17
his notebook or he did not. If he did not, then he cannot do so in a reply	18
declaration. If he did, then Dr. Joyce is wrong.	19
Paragraph 11 of the Joyce testimony	20
Dr. Joyce is said to have said that he can find no data, observations, or	21
other evidence in lab notebooks that show Dr. Donegan conducted any	22
experiments to demonstrate a particular point. The reply declarations would	23
point to the relevant data, observations, and other evidence. In particular,	24
we are told that the reply declaration testimony would show where those	25
notebooks "demonstrate that strand displacement took place." Paper 139,	26

9
page 7:1. Calling the data, observations, and other evidence to our attention	1
is something which needed to take place in the motion for judgment.	2
Paragraph 12 of the Joyce testimony	3
Dr. Joyce is said to have said that he could see no data or other	4
observation set forth in Dr. Donegan's lab notebooks demonstrating that	5
certain amplification took place. If amplification is relevant, then surely it	6
would have been called to our attention in the motion. An explanation at the	7
reply stage "that the isothermal amplifications occurred" comes too late.	8
Paragraph 13 of the Joyce testimony	9
Rabbani advises that Dr. Joyce states that nowhere in Dr. Donegan's	10
notebook is there any indication of the significance of the statement "the	11
lowest band of the ladder looks like its (sic [—it's]) in the appropriate	12
space." Paper 139, page 7:19-20 [bracketed matter added].	13
If being in the right place is significant to priority, then it should have	14
been explained with the motion. If it is not significant, then counsel can tell	15
us so in the reply brief.	16
Paragraph 14 of the Joyce testimony	17
According to Rabbani, Dr. Joyce says there is no data to support a	18
particular conclusion. The reply declarations would explain otherwise. If	19
the conclusion is important to priority, it should have been explained with	20
the motion.	21
Paragraph 15 of the Joyce testimony	22
Dr. Joyce is said to have alleged that one skilled in the art would	23
conclude that certain gel results would not support a conclusion that Rabbani	24
carried out the amplification method of Count 1. The reply declaration	25
testimony supposedly would show that the gel results support the	26

10
conclusion. If gel results are relevant to priority, they should have been	1
discussed in the motion.	2
Due process argument based on alleged change in course	3
Rabbani alleges that submission of evidence with a reply "is common	4
in interference proceedings." Paper 139, page 9:16-24. Rabbani points out	5
that in connection with other motions, it filed replies.	6
Rabbani correctly points out that during a recent conference call	7
authorizing this motion the Board noted that the Board's recent experience	8
with reply briefs in general has demonstrated that its current practice of	9
permitting evidence to come in with a reply just does not work. Paper 139,	10
page 10:4-6. Reply briefs, accompanied by evidence, on the issue of priority	11
have been particularly troublesome.	12
Reference to the Board's order is believed appropriate. Paper 137,	13
page 1:4 through page 3:22:	14
Counsel for Rabbani represented that due to the	15
Thanksgiving holiday, Rabbani was unable to complete its	16
reply brief on the issue of priority. Counsel further represented	17
that Rabbani intended to file declaration testimony with its	18
reply. Counsel still further represented that Notomi would not	19
agree to an extension of time. Rabbani asked that the reply	20
brief be filed on or before 10 November 2007.	21
Counsel for Notomi represented that its opposition to an	22
extension was not based on any "excuse" Rabbani might have	23
for wanting the extension. Rather, counsel for Notomi was	24
concerned that what Rabbani was actually up to was preparing	25
declaration testimony to bolster its priority case. Notomi is of	26
the view that Rabbani failed to make out a prima facie case of	27

11
priority with its motion for judgment based on priority.	1
Accordingly, counsel for Notomi suggested that further	2
declarations in a reply on the issue of priority more than likely	3
would raise new factual issues.	4
Both counsel agreed that Rabbani had put on a priority	5
case. Both counsel agreed that Notomi called a witness who	6
discussed what Notomi feels are "holes" in priority case put on	7
by Rabbani. Counsel for Rabbani, while not agreeing that there	8
are any "holes," indicated that Rabbani nevertheless wanted to	9
put on a witness to explain why there are no "holes" in its	10
priority case. Rabbani advised the Board that it exercised its	11
right not to cross-examine and therefore the Notomi witness	12
[Dr. Joyce] was not cross-examined.	13
The Board's recent experience with reply briefs in	14
general has demonstrated that its current practice of permitting	15
(as a matter of right so to speak) evidence to come in with a	16
reply just does not work. It appeared to the Board, at least at	17
first blush, that Notomi may have a point under the facts of this	18
case—Rabbani is attempting at the reply stage to put in	19
evidence which should have been put in with the motion.	20
Counsel for Rabbani suggested that if Rabbani does not	21
put on evidence it will be met with the "argument of counsel	22
cannot take the place of evidence" argument. However,	23
pointing out via argument why one witness is more credible	24
than another is a proper function of argument.	25
What the case may boil down to is whether the Board	26
finds the Rabbani witness testimony and documentary evidence	27

12
more credible than the Notomi witness and documentary	1
evidence. What the reply brief needs to address is why the	2
Board should credit the Rabbani witnesses over those of	3
Notomi. Presumably, the Notomi opposition tells us why its	4
witness is more credible. What is not necessary is a lot of new	5
evidence which should have been filed with the motion. For	6
example, this is not a case where Notomi attempted to repeat a	7
Rabbani experiment to show that what Rabbani did "does not	8
work" in which case Rabbani might be allowed to conduct its	9
own experiment.	10
The Board's resolution, at least at this stage, is to permit a	11
reply without any additional declaration testimony. At the	12
same time, the Board authorized Rabbani to file a motion to	13
proffer what any declaration testimony would be. No	14
declaration may accompany the motion, just a proffer by	15
counsel. For the nature of a proffer, the parties may wish to	16
consult Byrn v. Aronhime, Interference 105,384, Paper 64 (Bd.	17
Pat. App. & Int. Sept. 8, 2006) (https://acts.uspto.gov/ifiling	18
then enter interference number, then file contents, then	19
document 64).	20
An opposition to the motion will be allowed, but no reply	21
is authorized.	22
23
Rabbani alleges that there was a change in practice and that the	24
"change in practice in the midst of an interference, particularly without any	25
reasoned analysis as why the change is necessary, is a potential violation of	26
Rabbani's procedural due process rights." Cited in support of Rabbani's	27

13
contention is (1) 5 U.S.C. § 706 (2007) and (2) Motor Vehicle	1
Manufacturers Ass'n v. State Farm Mutual Automobile Insurance Co.,	2
463 U.S. 29, 42 (1983). In addition, we call attention to Greater Boston	3
Television Corp. v. F.C.C., 444 F.2d 841, 852 (D.C. Cir. 1970) (agency	4
changing its course of action must supply a reasoned analysis indicating that	5
prior policies and standards are being deliberately changed).	6
Fact-specific analysis will reveal that what Rabbani asserts is a change	7
in practice is actually an application of the rules to the facts of this case.	8
Conference calls with the Board are held on a routine basis in interference	9
cases. In this case a conference call was held to discuss an extension of time	10
to file Rabbani's reply brief. The conference call was necessary because	11
Notomi (1) had a concern and (2) would not agree to the requested	12
extension. 37 C.F.R. § 41.123(b)(1)(ii) (2007). Notomi's concern turned out	13
to be an apprehension that Rabbani was about to supplement its motion for	14
judgment with improper reply evidence. As noted earlier, it was not	15
Notomi's position that an extension of time was not appropriate for other	16
reasons. Upon further discussion, the Board became convinced that Notomi	17
may have a point. Rather than "shut the door" on Rabbani, the Board	18
authorized Rabbani to file a miscellaneous motion for leave to include	19
declaration evidence with the reply. The rules authorize a party to file a	20
miscellaneous motion in limine for a ruling on the admissibility of evidence.	21
37 C.F.R. § 41.155(d) (2007). 	Rabbani Miscellaneous Motion 5 is such a	22
motion. We have considered the motion on its merits and now deny the	23
motion. There is no change in practice—all that has occurred is that a	24
motion has been decided on its merits under the applicable rules. The	25
proffered declaration evidence has been excluded from evidence.	26

14
C. Order	1
Upon consideration of Rabbani Miscellaneous Motion 5 (Paper 139),	2
and for the reason given herein as well as all the reasons given in Notomi	3
Opposition 5 (Paper 140), it is	4
ORDERED Rabbani Miscellaneous Motion 5 is denied.	5

15
cc (via Electronic Mail):	1
2
Attorney for Notomi	3
(real party in interest Eiken Kagaku Kabushiki Kaisha;	4
licensee: Meridian Bioscience, Inc.):	5
6
Barry E. Bretschneider, Esq.	7
Peter J. Davis, Esq.	8
MORRISON & FOERSTER LLP	9
1650 Tysons Boulevard, Suite 300	10
McLean, VA 22102	11
12
Tel: 	703-760-7743 (Bretschneider)	13
Tel: 	703-760-7748 (Davis)	14
Fax: 	703-760-7777	15
Email: 	bbretschneider@mofo.com	16
Email: 	pdavis@mofo.com	17
18
Attorney for Rabbani	19
(real party in interest	20
Enzo Life Sciences, Inc.,	21
subsidiary of Enzo Biochem, Inc.):	22
23
Eugene C. Rzucidlo, Esq.	24
Robert M. Schulman, Esq.	25
HUNTON & WILLIAMS	26
1900 K Street, N.W.	27
Washington, D.C. 20006	28
29
Tel: 	212-309-1214 (Rzucidlo)	30
Fax: 	212-309-1100 (Rzucidlo)	31
Tel: 	202-955-1500 (Schulman)	32
Fax: 	202-778-2201 (Schulman)	33
Email: 	gcr@hunton.com	34
Email: 	rschulman@hunton.com	35