Nau v. Ohuchida

THIS OPINION WAS WRITTEN FOR PUBLICATION
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is otherwise not binding precedent. The decision was entered
on 14 April 1999
Paper 62
Filed by: Trial Section Motions Panel
Box Interference
Washington, D.C. 20231 Entered
Tel: 703-308-9797 30 April 1999
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
HEINZ NAU and CIARAN M. REGAN,
Junior Party,
(Application 08/446,481),
v.
SHUICHI OHUCHIDA, KAZUO KISHIMOTO,
NARITO TATEISHI and HIROYUKI OHNO,
Senior Party
(Application 08/681,482).
_______________
Patent Interference No. 104,258
_______________
Before: McKELVEY, Senior Administrative Patent Judge	, and
SCHAFER, LEE and TORCZON,Administrative Patent Judges	.
McKELVEY, Senior Administrative Patent Judge	.
ORDER GRANTING REQUEST FOR RECONSIDERATION

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A. 	Introduction
Before us is NAU REQUEST FOR RECONSIDERATION (Paper 61)
in which Nau requests that we modify our ORDER DECIDING NAU
MISCELLANEOUS MOTION 2 (Paper 57) to permit Nau to file a renewed
opposition.
B. 	Discussion
Nau notes that, as a result of our ORDER DECIDING NAU
MISCELLANEOUS MOTION 2, it just recently became aware that it may
have a 	de facto burden of proof with respect to certain issues
raised by Ohuchida Preliminary Motion 1. 	Reasoning that had it
known that it had a 	de facto burden, Nau now says that it would
have filed an opposition with arguments and evidence in addition
to the argument and evidence presented in NAU OPPOSITION 1 (Paper
45).
Under the circumstances of this case, and given that we
announced essentially for the first time that, under certain
unusual circumstances, there may be a de facto burden of proof
on a party opposing a preliminary motion, we agree with Nau that
the fair thing to do is to allow Nau to file an opposition and
evidence which Nau feels may best satisfy any de facto 	burden
which it may have.
Normally, we would be inclined to request a response from
Ohuchida with respect to the NAU REQUEST FOR RECONSIDERATION

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before granting the request. However, there can be no prejudice
to Ohuchida in allowing Nau to file a renewed opposition with all
arguments and evidence deemed appropriate by Nau, given that
Ohuchida has been authorized to file a reply responding to any
and all arguments presented by Nau. Rule 601 contemplates a
just, speedy and inexpensive interference. In short, whatever
procedure is used in an interference ought to be as fair as
possible. Perceiving no prejudice to Ohuchida if the NAU REQUEST
FOR RECONSIDERATION is granted without any views being submitted
by Ohuchida, we believe it is appropriate to enter a decision on
the reconsideration request at this time.
C. Additional observation
In this case, Nau could not have been aware of a new
practice announced in our ORDER DECIDING NAU MISCELLANEOUS
MOTION 2 (Paper 57). Since both the ORDER DECIDING NAU
MISCELLANEOUS MOTION 2 and the opinion entered today will appear
on the Web Page of the PTO, in the future parties will be on
notice that there are cases where in filing an opposition a party
may be under a de facto burden of proof in connection with
arguments made in the opposition. In future oppositions, counsel
should take into consideration the practice announced in the
orders which have been entered in this particular interference.

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D. 	Order
Upon consideration of the NAU REQUEST FOR RECONSIDERATION,
and for the reasons given, it is
ORDERED that the request is granted to the extent that
the NAU OPPOSITION 1 (Paper 45) shall be returned.
FURTHER ORDERED times will be set for filing a new Nau
opposition, an Ohuchida reply and a further Nau reply.
FURTHER ORDERED that this ORDER shall be published on
the PTO Web Page.
______________________________
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 	)
30 April 1999
Arlington, VA