Glaxco Wellcome, Inc. v. Cabilly

THIS DOCUMENT IS BINDING PRECEDENT OF THE TRIAL SECTION
Paper 41
Filed by: Trial Section
Box Interference
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
GLAXO WELLCOME INC.
Junior Party
(Patents 5,545,403, 5,545,404,
and 5,545,405)
v.
SHMUEL CABILLY,
HERBERT L. HEYNEKER, WILLIAM E. HOLMES,
ARTHUR D. RIGGS, and RONALD B. WETZEL
Senior Party
(Application 08/909,611)
_______________
Patent Interference No. 104,532
_______________
Before: McKELVEY, Senior Administrative Patent Judge, and
SCHAFER, LEE, TORCZON, GARDNER-LANE, and MEDLEY, Administrative
Patent Judges.
PER CURIAM.
ORDER MAKING ORDER PRECEDENTIAL
Upon consideration of the record in this interference, it is

2
ORDERED that the ORDER DENYING GLAXO WELLCOME INC.
MISCELLANEOUS MOTION 1 (Paper 39) is made precedential;
FURTHER ORDERED that lines 1-2 of page 1 of the ORDER
(Paper 39) reading "THIS DOCUMENT WAS NOT WRITTEN FOR PUBLICATION
and is not binding precedent of the Board" be amended to read
"The opinion in support of the decision being entered today is
binding precedent of the Trial Section."
______________________________)
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
______________________________)
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
)
______________________________)
JAMESON LEE ) TRIAL SECTION
Administrative Patent Judge )
) BOARD OF PATENT
) APPEALS AND
______________________________) INTERFERENCES
RICHARD TORCZON )
Administrative Patent Judge )
)
)
______________________________)
SALLY GARDNER-LANE )
Administrative Patent Judge )
)
)
______________________________)
SALLY C. MEDLEY )
Administrative Patent Judge )

3
cc (via facsimile and first class mail):
Counsel for Glaxo Wellcome, Inc.:
Gerald M. Murphy, Jr.
Raymond C. Stewart
BIRCH, STEWART, KOLASCH, & BIRCH, LLP
8110 Gatehouse Rd., Ste. 500 East
Falls Church, Va. 22042
Tel: 703-205-8000
Fax: 703-205-8050 or 8060
Counsel for Cabilly (real party in interest, Genentech, Inc.):
Steven B. Kelber
PIPER, MARBURY, RUDNICK & WOLFE, LLP
1200 Nineteenth St., N.W.
Washington, D.C. 20036-2430
Tel: 202-861-3900
Fax: 202-223-2085

1
THIS DOCUMENT WAS NOT WRITTEN FOR PUBLICATION
and is not binding precedent of the Board
Paper 39
Filed by: Sally Gardner-Lane
Administrative Patent Judge
Box Interference
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
GLAXO WELLCOME INC.
Junior Party
(Patents 5,545,403, 5,545,404,
and 5,545,405)
v.
SHMUEL CABILLY,
HERBERT L. HEYNEKER, WILLIAM E. HOLMES,
ARTHUR D. RIGGS, and RONALD B. WETZEL
Senior Party
(Application 08/909,611)
_______________
Patent Interference No. 104,532
_______________
ORDER
DENYING GLAXO WELLCOME INC. MISCELLANEOUS MOTION 1
Background
On 28 September 2000, Glaxo Wellcome Inc. ("Glaxo") filed a
paper entitled "GLAXO WELLCOME INC.'S MISCELLANEOUS MOTION 1"

2
(Paper 33). Glaxo moves for leave to take additional discovery
to support preliminary motions seeking judgment against Cabilly
on the basis that Cabilly claims corresponding to the count are
unpatentable for failing to meet the enablement or written
description requirement of 35 USC § 112, ¶ 1.
According to Glaxo, during the prosecution of the Cabilly
application the examiner rejected claims of the Cabilly
application based on 35 USC § 112, ¶ 1, but later withdrew the
rejection after submission of a declaration ("the Ridgeway
declaration") and two interviews with counsel for Cabilly. Glaxo
states that the Ridgeway declaration "appears in the prosecution
history of the Cabilly application to have been the sole factual
basis upon which the attorneys for Cabilly and Genentech overcame
the [35 USC § 112, ¶ 1] rejections that the Examiner had
advanced." It is Glaxo's position that the Ridgeway declaration
provides inadequate details to allow Glaxo to prepare its
preliminary motion for judgment. (Paper 33 at 2-3). Glaxo
requests additional discovery, including testimony from Mr.
Ridgeway and information relating to the interviews involving the
examiner and Cabilly counsel. (Paper 33 at 3).
Discussion
Glaxo seems to be under the impression that it must address
or rebut the Ridgeway declaration in its preliminary motion for

3
judgment since it apparently believes that the examiner relied on
the declaration in support of a decision to withdraw the
35 USC § 112, ¶ 1, rejections. However, neither the Board nor
Glaxo is bound by an ex parte decision of the examiner made
during prosecution of the involved Cabilly application. Compare
Switzer v. Sockman, 333 F.2d 935, 942, 142 USPQ 226, 232 (CCPA
1964) and Sze v. Bloch, 458 F.2d 137, 141, 173 USPQ 498, 501
(CCPA 1972). When considering a preliminary motion for judgment,
such as the one Glaxo says it intends to file, the Board looks
solely to the evidence in the interference. The Ridgeway
declaration has not been placed in evidence in the interference.
Any discussion at the interviews involving the examiner and
Cabilly counsel is not likely to be relevant, and in any event
has not been placed in evidence.
Glaxo has the burden of proving unpatentability vel non of
Cabilly's claims. 37 CFR § 1.637(a). To prove unpatentability,
Glaxo must file a preliminary motion under 37 CFR § 1.633(a). A
preliminary motion under Rule 633(a) is not an appeal from an
examiner's decision to allow a claim. Rather, it is an
independent request to the Board for entry of judgment against a
party. In rendering a decision on a preliminary motion for
judgment, the Board is not compelled to defer to an examiner's
decision to allow a claim. If Cabilly relies on the Ridgeway
declaration in opposing any Glaxo preliminary motion for

4
judgment, Glaxo will have an opportunity to cross-examine Mr.
Ridgeway.
The discovery requested by Glaxo does not appear to be
necessary for Glaxo to support its preliminary motions for
judgment. Hence, it would impose an unnecessary expense on
Cabilly that would be inconsistent with a just, speedy, and
inexpensive resolution of the interference. 37 CFR § 1.601.
Accordingly, Glaxo has not shown that the interest of justice
requires the requested discovery.
Order
Upon consideration of the record of the interference, it is
ORDERED that Glaxo miscellaneous motion 1 to take
additional discovery is DENIED.
______________________________
Sally Gardner-Lane
Administrative Patent Judge
18 October 2000
Arlington, Va.

5
cc (via facsimile and first class mail):
Counsel for Glaxo Wellcome, Inc.:
Gerald M. Murphy, Jr.
Raymond C. Stewart
BIRCH, STEWART, KOLASCH, & BIRCH, LLP
8110 Gatehouse Rd., Ste. 500 East
Falls Church, Va. 22042
Tel: 703-205-8000
Fax: 703-205-8050 or 8060
Counsel for Cabilly (real party in interest, Genentech, Inc.):
Steven B. Kelber
PIPER, MARBURY, RUDNICK & WOLFE, LLP
1200 Nineteenth St., N.W.
Washington, D.C. 20036-2430
Tel: 202-861-3900
Fax: 202-223-2085