Khavari v. D.T.

Paper No. 21
NOT FINAL - NOT PRECEDENTIAL
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
KHAVARI,
Junior Party,
v.
D.T.,
Senior Party.
_______________
Patent Interference No. 104,696
_______________
ORDER
(RETURNING PAPER)
INTRODUCTION
In Paper No. 20, the administrative patent judge returned Paper No. 19 for formal and
substantive reasons. Copies of Paper No. 19 that cure the formal problems arrived on 11 July
2001. Nevertheless, the order in Paper No. 20 is maintained.
DISCUSSION
On 9 July 2001, the parties were obligated to file their motions lists and did so. D.T.'s
motion list was returned for two reasons. The first reason was a series of formal problems.
Formal problems are generally curable and, in any case, the order returning the paper noted
D.T.'s listed motions. The order was also based on a second ground, however, that the list

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Khavari v. D.T. Page 2
Paper No. 21
1 The short notice arose from the parties request to put off the filing of the lists to avoid prejudicing ongoing
settlement discussion s (Paper N o. 14). The par ties had months to pre pare for the eve ntuality of filing these lists and both
indicated that they could comply with the deadline (Paper No. 16 at 2). Ordinarily such lists are rather simple affairs
amounting to a few pages. Hence, the parties have no cause to complain about prejudice resulting from the short notice.
2 No interferenc e-in-fact.
3 For instance, if D.T. were planning to add claims that more closely interfered with Khavari's claims,
addressing that motion could have mooted Khavari's no interference-in-fact motion, thus meeting the goal of reducing
costs and inefficiencies related to the interference.
included additional matter that was argumentative. The newly arrived D.T. motions list (no
paper number assigned) appears to cure the formal problems at the cost of timeliness. Like
formal problems, untimeliness is often excusable if there is no prejudice. In the present case,
however, the substantive problems and timeliness may be linked.
The parties were required to submit motions lists on fairly short notice.1 In filing the
motions lists, the parties were required to provide detail (Paper No. 16). The requirement for
specificity is not unique to this interference. Motions lists are used to determine the motions
schedule that the administrative patent judge must set, 37 C.F.R. § 1.636(a). If the lists are
cryptically brief, then there is no reasonable basis on which to tailor a schedule that will ensure
the proceeding is fast, fair, and inexpensive as required under 37 C.F.R. § 1.601. In the present
case, it was particularly important, since Khavari had identified a threshold issue,2 that D.T.
provide sufficient information for the administrative patent judge to see if D.T. had any motions
inextricably intertwined with Khavari's no interference-in-fact motion.3 It was also important
since, given the short time until motions were due, a decision would likely be made without
further discussion with the parties.
D.T.'s detailed "motion list" ran to sixty-nine pages, including exhibits. As a
consequence, it could not be filed by facsimile and likely took until close to the filing deadline to

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Khavari v. D.T. Page 3
Paper No. 21
4 The formal re quirements are somewhat relax ed for facsimile filings, m ainly because fa csimiles are limited to
five pages. The support staff at the Board can meet some of the formal requirements for facsimile filings without undue
burden bec ause such filings a re so short.
complete. Both of these factors probably contributed to the untimeliness of the formally correct
filing.4 Moreover, D.T.'s "motions list" remains argumentative. Argument is improper in a
motions list because, inter alia, issues for preliminary motions must be raised during the motions
period set by the administrative patent judge, not whenever and however a party chooses to raise
them. This is not simply a control issue (although that is significant since it would be unfair to
permit one party to control the interference and chaotic for both to control it). Rather it works an
actual prejudice against Khavari since the record would contain arguments that Khavari may
never have a chance to address.
ORDER
Upon consideration of D.T.'s newly arrived paper, it is 
ORDERED that the unnumbered paper entitled "D.T. LIST OF PRELIMINARY
MOTIONS", along with the working copy of the same paper, be returned to D.T.
RICHARD TORCZON
Administrative Patent Judge