Nevel v. Hoeller

The real party in interest is Lawson-Hemphill, Inc. for	1
both involved patents.
The real party in interest is Zellweger Luwa Ag.	2
The opinion in support of the decision entered
today is binding precedent of the Interference Trial Section.
Paper No. 65
Filed by: Trial Section Motions Panel
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
_______________
AVISHAI NEVEL, JOHN B. LAWSON,
KENDALL W. GORDON, Jr., and DAVID BONNEAU
Junior Party
(Patent Nos. 5,570,188 and 5,541,734)1
v.
ROBERT HOELLER
Senior Party.
(Application 08/723,315)2
_______________
Patent Interference No. 104,025
_______________
Before McKELVEY, Senior Administrative Patent Judge, and SCHAFER,
LEE and TORCZON, Administrative Patent Judges.
LEE, Administrative Patent Judge.
Decision on Motion
for Additional Discovery

Interference No. 104,025
Nevel. v. Hoeller
- 2 -
On November 23, 1999, a decision on preliminary motions was
rendered in this case. (Paper No. 54). On March 1, 2000, junior
party Nevel served its case-in-chief priority testimony.
On April 17, 2000, junior party Nevel et al. filed a
miscellaneous motion (Motion No. 8) for seeking additional
discovery under 37 CFR § 1.687(c), relating to “inventorship of
Senior Party Hoeller’s application which is involved in the
subject Interference.” According to party Nevel, (1) it recently
discovered information which strongly indicates that the stated
sole inventor of senior party’s involved application is actually
only one of three joint inventors, and (2) whether or not the
defect in inventorship was intentional remains to be discovered.
Party Nevel requests the setting of a period for filing
miscellaneous motions under 37 CFR § 1.635 for additional
discovery under 37 CFR § 1.687(c), if necessary, so that this
motion can be considered. The request is dismissed. The setting
of such a period is not necessary here, where the motion for
additional discovery has already been filed.
The motion for additional discovery is denied, because party
Nevel did not set forth a prima facie case of why it is entitled
to the relief sought. In particular, the evidence submitted by
party Hoeller did not establish a threshold level of suspicion

Interference No. 104,025
Nevel. v. Hoeller
Japanese Patent No. 2747451.	3
It is not altogether clear what is meant by party Nevel	4
as a “corresponding” or “counterpart” application, but it is
represented that the Japanese patent claims priority to the same
Swiss patent application from which party Hoeller’s involved
application in this interference claims priority benefit.
- 3 -
sufficient to justify, in the interest of justice, additional
discovery to explore inventorship issues concerning party
Hoeller’s involved and benefit cases.
Party Nevel states that in a “corresponding” Japanese
patent of the senior party, two inventors are listed in addition	3
to the sole inventor listed on the senior party’s involved
application. Party Nevel further refers to this Japanese patent
as “the Japanese counterpart to Senior Party Hoeller’s subject
application and parent patent.” On the basis of the different	4
inventorship named in the Japanese patent, party Nevel asserts
that Robert Hoeller is “apparently not the sole inventor of
Senior Party Hoeller’s claimed invention of the subject
application and/or its parent applications, contrary to
Mr. Hoeller’s declaration of inventorship,” and alludes to
“possible inequitable conduct” on the part of senior party
Hoeller.

Interference No. 104,025
Nevel. v. Hoeller
- 4 -
Party Nevel did not address whether Japanese patent law
prohibits the inclusion of multiple claims the inventions of
which are made by different inventive entities. In a U.S. patent
application, not all of the named inventors in an application
need to have made a contribution to each claim. Perhaps that is
also the case in a Japanese patent. If that is not so, it was
incumbent on party Nevel to bring that out as a part of its prima
facie case. Party Nevel also did not address whether the
Japanese application discloses and/or claims something other than
that which is disclosed and/or claimed in party Hoeller’s
involved application. Even assuming that there are common
claims, the Japanese patent may be claiming additional material.
Party Nevel did not set forth sufficient factual basis to
demonstrate that one should expect the named inventorship to be
the same between Hoeller’s involved application in this
interference and the Japanese patent. Even assuming that
inventorship should be the same between party Hoeller’s involved
application and the Japanese patent, party Nevel has provided no
reasonable basis to suspect that it is party Hoeller’s involved
application in this interference and not the Japanese patent
which named the wrong inventor(s). If it is the Japanese patent

Interference No. 104,025
Nevel. v. Hoeller
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which named the wrong inventor(s), that is simply of no moment in
this interference.
Party Nevel is much too quick to presume a mistake in
inventorship, and much much too quick to raise the specter of
inequitable conduct. On this record, nothing has been
demonstrated which is even remotely close to inequitable conduct.
In light of the directive in 37 CFR § 1.601 for construing the
rules to secure the just, speedy, and inexpensive determination
of every interference, “fishing expeditions” will not be condoned
and “witch hunts” will be aggressively quelched. Here, party
Nevel’s motion is a fishing expedition with respect to the
inventorship issue and a witch hunt with respect to the issue of
possible inequitable conduct.
Finally, party Nevel has not explained why it could not have
earlier uncovered the same information. It has not been made
known when the Japanese patent was published, and why with
reasonable efforts party Nevel could not have located the
Japanese patent earlier.
Because party Nevel’s motion does not set forth a prima
facie entitlement to the relief requested, this decision is made
independent of party Hoeller’s opposition to the motion and we
need not consider any reply to Hoeller’s opposition.

Interference No. 104,025
Nevel. v. Hoeller
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Party Nevel’s Miscellaneous Motion 8 for Additional
Discovery is denied, and it is
ORDERED that party Nevel may not re-file this motion to
bring forth additional evidence for consideration. In the
interest of securing a just, speedy, and inexpensive
determination of every interference, we will not permit in this
interference a second bite at the apple where a party squandered
the first; and

Interference No. 104,025
Nevel. v. Hoeller
Although junior party Nevel objects to publication of	5
this decision in a form which reveals its identity, its two
involved cases are both issued patents, and thus the objection is
overruled.
Senior party Hoeller, whose involved case is an	6
application, has indicated in a telephone conference call with
Judge Lee on May 1, 2000, that it has no objection to publication
of this decision, as is.
- 7 -
FURTHER ORDERED that a copy of this decision, as is, will	5
be posted on the Interference Trial Section’s Website located at6
http//:www.uspto.gov/web/offices/dcom/bpai/its.
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)