Shiokawa v. Maienfisch

The opinion in support of the decision being
entered today is binding precedent of the Trial Section
Paper 65
Filed by: Fred E. McKelvey
Senior Administrative Patent Judge
Box Interference Filed
Washington, D.C. 20231 7 September 2000
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
KOZO SHIOKAWA, SHINICHI TSUBOI, KOICHI MORIYA,
YUMI HATTORI, IKURO HONDA and KATSUHIKO SHIBUYA
Junior Party,
(Patent 5,719,146),
v.
PETER MAIENFISCH and LAURENZ GSELL
Senior Party
(Application 09/136,664).
_______________
Patent Interference No. 104,525
_______________
Before: McKELVEY, Senior Administrative Patent Judge	, and
SCHAFER, LEE, TORCZON, GARDNER-LANE and MEDLEY,Administrative
Patent Judges.
McKELVEY, Senior Administrative Patent Judge	.
MEMORANDUM OPINION and ORDER
(Rationale in support of ORDER DENYING DISCOVERY)

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A. Introduction
Shiokawa has filed two miscellaneous motions (37 CFR
§ 1.635) seeking additional discovery (37 CFR § 1.687(c)):
1. Shiokawa [Miscellaneous] Motion 11 (Paper 53) and
2. Shiokawa [Miscellaneous] Motion 12 (Paper 56).
On 29 August 2000, both miscellaneous motions were denied by
a single judge without opinion. See ORDER DENYING DISCOVERY
(Paper 63). This MEMORANDUM OPINION and ORDER supplies the
findings of fact and rationale in support of the ORDER DENYING
DISCOVERY.
B. Findings of fact
The following findings of fact are supported in the record
by a preponderance of the evidence.
1. The interference involves a Shiokawa patent v.
a Maienfisch application. The patent is involved in a civil
action. See Bayer AG v. Novartis Crop Protection, Inc.	,
55 USPQ2d 1509 (M.D. La. 2000).
2. Nihon Bayer AGrochem K.K. is assignee of Shiokawa.
Bayer AG is an exclusive licensee.
3. Novartis Corporation, a wholly owned subsidiary of
Novartis AG, is assignee of Maienfisch.

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4. The interference is in the preliminary motion
phase. The next step is cross-examination by Novartis of
Shiokawa's witnesses prior to filing of oppositions by Novartis.
5. In support of its preliminary motions,
particularly Shiokawa preliminary motions 4-5 and miscellaneous
motions 7-10, Shiokawa submitted a declaration by Dr. Christoph
Erdelen (Ex 2015) (Paper 53, page 1, ¶ (1)).
6. Miscellaneous motions 7-10 invited the board
to add certain Shiokawa applications to the interference.
The invitation was declined (Paper 49). Hence, miscellaneous
motions 7-10, in effect, have been denied.
7. Dr. Erdelen's declaration is said to evaluate
material said to have been presented by Novartis in Annexes 21
and 23 in an appeal in an opposition to an application filed by
Shiokawa's assignee in the European Patent Office (Paper 53,
page 1, ¶ (2)).
8. Dr. Erdelen's declaration also evaluates Rule 132
declarations presented by Novartis during prosecution of U.S.
patent applications said to be directed to the subject matter of
this interference (i.e., Rule 132 declarations signed by Buholzer
and Rindlisbacher) (Paper 56, page 2, ¶ (3)).
9. According to Shiokawa, Dr. Erdelen has no first
hand knowledge of "the details of any tests conducted, the

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results reported, and the methods used to summarize the data in
Novartis's presentations" (Paper 53, pages 1-2, ¶ (6)).
10. In order for Dr. Erdelen to prepare adequately for
cross-examination, Shiokawa tells us that (Paper 53, page 2,
¶ (6)):
fundamental fairness and the interest of justice require
(1) that Dr. Erdelen be permitted access to the details of
the experiments that will be the subject of his cross-
examination and (2) that Dr. Erdelen be granted access to
the documents containing those details sufficiently prior to
his cross-examination for an effective review of those
materials.
11. Maienfisch apparently has declined to produce
copies of any documents relating to test procedures, raw data,
and evaluations of those test procedures and raw data relating
to tests said to have been reported in the Buholzer and
Rindlisbacher Rule 132 declarations (Paper 56, page 2, ¶ (5)).
12. The Buholzer and Rindlisbacher Rule 132
declarations are said to tout advantages of a species within the
scope of Maienfisch's claims designated as corresponding to the
count of this interference (Paper 56, page 2, ¶ (6)).
13. Dr. Erdelen's declaration is said to conclude that
many other species within the scope of Maienfisch's claims do not
possess the advantages of the species touted by the Buholzer and
Rindlisbacher Rule 132 declarations (Paper 56, pages 2-3, ¶ (7)).

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14. Dr. Erdelen did not present any results of tests
conducted by him or on his behalf (Paper 53, page 2).
15. Rather, it is said that Dr. Erdelen found
sufficient for his purposes the results of the testing submitted
by Novartis during its appeal in the European opposition, as well
as the tests and results reported in the Buholzer and
Rindlisbacher Rule 132 declarations submitted during prosecution
of Novartis's U.S. patent applications (Paper 53, page 2).
16. According to Shiokawa, Annexes 21 and 23 and the
Buholzer and Rindlisbacher Rule 132 declarations do not indicate
when any of the work summarized in the annexes and Rule 132
declarations was performed (Paper 56, page 3, ¶ (8)).
17. In Shiokawa [Miscellaneous] Motion 12, it is
asserted that (Paper 56, page 3, ¶ (9)):
Shiokawa suspects that at least some of the work on which
Dr. Erdelen based his [declaration] conclusions *** was
performed before the Buholzer and Rindlisbacher [Rule 132]
declarations were submitted to the [US]PTO.
18. No evidence was called to our attention to support
the suspicion asserted in Finding 17.
19. The basis of Shiokawa's suspicion is said to be
two fold (Paper 56, page 3, ¶ 10)):
First, to the certain knowledge of Shiokawa's assignee
Bayer, tests of the kind that underlay Annexes 21 and 23 and

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the Buholzer and Rindlisbacher [Rule 132] declarations take
a great deal of time to run, and the running of the large
number of tests that underlay those annexes and those [Rule
132] declarations most probably extended over a period of
several years. Second, Shiokawa's assignee believes that
there is no reliable way of predicting the level of
insecticidal activity of any given species within the scope
of Maienfisch's claims ***. Hence, Shiokawa believes that
Maienfisch's assignee had, and knew it had, some losers as
well as some winners within the scope of its claims *** when
it filed the Buholzer and Rindlisbacher [Rule 132]
declarations touting the advantages of one of its winners.
20. No evidence was called to our attention to support
the "certain knowledge" and beliefs asserted in Finding 19.
21. Shiokawa suspects that those responsible for
submitting the Buholzer and Rindlisbacher Rule 132 declarations
to the USPTO were aware of the work on which Dr. Erdelen based
his declaration conclusions (Paper 56, pages 3-4, ¶ (11)).
22. No evidence was called to our attention to support
the suspicion set out in Finding 21.
23. Shiokawa tells us that it is contemplating filing
a belated preliminary motion to raise the issue of "fraud" based
on its undocumented suspicions set out above (Paper 56, page 4,
¶ (12)).
24. According to Shiokawa (Paper 56, page 4, ¶ 14)):

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Establishing the accuracy of its [fraud] suspicion recited
*** [above] would be the first step in gathering the facts
that Shiokawa would need to have in its possession before
filing *** [a preliminary motion for judgment based on
fraud].
25. Shiokawa seeks production of the following
material:
(1) Copies of all original documents (e.g.,
laboratory notebook entries and memoranda) from which the
summaries in Annexes 21 and 23 were produced (Paper 53, page 3).
(2) Copies of the original documents (e.g.,
laboratory notebook entries and memoranda) detailing the
experiments summarized in the Buholzer and Rindlisbacher Rule 132
declarations (Paper 56, page 4).
(3) Reports or memoranda evaluating the results
of those experiments and any evaluations of those experiments
(Paper 56, pages 4-5).
(4) Reports and memoranda evaluating the results
of the experiments summarized in Annexes 21 and 23 (Paper 56,
page 5).

"Additional discovery" is a term of art in interference	1
practice and is discovery to which a party may be entitled under
*** [Rule 687(c)] in addition to discovery to which the party is
entitled as a matter of right *** under other rules governing
interferences. 37 CFR § 1.601(a).
The scope of discovery under Rule 687(c) was intended to	2
be the same as that under former Rule 287(c). Notice of Final
Rule, 49 Fed. Reg. 48416, 48417 (col. 2) (Dec. 12, 1984) ("[t]he
scope of the additional discovery would be the same as under
current practice.").
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C. Discussion
Granting additional discovery under 37 CFR § 1.687(c) is	1
discretionary with the board. Cochran v. Kresock, 530 F.2d 385,
396, 188 USPQ 553, 561 (CCPA 1976) (interpreting former 37 CFR
§ 1.287(c) (1984), the predecessor to Rule 687(c)).	2
Shiokawa has failed to establish that it would be in the
interest of justice to grant the additional discovery requested.
1. The "underlying test data"
Shiokawa attempts to obtain through the back door additional
discovery that it could not have obtained from Novartis through
the front door.
Shiokawa tells us that its preliminary motions rely on the
declaration testimony of Dr. Erdelen. The declaration testimony
apparently is based on evaluations found in a European opposition
involving Novartis and U.S. patent applications owned by
Novartis. There is nothing wrongper se with relying on material
in a European opposition involving Novartis or U.S. applications

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owned by Novartis. The material may well be admissible against
Novartis as an admission. However, when a party elects as a
matter of litigation strategy to rely on material generated by
its opponent in other proceedings, as opposed to running the
party's own tests, the party cannot expect the opponent to supply
the underlying data which supports the evaluation the opponent
made in another forum.
Dr. Erdelen's evaluations are based on Novartis-generated
material. In essence, Dr. Erdelen is testifying that if the
Novartis-generated material is assumed to be accurate, then
certain conclusions follow. Shiokawa should not now be permitted
to undermine material upon which it elected to rely as part of
its litigation strategy. Novartis's underlying data is
essentially irrelevant given Shiokawa's litigation strategy of
assuming the truth of the Novartis material and then basing its
case on that material.
Also irrelevant would be any Novartis underlying data which
would be limited to issues raised in Shiokawa miscellaneous
motions 7-10, which have been denied. There can be no cross-
examination associated with those miscellaneous motions.
It cannot be in the interest of justice to order Maienfisch
to produce the additional discovery which would be irrelevant.
Alternatively, under the additional discovery provisions
applicable to interference cases, Shiokawa's request is

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premature. We would find hard to believe that Novartis in its
cross-examination of Dr. Erdelen intends to rely on any of the
underlying data sought by Shiokawa. However, at the cross-
examination deposition, should Novartis elect to rely on data
underlying its material, Dr. Erdelen could be subject to
redirect. It would then follow that a request for relevant
material under 37 CFR § 1.687(b) might be appropriate. At this
time, however, Shiokawa's request is premature because cross-
examination has not taken place. Additional discovery is not
generally authorized for the purpose of preparing for cross-
examination. Tropix, Inc. v. Lumigen, Inc.	, 53 USPQ2d 2018, 2020
(Bd. Pat. App. & Int. 2000);Schubert v. McKernan, 188 USPQ 496,
499 (Bd. Pat. Int. 1975).
We have not overlooked Shiokawa's argument that "fundamental
fairness and the interest of justice" requires authorizing
additional discovery. Shiokawa utterly fails to explain why
"fundamental fairness" requires granting additional discovery for
the purpose of preparing a witness for cross-examination,
particularly given the provisions of 37 CFR § 1.687(b).
It is not in the interests of justice to permit additional
discovery under 37 CFR § 1.687(c) when there is an alternative
possibility for discovery under some other provision of the
rules, in this case 37 CFR § 1.687(b).

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2. The "fraud" discovery
It is a well-established practice in interference cases that
discovery as broad as that authorized by the Federal Rules of
Civil Procedure is not available in interference cases pending
before the USPTO. Tropix v. Lumigen, supra at 2020. We find it
hard to believe that counsel for Shiokawa is not fully aware of
the well-established practice, particularly given the publication
on 27 March 2000 of theTropix v. Lumigen publication.
Nevertheless, Shiokawa has embarked on what only can be
called a "fishing expedition" in search of "fraud fish" which
Shiokawa suspects are swimming in Novartis's "fish ponds."
Fishing expeditions are not authorized by the additional
discovery provisions of 37 CFR § 1.687(c). To perhaps beat a
dead horse, we again remind counsel that additional discovery
under the interference rules is not commensurate in scope with
discovery under the Federal Rules of Civil Procedure.
Apart from being a fishing expedition, there is further
fundamental flaw in Shiokawa's miscellaneous motions for
additional discovery. The evidence necessary to support a
miscellaneous motion is to accompany the motion. 37 CFR
§ 1.639(a). Yet, Shiokawa failed to call our attention to
evidence which would support its suspicions, beliefs and other
assertions of fact. Thus, Shiokawa attempts to engage in a

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fishing expedition sans pole and reel. The argument of counsel
in a brief is not evidence	.
We wish to re-enforce our views that motions, oppositions
and replies must be supported by evidence which is admissible
under our rules. Moreover, that evidence must be called to our
attention with sufficient detail such that we do not have to
undertake a search of the record to make out a case on behalf of
the moving or opposing party. A party must make out its case in
its motion or opposition and we, like a Federal court, will not
serve as advocate for either party in considering and deciding a
motion. Compare Ernst Haas Studio, Inc. v. Palm Press, Inc.	, 164
F.3d 110, 111-12, 49 USPQ2d 1377, 1378-79 (2d Cir. 1999). Nor,
where a party points the board to a multi-page exhibit without
citing a specific portion or page, will the board pour over the
document or the record to extract the relevant information.
Clintec Nutrition Co. v. Baxa Corp.	, 44 USPQ2d 1719, 1723 n.16
(N.D. Ill. 1997), citing United States v. Dunkel, 927 F.2d 955,
956 (7th Cir. 1991).
It cannot be in the interest of justice to authorize
additional discovery when (1) a party in need of evidence
supplies none, or if evidence is supplied, the party does not
call our attention to the relevant part of the evidence or
(2) a party engages in a fishing expedition.

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D. Order
Upon consideration of Shiokawa's Miscellaneous Motions 11
and 12, seeking additional discovery, and for the reasons given,
it is
ORDERED that Shiokawa Miscellaneous Motion 11 is
denied.
FURTHER ORDERED that Shiokawa Miscellaneous Motion 12
is denied.
______________________________
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 )