Glaxco Wellcome, Inc. v. Cabilly

The opinion in support of the decision being
entered today is n2! binding precedent of the Board.
Paper 	171
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 FAXED
GLAXO 	WELLCOME 	INC., APR 302001
Junior 	Party
(Patents 	5,545,403, 	5,545,404, 	PAT. & T.M. OFFICE
and 	5,545,405), 	BOARD OF PATENT APPEALS
AND INTERFERENCES
v.
SHMUEL CABILLY,
HERBERT 	L. 	HEYNEKER, 	WILLIAM 	E. 	HOLMES,
and RONALD 	B. 	WETZEL,
Senior 	Party.
(Application 	08/909,611)
Patent 	Interference 	104,532
Before: 	McKELVEY, 	Senior Administrative 	Patent 	Judge, 	and
SCHAFER and GARNER-LANE, 	Administrative 	Patent 	Judges.
PER CURIAM.
MEMORANDUM OPINION and ORDER
The 	board 	has 	received a 	PETITION 	FROM THE APRIL 	6, 	2001,
ORDER OF THE ADMINISTRATIVE 	PATENT 	JUDGE 	UNDER 	37 	C.F.R.
§ 	1.644 (a) (1) 	(Paper 	170) 	(hereinafter 	"petition"). 	The
petition, 	while 	styled as 	a 	petition under 	37 	CFR 	§ 	1.644(a) (1),
in 	reality 	a 	petition 	seeking 	to 	have 	the 	Commissioner

exercise 	supervisory 	authority over 	an 	action 	taken 	by 	a 	single
Administrative 	Patent 	Judge 	on behalf 	of 	the 	board.
A. 	Facts
The 	facts 	are 	rather 	straightforward. 	Cabilly 	filed 	a
preliminary motion 	alleging 	unpatentability 	of 	Glaxo 	claims 	based
on alleged public 	use. 	Glaxo 	filed 	an 	opposition. 	Thereafter,
additional 	evidence 	became 	available 	which 	Cabilly 	believes 	is
relevant 	to 	the 	issues 	sed 	in 	its 	preliminary motion. 	Cabilly
then 	submitted 	the 	additional 	evidence 	with 	its 	reply 	to 	Glaxo's
opposition. 	Thereafter, 	a 	conference 	call 	took 	place 	between
counsel 	for 	the 	parties 	and Administrative 	Patent 	Judge 	Sally
Gardner-Lane 	(Paper 	164, 	page 	1). 	During 	the 	conference 	call,
Glaxo 	sought 	leave 	to 	file 	a 	miscellaneous 	motion 	(37 	CFR
§ 	1.635) 	to 	"strike" 	(i.e., 	deny 	consideration 	to) 	at 	least 	that
part 	of 	Cabilly's 	reply 	which 	relies 	on 	the 	additional 	evidence
(Ex 2267, 	page 	36, 	lines 	13 	16). 	Alternatively, 	Glaxo 	asked 	for
an 	opportunity 	to 	file 	an 	additional 	opposition 	to 	address
Cabilly's 	new 	evidence 	(Ex 	2267, 	page 	36, 	lines 	16 	21).
It 	is 	apparently Glaxo's 	position 	that 	the 	Cabilly
preliminary motion 	does 	not 	make 	out 	a 	prima 	facie 	case 	for
relief. 	Cabilly, 	of 	course, 	maintains 	otherwise. 	But, 	as
counsel 	for 	Cabilly 	explained during 	the 	conference 	call,
Cabilly's 	ability 	to 	use 	the 	additional 	evidence 	only 	became
possible 	after 	its 	preliminary motion 	and 	Glaxo's 	opposition 	had
been 	filed 	(Ex 	2267, 	page 	14, 	lines 	4-16).
2

Based on 	her 	assessment 	the 	case, 	as 	a 	whole, 	Judge
Gardner 	Lane 	exercised her 	discretion 	to 	permit 	axo 	to 	file 	an
additional 	opposition addressing 	Cabilly's 	additional 	evidence
and 	for 	Cabilly to 	file 	an 	additional 	reply 	(Paper 	164, 	page 	5)
Glaxo now 	seeks 	administrative 	review 	of 	Judge 	Gardner
Lane's 	order by way 	of 	a 	petition under 	37 	CFR 	§ 	1.644(a) (1).
B. 	Petitions 	under Rule 	644(a) (1)
The 	rules 	authorize 	three 	different 	types 	of 	petitions.
A Rule 	644(a) (1) 	petition 	is 	appropriate 	when 	the 	board 	is 	of 	the
opinion 	that 	a 	decision 	involves 	a 	controlling 	question 	of
procedure 	or 	an 	interpretation of 	a 	rule.
The 	petition 	is 	vague 	as 	to 	the 	precise 	issue 	of 	procedure
which 	is 	in need 	of 	resolution. 	According 	to 	the 	ition
(page 	1) :
The 	junior party, 	GWI 	[Glaxo] 	hereby 	requests 	that
the 	Commissioner 	review 	the 	Order 	Administrative
Patent 	Judge 	Gardner-Lane 	issued 	on 	April 	6, 	2001, 	and
modify 	the 	order 	to 	allow GWI 	to 	argue 	and 	submit
evidence, 	at 	an 	appropriate 	time, 	that 	Cabilly did 	not
make 	out 	a 	prima 	facie 	case 	in 	Cabilly 	Preliminary
Motion 	6 	that 	the 	claims 	of 	the 	GWI 	patents 	are
unpatentable 	over 	[sic--based 	on] 	a 	prior 	public 	use
under 	35 	U.S.C. 	§ 	102(a) 	or 	(b) 	or 	35 	U.S.C. 	§ 	103, 	and
that 	Cabilly 	improperly 	relied 	on new 	evidence 	in
Cabilly Reply 	to GWI's 	Opposition 	to 	Cabilly
Preliminary Motion 	6.
- 	3

c. 	Discussion
The 	panel 	is 	of 	the 	opinion 	that 	there 	is 	no 	controlling
question 	of 	procedure 	involved 	this 	matter. 	Accordingly, 	it
declines 	to 	certify 	any 	question 	to 	the 	Commissioner 	for
resolution. 	The 	petition, 	however, 	will 	be 	treated 	as 	a 	request
for 	reconsideration 	of 	the 	order 	entered on 	6 	April 	2001
(Paper 	174). 	The 	request 	for 	reconsideration will 	be
The 	rules 	contemplate 	that 	an 	interference 	will 	be 	handled
in 	a 	just, 	speedy and 	inexpens 	manner. 	37 	CFR 	§ 	1.601. 	A
party 	filing 	a 	motion, 	including 	a 	preliminary motion, 	bears 	the
burden of 	proof 	(37 	CFR 	§ 	1.637(a)). 	A preliminary motion 	must
make 	out 	a 	prima 	facie 	case 	for 	ief. 	Hillman v. 	Shyamala, 	55
USPQ2d 	1220 	(Bd. 	Pat. 	App. 	& Int. 	2000). 	If 	a 	motion 	fails 	to
make 	out 	a 	prima 	facie 	case 	for 	reli 	,it 	may 	not 	be 	necessary
to 	consider 	any 	opposition 	or 	reply.
In 	this 	case, 	Glaxo maintains, 	and 	Cabilly 	denies, 	that
Cabilly's 	preliminary motion, 	as 	originally 	filed, 	f 	Is 	to 	make
out 	a 	prima 	facie 	case 	for 	reI 	The 	policy 	that 	a 	preliminary
motion must 	make 	out 	a 	prima 	facie 	case 	does 	not 	mean 	that 	a
party 	can never 	be 	authorized 	to 	supplement 	the 	preliminary
motion with 	additional 	relevant 	evidence 	which 	becomes 	available
after 	the 	preliminary motion 	is 	filed. 	37 	CFR 	§ 	1.645(b).
It 	may be 	true 	that, 	upon 	availability 	of 	the 	additional
evidence, 	Cabilly 	should have 	sought 	leave 	to 	file 	the 	additional
evidence 	along 	with 	a 	supplemental 	preliminary motion--as 	opposed
to 	just 	filing 	the 	additional 	evidence 	with 	its 	reply. 	It 	is
- 	4

also 	true 	that 	it 	is 	the 	practice 	of 	the 	board 	not 	to 	consider
new 	issues 	(or 	evidence) 	presented 	for 	the 	first 	time 	in 	a 	reply.
But, 	the 	issue 	to 	be 	resolved 	here 	is 	whether 	it 	is 	"just" 	to
consider 	evidence 	felt 	to 	be 	relevant 	by 	the 	moving 	party 	which
was 	not 	available 	until 	after 	its 	preliminary motion 	and 	its
opponent's 	opposition have 	been 	filed. 	Given 	representations 	by
counsel 	for 	Cabilly, 	we 	feel 	that 	the 	additional 	evidence 	became
available 	at 	a 	time 	when 	it 	could not 	have 	been presented with
the 	preliminary motion. 	37 	CFR 	§ 	1.645(b).
Here, 	the 	"just" 	thing 	to 	do 	is, 	and 	we 	exercise 	our
discretion, 	to 	consider 	Cabilly's 	original 	preliminary motion 	and
original 	reply, 	including 	the 	additional 	evidence, 	and 	to 	permit
Glaxo 	to 	address 	the 	evidence 	served with 	the 	original
preliminary motion and 	Cabilly's 	original 	reply. 	Accordingly,
under 	the 	facts 	of 	this 	case, 	it 	does 	not 	matter 	whether
Cabilly's 	original 	preliminary motion makes 	out 	a 	prima 	facie
case 	for 	relief. 	The 	important 	fact 	will 	be 	whether 	the 	original
preliminary motion and 	original 	reply 	collectively make 	out 	a
prima 	facie 	case. 	Glaxo 	is 	free 	under 	the 	order 	entered 	6 	April
2001 	to 	argue 	that 	they do 	not. 	Moreover, 	as 	requested 	by Glaxo
during 	the 	conference 	call, 	it 	is 	authorized 	in 	its 	supplemental
opposition to 	address 	all 	evidence 	served, 	and 	rationale 	ied
upon, 	by 	Cabilly 	in 	support 	of 	its 	original 	preliminary 	motion
and 	original 	reply.
It 	is 	maintained 	in 	the 	petition 	that" [t]he 	order 	is 	not
'just' 	because 	it 	takes 	away 	a 	substantive 	right 	of 	GWI 	[Glaxo] I
- 	5

i.e., 	the 	ability of 	GWI 	to 	argue 	that 	Cabilly 	has 	not 	made 	out 	a
prima 	facie 	case 	in 	its 	original 	[preliminary] 	motion" 	(Petition,
page 	9). 	Glaxo 	has 	been denied 	no 	substantive, 	or 	for 	that
matter 	procedural, 	right. 	Glaxo 	has 	a 	full 	and 	fair 	opportunity
to 	oppose 	on 	the 	merits 	Cabilly's 	public 	use 	allegations.
D. 	Order
Upon 	consideration of 	the 	petition, 	and 	for 	the 	reasons
given, 	it 	is
ORDERED 	that 	the 	panel 	decl 	to 	certify 	any 	question
to 	the 	Commissioner. 	37 	CFR 	§ 	1.644(a) (1).
FURTHER ORDERED 	that 	the 	petition has 	been 	treated 	as 	a
request 	for 	reconsideration of 	the 	order 	entered 	6 	April 	2001.
FURTHER ORDERED 	that 	the 	request 	for 	reconsideration 	is
denied.
FURTHER ORDERED 	that 	I 	times 	previously 	set 	for
taking 	action 	in 	this 	interference 	continue 	to 	run.
--=---,---(h----..;t;1~(----;---)FRED 	E. 	McKELVEY, 	Senior 	)
Administrative 	Patent 	Judge 	)
)
) 	BOARD OF 	PATENT
..,J,4A.41
Administrative 	Pat 	nt 	Judge 	) 	APPEALS 	AND
INTERFERENCES
)
Judge 	)
I~~==~-.'!:-; -==-~~=---'F-~~--~
- 	6

cc 	(via 	fax)
Counsel 	for 	Glaxo 	Wellcome l 	Inc.:
Gerald M. 	Murphy 1 	Jr' l 	Esq.
BIRCH 1 	STEWART 1 	KOLASCH 	& BIRCH 1 	LLP
8110 	Gatehouse 	Road
Suite 	500 1 	East
Falls 	Church l 	VA 	22042
Tel: 	703-205-8000
Fax: 	703-205-8050 	or 	8060
Counsel 	for 	Cabilly 	(real 	party 	in
interest 	Genentech l 	Inc.):	1
Steven B. 	Kelber l 	Esq.
PIPER 1 	MARBURY 1 	RUDNICK & WOLFE 	LLP
1200 	Nineteenth 	Streetl 	N.W.
Washington l 	D.C. 	20036-2430
Tel: 	202-861-3900
Fax: 	202-223-2085
- 	7