Therriault v. Garbe

THIS OPINION IS BINDING PRECEDENT OF THE TRIAL SECTION
Paper 82
Filed by: Trial Section Motions Panel
Box Interference Entered
Washington, D.C. 20231 23 November 1999
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
DONALD J. THERRIAULT and MICHAEL J. ZAJACZKOWSKI,
Junior Party,
(Patent 5,573,778),
v.
JAMES E. GARBE, DANIEL C. DUAN, CHERYL L. MOORE,
JAMIESON C. KEISTER and CHAN U. KO,
Senior Party
(Application 08/968,519).
_______________
Patent Interference No. 104,263
_______________
MEMORANDUM OPINION and ORDER
(granting motion for leave to issue a subpoena)
Before: McKELVEY, Senior Administrative Patent Judge, and
SCHAFER, LEE and TORCZON, Administrative Patent Judges.
McKELVEY, Senior Administrative Patent Judge.
A. Introduction

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Therriault has filed a miscellaneous motion under Rule 635
seeking entry of an order under Rule 671(g) authorizing issuance
of a subpoena under 35 U.S.C. § 24 to compel certain testimony
and production of documents from non-party Alza Corporation of
Palo Alto, California. THERRIAULT MISCELLANEOUS MOTION 11
(Paper 77). Garbe has filed an opposition (Paper 78).
Therriault filed a reply with additional evidence (Paper 80), but
it is being returned (Paper 81) as an improper reply.
The motion raises important issues with respect to the
administration of justice in interferences cases. Rule 1.610(b)
[37 CFR § 1.610(b)] provides that "[a]t the discretion of the
administrative patent judge assigned to the interference, a panel
consisting of two or more members of the Board may enter
interlocutory orders." In view of its precedential nature, the
interlocutory order entered today is being decided by a panel
consisting of all judges assigned to the Trial Section.
B. Findings of fact
The record supports the following findings by a
preponderance of the evidence.
The parties
1. On the issue of priority in an interference, a
junior party stands in the position of a plaintiff and a senior
party stands in the place of a defendant.

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2. The junior party is Donald J. Therriault and
Michael J. Zajaczkowski (Therriault or inventors).
3. The real party in interest with respect to
Therriault is Adhesives Research, Inc. (Adhesives).
4. The senior party is James E. Garbe, Daniel C.
Duan, Cheryl L. Moore, Jamieson C. Keister and Chan U. Ko
(Garbe).
5. The real party in interest with respect to Garbe
is Minnesota Mining and Manufacturing Company (3M).
The interference count
6. A "count" of an interference defines the
interfering subject matter between two or more applications or
between one or more applications and one or more patents. 37 CFR
§ 1.601(f), first sentence.
7. A count is a vehicle for contesting priority and
determines what evidence is relevant on the issue of priority.
Squires v. Corbett, 560 F.2d 424, 433, 194 USPQ 513, 519 (CCPA
1977).
8. This interference involves Therriault's patent and
Garbe's application.
9. The count of the interference specifically calls
for, or has been interpreted to be directed to, a transdermal

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drug delivery device comprising an adhesive matrix together with
a softener or percutaneous penetration enhancer with additional
presence of a drug (if the softener is not therapeutically
effective). Therriault, motion, page 2; Garbe opposition,
page 3.
Therriault's alleged conception and
actual reduction to practice
10. Therriault alleges, or it reasonably can be
inferred that Therriault alleges, that:
a. The invention of the count was conceived by
the inventors while working for Adhesives. Motion, page 2, ¶ 5,
last line.
b. An adhesive matrix material was made at
Adhesives. Ex 1032, ¶ 4.
c. Thereafter, the adhesive matrix material was
delivered to Alza Corporation (Alza) for the purpose of having a
transdermal drug delivery device made and tested for drug
delivery. Ex 1032, ¶ 4.
d. In due course, representatives of Adhesives,
including the inventors, had a meeting with representatives of
Alza, including Robert Gale (Gale). Ex 1032, ¶ 5.
e. At the meeting, the representatives of
Adhesives received confirmation that the adhesive matrix

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material, provided by Adhesives to Alza, had been employed to
make a transdermal drug delivery device. Ex 1032, ¶ 5.
f. According to inventor Zajaczkowski,
representatives of Alza stated that the transdermal drug delivery
device was made with the adhesive matrix material provided by
Adhesives to Alza. Ex 1032, ¶ 5.
g. Further according to Zajaczkowski, the
transdermal drug delivery "device meets the limitations of the
counts (sic--count) in this interference." Ex 1032, ¶ 5.
h. The inventors were informed by
representatives of Alza that the transdermal drug delivery device
made by Alza "had been found to serve satisfactorily as a
transdermal drug delivery device during drug flux testing."
Ex 1032, ¶ 5.
i. Gale is said to have supervised evaluation of
the transdermal drug delivery device at Alza. Ex 1032, ¶ 5.
Discussion between counsel for Therriault
and counsel for Alza
11. There came a time when counsel for Therriault,
James W. Hellwege, Esq., (Hellwege), had a discussion with Alza's
patent counsel Steve Stone, Esq. (Stone). Ex 1033, ¶ 3.
12. Hellwege represents that Stone indicated that any
testimony Alza would provide to Adhesives and the inventors would

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occur only in response to the issuance of a subpoena. Ex 1033, ¶ 4.
13. Stone is said to have indicated that:
a. Gale is an employee of Alza. Ex. 1033, ¶ 5.
b. Gale would not be available to provide
testimony during the period 1 December 1999 through 3 January
2000. Ex 1033, ¶ 6.
The priority testimony phase of an interference
14. An interference is divided into a preliminary
motion phase and a priority testimony phase.
15. This interference is in the priority testimony
phase, a decision on preliminary motions having been entered
on 27 October 1999 (Paper 73).
16. In an interference, a rebuttable presumption
exists that the senior party (Garbe in this case) made the
invention first. 37 CFR § 1.657(a).
17. Junior party Therriault, in this case, must
establish priority by a preponderance of the evidence because the
Therriault application was copending with the application which
matured into the Garbe patent. 37 CFR § 1.657(b).
18. Testimony in an interference is taken as follows.
a. The junior party is required to establish its
priority case by filing affidavits. 37 CFR § 1.672(a). The
normal experience in interference cases is that the individuals

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whose testimony is needed to establish priority are within the
control of the real party in interest. Hence, there is little,
if any, difficulty obtaining needed testimony. Former employees
of the real party in interest are generally under an employment
contract obligation to provide needed testimony even after
retirement. On occasion, however, a third-party--not under any
contractual obligation to the real party in interest--
participates in some significant manner in making the invention.
A third-party may or may not voluntarily provide an affidavit.
When the third-party will not voluntarily provide an affidavit,
the law (35 U.S.C. § 24) authorizes the issuance of a subpoena by
a U.S. District Court to compel testimony by the third-party.
Patent and Trademark Office (PTO) regulations require that
permission be obtained from an administrative patent judge before
a party may apply to the U.S. District Court for issuance of a
subpoena under 35 U.S.C. § 24. 37 CFR § 1.671(g).
b. Normally, an entire case-in-chief of the
junior party is served on the senior party. 37 CFR § 1.672(b).
c. The senior party then has an opportunity to
object to the admissibility of any of the evidence relied upon in
the case-in-chief of the junior party. 37 CFR § 1.672(c). The
Federal Rules of Evidence, with minor exceptions, apply in
interferences. 37 CFR § 1.671(b).

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d. If an objection to the admissibility of the
evidence is made by the senior party, then the junior party may
file supplemental evidence to overcome the objection. 37 CFR
§ 1.672(c). The supplemental evidence may include affidavits of
individuals who have not previously testified. For example, the
junior party may file an affidavit by an additional witness to
overcome a hearsay objection or an objection based on failure of
the junior party to authenticate a document.
e. If there is no objection to the admissibility
of evidence or after supplemental evidence is filed following any
objection, then the senior party may cross-examine the witnesses
relied upon by the junior party. 37 CFR § 1.672(d).
f. Cross-examination takes place by deposition
in the United States. 37 CFR § 1.672(d)
g. If there is no cross-examination, or after
cross-examination occurs, the case-in-chief of the junior party
terminates and the interference proceeds to its next step.
Testimony taken by subpoena under 35 U.S.C. § 24
19. Testimony taken pursuant to a subpoena under
35 U.S.C. § 24 is usually taken by deposition, but, it need not
be taken by deposition.
20. The experience of the board is that often a third-
party requires the issuance of a subpoena for business reasons.

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Among other things, the third-party often does business with both
parties in the interference.
21. For example, as applied to the facts of this case,
Alza may fully intend to cooperate with both Adhesives and 3M.
Alza, however, may prefer to take the position that it will not
favor Adhesives or 3M. Issuance of a subpoena helps to avoid any
appearance of favoritism by Alza with respect to either Adhesives
or 3M.
22. It is possible to comply with a subpoena by
providing an affidavit. Issuance of a subpoena may provide a
third-party with an incentive to help prepare an affidavit
because preparation of an affidavit, in cooperation with counsel
for a party, can take less time and avoid the formal nature of a
deposition setting. Thus, proceedings under a § 24 subpoena may
be (1) formal, difficult and/or costly or (2) informal, simple
and inexpensive. The third-party under subpoena may agree to
less formal procedures thus saving itself some expense and time.
23. At some point, an opposing party in the
interference has an opportunity to cross-examine by deposition,
whether testimony is presented by affidavit or through a
transcript of a deposition.
C. Discussion
1. Policy behind 37 CFR § 1.671(g)

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The PTO does not have authority to issue a subpoena for
production of documents and/or compel attendance at a deposition
to give testimony. Attendance is compelled through a subpoena.
35 U.S.C. § 24; 37 CFR § 1.671(g). Permission for Therriault to
proceed by subpoena under 35 U.S.C. § 24 is warranted in this
interference. However, entry of an order in an interference
authorizing a party to proceed under § 24 should not be construed
as an authorization to permit that party to engage in a fishing
expedition. See the commentary in the Notice of Final Rule,
Patent Interference Proceedings, 49 Fed. Reg. 48416, 48417 (cols.
2-3) (Dec. 12, 1984), reprinted in 1050 Off. Gaz. Pat. Office
385, 386 (Jan. 29, 1995):
In the event a party needs testimony from a third-party who
will not appear unless a subpoena is issued, including a
hostile witness, direct and cross-examination testimony may
be taken on oral deposition. The rules provide that prior
authorization of an examiner-in-chief is required before a
party can take testimony by issuance of a subpoena under 35
U.S.C. 24. The rule thus adopts the policy of Sheehan v.
Doyle, 513 F.2d 895, 898, 185 USPQ 489, 492 (1st Cir.),
cert. denied, 423 U.S. 874 (1975), and Sheehan v. Doyle, 529
F.2d 38, 40, 188 USPQ 545, 546 (1st Cir.), cert. denied, 429
U.S. 870 (1976), rehearing denied, 429 U.S. 987 (1976), and
rejects the policy announced in Brown v. Braddick, 595 F.2d
961, 967, 203 USPQ 95, 101-102 (5th Cir. 1979).

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See also 49 Fed. Reg. at 48428 (col. 1) (Dec. 12, 1984),
reprinted in 1050 Off. Gaz. Pat. Office at 397:
Under § 1.671(g), a party is required to obtain
permission from an examiner-in-chief prior to proceeding
under 35 U.S.C. 24. This requirement insures that a
subpoena is necessary (e.g., a subpoena ordinarily should
not be necessary where testimony of an opponent is sought)
and that testimony sought through a section 24 subpoena is
relevant before a subpoena is issued. The motion seeking
permission to proceed under section 24, any opposition
thereto, and the order of an examiner-in-chief authorizing
the moving party to proceed under section 24 will be of
assistance to a federal court in the event a party is
required to resort to a court to enforce the subpoena or to
compel answers to questions propounded at any deposition
where a witness is appearing pursuant to a subpoena. See
Sheehan v. Doyle, 529 F.2d 38, 188 USPQ 545 (1st Cir.),
cert. denied, 429 U.S. 870 (1976), rehearing denied, 429
U.S. 987 (1976).
2. Resolution of Therriault's motion
a.
Therriault's motion and Garbe's opposition reveal that the
parties are divided with respect to the conditions under which
proceedings under § 24 should take place in this case. In fact,
Garbe goes so far as to suggest they should not take place at
all.

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Therriault makes the argument that it will be prejudiced
because it cannot effectively prepare its overall case-in-chief
unless it first has an opportunity to obtain information from
Alza. Without addressing each of Therriault's arguments and
Garbe's responses thereto, we have no difficulty finding that
Therriault's argument is entirely plausible.
Garbe makes the counter-argument that it will be prejudiced
if it does not receive that part of Therriault's case-in-chief
which could be presented by witnesses under the control of
Adhesives prior to cross-examination. The prejudice would come
about because Garbe might not be able to effectively cross-
examine the Therriault case if it has to cross-examine the Alza
witnesses before Garbe sees the rest of Therriault's case. As in
the case of Therriault's argument, we have no difficulty finding
that Garbe's counter-argument is also plausible.
The board finds itself in the position of "King Solomon"
trying to figure out how to fairly "divide" the prejudice which
plausibly might be visited on Therriault to the advantage of
Garbe vis-a-vis the prejudice which plausibly might be visited on
Garbe to the advantage of Therriault. There is a solution which
will accommodate the needs of both parties while at the same time
preserving the underlying manner in which a case-in-chief is to
be presented in interference cases in the PTO. Thus, unlike King

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Solomon, we can "divide" the baby without the consequences King
Solomon faced had he done so.
b.
Among other principles, the following are relevant to an
evaluation of whether a party has established an actual reduction
to practice.
(1) Whether an inventor has established an actual
reduction to practice is a question of law to be determined on
the basis of the facts. Estee Lauder, Inc. v. L'Oreal, S.A., 129
F.3d 588, 592, 44 USPQ2d 1610, 1613 (Fed. Cir. 1997); Scott v.
Finney, 34 F.3d 1058, 1061, 32 USPQ2d 1115, 1117 (Fed. Cir.
1994).
(2) Establishment of an actual reduction to practice
requires that a party show that every limitation of the
interference count must exist in an embodiment and the embodiment
must have performed as intended. Estee Lauder, Inc. v. L'Oreal,
S.A., 129 F.3d 588, 593, 44 USPQ2d 1610, 1613 (Fed. Cir. 1997);
Newkirk v. Lulejian, 825 F.2d 1581, 1582, 3 USPQ2d 1793, 1794,
(Fed. Cir. 1987).
(3) An evaluation of whether testing is sufficient to
establish an actual reduction to practice is made on a case-by-
case basis. Scott v. Finney, 34 F.3d 1058, 1061, 32 USPQ2d 1115,
1117-18 (Fed. Cir. 1994); Gordon v. Hubbard, 347 F.2d 1001, 1006,

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146 USPQ 303, 307 (CCPA 1965); Blicke v. Treves, 241 F.2d 718,
720, 112 USPQ 472, 474, 475 (CCPA 1957).
(4) An inquiry into the sufficiency of testing is not
what kind of test was conducted, but whether the test conducted
shows that the invention would work as intended in its
contemplated use. Scott v. Finney, 34 F.3d 1058, 1061, 32 USPQ2d
1115, 1117-18 (Fed. Cir. 1994); Eastern Rotocraft Corp. v. United
States, 384 F.2d 429, 431, 155 USPQ 729, 730 (Ct.Cl. 1967).
(5) Any evaluation should be guided by a common sense
approach, applying a "reasonableness standard," in weighing the
sufficiency of any testing. Scott v. Finney, 34 F.3d 1058, 1061,
1062, 32 USPQ2d 1115, 1118 (Fed. Cir. 1994).
(6) An actual reduction to practice of a composition
is established when an inventor (i) actually prepares the
composition of matter satisfying the limitations of the count,
(ii) recognizes the composition of matter and (iii) recognizes a
specific practical utility for the composition. Estee Lauder,
Inc. v. L'Oreal, S.A., 129 F.3d 588, 592, 44 USPQ2d 1610, 1613
(Fed. Cir. 1997).
(7) Invention of a composition is not complete unless
its utility is obvious or is established by proper tests. Blicke
v. Treves, 241 F.2d 718, 720, 112 USPQ 472, 474, 475 (CCPA 1957).
(8) Although testing under actual operating conditions
of use is not necessarily a requirement for an actual reduction

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to practice, the tests must prove that the invention will perform
satisfactorily in the intended functional setting. Koval v.
Bodenschatz, 463 F.2d 442, 447, 174 USPQ 451, 455 (CCPA 1972)
(tests in the 7-13 volt range hopelessly out of line with that
which would be employed in any normal use of circuit breaker of
the count); Knowles v. Tibbetts, 347 F.2d 591, 594, 146 USPQ 59,
61 (CCPA 1965).
(9) In determining what tests are necessary to
constitute an actual reduction to practice, it is proper to take
into consideration statements in the specifications of the
applications involved in the interference, as well as limitations
appearing in the counts. Tomecek v. Stimpson, 513 F.2d 614,
618-19, 185 USPQ 235, 239 (CCPA 1975) (where specification
revealed automobile and non-automobile uses, testing for non-
automobile use was sufficient); Blicke v. Treves, 241 F.2d 718,
721, 112 USPQ 472, 475 (CCPA 1957).
(10) In deciding whether sufficient utility has been
established, it is further proper to take into account the
primary object of an inventor's research. Knapp v. Anderson, 477
F.2d 588, 590, 177 USPQ 688, 690 (CCPA 1973) (CCPA found "that
the only utility contemplated for the amines [of the count] is as
ashless dispersants in lubricant compositions. The compositions
are clearly intended to be used in internal combustion engines.
We cannot accept appellants' argument that sufficient utility is

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demonstrated [for an actual reduction to practice] if the amines
are useful for 'dispersing sludge' and the compositions are
useful for 'maintaining sludge in suspension,' regardless of the
setting or the type of sludge suspended. The record makes it
clear that such was not an objective of the Knapp research");
Morway v. Bondi, 203 F.2d 742, 744, 749, 97 USPQ 318, 323 (CCPA
1953) (while counts were not restricted to any particular use, to
determine whether testing for utility was sufficient, it was
proper to take into account to determine whether testing for
utility that Morway was primarily seeking a high performance
lubricant in order to meet the shortcomings of his company's
existing product, although it was not necessary for Morway to
show that new grease was "superior" to existing product).
(11) After sufficient testing has occurred to establish
an actual reduction to practice, continued experimentation does
not negate an actual reduction to practice. Tomecek v. Stimpson,
513 F.2d 614, 619, 185 USPQ 235, 239 (CCPA 1975); Breen v.
Miller, 347 F.2d 623, 628, 146 USPQ 127, 131 (CCPA 1965).
(12) To establish an actual reduction to practice, it
is not necessary to show that the invention has proceeded to the
point where it is ready for commercialization. DSL Dynamic
Sciences, Limited v. Union Switch & Signal, Inc., 928 F.2d 1122,
1126, 18 USPQ2d 1152, 1155 (Fed. Cir. 1991); Koval v.
Bodenschatz, 463 F.2d 442, 447, 174 USPQ 451, 455 (CCPA 1972).

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(13) An invention may be actually reduced to practice
by a non-inventor on behalf of an inventor. Applegate v.
Scherer, 332 F.2d 571, 573, 141 USPQ 796, 799 (CCPA 1964). In
the future, parties relying on a third-party to actually
reduction to practice a conceived invention may wish to place the
third-party under a contractual obligation to assist in
prosecuting any patent application which might be filed or in any
subsequent interference. Cf. In re RCA Corp., 209 USPQ 1114,
1117 n.4 (Comm'r Pat. 1981).
c.
In view of the principles set out in Part "b", it is
manifest that Therriault needs to "talk" to Alza personnel to
determine what occurred with respect to the making and testing of
the transdermal drug deliver device at Alza.
At this time, it reasonably can be concluded that Therriault
does not, and we cannot know precisely what documentation exists
and which individuals would need to testify to establish an
actual reduction to practice. Alternatively, it may turn out
that after talking with Alza personnel, Therriault may conclude
that it cannot prove an actual reduction to practice.
In our opinion, the best course of action is to permit
Therriault to communicate ex parte under subpoena with Alza
personnel so that Therriault and Alza can determine who should

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testify and Therriault can determine documents should be made
part of its case-in-chief. It may turn out that Alza, under
subpoena, will determine from a cost point of view that it is
easier to authorize its personnel to sign affidavits. If not,
Therriault can take ex parte depositions of Alza personnel to
prepare and present its case-in-chief on priority.
Garbe will then be in a position to evaluate Therriault's
entire case-in-chief in the manner contemplated by the rules as
though no subpoena had been necessary. Testimony in the
Therriault case-in-chief ultimately may be entirely by affidavits
or it may be partly by affidavits and partly by a transcript of
ex parte depositions.
Garbe would then be in a position to make objections to the
admissibility of evidence based on the entire case--not just part
of the case.
Therriault could then supplement its evidence, including if
necessary through supplemental ex parte depositions. For this
purpose, Therriault may wish to leave the first subpoena open
until it can be determined whether supplemental evidence is
needed in response to any objection to the admissibility of
evidence made by Garbe.
Garbe would then be in a position to determine which
witnesses (affiants and deponents), if any, it would have to
cross-examine. If Garbe determines that it must cross-examine an

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Alza witness, Therriault would then have to issue a second
subpoena under 35 U.S.C. § 24 for the purpose of conducting an
inter partes deposition so that Garbe can accomplish any cross-
examination needed.
The two-step procedure eliminates a concern expressed
by Garbe in its oppositions with respect to what documents
Therriault would compel Alza to produce in the first instance.
In its first subpoena, Therriault can ask Alza to designate the
Alza employees who can provide relevant information and
documentation. It would be for Therriault and Alza to work out
any concerns. There is no need for Garbe to be involved in
connection with proceedings under any first subpoena. On the
other hand, if a second subpoena is necessary, Garbe would be in
a position to advise Therriault what additional documentation
might be compelled to effect cross-examination. Any dispute
between the parties could be resolved by the board prior to
issuance of any second subpoena. Therriault would then be
required to seek a second subpoena consistent with Garbe's
requests, or if disputed, consistent with the board's resolution
of differences between Therriault and Garbe.
We will not seek in this MEMORANDUM OPINION and ORDER to
resolve all possible contingencies which might arise as a result
of a procedure which requires issuance of two separate subpoenas.

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Rather, we leave for another day resolution of matters beyond
those necessary for decision today.
An order will be entered authorizing Therriault to cause a
subpoena directed to Alza to be issued by an appropriate U.S.
District Court. Therriault must present the proposed subpoena to
be issued to the board prior to seeking its issuance by a U.S.
District Court. The gathering of evidence under the first
subpoena will be ex parte in the sense that Garbe will not
participate or otherwise be involved and it will be for
Therriault and Alza to resolve differences, if any should arise.
d.
Authorizing a party involved in a patent interference
proceeding before the PTO to proceed under 35 U.S.C. § 24 means
that a third-party, not involved in the interference, will be put
to some inconvenience. Alza is such a third-party. But, Alza
involved itself in the Therriault effort. We believe Alza is in
business to make a profit. Even if Alza is a benevolent entity,
a reasonable amount of inconvenience is the price we pay as a
society to resolve conflicts in an orderly fashion. It is the
duty of all citizens, when called, to testify in a cooperative
manner.
Nevertheless, the parties in this interference are expected
to minimize any inconvenience to any third-party to whom a

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subpoena is issued. A third-party has a right to move the
district court issuing the subpoena to issue a protective order.
Fed. R. Civ. P. 26(c)(4). The motion may be based, inter alia,
on the relevance in this interference of documents and deposition
testimony sought.
In the event a motion for a protective order is filed in a
U.S. District Court based on relevance in this interference to
documents and/or deposition testimony sought to be compelled,
Therriault is required to hand-deliver two (2) copies of the
motion to the Clerk's Office at the Board of Patent Appeals and
Interferences within 24 hours if the PTO is open, otherwise
within one (1) business day, of its receipt by counsel.
If any party in the interference responds in the U.S.
District Court to any motion for protective order, the party is
on the same day required to hand-deliver two (2) copies of the
response at the Clerk's Office at the Board of Patent Appeals and
Interferences. The papers filed in the U.S. District Court will
be reviewed immediately to see if a memorandum opinion should be
entered discussing the relevance in the interference of the
documents and/or deposition testimony sought. The purpose of the
memorandum opinion would be to aid the U.S. District Court in
determining whether a protective order should be issued limiting
the scope of documents and deposition testimony. Also, the
parties shall advise the U.S. District Court that it may certify

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to the board, through counsel or directly, any question it would
like addressed by the board.
D. Order
Upon consideration of THERRIAULT MISCELLANEOUS MOTION 11
(Paper 77), and for the reasons given, it is
ORDERED that the motion is granted.
FURTHER ORDERED that on or before 6 December 1999,
Therriault shall file and serve a copy of the subpoena proposed
to be issued by an appropriate U.S. District Court.
FURTHER ORDERED that, subject to review by, and
approval of, the proposed subpoena by an administrative patent
judge or the board, Therriault is authorized to proceed under
35 U.S.C. § 24 in a manner consistent with the views expressed in
this MEMORANDUM OPINION and ORDER.
FURTHER ORDERED that a copy of this MEMORANDUM OPINION
and ORDER shall be served immediately by Express Mail or its
commercial equivalent by counsel for Alza.

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FURTHER ORDERED that proof of service on counsel for
Alza shall be filed in the Office of the Clerk of the Board of
Patent Appeals and Interferences.
______________________________
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 )

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cc (Federal Express):
Attorneys for Therriault
(real party in interest
Adhesive Research, Inc.):
James W. Hellwege, Esq.
Eric S. Spector, Esq.
JONES, TULLAR & COOPER, P.C.
P.O. Box 2266 Eads Station
Arlington, VA 22202
Address for Federal Express:
James W. Hellwege, Esq.
Eric S. Spector, Esq.
JONES, TULLAR & COOPER, P.C.
2001 Jefferson Davis Highway
Arlington, VA 22202
Tel: 703-415-1500
Fax: 703-415-1508
E-mail: jtc@jtcpc.com
Attorneys for Garbe
(real party in interest
Minnesota Mining and Manufacturing Company):
Herbert H. Mintz, Esq.
Barbara Clarke McCurdy, Esq.
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.
1300 "I" Street, N.W.
Washington, D.C. 20005-3315
Tel: 202-408-4000
Fax: 202-408-4400
E-mail: mintzh@finnegan.com
E-mail: mccurdyb@finnegan.com