R.C. v. T.I.

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THIS OPINION WAS WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today is
binding precedent of the Interference Trial Section of the Board
of Patent Appeals and Interferences. The opinion is otherwise not
binding precedent. The decision was entered on 16 April 1999.
Paper No. 143
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
R.C.
Junior Party,
v.
T.I.
Senior Party.
Patent Interference No. 104,EEE
Before: McKELVEY, Senior Administrative Patent Judge, and
SCHAFER, LEE, and TORCZON, Administrative Patent Judges.
Lee, Administrative Patent Judge.
DECISION ON MISCELLANEOUS MOTION
Introduction
This interference is in the preliminary motions stage. In a
preliminary motion for judgment, T.I. has alleged that the

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inventorship of R.C.’s involved patent is incorrect. According
to T.I., David C. -- not named inventor Richard C. -- should be
designated as the inventor in the R.C. patent. In support of its
preliminary motion, T.I. requested leave to take testimony of
Richard C. and David C. The taking of live testimony of Richard
C. and David C. was authorized. Also authorized was the
production of pertinent documents relevant to the inventorship
issue.
Messrs. Richard and David C. are residents of Taiwan. They
traveled to the United States and gave live testimony on February
24 and 25, 1999, in a hearing room of the Board, in the presence
of Judges McKelvey and Lee, who observed the demeanor of the
witnesses.
T.I. has now moved under 37 CFR § 1.635 to have David C.’s
1994 day planner subjected to ink testing by a forensic document
expert in the laboratory of the expert. A telephone conference
was conducted with counsel for the parties on March 11, 1999,
during which Judge Lee declined to make a ruling upon the T.I.’s
oral request for testing. It was ordered that a written motion
shall be filed T.I. T.I.’s motion was received on March 15, 1999
(Paper No. 124). The motion was accompanied by a declaration of
T.I.’s document expert Mr. S. Upon receipt of T.I.’s motion,
Judge Lee ordered T.I. to address the issue of whether its motion
was timely raised (Paper No. 126). T.I. filed a response on

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March 22, 1999 (Paper No. 130). Judge Lee ordered that R.C.
need not file a response, and that if a response is necessary an
opportunity would be given to R.C. to do so (Paper No. 126).
T.I.’s motion to have David C’s 1994 Day Planner produced
for further ink testing will be denied.
The position of T.I. is essentially this:
a. Two hand-drawn sketches purportedly
representing the invention of R.C.’s involved patent
appear as entries for September 5, 1994, and October
20, 1994, in David C’s 1994 day planner. (R.C.
Exhibits 1105 and 1106).
b. David C. testified that he made those
sketches on or about the respective dates September 5,
1994, and October 20, 1994. See David C. Tr. at pgs.
68 and 83.
c. David C. testified that Richard C. is the
sole inventor of the invention of R.C.’s involved
patent in this interference. See David C. Tr. at pgs.
11-12 and 119-120.
d. On February 22, 1999, two days prior to the
testimony of Messrs. David and Richard C., a forensic
chemist and document analyst hired by T.I., Mr. S., is
said to have conducted a visual inspection and infrared
examination of David C.’s 1994 day planner. (Mr. S.

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decl. para. 9).
e. Based on Mr. S.’s visual inspection and
infrared examination of the 1994 day planner on
February 22, 1999, the ink used in the two sketches
which are entries for September 5, 1994, and October
20, 1994, in the day planner
(i) appears to be the same (Mr. S.
decl. para. 11),
(ii) does not appear elsewhere on
either page of the entries for those two
dates of the day planner (Mr. S. decl. para.
10), and
(iii) does not appear to be used for any
other entry in the day planner for the period
of August 16 through November 13, 1994. (Mr.
S. decl. para. 10).
f. Based on his visual inspection and infrared
examination of the day planner, Mr. S. doubts that the
sketches reproduced in R.C. Exhibits 1105 and 1106 were
made on their purported dates of September 5, 1994, and
October 20, 1994. (Mr. S. decl. para. 12).
g. Mr. S. suggests that chemical analysis of the
inks be performed to positively disclose the
similarities or differences in the inks as well as

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whether the sketches were drawn much later than the
calendar dates on which they appear. (Mr. S. decl.
para. 13).
According to T.I., if the ink test it desires reveals that
the sketches were not made in 1994, but made much more recently,
the credibility of David C.’s testimony would be seriously
undermined.
Findings of Fact
1. On February 22, 1999, two days prior to the testimony
of Messrs. David and Richard C., R.C. produced David C.’s 1994
Day Planner for inspection and review by counsel for T.I. (Mr.
S. decl. para. 9)
2. On February 22, 1999, T.I.’s document expert, Mr. S.,
visually inspected the pages of the Day Planner produced by R.C.
and made an infrared examination analysis of selected portions,
if not all, of the Day Planner. (Mr. S. decl. para. 11).
3. On February 22, 1999, based on his examination of David
C.’s 1994 Day Planner, Mr. S. formed what he then thought was a
reasonable suspicion that the two sketches were not made on or
around their purported dates in the 1994 Day Planner. (Mr. S.
decl. para 12).
4. On February 22, 1999, after having developed his
suspicions with regard to the two sketches, Mr. S. believed that
further testing of the ink on the Day Planner, via more complex

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equipment in Mr. S.’s laboratory, would be necessary to confirm
his suspicions as to the authenticity of the entries which form
the two sketches. (Mr. S. decl. para. 14).
5. Counsel for T.I. was present at the time Mr. S.
visually inspected and conducted infrared examination of David
C.’s 1994 Day Planner on February 22, 1999. (Paper No. 130, at
4).
6. After the inspection, Mr. S. discussed with counsel for
T.I. the results of his evaluation. (Paper No. 130, at 4).
Therefore, on February 22, 1999, counsel for T.I. knew of Mr.
S.’s suspicions regarding the Day Planner and his suggestion for
further ink-testing of the Day Planner to confirm the suspicions.
7. Messrs. David and Richard C. are residents of Taiwan
and traveled from Taiwan to Washington, D.C., to give live
testimony in the form of an oral interrogation by counsel for
T.I.
8. Judge Lee authorized three (3) days for the taking of
the testimony of Messrs. David and Richard C., from February 24
through February 26, 1999.
9. The live testimony of Messrs. David and Richard C.
commenced on February 24, 1999, and was completed at 2:50 PM,
February 25, 1999.
10. At no time between February 22, 1999, when T.I. had
developed a reasonable suspicion as to the date of entry of the

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two sketches into David C.’s 1994 Day Planner, and the end of the
live testimony of Messrs. David and Richard C., on February 25,
1999, did T.I. inform R.C. or the presiding Judges McKelvey and
Lee that further testing of certain entries in David C.’s 1994
Day Planner would be necessary or desired. Nor did T.I.’s
counsel at any time during interrogation of the witnesses raise
with either witness the possibility that an expert could
contradict the testimony of David C. concerning the date the
entries were made. Thus, for example, counsel for T.I. did not
ask David C. During testimony:
What would you say if I told you that an expert in
forensic document analysis is of the opinion, at least
preliminarily, that the entries were made on a date
subsequent to the date of the page of the diary on
which the entries were made?
11. It was not until March 2, 1999, after both Messrs.
David and Richard C. had left Washington, D.C., and as we
understand it, returned to Taiwan, that T.I. informed R.C. that
it would like to further test the 1994 Day Planner of David C.
Discussion
T.I.’s delay in not raising an issue during an evidentiary
hearing, if condoned, would adversely affect the administration
of justice in interference cases. As is apparent on this record,
T.I. has engaged in tactics which are inconsistent with the
philosophy of 37 CFR § 1.601 that interferences are to be
conducted in a just, speedy and inexpensive manner.

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In an interference proceeding before the Patent and
Trademark Office, testimony obtained in support of a preliminary
motion is more than merely a discovery tool. Actually, the trial
in an interference consists of a series of affidavits followed by
cross-examination during a deposition. Since Richard and David
C. are adverse parties to T.I., the trial consisted of testimony
by David and Richard C. on direct examination by counsel for T.I.
(normally a case-in-chief is by affidavit). In this case, the
issue of inventorship was on “trial” insofar as the testimony of
Messrs. David and Richard C. are concerned. And, while somewhat
unusual in an interference case, the trial was conducted in the
form of live testimony before Judges McKelvey and Lee on February
24 and 25, 1999.
In our view, it is grossly unfair, and also inexcusable, for
T.I. to not request further testing of the Day Planner until
subsequent to trial when the witnesses have returned to their
domicile country. Had T.I. made its request sooner, the Day
Planner could have been subjected to further detailed testing
prior to February 26, 1999, and/or the witnesses might have
postponed their departure by several days to permit a rebuttal by
their own testimony, and/or R.C. might have produced their own
document expert to respond to Mr. S.’s conclusions.
T.I.’s suspicion, based on a physical examination of the Day
Planner by its own document expert, was known on February 22,

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1999. Given that trial was to begin on February 24, two days
later, and that the witnesses Richard C. and David C. were
traveling from a foreign country and were scheduled to attend the
trial only three days, it was unreasonable for T.I. to delay
requesting further testing until its expert, Mr. S., has returned
home and placed his opinion in writing. Mr. S.’s evaluations
were already known and no significant useful purpose would have
been served by waiting for the opinion to be recorded in writing.
T.I. conceivably could have thought perhaps that the
testimony of Messrs. David and Richard C. would reveal that the
entries for September 5, 1994, and October 20, 1994, were not
entered on or about those dates. Thus, T.I. might have thought
the testimony of Richard and David C. might obviate the need for
further testing. T.I. assumed the risk that the testimony would
not so indicate. Insomuch as T.I. did not want to “tip” its hand
when obtaining the testimony of Messrs. David and Richard C. (see
Paper No. 130, pgs. 6-7), it ran the litigation risk of being
untimely in raising certain issues, as here. It is difficult to
understand a party’s holding back at trial important issues on
the ground of not wanting to “tip” its hand, since the time of
trial is ordinarily when all pertinent issues must be aired, if
not already.
We conclude with a reference to a portion of a recent
opinion of the Third Circuit, which while not involving an

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interference, expresses our sentiments with respect to the events
unfolding in this interference:
In view of the actual knowledge Minarik possessed
well before the evidentiary hearing on his first [post-
conviction] petition [for habeas corpus relief under 28
U.S.C. § 2254], we conclude that Minarik had a duty to
advise the Court of his new claims before the hearing.
Those claims would obviously have required a second,
extensive evidentiary hearing on essentially the same
subject matter. Stated conversely, we hold that it was
an abuse of the writ for Minarik to go forward without
at least advising the Court of this withheld claim.
In re Minarik, 166 F.3d 591, 606 (3d Cir. 1999).
Order
Upon consideration of T.I.’s motion, and for the reasons
given,
It is ORDERED that the motion is denied.

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It is FURTHER ORDERED that a copy of this precedential
opinion, shall be published on the PTO Web Page, without
revealing the identification of the parties, their respective
counsel, and their involved cases.
Fred E. McKelvey, Senior )
Administrative Patent Judge)
)
)
)
)
Richard E. Schafer )
Administrative Patent Judge)
) BOARD OF PATENT
) APPEALS
) AND
) INTERFERENCES
Jameson Lee )
Administrative Patent Judge)
)
)
)
)
Richard Torczon )
Administrative Patent Judge)