Shiokawa v. Maienfisch

When a party seeks additional discovery under 37 CFR § 1.687(c) in an interference, the Board will not find it to be in the interest of justice if the party supplies no evidence (or fails to point to the relevant part of the evidence) supporting its need, if the request is a fishing expedition, if the data sought is irrelevant because the party chose to rely on its opponent's own material, or if another rule such as 37 CFR § 1.687(b) offers an alternative route. Additional discovery is not generally authorized to prepare a witness for cross-examination, and discovery as broad as under the Federal Rules of Civil Procedure is not available. No prior Board precedential decision is named as overruled; the Board follows Tropix, Inc. v. Lumigen, Inc., 53 USPQ2d 2018 (Bd. Pat. App. & Int. 2000) and Schubert v. McKernan, 188 USPQ 496 (Bd. Pat. Int. 1975) and reminds counsel of the well-established practice. For a party seeking discovery, the decision means it must file evidence with its motion under 37 CFR § 1.639(a), cite the specific relevant portion, and show the request is targeted rather than speculative. A party that relies on its opponent's statements from other proceedings, rather than running its own tests, cannot demand the underlying data. For the opposing party, it is protected from speculative discovery aimed at building an unpled fraud theory or at preparing for cross-examination. The Board cited Cochran v. Kresock, 530 F.2d 385 (CCPA 1976), for the point that granting additional discovery is discretionary. LEGAL TEST OR STANDARD: Granting additional discovery under 37 CFR § 1.687(c) is discretionary with the Board, and the movant must show it would be in the interest of justice. It cannot be in the interest of justice where (1) a party in need of evidence supplies none, or if evidence is supplied, does not call attention to the relevant part, or (2) a party engages in a fishing expedition. Also, it is not in the interests of justice where the discovery is irrelevant, where the request is premature, or where an alternative exists under another rule such as 37 CFR § 1.687(b). TRIGGERING FACTS: Shiokawa, with the interference in the preliminary motion phase, sought lab notebooks, memoranda and evaluations underlying Novartis annexes from a European opposition appeal and Rule 132 declarations. Its expert had relied on that Novartis material and ran no tests of his own. Shiokawa wanted the material to prepare him for cross-examination and to test a suspicion of fraud, but pointed to no evidence supporting that suspicion, and the related motions to add applications had been denied. KEY QUOTE: "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." (Paper 65, p. 12) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is overruled. The Board follows Tropix, Inc. v. Lumigen, Inc., 53 USPQ2d 2018, 2020 (Bd. Pat. App. & Int. 2000) and Schubert v. McKernan, 188 USPQ 496, 499 (Bd. Pat. Int. 1975), and relies on Cochran v. Kresock, 530 F.2d 385, 396, 188 USPQ 553, 561 (CCPA 1976). PRACTICE TIP: Before moving for additional discovery under 37 CFR § 1.687(c), file with the motion admissible evidence, cited to specific pages or portions, showing why the particular discovery is needed. Do not seek it merely to prepare a witness for cross-examination or to investigate a suspected theory, and consider whether 37 CFR § 1.687(b) offers a route after cross-examination.