Ashurst v. Brugger

Informative decision only: persuasive authority, not binding precedent. When a party seeks additional discovery under Bd.R. 150(c)(1), it must show the discovery is "in the interests of justice," a high standard requiring specific bases for expecting the discovery will be productive. The Board will deny the request if the movant takes inconsistent positions on why the discovery is needed, if the request is a "fishing expedition," or if it is overbroad and not shown relevant to the count or claims. No prior precedent directly addressed this issue in the text; the Board relies on Standing Order ¶150.2 and cites Shiokawa v. Maienfisch for its long-standing refusal to allow fishing expeditions. For a party seeking discovery in an interference, the decision shows that a motion must state one clear, consistent rationale and tie each request to the count, proposed count or claims. Inconsistencies between an opponent's motions, oppositions and witness testimony do not by themselves justify discovery, because they can be pointed out in a response or reply. For the party opposing discovery, the decision supplies grounds to defeat broad requests by exposing contradictory justifications and lack of relevance. The decision cites no Federal Circuit, CCPA or Supreme Court authority. LEGAL TEST OR STANDARD: A party requesting additional discovery must show the additional discovery is in the interests of justice (Bd.R. 150(c)(1)). The standard is high and requires specific bases for expecting the discovery will be productive (SO ¶150.2). The movant bears the burden. Relief cannot be granted when it is not clearly articulated or not meaningful in the first instance. TRIGGERING FACTS: Preliminary phase; oppositions filed, but cross-examination of opposition witnesses and replies still pending. Ashurst sought seven interrogatory-style requests to Novartis (persons with knowledge, data, documents, first awareness of coating problems, FDA concerns). It said the discovery was both needed and not needed to cross-examine Dr. Gupta, and that Dr. Singh's cross-examination was both adequate and inadequate. It never sought reconsideration of the earlier ruling during Dr. Singh's deposition. It did not show relevance of the coating properties to the count, proposed count or claims. KEY QUOTE: "Ashurst must take a position in order for the Board to properly determine if such a position justifies granting the requested relief." (Paper 44, p. 5) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board cites Shiokawa v. Maienfisch, 58 USPQ2d 1479 (Bd. Pat. App. & Int. 2001), for its long history of not embarking on fishing expeditions. PRACTICE TIP: Before moving for additional discovery, settle on one consistent justification, state specific bases for expecting productive results, and narrow each request to the count, proposed count or claims. Do not argue that cross-examination was adequate while also claiming the discovery is needed. Raise inconsistencies in the opponent's evidence in responses or replies rather than seeking discovery.