Tropix, Inc. v. Lumigen, Inc.

When a party seeks "additional discovery" under 37 CFR § 1.687(c) in an interference, it must establish that the interest of justice requires the discovery, and the Board will not order it where the party asserts it already has a prima facie case, where the request merely mirrors routine Federal Rules of Civil Procedure document requests, or where the stated purpose is only to prepare for cross-examination of witnesses the opponent has not yet said it will call. Rule 687(c) discovery is discretionary and is not discovery under the Federal Rules of Civil Procedure. No prior Board precedential decision is named as overruled; the Board "re-emphasize[s]" that Rule 687(c) additional discovery is not Federal Rules of Civil Procedure discovery and that its scope is the same as under former Rule 287(c). The party with the burden on derivation or priority, here Lumigen, cannot expect discovery from the opponent to supplement proofs it says it already has, because in all but the most unusual cases that evidence is in its own hands. The opposing party, here Tropix, is spared expensive routine document production, but is put on notice of the documents sought and is advised to have them available for a Rule 687(b) request at the evidentiary hearing. The Board relied on Cochran v. Kresock (CCPA 1976) for the discretionary nature of the discovery, on Cook v. Dann (CCPA 1975) for the point that the rule does not bestow discovery of unlimited scope, and on Frilette v. Kimberlin (3d Cir. 1974, in banc) for the point that Patent Office discovery is not as liberal as under the Federal Rules. LEGAL TEST OR STANDARD: Whether a party is entitled to additional discovery under 37 CFR § 1.687(c) is discretionary with the board. To be entitled to additional discovery, a party must establish that the interest of justice requires ordering the discovery sought. The Board weighs the expense of compliance and the rule that interferences are to be interpreted to secure a just, speedy and inexpensive determination (37 CFR § 1.601). TRIGGERING FACTS: Lumigen sought 1-3, 8-10 and 15-18 document requests on derivation, patterned on Federal Rules of Civil Procedure practice. It asserted it had already made a prima facie case of derivation and wanted the discovery to supplement its proofs and to prepare for cross-examination of any Tropix witnesses at the June 12-13, 2000 evidentiary hearing. Tropix had not yet indicated whether it would rely on any witness testimony. The Board denied the Rule 687(c) request. KEY QUOTE: "We believe it worthwhile to re-emphasize that additional discovery under Rule 687(c) is not discovery under the Federal Rules of Civil Procedure." (Paper 56, p. 8) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The Board followed Cochran v. Kresock, 530 F.2d 385 (CCPA 1976), and Cook v. Dann, 522 F.2d 1276 (CCPA 1975), and compared Schubert v. McKernan, 188 USPQ 496 (Bd. Int. 1975), on cross-examination preparation not being per se sufficient. PRACTICE TIP: Stop filing routine Federal Rules-style document requests under Rule 687(c). Show specifically why the interest of justice requires each item, do not assert a prima facie case while seeking discovery to supplement it, and use Rule 687(b) at cross-examination, serving a list of possible documents immediately before the hearing.