Dung v. Buehler

Informative decision only: persuasive authority, not binding precedent. When a party in an interference seeks leave to file belatedly newly discovered evidence under 37 C.F.R. § 41.4(a)(2), it shows "excusable neglect" only by establishing, by a preponderance of the evidence, that the evidence "could not have been earlier discovered, and that the party exercised due diligence in discovering the evidence"; conclusory testimony that a diligent search was made, without details of the search, does not suffice. Where the evidence surfaces after the opponent filed its priority motion and close to the due date for oppositions, the "interest of justice" exception merges with excusable neglect and is not met, because admitting the evidence would prejudice the opponent. No prior precedent directly addressed this issue, as far as the text shows; the Board drew its excusable-neglect standard from interference treatises and old Commissioner of Patents decisions, not from earlier Board decisions. For the opposing party (Buehler here), the decision gives a basis to oppose late evidence and, because the Board denied the motion without an opposition, shows the Board may deny a late-evidence motion on its own. For the party seeking to add evidence (Dung), it means a bare statement that a diligent search was done will not carry the burden, and that detailed, fact-based proof of the search is needed before any priority motion is filed or soon after. The Board cited Firsthealth of the Carolinas, Inc. v. Carefirst of Maryland, Inc., 479 F.3d 825, 829 (Fed. Cir. 2007) and Thomas Jefferson University v. Shalala, 512 U.S. 504, 512 (1994) for deference to an agency's reasonable reading of "excusable neglect" in its own regulations. LEGAL TEST OR STANDARD: Belatedly filed papers or evidence are not considered unless there is (1) a showing of excusable neglect or (2) a PTAB determination that consideration of the late filing would be in the interest of justice, 37 C.F.R. § 41.4(a)(2) (2011). For newly discovered evidence, excusable neglect requires showing that the evidence "could not have been earlier discovered, and that the party exercised due diligence in discovering the evidence." Diligence is a question of fact established by a preponderance of the evidence, case by case. The movant bears a burden to show it is prima facie entitled to relief, 37 C.F.R. § 41.121(b) (2011). Interest of justice is decided case by case. TRIGGERING FACTS: Dung, after filing its priority motion and after Buehler filed its own, sought leave to file newly found HPLC traces said to support its asserted 2006 reductions to practice. The evidence already existed when Dung prepared its priority case and filed its motion. The evidence surfaced close to the date oppositions were due, and the support was declarations stating only that Hogan and others diligently searched, could not locate the data, and then "recently located" traces, with no detail on the search or the discovery. Admission would require Buehler to evaluate the evidence, cross-examine and possibly gather more evidence. KEY QUOTE: "The motion and underlying declarations amount to a pleading— not proof." (Paper 121, p. 7) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board cited Basmadjian v. Landry, 54 USPQ2d 1617 (BPAI 1997) only to say summary judgment standards from district court practice are not applied, and relied on Rivise & Caesar, Rivise, and old Commissioner of Patents decisions (Fordyce v. Taisey, Robinson v. Townsend, Dudley v. Blickensderfer, Schmiedl v. Booth) for the diligence standard. PRACTICE TIP: If you will seek late entry of newly discovered evidence, support the motion with specific, credible declaration testimony on who searched, what was searched, when and how, and how the evidence was eventually found, covering both pre-motion and post-motion searches; and do not wait, since conclusory assertions of diligence will be treated as opinion and the motion denied.