Nevel v. Hoeller

When a party moves under 37 CFR § 1.687(c) for additional discovery, it must set forth a prima facie case showing a threshold level of suspicion sufficient to justify discovery in the interest of justice; if its motion rests on speculation and does not do so, the Board may deny the motion without considering the opposition or any reply. Such a "fishing expedition" will not be condoned, and the Board may bar re-filing of the motion. No prior precedent directly addressed this issue in the text; the decision itself states that its opinion is binding precedent of the Interference Trial Section. For the moving party in an interference, the motion itself must carry the showing: it cannot rely on the opponent's opposition, and it must address obvious innocent explanations and explain why the information was not found earlier. For the opposing party, a speculative motion can be defeated on its face, and the Board need not consider the opposition or any reply. Here the Board relied on the directive in 37 CFR § 1.601 to secure the just, speedy, and inexpensive determination of every interference, and it cited no court authority. LEGAL TEST OR STANDARD: The movant for additional discovery under 37 CFR § 1.687(c) must set forth a prima facie case of why it is entitled to the relief sought, i.e., a threshold level of suspicion sufficient to justify, in the interest of justice, additional discovery. The Board read the rules in light of 37 CFR § 1.601 (just, speedy, and inexpensive determination). It also considered whether the movant explained why it could not have uncovered the information earlier with reasonable efforts. TRIGGERING FACTS: Junior party Nevel, after serving its case-in-chief priority testimony, moved for discovery on the senior party's inventorship. It relied on a Japanese patent, said to claim priority to the same Swiss application, that names two more inventors than the sole inventor named in the involved application. Nevel did not address Japanese inventorship law, whether the Japanese patent claims different subject matter, why the U.S. application and not the Japanese patent might have the wrong inventors, or when the Japanese patent was published and why it was not found earlier. KEY QUOTE: "In light of the directive in 37 CFR § 1.601 for construing the rules to secure the just, speedy, and inexpensive determination of every interference, “fishing expeditions” will not be condoned and “witch hunts” will be aggressively quelched." (Paper 65, p. 5) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: Before moving for additional discovery, build the prima facie showing in the motion itself. Present evidence creating a reasonable basis to suspect the issue, rule out innocent explanations (such as foreign-law or claim-scope differences), and explain why the information was not found earlier, because you may get no second chance to re-file.