Ryan v. Young

Informative decision only: persuasive authority, not binding precedent. In an interference with multiple motions, an exhibit is "in evidence" only if it has been filed and is listed and discussed in the motion, opposition or reply, and only to the extent relied upon there. Each motion is decided on its own merits solely on the evidence relied upon in support of that motion, opposition or reply, so an exhibit relied upon in a first motion cannot be relied upon in a second motion unless it is also listed and discussed in the second. No prior precedent directly addressed this issue in the text; the Board contrasts its practice with federal court trial practice, where an exhibit once admitted can generally be relied on for any issue. For the party seeking judgment against its opponent, evidence must be listed and discussed again in every motion, opposition or reply that depends on it, or the Board will not consider it for that motion. For the opposing party, the rule reduces the risk of surprise and of prejudice from reliance on evidence not relied upon by a party in the motion at hand. The Board cites no Federal Circuit, CCPA or Supreme Court authority binding this point; it cites Joy Technologies decisions of the D.D.C. and Board Interference 105,402 only as comparisons on allocating motions among judges. LEGAL TEST OR STANDARD: An exhibit is "in evidence" only if (1) it has been filed, normally in the motions phase at Time Period 8 and in the priority phase at Time Period 18, and (2) it is listed and discussed in a motion, opposition or reply. It is in evidence only to the extent the exhibit or a portion of it is mentioned and relied upon. Each motion, opposition or reply must list the evidence relied upon, and each motion is considered on its own merits solely on that evidence. TRIGGERING FACTS: Consolidated interferences with several pending motions, where at oral argument counsel for both parties, while arguing one motion, referred to the record in another motion. Also covered: an exhibit used in a deposition but not filed or discussed in an opposition (not in evidence, though the opponent may list and rely on it in a reply), an exhibit excluded by a granted motion to exclude, and an exhibit relied on for one purpose in the motions phase and for another purpose later in the priority phase. KEY QUOTE: "An exhibit listed and relied upon in a first motion, e.g., motion 1, cannot be relied upon in a second motion, e.g., motion 2, unless the exhibit is also listed and discussed in motion 2." (Paper 116, p. 12) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: In an interference, list and discuss every exhibit you rely on in each separate motion, opposition or reply, and do not cross-reference the record of another motion or assume an exhibit relied on elsewhere is before the Board.