Johnston v. Beachy

When a party in an interference does not notify the Trial Section within the eighteen days set by the order forwarding file requests to the Office of Public Records that ordered involved or benefit files were not received, the failure to give timely notice cannot be a basis for changing the times set for taking action. Likewise, times are not delayed because of an untimely request for files or a failure to timely notify the Trial Section that a timely request was not filled. The interference proceeds as though the files had been received. No prior precedent directly addressed this issue; the decision states a Trial Section policy created to make the interlocutory phase of interferences more efficient and to cure the delay that the interference bar complained of in receiving files. For the opposing party in an interference, the rule means a rival's late complaint about missing files will not stretch the schedule, though the Trial Section will help to a point. For a party that did not receive files, whether junior or senior, the burden is on counsel: miss the eighteen-day notice window and the preliminary motion schedule runs anyway. The Board cited Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 9 USPQ2d 1736 (Fed. Cir. 1989) only with a "Cf." signal, for the point that the board need not divine all possible afterthoughts of counsel. The decision does not present that case as controlling authority. LEGAL TEST OR STANDARD: No multi-factor test. As a matter of policy, the Trial Section requires that it be notified of non-receipt of copies of files within eighteen (18) days of the ORDER notifying the requestors that files have been transmitted to OPR. If no notice is received, the interference proceeds with a scheduled conference call to set dates. Times for taking action are not delayed due to (1) an untimely request for files or (2) a failure to timely notify the Trial Section that a timely request has not been timely filled. TRIGGERING FACTS: The interference was declared 21 December 1998, and the notice set 14 days to order involved and benefit files. Orders were placed on 4 and 5 January 1999 and again on 26 January 1999. The 22 January 1999 order (Paper 23) forwarded the requests to OPR and required notice of non-receipt within 18 days, which ran on 9 February 1999. No fax arrived by then. Parties first reported missing material on 18 and 26 February 1999 and in the 2 March 1999 conference call, after times had been set for the preliminary motion phase. KEY QUOTE: "Moreover, times for taking action are not delayed due to (1) an untimely request for files or (2) a failure to timely notify the Trial Section that a timely request has not been timely filed." (Paper 40, p. 6) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board cited Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 9 USPQ2d 1736 (Fed. Cir. 1989), with a Cf. signal. PRACTICE TIP: Order involved and benefit files promptly through the Trial Section after declaration, and docket the eighteen-day deadline that runs from the order forwarding the requests to OPR. If any file or part of a file has not arrived, fax the Trial Section (703-305-0942, the number in the order in this case) before that deadline. Do not count on a late notice to move the preliminary motion dates.