Khavari v. D.T.

Informative decision only: persuasive authority, not binding precedent. When a party's interference motions list, which is used to set the motions schedule under 37 C.F.R. § 1.636(a), is filed late and contains argument rather than a sufficiently detailed listing of motions, the administrative patent judge may return the list, even though the formal defects have been cured. Argument is improper in a motions list because issues for preliminary motions must be raised during the motions period set by the administrative patent judge, and argument in the list prejudices the opponent, who may never have a chance to address it. No prior precedent directly addressed this issue; the decision cites no earlier Board decision. For the opposing party in an interference, here Khavari, it means an adversary cannot put argument on the record through a motions list, where the opposing party may never get to respond to it. For a party filing a list, here D.T., it means a list must be specific enough to let the judge tailor a schedule, including seeing whether any motions are intertwined with a threshold motion such as no interference-in-fact. It must also be timely and free of argument, and curing formal defects late will not save it when the substantive defects and the untimeliness are linked. The decision cites no Federal Circuit, CCPA or Supreme Court authority, and relies only on 37 C.F.R. § 1.601 and § 1.636(a). LEGAL TEST OR STANDARD: No multi-factor test. The Board reasoned that formal problems are generally curable and untimeliness is often excusable if there is no prejudice, but that a motions list must give enough detail to let the administrative patent judge set a schedule under 37 C.F.R. § 1.636(a) that keeps the proceeding fast, fair, and inexpensive under 37 C.F.R. § 1.601. Argument is improper in a motions list, and the substantive problems and timeliness may be linked. TRIGGERING FACTS: Parties had to file motions lists on short notice, after they themselves asked to delay the filing during settlement discussions. Khavari had identified a threshold no interference-in-fact issue. D.T.'s list ran sixty-nine pages with exhibits, so it could not be faxed and was likely finished near the deadline. The first version had formal defects, the corrected version arrived late, and the list remained argumentative. KEY QUOTE: "Argument is improper in a motions list because, inter alia, issues for preliminary motions must be raised during the motions period set by the administrative patent judge, not whenever and however a party chooses to raise them." (Paper 21, p. 3) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: Keep a motions list short and specific, listing each motion with enough detail for the judge to schedule it and spot intertwined motions. Put all argument in the motion itself during the motions period, and file the list on time and in correct form.