Nau v. Ohuchida

When an opposing party responds to a fact alleged in a motion or opposition by asserting that the fact is "irrelevant" instead of admitting it, denying it, or stating that it is unable to admit or deny it, the response does not comply with Paragraphs 26(b)(2) and 26(c)(2) of the Notice Declaring Interference. In future interferences, the Board will treat such a response as an admission that the fact is true and correct, and the party cannot later maintain that the fact is incorrect. Relevance may be argued only in the argument portion of the paper. No prior Board precedent is named in the decision on this point. The Board relied on the Notice Declaring Interference and compared federal district court pleading cases. For the party opposing a motion, or the movant on reply, the rule means that when you allege facts, an opponent's "irrelevant" response will be taken as an admission, so you can treat the fact as established. For the party that responds, a non-compliant paper can be returned, as Ohuchida's reply was. Worse, the fact will be deemed admitted, so every response must be an express admission, denial, or statement of inability to admit or deny. The decision cites no Federal Circuit, CCPA or Supreme Court authority for this point, only district court decisions (Marshall v. Sedlock and Francisco, Inc.; Dunlop v. Quality Spring Products, Inc.; Reed v. Hickey). LEGAL TEST OR STANDARD: Paragraph 26(b)(2) of the Notice Declaring Interference requires an opponent to set out "[w]hether each fact alleged by the moving party is admitted, denied or that the opposing party is unable to admit or deny the fact alleged." Paragraph 26(c)(2) imposes a similar requirement for replies. A response that a fact is "irrelevant" is none of the three permitted responses. Relevance may be argued only in the argument portion of a motion. Going forward, an "irrelevant" response is taken as an admission that the fact is true and correct. TRIGGERING FACTS: Nau's opposition to Ohuchida Preliminary Motion 1 set out additional facts in numbered paragraphs 24 through 39. In OHUCHIDA REPLY 1, Ohuchida for the most part did not admit or deny them and instead said they "are irrelevant," for example because the count is directed to methods of therapy and use of the compounds. The Board returned the reply as non-compliant and said Ohuchida would be given an opportunity to present a compliant reply. The admission consequence was announced as applying in the future, not to Ohuchida in this case. KEY QUOTE: "Parties in interferences are put on notice that, in the future, a response which maintains that an allegation of fact is irrelevant will be taken as an admission that the fact is true and correct." (Paper 57, p. 9) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board compared Marshall v. Sedlock and Francisco, Inc., 83 Lab. Cas. (CCH) P33,641, 1978 U.S. Dist. LEXIS 18964 (E.D. Mich 1978), and Dunlop v. Quality Spring Products, Inc., 20 Fed. R. Serv. 2d (Callaghan) 561, 1975 U.S. Dist. LEXIS 12010 (W.D. Mich 1975). It also cited Reed v. Hickey, 2 F.R.D. 92, 1941 U.S. Dist. LEXIS 2101 (E.D. Pa. 1941). PRACTICE TIP: In every opposition and reply, answer each alleged fact with an express admission, denial, or statement of inability to admit or deny, and put any relevance objection in the argument section, never in the fact response.