Nau v. Ohuchida

When the Board announces, essentially for the first time, that a party opposing a preliminary motion may under certain unusual circumstances bear a de facto burden of proof, and the opponent filed its opposition without notice of that practice, the Board may grant reconsideration, return the opposition, and permit a new opposition with additional argument and evidence. The Board may decide the reconsideration request without first asking the adversary for a response when no prejudice results, as where the adversary is authorized to reply to all of the renewed arguments. No prior precedent directly addressed this issue; the decision names none. The opposing party in an interference (Nau, opposing Ohuchida Preliminary Motion 1) can obtain a renewed opposition when the Board announces a new de facto burden practice after the opposition was filed, so it can then supply the argument and evidence that best satisfy that burden. The movant (Ohuchida) can see the reconsideration request granted without being heard, but it keeps the right to reply to all of the new arguments, and the Board saw no prejudice to it. Parties are also on notice that future oppositions may carry a de facto burden. The decision cites no Federal Circuit, CCPA or Supreme Court authority; it relies on Rule 601, which contemplates a just, speedy and inexpensive interference. LEGAL TEST OR STANDARD: The Board stated no numbered factors. It asked whether, under the circumstances of the case and given that it announced essentially for the first time a possible de facto burden of proof on a party opposing a preliminary motion, fairness favored allowing a renewed opposition. It also asked whether the adversary would suffer prejudice if the request were decided without its views, guided by Rule 601 and the principle that whatever procedure is used in an interference ought to be as fair as possible. TRIGGERING FACTS: In its order deciding Nau Miscellaneous Motion 2 (Paper 57), the Board announced that there may be a de facto burden of proof on a party opposing a preliminary motion. Nau had already filed Nau Opposition 1 (Paper 45) to Ohuchida Preliminary Motion 1 and only then became aware of the possible burden. Nau said it would have filed additional argument and evidence had it known. Ohuchida had been authorized to file a reply responding to any and all of Nau's arguments, so the Board saw no prejudice. KEY QUOTE: "In short, whatever procedure is used in an interference ought to be as fair as possible." (Paper 62, p. 3) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The decision relies on the Board's own orders in this interference, Paper 57 (Order Deciding Nau Miscellaneous Motion 2) and Paper 62 itself, as notice of the practice. PRACTICE TIP: When opposing a preliminary motion in an interference, assume you may carry a de facto burden of proof and file all argument and evidence with the first opposition. Do not count on a renewed opposition, since the Board said parties are now on notice of the practice announced in these orders.