R.C. v. T.I.

When a party's own expert has formed a reasonable suspicion before the evidentiary testimony in an interference preliminary-motion proceeding, but the party does not raise the need for further testing (here, ink testing of a day planner under 37 CFR § 1.635) until after the testimony ends and the foreign witnesses have gone home, the Board may deny the request as untimely. Testimony in support of a preliminary motion is the trial, not merely discovery, so the time of trial is when all pertinent issues must be aired, and a party who holds back to avoid tipping its hand bears the risk of untimeliness. No prior Board precedent is named in the text as addressed on this point, and the decision clarifies that testimony taken on a preliminary motion is trial and not merely a discovery tool. The party seeking additional testing or discovery, here the senior party moving on inventorship, must raise the need before or during the testimony and cannot wait to see how the testimony turns out. The opposing party, here the junior party whose witnesses testified live, is protected from late requests that deprive it of a chance to rebut through its own testimony, its own expert or further testing. The Board relied on 37 CFR § 1.601 (just, speedy and inexpensive conduct of interferences) and cited In re Minarik, 166 F.3d 591 (3d Cir. 1999), as expressing its sentiments. That case is not an interference case and is not binding authority. LEGAL TEST OR STANDARD: The Board stated no numbered factors. It asked whether the motion under 37 CFR § 1.635 was timely, in light of the philosophy of 37 CFR § 1.601 that interferences are conducted in a just, speedy and inexpensive manner. It weighed when the movant knew of its basis for further testing, whether the movant raised it before the witnesses finished and left, and the prejudice to the opponent's ability to respond. TRIGGERING FACTS: T.I.'s expert inspected the day planner and formed a reasonable suspicion on February 22, 1999, and counsel knew of it that day. The Taiwan residents testified live on February 24 and 25, 1999. T.I. said nothing to R.C. or the judges, and did not question the witnesses about the suspicion, until it first told R.C. on March 2, 1999, after the witnesses had left. T.I. said it did not want to tip its hand. KEY QUOTE: "It is difficult to understand a party's holding back at trial important issues on the ground of not wanting to "tip" its hand, since the time of trial is ordinarily when all pertinent issues must be aired, if not already." (Paper No. 143, p. 9) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: If your expert raises doubts about an opponent's exhibit, ask the Board for further testing or discovery, and give notice to the opponent, before the testimony begins or while the witnesses are still available. Do not hold the request back for strategic surprise.