Rabbani v. Notomi

Informative decision only: persuasive authority, not binding precedent. When a movant in an interference priority phase must make out a prima facie case in its motion, the Board may deny leave to file new declaration evidence with a reply that merely answers the opponent's opposition declaration, because a prima facie case not made in the motion cannot be made in a reply under 37 C.F.R. § 41.122(b). The reply may argue credibility and point to evidence already of record, but the Board may exclude new reply testimony under Fed. R. Evid. 403 and 37 C.F.R. § 41.1(b). No prior precedent directly addressed this issue in the text; the Board states that its then-current practice of permitting evidence to come in with a reply as a matter of right "just does not work," and it treats the denial as an application of existing rules rather than a change in practice. For the moving party in an interference, especially on priority, the full prima facie case and the evidence explaining its notebooks and data must be in the motion, since reply declarations responding to the opponent's expert are likely to be excluded. For the opposing party, the decision protects against sandbagging because an opponent has no right to respond to a reply. The Board cited the Board decisions Stampa, Stice, Glaxo Wellcome and LeVeen for the prima facie requirement, and it noted the APA and Supreme Court and D.C. Circuit authority (Motor Vehicle Manufacturers Ass'n v. State Farm, 463 U.S. 29, and Greater Boston Television v. F.C.C., 444 F.2d 841) that Rabbani invoked on change of course, but it found no change in practice. LEGAL TEST OR STANDARD: A moving party must make out a prima facie case for relief in its motion; if it is not made out in the motion, it cannot be made out in a reply, 37 C.F.R. § 41.122(b) (first sentence). The Board also applied Fed. R. Evid. 403 (exclusion where probative value is outweighed by unfair prejudice, undue delay, waste of time or needless cumulative evidence) and the policy of 37 C.F.R. § 41.1(b) of a just, speedy and inexpensive resolution. The motion was treated as a motion in limine under 37 C.F.R. § 41.155(d). TRIGGERING FACTS: Rabbani moved for judgment on priority and Notomi opposed with the declaration of Dr. Joyce. Rabbani then sought to file reply declarations from Dr. Donegan, an inventor who had previously testified, and Dr. Backman, a new witness, to counter Dr. Joyce on lab notebook evidence it could have presented earlier. Rabbani had not cross-examined Dr. Joyce and had not responded to Notomi's objection with clear notebooks. Priority evidence is generally in the movant's possession, so the Board saw little occasion for reply declarations. The Board authorized a reply without declarations plus a motion proffering by counsel what any declaration would say. KEY QUOTE: "If a prima facie case is not made out in the motion, it cannot be made out in a reply." (Paper 145, p. 4) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board cited as well-established practice Stampa v. Jackson, 78 USPQ2d 1567, 1571, 1574 (Bd. Pat. App. & Int. 2005); Stice v. Campbell, 76 USPQ2d 1101, 1110 (Bd. Pat. App. & Int. 2004); Glaxo Wellcome, Inc. v. Cabilly, 58 USPQ2d 1859, 1861 (Bd. Pat. App. & Int. 2001); and LeVeen v. Edwards, 57 USPQ2d 1416, 1422 (Bd. Pat. App. & Int. 2000). It also pointed to Byrn v. Aronhime, Interference 105,384, Paper 64 (Bd. Pat. App. & Int. Sept. 8, 2006) for the nature of a proffer. PRACTICE TIP: Put every fact and explanation needed for the prima facie priority case, including clear copies of notebooks and expert explanation of the data, into the motion. Do not plan to rebut the opponent's declarant with new reply declarations. Cross-examine the opposing declarant, and use the reply to argue credibility and cite evidence already of record.