Lalonde v. Li

Informative decision only: persuasive authority, not binding precedent. When a party's motions list in an interference includes language reserving a right to modify the list to add miscellaneous, preliminary or other motions or responsive motions as necessary, the Board may treat the list as improper, dismiss it, and require a substitute list, because there is no such right to reserve. The Board reasoned that such reservation language renders the list unreliable and prejudices the opposing party. No prior precedent directly addressed this issue in the text of the decision; the order cites no prior Board decision. For the opposing party in an interference (here junior party Lalonde), the order means a motions list must be a reliable statement of the motions the other side will bring, and open-ended reservations can be challenged as improper and prejudicial. For the party that filed the list (here senior party Li), a list with a reservation of a right to add motions can be dismissed, and the party must file a substitute list, here by the time of the scheduled conference call the same day. The order cites no Federal Circuit, CCPA or Supreme Court authority; it cites only Bd. R 104(a) in its caption. LEGAL TEST OR STANDARD: No multi-factor test. The Board found the motions list improper because it contained a reservation of a right to modify the list, and stated that the language renders the list unreliable and creates a prejudice against the other party. The remedy was dismissal of the list and an opportunity to file a Substitute Motions List. TRIGGERING FACTS: Senior party Li filed a motions list on March 14, 2008, containing the language reserving the right to modify the list to, inter alia, include additional miscellaneous, preliminary or other motions or responsive motions as necessary. A party comes within the rule by including such reservation language in its motions list. KEY QUOTE: "There is no such right for Li to reserve." (Paper 23, p. 1) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: Do not include any language in an interference motions list reserving a right to modify the list or add motions; list the motions you intend to file, and seek leave through the proper procedure if later additions are needed. Consider objecting if an opponent's list contains such language.