Glaxco Wellcome, Inc. v. Cabilly

When a party seeks additional discovery to support a preliminary motion for judgment of unpatentability, and the discovery targets an examiner's ex parte allowance rationale (a declaration relied on in prosecution and examiner interviews) that is not in evidence in the interference, the Board may deny it because it is not necessary and the movant has not shown that the interest of justice requires it. The Board looks solely to the evidence in the interference, is not bound by the examiner's decision, and a Rule 633(a) motion is an independent request for judgment, not an appeal from the examiner. No prior Board precedent is named in the text as directly addressed on this issue; the Board only compares Switzer v. Sockman and Sze v. Bloch for the point that it is not bound by the examiner's ex parte decision. An interference party attacking claims under 35 USC § 112, ¶ 1 cannot get discovery into the prosecution record merely because the examiner withdrew a rejection after a declaration and interviews, and it need not rebut that declaration unless the opponent puts it in evidence. The opposing party (here Cabilly) is spared the expense of such discovery, and if it relies on the declaration in opposing the motion, the movant may cross-examine the declarant. The Board cites CCPA authority (Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964); Sze v. Bloch, 458 F.2d 137, 173 USPQ 498 (CCPA 1972)) on the examiner's decision not binding, and applies 37 CFR §§ 1.601, 1.633(a) and 1.637(a). LEGAL TEST OR STANDARD: Additional discovery requires a showing that the interest of justice requires it. The Board found the requested discovery did not appear necessary to support the preliminary motions and would impose unnecessary expense on the opponent, inconsistent with a just, speedy, and inexpensive resolution of the interference under 37 CFR § 1.601. TRIGGERING FACTS: Glaxo, the junior party, sought leave to take additional discovery (testimony of the declarant Mr. Ridgeway and information on examiner interviews with Cabilly counsel) to support preliminary motions asserting unpatentability under 35 USC § 112, ¶ 1 (enablement or written description). The examiner had withdrawn § 112, ¶ 1 rejections during prosecution after the Ridgeway declaration and two interviews. Neither the declaration nor any interview discussion had been placed in evidence in the interference. KEY QUOTE: "A preliminary motion under Rule 633(a) is not an appeal from an examiner's decision to allow a claim." (Paper 39, p. 3) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board compared Switzer v. Sockman, 333 F.2d 935, 942, 142 USPQ 226, 232 (CCPA 1964) and Sze v. Bloch, 458 F.2d 137, 141, 173 USPQ 498, 501 (CCPA 1972) for the point that the Board is not bound by an ex parte examiner decision. PRACTICE TIP: Do not move for additional discovery into the examiner's ex parte reasoning or the prosecution record on the premise that you must rebut it. Build the unpatentability case from evidence you place in the interference, and rely on cross-examination if the opponent introduces the declaration.