Glaxco Wellcome, Inc. v. Cabilly

Informative decision only: persuasive authority, not binding precedent. A preliminary motion in an interference must make out a prima facie case for relief, and if it fails to do so it may not be necessary to consider any opposition or reply. But where additional relevant evidence became available only after the preliminary motion and opposition were filed, so that it could not have been presented with the motion (37 CFR § 1.645(b)), the Board may in its discretion, as the "just" course, consider the original motion and original reply collectively in deciding whether a prima facie case exists, and let the opponent respond to all the evidence. The decision relies on Hillman v. Shyamala, 55 USPQ2d 1220 (Bd. Pat. App. & Int. 2000), for the rule that a preliminary motion must make out a prima facie case. It clarifies that the rule does not bar supplementing the motion with later-available evidence, and that the prima facie question can be judged on the motion and reply together. For the moving party, a late-arising item of evidence can still be used, though the better course is to seek leave to file it with a supplemental preliminary motion rather than slip it into a reply. For the opposing party, such as Glaxo here, the Board will not decide whether the original motion alone was sufficient, but it will allow a supplemental opposition addressing all the evidence and rationale. The text cites no Federal Circuit, CCPA or Supreme Court authority; it relies on 37 CFR §§ 1.601, 1.637(a), 1.644(a)(1) and 1.645(b). LEGAL TEST OR STANDARD: A party filing a motion, including a preliminary motion, bears the burden of proof (37 CFR § 1.637(a)). A preliminary motion must make out a prima facie case for relief. Supplementation with additional relevant evidence that becomes available after the motion is filed may be authorized under 37 CFR § 1.645(b). The question is what is "just" under 37 CFR § 1.601, which calls for a just, speedy and inexpensive interference. TRIGGERING FACTS: Cabilly filed a preliminary motion alleging unpatentability of Glaxo claims based on public use, and Glaxo opposed. Additional evidence then became available, and Cabilly submitted it with its reply. Counsel represented that the evidence could not have been presented with the motion. Glaxo argued the original motion lacked a prima facie case and sought to strike the new evidence or file an additional opposition. The APJ allowed an additional opposition and an additional reply, and the panel denied reconsideration. KEY QUOTE: "The important fact will be whether the original preliminary motion and original reply collectively make out a prima facie case." (Paper 171, p. 5) PRIOR PRECEDENT AFFECTED: Follows Hillman v. Shyamala, 55 USPQ2d 1220 (Bd. Pat. App. & Int. 2000), for the rule that a preliminary motion must make out a prima facie case for relief. No other prior precedential or informative decision is named. PRACTICE TIP: If evidence becomes available after you file a preliminary motion, promptly seek leave to file it with a supplemental preliminary motion under 37 CFR § 1.645(b) and show why it could not have been filed earlier. Do not just add it to your reply, since the Board does not normally consider new evidence first presented in a reply.