Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 RIVIER ET AL.
v.
COY ET AL.
Interference No. 101,650
March 1, 1989
Ronald H. Smith
Examiner-in-Chief
On January 9, 1989 (c.o.m. 1/6/89) Coy et al (Coy) filed a paper requesting cross-examination of Rivier et al (Rivier) affiants Mowles, Vale and Struthers. Coy also moved pursuant to 37 CFR §§ 1.635, 1.637(b) and 1.687 for discovery. Rivier filed an opposition to the motion for discovery, and Coy filed a reply to the opposition.
Coy urges that the discovery sought is in the "interest of justice" as required by 37 CFR 1.687(c) because the Rivier affiants have not included as exhibits to their affidavits all documents which relate to statements about various tests made in those affidavits. For example, Coy represents that Mowles avers that "[a]ttempts to reproduce [the Lance] testing at Roche did not produce any comparable test responses." Coy represents further that Mowles does not attach the documentation to support his allegation. Coy contends that Rivier should be ordered to produce all relevant documents and things relating to those tests because Coy is entitled to see the test results and the methodology of the tests in order to meaningfully cross-examine Dr. Mowles. Further, Coy seeks discovery as to the relationship between Salk, the assignee of Rivier's patent, and Roche, the employer of Mowles, one of the affiants.
Rivier urges in opposition that the discovery motion is premature because Coy has not yet cross-examined the Rivier rebuttal witnesses and has not requested the documents during cross-examination as set forth in § 1.687(b). Further, Rivier urges that Coy has not shown that the request to produce broad categories of documents is in the interest of justice as required by § 1.687(c), especially when the issue to be decided at final hearing is very limited. Rivier also urges that Coy is not entitled to any document which is not within the scope of proper cross-examination of the specific rebuttal testimony.
Rivier indicates that at the cross-examination of the two witnesses over whom Rivier has control, Rivier will produce documents appropriate to their testimony, and Dr. Mowles (who works for non-party Roche) will make available relevant pages of his notebooks upon which his affidavit testimony was based. Rivier urges that further discovery should be considered by the EIC only after cross-examination on oral deposition, where such specific documents can be identified and specific basis can be developed for the proposition that their production is necessary.
The undersigned EIC agrees with Coy that additional discovery is appropriate at this time. Rivier's attention is directed to the requirements of § 1.672(b) for affidavit testimony that indicate that a "party shall not be entitled to rely on any document referred to in the affidavit unless a copy of the document is filed with the affidavit" and neither may a party rely on any thing unless the opponent is given reasonable access to the thing. The attempts by Rivier's witnesses to rely on the results of test data without providing the documents relating to the testing appears to be an attempt to avoid the plain requirement of § 1.672(b). Rivier's indication that the appropriate documents will be provided at the cross-examination of the witnesses acknowledges that Coy is entitled to certain additional discovery. However, the undersigned sees no reason to defer the discovery until the time of the cross-examination. As noted, supra, the rule provides that the documentation should be filed and served with the affidavit. Further, to delay the provision of appropriate discovery would ignore the purpose of discovery, i.e., inter alia, to reach the truth as economically and efficiently as possible, and, as noted by Coy, could result in a further delay in the proceeding. Accordingly, the discovery ordered herein is required to be produced for inspection and copying at least ten days prior to the depositions as requested by Coy.
*2 Rivier's objections to the requested discovery on the ground that Mowles and Roche are not parties and are not under the control of Rivier are overruled. Rivier admits that Roche is a licensee of "all Salk U.S. patents in the field of GRF" and it is therefor clear that Roche has an interest in this interference. Here the issue of control is one of influence. Rivier had sufficient influence to obtain the testimony of Dr. Mowles and to indicate that Dr. Mowles' notebook pages which constitute the tests will be produced at the cross-examination. According to Kane, Civil Procedure in a Nutshell, § 3-24, page 120 (West Pub.Co.1979): "If a party is in a position to influence the person [Mowles] or the organization [Roche] possessing the document [or thing] he will be deemed to control them." See also Bifferato v. States Marine Corp. of Delaware, 11 FRD 44 (SDNY 1951) and the case cited by Kane, Societe Internationale v. Rogers, 357 US 197 (1958).
The decision of the undersigned EIC with respect to the specific discovery requests is as follows:
Requests directed to Dr. Mowles
a. Granted. The objection does not indicate how the request is "broader than the testimony" or why it is "inappropriate in interference discovery."
b. Granted.
c. Granted.
d. Granted.
e. Granted-in-part. The request is denied insofar as it seeks the identity of analogs C and D. No relevance is indicated for the identity of the analogs, and the request is directed to possible trade secrets of a non-party. Coy has not established that the interest of justice requires such discovery.
f. Denied. The request is denied for the reasons set forth in e., supra.
g. Granted.
h. Denied. The request is unrelated to any testimony of the affiant, and, therefor, clearly beyond the scope of appropriate cross-examination.
i. Denied. The request appears irrelevant and unnecessary in view of the admission by Rivier that Roche is a licensee of all Salk U.S. patents in the field of GRF.
j. Denied. The request is request is irrelevant as unrelated to any testimony of the affiant and therefor clearly beyond the scope of appropriate cross-examination. Further, the request seeks privileged attorney work product.
k. Denied. The discovery sought has not been shown to be relevant or in the interest of justice.
Requests directed to Dr. Vale
a. Granted. However, Rivier is correct that Coy is not entitled to priority evidence, and therefor the test data prior to August 10, 1983 may be produced with the dates deleted.
b. Granted. This request is subject to the same comment as set forth in a., supra.
c. Denied. The request is irrelevant as unrelated to any testimony of the affiant and is therefor beyond the scope of appropriate cross-examination.
d. Granted.
e. Denied.
f. Denied. The request is irrelevant as unrelated to any testimony of the affiant and therefor beyond the scope of appropriate cross-examination. Further, it improperly seeks attorney work product which is privileged.
*3 Requests directed to Struthers
a. Denied. There is no reference to any such data or documents in the affiants' testimony and the request appears to be unrelated to the testimony. It has not been established that such discovery is in the interest of justice.
Rivier is ordered to produce for inspection and copying the documents and things within the discovery requests granted, supra, at least ten (10) days prior to the depositions on cross-examination. Further, the following times are now set:
(1) Rivier testimony period is reopened on the date of this order for the cross-examination of affiants Mowles, Vale and Struthers and is set to close on April 22, 1989.
(2) Records due May 22, 1989.
(3) Coy brief due June 22, 1989.
(4) Rivier brief due July 22, 1989.
(5) Coy reply brief due August 11, 1989.
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