_1
`
`r
`
`It(
`
`THIS OPINION WAS NOT WRITTEN FOR PQBLICATION
`
`The opinion in support of the decision being entered
`today (1) was not written for publication in a law
`journal and (2) is not binding precedent of the Board.
`
`Filed by: Murriel E. Crawford
`Administrative Patent Judge
`Box Interference
`Washington, D.C. 20231
`Tel: 703-308-9797
`Fax: 703-308-7952
`
`Paper No. 1
`
`MAILED
`
`APR 2 3 1998.!
`FQi.& TM. OFFICE
`CIOAS! OF PATENT APPEALS
`' FERENCES
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE BOARD OF PATENT APPEALS
`AND INTERFERENCES
`
`ERIC C. MARTIN
`Junior Party,
`
`V.
`
`THOMAS J. FOGARTY, JAY A. LENKER,
`TIMOTHY J. RYAN and KIRSTEN FREISLINGER
`Junior Party,
`
`V.
`
`GEORGE GOICOECHEA, JOHN HUDSON, CLAUDE MIALHE,
`ANDREW H. CRAGG and MICHAEL D. DAKE
`Senior Party.
`
`Patent Interference No. 104,192
`
`(37 CFR § 1.611)
`
`An interference is declared (35 U.S.C. § 135(a)) between the
`above-identified parties. Details of the application, patent,
`count(s), land claims designated to correspond to the count appear
`in an "Attachment" to this order.
`
`W.L. Gore & Associates, Inc.
`Exhibit 1006-1
`
`

`

`Interference No. 104,192
`
`Judge designated to handle this interference
`
`Administrative Patent Judge Murriel E. Crawford has been
`designated to handle this interference. 37 CFR § 1.610.
`
`Telephone Conference Calls
`
`**
`Any questions regarding this interference may be made to my
`office via conference call (703-308-9797 in which lead counsel
`for all parties must participate. It is not my practice to
`accept telephone calls from one counsel--even on so-called
`procedural matters or to inquire as to the status of pending
`motions.
`
`**
`
`Conference calls may be arranged through one of the three
`administrators who work at the Board of Patent Appeals and
`Interferences (hereinafter referred to as the board). Those
`individuals are (1) Amalia Santiago, (2) Merrell C. Cashion, Jr.,
`(3) Dale M. Shaw and (4) Craig Feinberg. They can be reached at
`703-308-9797.
`
`Counsel are not to contact another administrative patent
`Judge in connection with this interference unless first
`authorized by an administrator.
`
`Delivery of papers to the Patent and'Trademark Office
`
`The parties may use the U.S. Postal Service to send paper
`and .other materials related to this interference to the Patent
`and Trademark Office .(PTO). When using the U.S. Postal Service,
`please use the following.address:
`
`BOX INTERFERENCE
`Commissioner of Patents and Trademarks
`Washington, D.C. 20231
`
`The parties may also hand deliver papers and other material
`to the PTO. I encourage hand-delivery of papers. Hand-delivery
`should be to the following address:
`
`Board of Patent Appeals and Interferences
`Crystal Gateway 2
`1225 Jefferson Davis Highway
`10th Floor
`Arlington, Virginia 22202
`
`-
`
`2
`
`-
`
`W.L. Gore & Associates, Inc.
`Exhibit 1006-2
`
`

`

`_______ ~~_ __~___~~___I~~_~ ~
`
`Interference No. 104,192
`
`The address to use in the case of a commercial one-day
`delivery service (i.e., Federal Express) is the board's Crystal
`Gateway address.
`
`Hand-delivery directly to the board will (1) minimize the
`time it takes for a paper or other material to reach me and (2)
`allow me to render prompt decisions on matters presented to me.
`
`The parties may also forward relatively short papers to the
`board via fax at 703-308-7953.
`
`.;( '"
`
`tReouirement for filina two copies of each paper. -
`
`When.presenting a paper in this interference, each party is
`required to submit (1) an original and (2) one copy of each
`paper, the copy shall be marked at the top:
`
`[COPY FOR JUDGE]
`
`Notice under 35 U.S.C. § 135(c.)
`
`Notice is hereby given of the requirement of 35 U.S.C.
`§ 135(c) for filing in the U.S. Patent and Trademark Office a
`copy of any agreement "in connection with or in contemplation of
`the termination of the interference.'" See Unisys Corp. v.
`Commissioner of Patents and Trademarks, 39 USPQ2d 1842 (D.D.C.
`1993).
`
`Lead and backup counsel
`
`On or before May 22, 1998, each party is required to
`identify in a separate paper a lead counsel and a backup counsel
`for lead counsel, as well as the mailing address, telephone
`numbers, and fax number for both lead counsel and backup counsel
`(37 CFR § 1.613(a)). .If counsel's address is a Post Office Box,
`please supply a non-postal box address where Federal Express may
`be sent by opposing counsel and/or the Patent Office.
`
`Lead counsel and/or backup counsel should file a power of
`attorney in their client's application or patent files if not
`already of record under 37 CFR § 1.34(b).
`
`-
`
`3
`
`-
`
`W.L. Gore & Associates, Inc.
`Exhibit 1006-3
`
`

`

`Irte'ference No. 104,192
`
`Real party in interest
`
`On or before May 22, 1998, each party shall notify the board
`in a separate paper of any and all right, title, and interest in
`any application or patent involved in the interference (37 CFR
`§ 1.602(b)).
`
`All parties are obligated to continually and promptly update
`changes of the real party in interest.
`
`Preliminary Statements and Motions
`
`The time for filing and serving notice of filing (but not
`serving) preliminary statements (§§1.621 to 1.628) and for filing
`preliminary motions (§1.633) is set to expire Aug. 14. 1998.
`
`The parties are requested to use one line titles for
`preliminary motions, Oppositions, and replies, i.e.,
`
`SMITH PRELIMINARY MOTION 1;
`JONES.OPPOSITION 1; and
`i' SMITH REPLY 1.
`
`The parties should briefly state in the first paragraph.of a
`preliminary motion the precise relief requested. Two examples
`are:
`
`(1) SMITH moves to be accorded the benefit of the filing
`date of application 07/999,999, filed January 22, 1993 or
`
`(2) SMITH moves for judgment against JONES on the ground
`that JONES' claims corresponding to the count are unpatentable
`under 35 U.S.C. § 103 over the combined disclosures of U.S.
`Patent No. 4,444,444 (Johnson) and French Patent 1,111,111
`(Boleau).
`
`The parties are requested to state in the second paragraph
`the Exhibits, by exhibit number, relied upon in'support of a
`preliminary motion, opposition, or reply.
`
`Page number limitation on oreliminary.motion papers
`
`A preliminary motion is limited to twenty (20) pages, not
`including any certificate of service.
`
`-4 -
`
`c
`
`W.L. Gore & Associates, Inc.
`Exhibit 1006-4
`
`

`

`Interference No. 104,192
`
`An opposition to a preliminary motion is limited to twenty
`(20) pages, not including any certificate of service.
`
`A reply to an opposition is limited to ten (10) pages, not
`including any certificate of service, and shall not raise any
`issue or rely on any evidence which reasonably could have been
`made or presented with the preliminary motion.
`
`K1 All typing in preliminary motions, oppositions and replies
`.(ihcluding footnotes, but excluding headings, signature blocks
`and. certificates of service) shall be double spaced.
`
`"Combined" oppositions and replies not to be filed
`
`An opposition shall respond to only a single preliminary
`motion; "combined" oppositions responding to more than one
`preliminary motion shall not be filed.
`
`A reply shall respond to only a single opposition;
`"combined" replies to more than one opposition shall not be
`filed.
`
`Size of Paper
`
`All papers (e.g., identification of lead counsel,
`identification of real party in interest, motions, preliminary
`motions, preliminary statements, briefs, etc.) filed in this
`interference shall be (1) 8-1/2 X.11 paperyor (2) A4, with the
`possible exception of original exhibits. Papers of a different
`size (e.g., legal size) shall not be filed.
`
`Holes at the top of papers
`
`All papers filed in this interference shall have two holes
`punched at the top spaced at 2-3/4 inches apart (each hole spaced
`equidistant from an imaginary center line running from the top to
`the bottom of the paper) so that the papers may be placed in
`interference files maintained by the PTO.
`
`Prohibition against presenting duplicate papers
`
`When presenting a paper in this interference, counsel shall
`not submit with the paper (as an appendix, exhibit, or otherwise)
`a copy of a paper previously filed in the interference (37 CFR
`§ 1.618(b)).
`
`-
`
`5
`
`-
`
`W.L. Gore & Associates, Inc.
`Exhibit 1006-5
`
`

`

`~CI~_____
`
`_
`~~ ~~_
`
`~~~~___
`
`_~___~______
`_
`
`Interference No. 104,192
`
`Citation of case law in papers,
`
`When citing a decision of a court which is published in the
`West Reporter System and the USPQ, counsel should provide
`parallel citations, e.g., Aelony y. Arni, 547 F.2d 566, 192 USPQ
`486 (CCPA 1977); In re Deckler, 977 F.2d 1449, 24 USPQ2d 1448
`(Fed. Cir. i992).
`
`Binding precedent is the following:
`
`(1) Decisions of the U.S. Supreme Court.
`
`(2) Decisions of the Court of Appeals for the Federal
`Circuit, the former CCPA and the former Court of Claims. 5P
`:S.outh Codp. v. United States, 690 F.2d 1368, 1370-71, 21;5 USPQ
`(en banc), and In re Gosteli,
`.5,7'i "657=58 (Fed. Cir. 1982)
`8t72ir F.2d 1008, 1011, 10 USPQ2d 1614, 1616-17 (Fed. Cir.'.1989)
`(where there is a conflict between two or more decisions of the
`former CCPA, the later CCPA decision controls).
`
`(3) Decisions of the Commissioner of Patents and
`Trademarks.
`
`(4) Decisions of the Board of Patent Appeals and
`Interferences which have been determined to be binding precedent
`under the board's Standard Operating Procedure 94-02. Se, e.g.,
`Reitz v. Inoue, 39 USPQ2d 1838 (Bd. Pat. App. & Int. 1995).
`
`Decisions of the regional courts of appeals and the district
`courts may be cited, but are not binding precedent.
`
`Non-precedential decisions of federal courts shall not be
`cited.
`
`Non-precedential decisions of the board may be cited, but
`are not binding.
`
`The Manual of Patent Examining Procedure (MPEP) is a guide
`for patent examiners which is prepared by the Office of the
`Assistant Commissioner for Patents. The MPEP contains Chapter
`2300 on interference practice. Chapter 2300 is often out of date
`with respect to interference law and practice. Hence, Chapter
`2300 of 'the MPEP is not to be cited in capers file d ia tbis
`htferenc'e . Counsel should instead cite only primary
`authority:' the United States Code (USC), the Code of Federal
`
`-6
`
`-
`
`W.L. Gore & Associates, Inc.
`Exhibit 1006-6
`
`

`

`Interference No. 104,192
`
`Regulations (CFR), notices published in the Federal Register fY
`A1it/br: Official Gazette, and binding precedent.
`
`Service of papers by hand or Express Mail
`
`All papers served on opposing counsel in this interference
`shall be served by Express Mail (a one-day delivery service of
`the U.S. Postal Service) (37 CFR § 1.646(d)); alternatively
`counsel may serve opposing counsel using any means which
`accomplishes a one-day delivery, e.g., by hand, fax, or a
`commercial one-day delivery service.
`
`**Notification to the board of receipt of this .ntice**
`
`Counsel for each party is requested to promptly advise me by
`letter that the notice declaring the interference was received.
`
`Copies of patents and literature mentioned in each
`specification (and translations, if available)
`
`On or before May 22, 1998, each party:
`
`(1) shall serve on all opponents a legible copy of every
`patent and literature reference (and in the case of patents or
`literature in a foreign language, a translation, if available)
`mentioned in the specification of the party's involved patent
`r
`and/or application, and
`
`(2) shall file in the PTO a notice (without copies of the
`patents or:literature) that it has served the patents and
`literature as ordered herein.
`
`Copy of specification/claims in electronic form
`
`On or before Aug. 14. 1998, each party is requested to file
`with the judge assigned to this interference a computer 34 inch
`high density floppy disk containing in a first document on the
`disk a copy of the party's specification, and in a second
`document on the disk a clean copy of the party's claims as
`currently worded (for use in an IBM compatible computer in
`WordPerfect 6.0 (Windows), Microsoft Word 6.0 (Windows) or ASCII
`format (preferably WordPerfect 6.0 Windows)).
`
`- 7 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1006-7
`
`

`

`_____ __1
`
`___I~
`
`Interference No. 104,192
`
`Time to respon to motions under 37 CFR 4 1.635
`
`The time for filing an opposition to a motion under 37 CFR §
`1.635 is hereby set to be 30 days after service of the motion.
`37 CFR § 1.638(a).
`
`The time for filing a reply to an opposition to a motion
`under 37 CFR § 1.635 is hereby set to be 20 days after service of
`the opposition. 37 CFR § 1.638(b).
`
`A motion under 37 CFR § 1.635 may be denied prior to receipt
`of an opposition. A motion under 37 CFR § 1.635 may be granted
`after an opposition is filed and prior to receipt of a reply.
`
`Comments on requests for extensions of time
`
`The parties are advised that I set times so as to afford the
`parties Wbr. than an ample time to meet the time deadlines in
`this interference. Thus, in setting times in this interference,
`I have taken into account the fact that counsel is involved in
`other matters. It is true that requests for extension of time
`are authorized by 37 CFR § 1.645. But, Rule 645 requires a
`showing of "good cause." Whatever counsel's experience.may be in
`other PTO matters or courts generally, my standard of what
`constitutes "good cause" is considerably high.
`
`There are few, if any, circumstances where "good cause" can
`be based on the press of other business arising after a time is
`set'by an order entered in this interference. Thus, a matter in
`another case (i.e., argument or a trial) or an event (i.e., a
`deposition, client meeting in the U.S. or abroad) scheduled or
`ordered after an order setting times in this interference is
`issued, normally will not constitute the press of other business.
`
`OBTAINING COPIES OF FILES
`
`The Board of Patent Appeals and Interferences does not provide or
`sell copies of interference files or the application or patent
`files involved in interferences. Copies may be purchased from
`the;Dissemination Support Division (DSD), 2183 Crystal Plaza
`Arcade, PTO Copy Sales Center, (703) 305-8990, Fax (703) 308-
`5257. DSD's mailing address is:
`
`-
`
`8
`
`-
`
`W.L. Gore & Associates, Inc.
`Exhibit 1006-8
`
`

`

`i
`
`I.o
`
`I, 1
`
`Interference No. 104,192
`
`]f I.
`!9 i
`
`Commissioner of Patents and Trademarks
`Box 9
`Washington, D.C. 20231
`Attention: DSD File Copy
`
`The DSD contact person is Teresa Knight ((703) 305-4311).
`Requests for copies shall not be filed with the Board unless
`ordered by an APJ. The parties are advised that interference
`files do not include the involved application or patent files.
`Requests for copies must specifically identify the serial number,
`patent number or interference number of all desired files.
`Because of the confidentiality provisions of 35 U.S.C. § 122 and
`37 CFR §SS 1.11(e) and 1.14, requests for copies of pending
`applications or interference files must be accompanied with proof
`that the requester is authorized to have access to the files
`(e.g., copy of the power of attorney, power to inspect, and
`interference declaration, as appropriate). Failure to, provide
`all necessary information with the request will delay obtaining
`copies or result in a denial of the request.
`
`Interference Guidlines
`
`:The parties are advised to read and familiarize themselves
`with the following guidelines which apply in this interference:
`
`The following guidelines, which apply to this interference,
`are not intended to be a complete exposition of practice under
`the new interference rules (§§ 1.601 et seq.). Additional
`information about practice under the interference rules may be
`found in Patent Interference Proceedings; Final Rule (hereinafter
`1984 Rule NQtice), 49 Fed. Reg. 48,416 (Dec. 12, 1984), 1050 Off.
`Gaz. Pat. & Trademark Office 385 (Jan. 29, 1985), corrections
`printed at 50 Fed. Reg. 23,122 (May 31, 1985), 1059 Off. Gaz.
`Pat. & Trademark Office 27 (Oct. 22, 1985). To the extent these
`guidelines supplement the specific requirements of the current
`rules and the cited cases and notices, they are based on the
`undersigned's authority.under § 1.610(e) to determine a proper
`course of conduct for situations not specifically covered by the
`rules.
`
`Attorneys and agents
`
`Note §§ 10.62 and 10.63 regarding representation by an
`attorney or agent who is expected to sign an affidavit or be
`called as a witness during the interference (e.g., concerning
`
`-9
`
`-
`
`W.L. Gore & Associates, Inc.
`Exhibit 1006-9
`
`

`

`Interference No. 104,192
`
`attorney diligence).
`
`Regarding requests to withdraw pursuant to S 1.613(d), note
`that a withdrawal is effective only as to the attorney(s) and/or
`agent(s) who signed the request, unless it is clear that the
`signing attorney or agent is also requesting withdrawal on behalf
`of other attorneys and/or agents. Withdrawal of a principal
`attorney revokes all associate powers or attorney and agent
`authorizations given by the withdrawing attorney. In the event
`that fewer than all of the attorneys or agents of record in the
`application or patent are permitted to withdraw, the next named
`attorney or agent in the power of attorney that was signed by the
`applicant becomes the attorney or agent to which correspondence
`will be sent.
`
`A new power of attorney by the assignee of record revokes
`all previous,powers given by the applicant and prior assignees.
`§ 1.36; MPEP 402.07.
`
`Maintenance fees
`
`If a maintenance fee due for an involved patent has not been
`paid, the undersigned should be notified immediately.
`
`Count interpretation
`
`Absent an ambiguity, a count is to be given the broadest
`reasonable interpretation it can reasonably support without
`resort to any party's disclosure. Davis v. Loesch, 998 F.2d 963,
`968, 27 USPQ2d 1440, 1444 (Fed. Cir. 1993); Lamont v. Berguer,
`7 USPQ2d 1580, 1582 (Bd. Pat. App. & Int. 1988); Fontiin v.
`Qkamoto, 518 F.2d 610, 618, 186 USPQ 97, 104 (CCPA 1975).
`See
`also DeGeorge v. Bernier, 768 F.2d 1318, 1321, 226 USPQ 758, 760-
`61 (Fed. Qir. 1985):
`
`Interference counts are given the broadest reasonable
`interpretation possible, and resort to the specification is
`necessary only when there are ambiguities inherent in the
`claim language or obvious from arguments of counsel. See,
`e.a., Woods v. Tsuchiya, 754 F.2d 1571, 1578, 225 USPQ 11,
`15 (Fed. Cir. 1985) [cert. denied 474 U.S. 825, 106 S.Ct. 81
`(1985)]; In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 802
`(CCPA 1981); Kroekel v. Shah, 558 F.2d 29, 32, 194 USPQ 544,
`546 (CCPA 1977); Stansbury v. Bond, 482 F.2d 968, 974-75,
`
`- 10 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1006-10
`
`

`

`i
`
`Interference No. 104,192
`
`179 USPQ 88, 92 (CCPA 1973). If there is such ambiguity,
`resort must be had to the specification of the patent from
`which the copied claim came. S e, ea, Burson v.
`Carmichael, 731 F.2d 849, 852, 221 USPQ 664, 666 (Fed. Cir.
`1984); Sockman v. Switzer, 379 F.2d 996, 1000, 154 USPQ 105,
`106-07 (CCPA 1967). [Footnote omitted.]
`
`..;; ! count is not ambiguous merely because it reads oi mpre;:.
`tha 'one embodiment. Kroekel.v. Shah, 558 F.2d at 32,.194 USPQ
`:a t5.47. See also Davis v. Loesch, 998 F.2d at 968, 27 USPQ2d at
`.1444-45 ("[W]hile 'heat exchanger' is a generic term, its meaning
`is' clear. Its meaning is not made otherwise simply because it is
`broad enough to encompass different kinds of heat exchangers.").
`
`Nor is an ambiguity established by the fact that the parties
`offer different interpretations of the count.
`Kroekel v. Shah, 558 F.2d at 32, 194 USPQ at 547 ("It]he mere
`.
`fact that the parties take different views .
`is irrelevant.")
`Although the disclosure may be consulted after the existence of
`an ambiguity has.been established, it may not be consulted in
`order to establish the existence of an ambiguity (id.):
`
`To make plain a latent ambiguity, the parties' arguments
`must.be reasonable. Shah's arguments rest entirely on
`resort to his disclosure. The error here lay in resort to
`Shah's disclosure for an interpretation of the count
`language, and in the utilization of that interpretation as a
`basis, for both finding ambiguity and resolving it. Resort
`to a disclosure has the limited purpose of resolving an
`ambiguity -- not of creating one. Fontijn v. Okamoto, 518
`F.2d'610, 186 USPQ 97 (CCPA 1975).
`
`Claim interpretation
`
`Section 1.633(a) provides that all application claims,
`including .claims copied or substantially copied from a patent for
`interference purposes, will be construed in light of the .,
`associated application disclosures, as is the case with other
`application claims. See 1995 Rule Notice, 60 Fed. Reg. at
`14,506, 1173 Off. Gaz. Pat. & Trademark Office at 51, citing In
`re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir.
`1989):.
`
`During patent examination the pending claims must be
`interpreted as broadly as their terms reasonably allow.
`
`- 11 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1006-11
`
`

`

`Interference No. 104,192
`
`When the applicant states the meaning that the claim terms
`areiintended to have, the claims are examined with that
`'meaning, in order to achieve a complete exploration.of the
`l: . pplicant's invention and its relation to the prior art.
`-;t$ I4 re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-
`51 (CCPA 1969) (before the application is granted, there is
`no reason to read into the claim the limitations of the
`specification). The reason is simply that during patent
`prosecution when claims can be amended, ambiguities should
`be recognized, scope and breadth of language explored, and
`clarification imposed. Burlington Industries. Inc, v,
`Quiaa, 822 F.2d 1581, 1583, 3 USPQ2d 1436, 1438 (Fed. Cir.
`1987); In re Yamamoto, 740 F.2d 1569, 1571, 222 USPQ 934,
`936 (Fed. Cir. 1984). The issued claims are the measure of
`the protected right. United Carbon Co. v. Binney & Smith
`Cm., 317 U.S. 228, 232, 55 USPQ 381, 383-84 (1942) (citing
`General Electric Corp. v. Wabash Appliance Corp., 304 U.S.
`364, 369, 37 USPQ 466, 468-69 (1938)).
`
`The claims of a patent involved in interference are broadly
`construed. As explained in Okada v. Hitotsumachi, 16 USPQ2d
`1789, 1790 (Comm'r Pats. & Trademark 1990), the presumption of
`validity under 35 U.S.C. § 282 does not apply to patent claims
`involved in an interference (citing Lamont v. Berguer, 7 USPQ2d
`at 1582). Likewise, the rule of claim construction that applies
`to patent claims involved in litigation, i.e., construing claim
`in light of the specification and the prosecution history of the
`patent and also, if possible, to sustain its validity, BG
`Hospital Systems. Inc. v. Montefiore Hospital, 732 F.2d 1572,
`1577, 221 USPQ 929, 932 (Fed. Cir. 1984), does not apply to the
`claims of a patent involved in an interference. Lamont v
`Berouer, 7 USPQ2d at 1582.
`i
`
`Claims corres.onding to the count
`
`A claim:will be designated as corresponding to the count if
`the claim satisfies either of the following conditions. The
`first condition is that the claim recites the same patentable
`invention as the count, such as by reciting the same species as
`the count or an obvious variation of that species. Or the claim
`may recite a species that is not patentably distinct from a genus
`recited by the count. Chionag v. Roland, 17.USPQ2d 1541, 1544
`(Bd. Pat..App. & Int. 1988). All claims of this type will have
`been designated as "allowable" by the ex Darte examiner in the
`
`- 12 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1006-12
`
`

`

`r__~__l__
`
`____ _
`
`Interference No. 104,192
`
`.
`
`interference memorandum (form PTO-850).
`
`The second, alternative condition is that the claim will be
`unpatentable over the count in the event the party whose claim it
`is loses the interference on the issue of priority. Thus, a
`generic claim that encompasses a patentable species recited by
`the count will be designated as corresponding to the count even
`though the claim has been rejected -- and thus designated as "not
`allowable" in the PTO-850 -- on the ground that the claim also
`encompasses an unpatentable species. Orikas a v. Oonishi,
`10 USPQ2d 1996, 2002 n.19 (Comm'r Pats. & Trademarks 1989).
`
`Burden of proof with respect to all motions
`
`.With respect to all motions brought under the interference
`rules, the'moving party bears the burden of making out a prima
`aci
`case of entitlement to the relief sought.
`Kubota v. Shibuya, 999 F.2d 517, 520-21, 17 USPQ2d 1418, 1422-23'
`(Fed. Cir. 1993); Patent Interference Practice Burden of Proof -
`Final Rule 58 Fed. Reg. 49,432, 49,432 (Sept. 23, 1993), 1155
`Off. Gaz. Pat. & Trademark Office 65, 66 (Oct. 19, 1993).
`
`All available relevant evidence must be
`submitted with the motion, opposition or reply
`
`.The parties are required to present all available relevant
`evidence on which they intend to rely with the motion, opposition
`or reply, unless the evidence is already part of the
`interference file or the file of an involved application or
`patent. § 1.639(a). See Irikura v. Petersen, 18 USPQ2d 1362,
`1368 (Bd. Pat. App. & Int. 1990):
`
`A good faith effort must be made to submit evidence to
`support a preliminary motion or opposition when the evidence
`is available. Orikasa v. Oonishi, [(10 USPQ2d 1996, 2000
`le
`n'.12 (Comm'r Pats. 1989)]. Note the commentary [1984 R
`.
`. 1050 O.G. 393 at 411.
`Notice] 49 F.R. 48424, at 48442,
`
`Belatedly filed motions based on previously unavailable
`evidence must be filed romptly after the evidence becomes
`available. Interference Practice: Matters Relating to
`Preliminary Motions, 1144 Off. Gaz. Pat. & Trademark Office 8
`(Nov. 3, 1992) (belated motion under § 1.633(a) must be filed
`promptly after evidence becomes available).
`
`-13 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1006-13
`
`

`

`Interference No. 104,192
`
`See Jacob s v. Moriarity, 6 USPQ2d 1799 (Bd. Pat. App. & Int.
`...
`1988), regarding the meaning of the phrase "part of the
`fleof:=any patent or application" in § 1.639(a).1 The burden is
`6e':the party to show where the evidence appears in the file and.
`why;.it should be considered part of the file in the sense of
`§ 1.639(a). Id. at 1800-01. References cited only by the
`examiner are not considered part of the file. 14. at 1801.
`
`The parties are requested to file a copy of each reference
`cited in a motion, opposition or reply, even if the reference is
`properly considered to be part of an involved application or
`patent.2
`
`As noted in § 1.638(b), a reply is limited to new points
`raised in the opposition. To the extent an opposition simply
`argues that a motion and its supporting evidence are insufficient
`to make out a prima facie case of entitlement to the relief
`sought, a new point is not raised in the sense of 1.638(b).
`
`Belatedly filed preliminary motions
`
`A preliminary motion that is not filed during the
`preliminary period or filed in accordance with § 1.633(h)-(j) is
`belated and will not be considered unless accompanied by a motion
`under §§ 1.635 and 1.645(b) showing "good cause" for the
`belatedness and including the certificate of consultation
`required by § 1.637(b). It is not enough to show that the
`evidence was unknown to the party during the preliminary motion
`period; the party must also show that it made a reasonable effort
`to locate the evidence during the preliminary motion period.
`See Maier iv. Hanawa , 26 USPQ2d 1606, 1610 (Comm'r Pats. &
`<:
`Trademarks 1992):
`
`. .
`[I]t is incumbent on a party to make its best
`reasonable effort within the time period allotted by the EIC
`
`1 In contrast to § 1.639(a), which applies to motions, § 1.671(a)
`provides that the only parts of involved and benefit applications
`and patents which are automatically considered part of the evidence
`reviewable at final hearing are the specifications (including
`claims) and drawings.
`2 However, the opposition and reply need not include copies of
`references that were "cited in the motion and the opposition,
`respectively.
`
`- 14 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1006-14
`
`

`

`_
`
`__
`
`__
`
`Interference No. 104,192
`
`to uncover all evidence on which it would rely in making a
`preliminary motion. If information which could have been
`discovered with reasonable effort within the period set by
`the EIC, its later discovery after expiration of the period
`would not be sufficient cause for delay in the late filing
`of any preliminary motion relying on that information.
`
`The moving party must also show that the belated motion was
`filed promptly after the evidence became available or must
`provide a satisfactory explanation for failing to promptly file
`the motion. Interference Practice: Matters Relating to
`Preliminary Motions, 1144 Off. Gaz. Pat. & Trademark Office 8
`(Nov. 3, 1992).
`
`Authentication of exhibits
`
`t~ i. Whether relied on in affidavits or depositions, exhibitsh~s
`that are not self-authenticating under Fed. R. Evid. 902 must be
`authenticated in accordance with Fed. R. Evid. 901, unless the
`parties agree otherwise. The requirement for corroboration of
`the inventor's testimony about conception, diligence and an
`actual reduction to practice also applies to the authentication
`of evidence. 3 C. Rivise & A. Caesar, Interference Law and
`Practice § 564, at 2419 (1947).
`
`Affidavit testimony by an expert witness
`
`A party offering affidavit testimony Oy an expert witness
`must establish that the affiant is an expert in the sense of Rule
`702 of the Federal Rules of Evidence. Expert opinion testimony
`pursuant to Fed. R. Evid. 703 is entitled to weight only to the
`extent the underlying factual basis is provided in the affidavit.
`Cable Electric Prod. v. Genmark, 770 F.2d 1015, 1026, 226 USPQ
`881, 887 (Fed. Cir. 1985).
`
`Requests to take testimony pursuant to S 1.639()
`
`Note that request for leave to take testimony in support of
`a preliminary motion, opposition or reply are limited to
`testimony that is unavailabkl when the motion, opposition or
`reply is filed. See § 1.639(c) as amended effective October 29,
`1993. Patent Interference Practice Burden of Proof - Final Rule,
`58 Fed. Reg. 49,432 (Sept. 23, 1993), 1155 Off. Gaz. Pat. &
`Trademark Office 65, 66 (Oct. 19, 1993). Thus, a § 1.639(c)
`request generally will be denied unless the requesting party has
`
`- 15 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1006-15
`
`

`

`Interference No. 104,192
`
`demonstrated that the testimonycannot be obtained in time to
`file with the motion, opposition or reply. Irikura v. Petersen,
`18 USPQ2d 1362, 1368 (Bd. Pat. App. & Int. 1990). See
`Hanagan v. Kimura, 16 USPQ2d 1791.(Comm'r Pats. & Trademarks
`1990) ("the new interference rules were not intended to permit
`routine requests to take testimony in lieu of presenting timely
`affidavits and other available proof of material [facts] with the
`motion").
`
`A contingent request under § 1.639(c) to take testimony in,
`the event of an adverse decision on the motion based on the
`evidence submitted therewith is improper and will be dismissed.
`However, it is proper to request that the evidence submitted with
`the motion, opposition or reply be considered in the event a §
`.. 1639:(c) request is denied.
`
`It is neither proper nor necessary to request permission
`under § 1.639(c) to cross-examine an affiant whose affidavit was
`filed in support of or in opposition to a motion. Unless the.
`Administrative Patent Judge dismisses the motion or defers
`consideration of the motion until final hearing, he will decide
`it on the merits without the benefit of cross-examination. If
`the affidavit is thereafter noticed for consideration at final
`hearing pursuant to § 1.671(e), the affiant must be made
`available for cross-examination, re-direct and re-cross pursuant
`to § 1.672(b), which testimony will be considered together with
`the affidavit at final hearing.
`
`A request to take testimony under § 1639(c) and defer a
`decision until final hearing is appropriate and will be
`considered where the party wishes to take the testimony of a
`witness whose testimony is to be compelled under 35 U.S.C. § 24
`or where the testimony is also going to be relied on in support
`of or in opposition to either party's case for priority or
`derivation.
`
`A request under § 1.639(c) must comply with the requirements
`of § 1.639(d)-(g), which essentially codified Hanagan v. Kimura,
`16 USPQ2d at 1794. Patent Interference .Practice Burden of Proof
`-,?Final Rule, 58 Fed. Reg. 49,432 (Sept. 23, 1993), 1155 Off.
`Gaz; Pat. !& Trademark Office 65 (Oct. 19, 1993).
`
`i.
`
`- 16 -
`
`W.L. Gore & Associates, Inc.
`Exhibit 1006-16
`
`

`

`IL~I~_
`
`__
`
`Interference No. 104,192
`
`Any motion that fails to satisfy the relevant requirements
`of § 1.637 will be dismissed on that ground. For example, a
`§ 1.635 motion will be dismissed if it does not include the
`certification of consultation required by § 1.637(b).
`
`A motion may also be dismissed on the ground that it does
`not satisfy the requirement of § 1.639(a) for.evidence of each
`material fact alleged in the motion. Note that attorney.argument
`is not evidence. Brooks v. Street, 16 USPQ2d 1374, 1376 (Bd.
`Pat. App. & Int. 1990); Meitzner v. Mindick, 549 F.2d 775, 193
`USPQ 17, 22 (CCPA), cert, denied, 434 U.S. 854, 195 USPQ 465
`(1977). If evidence is offered to establish each material fact
`alleged in the motion but the evidence is found to be
`insufficient on the.merits to establish a prima facie case, the
`motion will be de