which to take testimony abroad nor in any manner by reason of having availed himself of the full period for filing his motion for leave to take testimony abroad . . ." Plaintiffs and Harry F. Manbeck, the Commissioner of Patents and Trademarks, who is an intervenor in this action, each move for summary judgment. Neither party raises material disputes of fact.
This Court has jurisdiction over this claim pursuant to 35 U.S.C. § 146, which provides that a party who has exhausted administrative remedies before the Board may file a civil action in federal district court. The Court's jurisdiction permits trial of a patent interference claim de novo, including the production of testimony and cross-examination not produced before the Board. However, testimony produced before the Board may be admitted to the court as though it had been originally produced before the court. Id. Nonetheless, the scope of the federal court's review is limited to the Board's decision. See, e.g., Montecatini Edison, S.P.A. v. Ziegler, 159 App. D.C. 19, 486 F.2d 1279, 1282-83 (D.C. Cir. 1973); Standard Oil Co. v. Montedison, S.P.A., 540 F.2d 611, 616 (3d Cir. 1976). The Board denied Kochler's motion to take testimony abroad and his motion for extension of time. Thus, despite Kochler's requests for relief, this Court lacks jurisdiction over any claim for relief on the merits of the underlying interference claim. The only question before the Court is whether the Board abused its discretion in denying Kochler's motions.
Kochler argues here, as he argued to the Examiner and the Commissioner, that, since the motion for leave to take testimony abroad was submitted on the last date of the testimony period, it was filed "prior to the close of the party's appropriate testimony period" and was thus timely under the express terms of Rule 648. Therefore, he argues, the Board abused its discretion by refusing to consider the motion on the merits. Kochler contends that the provision permitting submission of the motion for leave to take testimony abroad prior to the close of the testimony period, if meritorious, inherently requires the Board to consider an extension. Thus, he believes that Rule 648's provision permitting submission at any time during the testimony period should provide good cause for an extension.
The Commissioner argues to the contrary. First, the Commissioner argues that Rule 648 cannot be considered in isolation and must be considered in light of all of the provisions regulating the taking of testimony and Rule 645 regarding extensions of time. However, the Commissioner also argues that whether an extension is warranted in this case can be determined by consideration of Rule 645 alone, without any consideration of Rule 648. See Commissioner's Memorandum in Support of Motion for Summary Judgment (filed September 28, 1990) at 5-6. These interpretations lack consistency. Moreover, they overemphasize Rule 645 and its applicability to these circumstances relative to Rule 648 and its relevance here. In light of Rule 648's express provision that a motion to take testimony abroad may be submitted before the close of the testimony period (with which plaintiffs complied) and the fact that neither Rule 645 nor any other rule expressly or implicitly contains any provision that could reasonably be interpreted by plaintiffs to suggest that a motion for extension would not be considered in conjunction with a meritorious motion to take testimony abroad filed late in the testimony period, the Board's decision was arbitrary and capricious and an abuse of discretion.
The Commissioner, whose interpretation of the regulations is entitled to deference, see, e.g., Udall v. Tallman, 380 U.S. 1, 16-17, 13 L. Ed. 2d 616, 85 S. Ct. 792, reh. denied, 380 U.S. 989, 14 L. Ed. 2d 283, 85 S. Ct. 1325 (1965), is nevertheless also responsible for promulgating the regulations at issue and capable of obtaining any revision that would resolve any ambiguity or inconsistency between them, raising additional concerns about the Board's penalization of plaintiffs for a reasonable, if not correct, interpretation of any ambiguity. The Board's decision is especially troubling here, where plaintiffs had no input whatsoever on Examiner's scheduling of the testimony period, where the Board denied plaintiffs' first motion for extension on a technicality, where plaintiffs' law firm reassigned their case to an attorney new to the firm three weeks before the testimony cutoff date,
and where the Examiner, after holding defendant's motion for judgment under advisement for six months before issuing a decision, denied plaintiffs' motions for extension of a two month period for both discovery and testimony of witnesses in Europe in part because "it is expected by the Commissioner that interferences be completed within a two year period and practices such as being engaged in by Kochler will not be allowed to frustrate such expectation." More importantly, however, the Board's decision was unfair and erroneous because plaintiffs complied with the express provisions of Rule 648 and did not fail to comply with any other express provisions.
Accordingly, an accompanying Order remands this case to the Board of Patent Appeals and Interferences for redetermination of plaintiffs' motion to take testimony abroad on the merits of that motion and for redetermination of plaintiffs' motion for extension of time. Although the Board did not explicitly reach the question of whether, if the motion to take testimony abroad is meritorious, good cause exists for granting an extension of time sufficiently lengthy to permit the taking of such testimony abroad, the opposite result is implicitly suggested by the Board's denial of plaintiffs' motions. Therefore, it is appropriate here to take the liberty of expressing the opinion that good cause for an extension would exist if plaintiff's motion to take testimony abroad has merit.
LOUIS F. OBERDORFER, UNITED STATES DISTRICT JUDGE
ORDER - April 23, 1991, Filed
For the reasons stated in the accompanying Memorandum, it is this 23rd day of April, 1991, hereby
ORDERED: that plaintiffs' motion for summary judgment should be, and is hereby, GRANTED; and it is further
ORDERED: that the Commissioner's motion for summary judgment should be, and is hereby, DENIED; and it is further
ORDERED: that this case is remanded to the Board of Patent Appeals and Interferences for reconsideration of plaintiffs' motions to take testimony abroad and for extension of time for findings not inconsistent with this decision.
Louis F. Oberdorfer, UNITED STATES DISTRICT JUDGE