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April 23, 1991

HELMUT KOCHLER, et al., Plaintiffs,

Louis F. Oberdorfer, United States District Judge.

The opinion of the court was delivered by: OBERDORFER



 To succeed on his claim that he was the first inventor, Kochler was required to show that Mustonen "derived" the invention. More specifically, proof of derivation required Kochler to show (1) that he "conceived" the invention, and (2) that he communicated the invention to Mustonen. In early February, 1989, each party filed a preliminary statement with the Board. See Commissioner's Exhibit 1 at 6 & 11. On February 8, along with his preliminary statement, Mustonen filed a "motion for judgment" (similar to a summary judgment motion). Id. at 14. On March 23, 1989, Kochler submitted an opposition to that motion. Id. at 19. Derivation claims normally turn on factual issues and thus are rarely decided on preliminary motions. Testimony in a patent interference claim is introduced by deposition or affidavit. 37 C.F.R. § 1672. If an opposing party requests cross-examination, a witness must be deposed. § 1672(b). On October 13, 1989, the Examiner denied the preliminary motion and set a period for taking discovery and testimony. Commissioner's Exhibit 1 at 24. The administrative record contains no evidence and none was produced that either party had any input into the scheduling of the discovery and testimony deadlines. See id. The Examiner set plaintiffs' discovery cutoff date for November 6 and testimony cutoff date for December 6, 1989, less than two months away. On October 31, 1989, Kochler moved for a 30-day extension of the discovery and testimony periods, explaining that the parties were conducting settlement negotiations that could not have been conducted prior to the Commissioner's decision on the pretrial motion, requiring more time than permitted by the schedule. Commissioner's Exhibit 1 at 27. Mustonen opposed the motion. Id. at 29. On November 22, the Board denied the motion for extension on the technicality that Kochler had failed to certify in the motion that he had contacted Mustonen and whether Mustonen would oppose the motion, as required by 37 C.F.R. § 1.637(b). Id. at 33.

 On December 6, the last day for taking testimony, Kochler filed three pleadings. First, he designated a new lead attorney. Id. at 34. Second, he renewed his motion for extension of time (including the certification previously omitted), explaining that, though settlement negotiations were no longer ongoing, the new attorney, who began working with the firm representing Kochler on November 1, 1989, needed more time to get up to speed on the case. Id. at 37. Third, Kochler filed a motion for leave to take testimony abroad or in the alternative for an extension of the time to take discovery. Id. at 39. That motion, as required by 37 C.F.R. § 1.684, identified six witnesses from whom testimony was sought and described the substance of their testimony. Kochler noted that all of the six witnesses resided in Switzerland and that it would be difficult for them to travel here for testimony. Kochler further noted in that motion that one witness was very busy and had been difficult to contact and that another witness did not want to leave his pregnant wife and two children.

 The Examiner's decision, issued on December 21, 1989, stated:

To the extent that the [motion for extension] is a renewed motion it is denied. Kochler's belief that a decision to seek settlement could not reasonably have been taken prior to the Decision on Preliminary Motions of October 13, 1989 is totally inadequate to support the motion. Kochler's belief is of no import here. A showing of facts, accounting for the entire testimony period given Kochler and establishing that Kochler could not have taken his testimony in the period provided, has not been made with the renewed motion. The press of other business, client imposed delay and the fact that an attorney has a foreign client are not accepted as reasons for delay.
To the extent that Kochler's paper is a new motion, it is denied. 37 C.F.R. 1.645(a). That associate powers of attorney were granted November 29, 1989 is not a satisfactory showing of facts in accord with the requirements set forth in the preceding paragraph. At best, the grant of associate powers involves client imposed delay in the taking of testimony.
The motion to take testimony abroad is denied. Whereas the motion was filed on the last day of Kochler's testimony period, he has no remaining time within which to take his testimony. Kochler has not submitted facts in excuse of his failure to present his motion earlier so as to leave himself time within which to take the testimony abroad. A party who waits to the end of a period set for completion of certain action to merely begin such action does so at his own peril. It is expected by the Commissioner that interferences be completed within a two year period and practice such as being engaged in by Kochler will not be allowed to frustrate such expectation.

 Commissioner's Exhibit 1 at 54 (emphasis in original).

 After denying Kochler's motions, the Board, pursuant to regulations, ordered Kochler to show cause why judgment should not be issued against him. Kochler petitioned the Commissioner for review of the Examiner's decision and moved to vacate the order to show cause and to set a testimony period, arguing that his interpretation of Rules 648 and 645 were reasonable. Kochler's new attorney stated in an affidavit that he began reviewing the case on November 15, that contacting the witnesses and preparing the motion to take testimony abroad took some time, and that he acted in good faith throughout. The Board nonetheless issued judgment for Mustonen. ...

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