11/24/2009 11:10:59 AM EST
How Detailed Does Your List of Proposed Motions Have to Be?
ARTICLE: Introduction
In Gholz, A Critique of Recent Opinions in Patent Interferences, 89 JPTOS 1 (2007) §X.E.3, "A Proposed Motions List Must Be Complete, but It Needn't Be Precise," I wrote:
Some of the APJs are cracking down vigorously on the tendency of some practitioners to file motions that expand upon the motions listed in their list of proposed motions without obtaining advance authorization to do so.
Since then, there have been a number of related developments.
Karim v. Jobson
Karim v. Jobson, 82 USPQ2d 1018 (PTOBPAI 2006) (non-precedential) (opinion by SAPJ McKelvey for a panel that also consisted of APJs Torczon and Tierney), continues this trend.
After the scheduling conference call, Jobson had moved for leave to file two additional substantive motions. In an unusually stinging opinion, the panel turned Jobson down--on two separate and independent grounds.
First, there was no evidence (in the form of declarations or documents) supporting various material allegations concerning why the motions in question hadn't been proposed in Jobson's list of proposed motions. According to the panel:
Because Jobson did not present any evidence in support of some of its material factual allegations which are legitimately contested by Karim, and since the relief Jobson requests is bottomed on those allegations, it follows that Jobson has failed to present a record which would justify the relief it requests.
Second, and more substantively, the allegations contained in the motion were found to be woefully deficient even if they had been proven. Jobson's principal "excuse" for not having listed the two additional motions in its list of proposed motions was that it had not "conducted its first meeting with its technical expert in this proceeding" until after the scheduling conference. That "excuse" clearly infuriated the SAPJ. After setting forth a very helpful (but non-exhaustive) list of eleven factors to be considered in deciding whether or not to grant such motions, the opinion finds that each factor was either neutral or weighed against Jobson. That discussion can be summarized as follows:
A motions list is not an evolving document which can be expanded at the whim of party . . . .
(footnotes omitted)