testimony of Dr. Youle and Dr. Vitetta to make out Glaxo’s case for it nor would it be fair to
Cabilly for us to do so. Leveen v. Edwards, 57 USPQ2d at 1413 (BPAI (ITS) 2000) (“[t]he
board will not engage in “role-shifting” by becoming counsel for a party and turning the
interference into a contested case between (1) the party and the board, on the one hand, versus
(2) the opponent, on the other hand”).
We also note that the subject matter of the interference is technically complex making it
especially important that each party point to specific portions of the evidence that support its
arguments. While Glaxo points to some particular portions of the testimony of Dr. Youle in its
reply 3, for example, (FFs 50, 58), it is not appropriate for Glaxo to make out its prima facie case
in its reply.19 Glaxo has not directed us to specific evidence sufficient to support Glaxo’s
arguments that Cabilly’s ‘611 claims are unpatentable for lack of written description and Glaxo’s
arguments that Cabilly should not be accorded priority benefit of its ‘419 application. We do not
consider the unsupported attorney arguments made in Glaxo preliminary motions 3 and 5 as
evidence in the interference. See Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595, 44
USPQ2d 1609, 1615 (Fed. Cir. 1997). Accordingly, Glaxo has not set forth a prima facie case.
19 ¶ 31 of the Notice Declaring Interference states that (Paper 1 at 27-28):
As provided by the rules, no new issues are to be raised in replies.
A new issue will be deemed to be raised in a reply if the reply refers to
new evidence which is necessary to make out a prima facie case for the relief
requested in, and/or which could have been included with, the motion.
A reply which is longer than a motion or an opposition probably raises
new issues.
If a reply raises any new issue or belatedly relies upon evidence which
should have been earlier presented, the entire reply and belatedly relied upon
evidence will not be considered. The board will not attempt to sort out
legitimate reply from improper reply.
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