Charlton v. Rosenstein

Judge Torczon joins in Part B(3) of the opinion, which is binding	1
precedent of the Trial Section; Judge Torczon otherwise did not participate
in deciding the request for reconsideration.
The opinion in support of the decision being
entered today is binding precedent of the Trial Section
Paper 147
Filed by: Fred E. McKelvey
Senior Administrative Patent Judge
Box Interference Entered
Washington, D.C. 20231 22 May 2000
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
DAVID E. CHARLTON,
Junior Party,
(Application 08/465,675),
v.
ROBERT W. ROSENSTEIN,
Senior Party
(Patent 5,591,645
Reissue Application 09/167,028).
_______________
Patent Interference 104,148
_______________
Before: McKELVEY, Senior Administrative Patent Judge, and
SCHAFER, LEE and TORCZON, Administrative Patent Judges.	1
McKELVEY, Senior Administrative Patent Judge.
MEMORANDUM OPINION and ORDER
(Decision on Rosenstein request for reconsideration)

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A. Introduction
Rosenstein has filed ROSENSTEIN REQUEST FOR RECONSIDERATION
(Paper 137) seeking reconsideration of portions of our MEMORANDUM
OPINION and ORDER--decision on preliminary and other motions
(Paper 127) entered 8 March 2000. Charlton was invited to
respond (Paper 138) and has timely filed a response (Paper 140).
B. Discussion
1.
Rosenstein seeks reconsideration of that part of our
decision on preliminary motions which
(1) granted Charlton Preliminary Motion 1 and
(2) denied Rosenstein Preliminary Motion 7.
2.
Charlton opposes, raising three issues. Specifically,
Charlton argues that the request for reconsideration
(1) is untimely;
(2) raises new issues; and
(3) should be denied on the merits.

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3.
a. Rules
The rules authorize a party to file a request for
reconsideration of a decision on preliminary motions. 37 CFR
§ 1.640(c). The party must file the request for reconsideration
within 14 days of the date after entry of the decision sought to
be reconsidered. Id.
The rules, however, do not preclude the board from
reconsidering, sua sponte, at any time any order entered in the
interference. Stated in other terms, a tribunal has inherent
authority unless precluded by its rules to reconsider orders
entered in cases before it while the case is before the tribunal.
b. Facts
In this interference, a MEMORANDUM OPINION and ORDER
deciding preliminary motions was entered on 8 March 2000
(Paper 127).
The time for either party to request reconsideration under
the 14-day limit of Rule 640(c) expired on 22 March 2000.
In a communication entered on 3 April 2000 (Paper 134), the
board authorized the parties to file requests for reconsideration
if they be so advised.
A time period of 14 days was set for filing requests for
reconsideration.

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Rosenstein thereafter filed its request for reconsideration
on 17 April 2000 (Paper 137).
Charlton was invited to respond to the request in an ORDER
INVITING RESPONSE TO REQUEST FOR RECONSIDERATION entered 19 April
2000 (Paper 138).
Charlton timely filed an opposition on 5 May 2000
(Paper 140).
c. Discussion
A review of the facts outlined above demonstrates that the
Rosenstein request for reconsideration was filed at the express
authorization of the board. Had the board not authorized the
request for reconsideration, then Rosenstein's request for
reconsideration would have been untimely under the rules.
Compare Miller v. Chester, 13 USPQ2d 1387, 1388 col. 2 (Bd. Pat.
App. & Int. 1989). Thus, Rosenstein itself could not extend the
time for filing a request for reconsideration. Rosenstein is
bound by the 14-day time period of Rule 640(b). The rule,
however, does not preclude the board from exercising discretion
to authorize--at its request--the filing of a request for
reconsideration beyond the 14-day period. 37 CFR § 1.610(c).
As noted earlier, a tribunal has inherent authority to exercise
discretion to correct, sua sponte, at any time errors it
discovers in the record.

See Notice of the Chief Administrative Patent Judge of Nov. 6, 1998,	2
Interference Practice--New Procedures for Handling Interference Cases at the
Board of Patent Appeals and Interferences, 1217 Off. Gaz. Pat. & Tm. Office 18
(Dec. 1, 1998).
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There is a reason why discretion was exercised sua sponte
to give the parties an opportunity to file a request for
reconsideration beyond the 14-day period of Rule 640(c). To
fully appreciate the reason, a full understanding of certain
aspects of the rules is necessary.
Under the rules, an administrative patent judge (APJ) is
designated to handle an interference. 37 CFR § 1.610(a). The
APJ is authorized to enter all interlocutory orders. Id.
A decision on preliminary motions is an interlocutory order.
37 CFR § 1.601(q). A party is authorized to seek reconsideration
of an interlocutory order. 37 CFR § 1.640(c). The party may
also ask for review of an interlocutory order at final hearing
before a 3-judge panel. 37 CFR § 1.655.
The rules also authorize, at the discretion of the APJ
designated to handle an interference, entry of interlocutory
orders by a 3-judge motions panel. 37 CFR § 1.610(b). Since the
creation of the Trial Section, it has been standard practice to	2
have a 3-judge motions panel decide essentially all preliminary
motions. In the opinion of the Trial Section, entry of 3-judge
decisions is more efficient and establishes the law of the case.

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What is the difference between review at final hearing of a
single-judge interlocutory order versus a 3-judge interlocutory
order?
When a single-judge order is reviewed at final hearing by a
3-judge panel, it first must be determined whether the order
involves a substantive issue (e.g., patentability) or a
procedural issue (e.g., granting discovery). As to procedural
issues, the standard of review is abuse of discretion. 37 CFR
§ 1.655(a). On the other hand, as to a substantive issue, the
two additional judges have not previously cast a vote on the
issue and need not defer to the substantive decision of the
single-judge. In short, the two remaining judges consider the
substantive issue de novo and need not defer to the views of the
APJ who entered the interlocutory order.
When there is review at final hearing by a 3-judge panel of
an interlocutory order entered by a 3-judge panel (which will
almost always be the same three judges), the case takes on a
different posture. All three judges previously considered the
record and cast their votes. Any review at final hearing will be
on the same record and new arguments are not authorized. It
should be apparent that when a 3-judge panel reviews its previous
decision, the 3-judge panel, in effect, is reconsidering its
earlier decision. There is no de novo consideration. Hence, it
will be necessary for a party asking for review to establish that

In this interference, the priority case will be subject to	3
arbitration or priority proof under the rules depending on the outcome of
Carter-Wallace, Inc. v. Becton Dickinson and Company, Civil Action 00-1883
(KSH) in the U.S. District Court for the District of New Jersey, where
Charlton's assignee is seeking an order to enforce what it believes to be
an agreement to arbitrate the priority issues in this (and possibly other)
interferences.
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the 3-judge panel overlooked or misapprehended something in
entering the order sought to be reviewed.
The manifest benefit of a 3-judge decision on preliminary
motions is that the count becomes fixed, at least insofar as the
board is concerned, before priority testimony is presented.
Parties do not have to (1) guess whether the count might be
changed at final hearing and (2) present alternative priority
cases during the priority testimony phase to meet each possible
count which otherwise might be urged at final hearing.
In this case, based on activity in a related interference,
it came to the attention of the APJ designated to handle this
interference, that Rosenstein planned to, or could, seek review
of the 3-judge decision on preliminary motions at final hearing.
The parties were advised, however, that the review, in effect,
would be a request for reconsideration. The parties were also
advised that it would be better to correct any errors at this
time, rather than after a case on priority is presented. Since	3
the Trial Section is relatively new, it was believed that the
parties might not have fully understood the implications of a
3-judge interlocutory decision on preliminary motions, and in

Independent of the rational otherwise set forth in this opinion, we	4
are of the view that it is in the interest of justice to consider Rosenstein's
request for reconsideration even if it is considered to be belated. See
37 CFR § 1.645(b).
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particular its law of the case status insofar as the board is
concerned. Accordingly, the board sua sponte set a time for
filing requests for reconsideration.4
For the reasons given, we hold that the Rosenstein request
for reconsideration is timely filed.
4.
We have considered Rosenstein's arguments in its request for
reconsideration, in light of Charlton's comments in opposition
thereto, and we conclude that Rosenstein has not shown that we
misapprehended or overlooked any fact or argument which would
cause us to change our decision or opinion. We find it
unnecessary to reach Charlton's argument that Rosenstein has
raised new issues in presenting its request for reconsideration.
C. Order
Upon consideration of the Rosenstein request for
reconsideration, and for the reasons given, it is
ORDERED that the Rosenstein request for reconsideration
is deemed to be timely filed.

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FURTHER ORDERED that the Rosenstein request for
reconsideration is otherwise denied.
______________________________
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
______________________________)
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
) BOARD OF PATENT
______________________________) APPEALS AND
JAMESON LEE ) INTERFERENCES
Administrative Patent Judge )
)
)
______________________________)
RICHARD TORCZON )
Administrative Patent Judge )