Thomas v. Pippin

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BoxInterferences@uspto.gov 	Paper 99
Telephone: 571-272-4863 	Entered: 24 April 2013
UNITED STATES PATENT AND TRADEMARK OFFICE
PATENT TRIAL AND APPEAL BOARD
Patent Interference 105,801 (JL)
Technology Center 2100
C. DOUGLASS THOMAS and ALAN E. THOMAS
Junior Party
U.S. Patent 5,752,011
v.
JACK D. PIPPIN
Senior Party
Application 10/464,482
Before: JAMES DONALD SMITH, Chief Administrative Patent Judge,
JAMES T. MOORE, Deputy Chief Administrative Patent Judge,
FRED E. McKELVEY, JAMESON LEE, SALLY GARDNER LANE,
MICHAEL R. ZECHER and JUSTIN T. ARBES, Administrative Patent Judges.
McKELVEY, Administrative Patent Judge.
DECISION ON REHEARING
Pippin Miscellaneous Motion 1
1 	Introduction
2 	Thomas seeks rehearing of our decision entered 6 March 2013 (Paper 97)
3 	granting-in-part relief requested in Pippin Miscellaneous Motion 1 (Paper 80).
4 	37 CFR § 41.125(c). The Pippin Motion sought entry of an order by the PTAB

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accepting for filing in the interference file a request to convert the involved Pippin
application to a SIR (Statutory Invention Registration—35 U.S.C. § 157).
The Pippin SIR request accompanied the motion. Ex 1011.
Points raised on rehearing
Timeliness of Pippin Miscellaneous Motion 1
As Thomas did in the Opposition (Paper 95), in the Rehearing Request
Thomas repeats its argument that Pippin Miscellaneous Motion 1 was not timely
filed (Paper 98, pages 4-6).
Thomas maintains that ¶ 123.2 of our Standing Order requires a movant to
explain why a motion is timely. According to Thomas, Pippin made no showing of
timeliness. Accordingly, Pippin is said not to have complied with ¶ 123.2.
In seeking to file a SIR request, Pippin was seeking to exercise a then
available statutory remedy. See 35 U.S.C. § 157 (now repealed). Section 157 did
not specify a time for filing a SIR. Consistent with § 157 and the fact that filing a
SIR request makes sense only during pendency of an application, the Director’s
§ 157 implementing rule provides that an applicant “may request [conversion of an
application to a SIR], at any time during the pendency of [its] . . . application”.
37 CFR § 1.293 (Rule 293). Nothing in Rule 293 provides that an applicant
involved in an interference cannot file a SIR request after entry of a judgment in
the interference. Nor is there any provision of § 157 or Rule 293 which prohibits
filing a SIR request after an appeal from a final judgment in an interference. It is
true that no action by the USPTO on the Pippin SIR request can take place until
after the Director receives a Federal Circuit mandate. However, an inability of the
USPTO to act on the Pippin SIR request pending receipt of a mandate does not
mean the SIR request was not timely filed.
Pippin had a right under § 157 and Rule 293 to file its SIR request when it
did; accordingly, the excusable neglect provisions of 37 CFR §41.4(b)(2) do not
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apply. Further, assuming arguendo that excusable neglect is a consideration, we
would be inclined to invoke the interest of justice exception and hold that it is in
the interest of justice to permit the filing, particularly because a SIR request could
not have been filed after 16 March 2013.
Thomas seemingly is concerned with Pippin’s motive in filing its SIR
request when it did and argues that the motive is relevant to timeliness. Nothing in
§ 157 or Rule 293 requires an applicant to state the “reason” a SIR request is filed.
In our view, Pippin’s motive for filing its SIR request is not controlling on any
timeliness issue. As motive is not controlling, we see no need for Pippin to justify
why a SIR request should have been earlier filed.
Permission to file its SIR request
According to Thomas, all that Pippin requested in Pippin Miscellaneous
Motion 1 was “permission to file” a SIR request. Thomas acknowledges that
Ex 1011 accompanied Pippin Miscellaneous Motion 1. Paper 98, page 7:9-10.
But, further according to Thomas, “an exhibit to a motion in an interference
proceeding is not a filing of the exhibit itself.” Id. at page 7:10-11. Thomas
continues, “[t]hus a SIR request has not yet been filed in the interference
proceeding or elsewhere.” Id. at page 7:11-12.
Ex 1011 is a SIR request. It accompanied Pippin Miscellaneous Motion 1
and was filed in the USPTO (albeit in the interference file) when Pippin
Miscellaneous Motion 1 was filed. To say that Pippin did not file a SIR request in
the USPTO places form over substance. In this case, the Pippin SIR request was
properly addressed to, and filed with, the PTAB because the PTAB has jurisdiction
over the involved Pippin application.
Action on the Pippin SIR request cannot take place at this time. When a
Federal Circuit mandate is received, the PTAB can then transmit the filed SIR
request to the proper USPTO unit for processing and action.
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SIR relief available to Pippin
Thomas presents an argument that SIR relief is no longer available to Pippin.
Paper 98, pages 8-9. Two reasons are set out in support of the Thomas argument.
First, Thomas maintains that a SIR request has not been filed. For the
reasons addressed above, we disagree.
Second, “the requested relief of Pippin [Miscellaneous] [M]otion [1] is now
unavailable and thus [the relief requested in] Pippin’s motion is moot.” Paper 98,
page 8:11-12. Relying on 37 CFR § 1.4(b) (Rule 1.4(b)), Thomas reasons that the
Pippin SIR request had to be filed in the Pippin application—not the interference.
It is true that Rule 1.4(b) requires that “a separate copy of every paper to be filed in
a patent application . . . must be furnished for each file to which the paper
pertains.” However, when an interference has been declared, Rule 1.4(b) must be
read together with 37 CFR § 41.103 (Rule 41.103). Rule 41.103 vests the PTAB
with jurisdiction over an involved application. A party is not authorized to file a
paper in an involved application without leave of the PTAB. Our decision
granting-in-part Pippin Miscellaneous Motion 1 authorizes filing of the SIR
request in the interference. The SIR request will be added to the involved Pippin
application only upon receipt of the Federal Circuit mandate.
Consequently, the relief requested in Pippin Miscellaneous Motion 1 has not
been rendered moot due to the filing of the Pippin SIR request in the interference.
Thomas may be suggesting that, after 16 March 2013, the USPTO may
not be able to act on a SIR request filed prior to 16 March 2013. Paper 98,
page 8:21-23. We decline at this time to address that suggestion. Whether a SIR
request filed prior to 16 March 2013 can be acted upon by the USPTO after
16 March 2013 is a decision not yet ripe. Upon receipt of the Federal Circuit
mandate, the Director may elect to determine whether the repeal of § 157 is
retroactive or prospective only.
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Impact on Federal Circuit appeal
Introduction
Thomas maintains that filing the Pippin SIR request will have an impact on
its appeal to the Federal Circuit. Paper 98, pages 9-10. 	Accordingly, Thomas
“believes that the Board misapprehended the scope of [the Federal Circuit]
appeal.” Id. at page 9:19-20.
Factual background
We have had some difficulty understanding the precise basis for the position
taken by Thomas. We therefore set out the factual basis of our understanding.
There came a time during the interference when Thomas filed what is
referred to in an interference as a “motions list.” Paper 26. The purpose of the
motions list is to present a list of motions a party seeks authorization to file.
37 CFR § 41.120(a); Standing Order ¶ 104.2.1. After receipt of motions lists from
both parties, a conference call with a single judge is held to discuss what motions
should be authorized. Standing Order ¶ 104.2. Thereafter, an order is entered
indicating which listed motions are authorized.
Judge Lee was assigned to manage this particular interference. An “Order—
Authorizing Motions—Bd. R. 121” (Paper 31) was entered on 16 June 2011
following a conference call on 15 June 2011 with Judge Lee. The “Order” sets out
which motions requested by Thomas are authorized and which motions are “not
authorized.” The “Order” is a single-judge interlocutory order. A single-judge
order is not a panel order.
It appears that Thomas listed a motion for judgment based on alleged
unpatentability due to double patenting. Paper 26 (page 2: listed Motion 3; page 2:
listed contingent Motion 4; page 3: listed Motion 5). Judge Lee declined to
authorize any of Thomas listed Motions 3-5. Paper 31, pages 4-5.
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The “Order” is not an appealable order
Governing statutes provide that a party in an interference dissatisfied with a
decision of the PTAB (35 U.S.C. § 141) or a party dissatisfied with a decision of
the PTAB in an inter partes trademark proceeding (Sec. 21 of the Lanham Act;
15 U.S.C. § 1071(a)(1)) may appeal to the Federal Circuit. See also 28 U.S.C.
§ 1295(a)(4)(A) and (B). While the statutes do not use the language “final
decision,” the Federal Circuit sitting en banc has held that the word “decision” in
Sec. 21 means “final decision.” Copelands’ Enterprises, Inc. v. CNV, Inc., 887
F.2d 1065 (Fed. Cir. 1989). 	While Copelands’ concerned a PTAB inter partes
appeal under Sec. 21, the Copelands’ rationale applies with equal force to appeals
under § 141.
In its Rehearing Request, Thomas suggests that it may further challenge in
its appeal to the Federal Circuit “listed but denied preliminary motions.” Paper 98,
page 10:1. We assume that Thomas means “listed but not authorized preliminary
motions alleging unpatentability based on double patenting” because Thomas
states that “[d]ouble patenting of the involved Count has been challenged at the
Board level.” Id. at page 9-23: to page 10:1.
However, Thomas did not properly ask for review, or entry of a final
decision by the PTAB, of Judge Lee’s interlocutory decision not to authorize filing
of double patenting rejections. We take this opportunity to explain the procedure
within the agency for obtaining a final decision on a single-judge interlocutory
order.
Each interference is assigned to, and managed by, a single judge. 37 CFR
§§ 41.104(a) (PTAB may determine proper course of conduct in a proceeding) and
41.203(b) (interference declared by a judge); Standing Order, ¶ 2.1. The Standing
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Order is entered in every interference and is transmitted to the parties along with
the Declaration of the interference. See Papers 1 and 2.
A decision by a single judge is not a decision of a three-judge panel of the
PTAB and therefore is not a “final” decision within the meaning of § 141. In order
to make an “interlocutory” order a final decision of a three-judge panel of the
PTAB, a party must seek further review before a three-judge panel of the PTAB.
Otherwise, the PTAB will not have entered a PTAB decision which is “final for the
purposes of judicial review” within the meaning of the rules. 37 CFR § 41.2
(definition of “final”).
Why is review before a three-judge panel necessary? Judge Lee’s Order
declining to authorize motions based on double patenting became operative as of
the date it was entered (16 June 2011). The interference proceeded on the basis
that certain motions were not authorized. The Director has determined that there is
a public interest in timely resolution of interferences. 37 CFR § 41.200(c). By not
promptly seeking review within the PTAB, Thomas gave an impression to both
Pippin and the PTAB that it was not dissatisfied with Judge Lee’s decision. It is
for this reason that the rules require review, and entry of a decision, by a three-
judge panel before any decision entered in an interference becomes “final” for the
purpose of judicial review.
Under the circumstances, we do not see why the Federal Circuit would
consider an argument on appeal that Judge Lee erroneously declined to authorize
motions because there is no “final” PTAB decision to review. The rule seeks to
correct single-judge errors before a case becomes involved in judicial review. As
we do not understand how the scope of the appeal can be affected, we decline to
grant rehearing based on Thomas’ argument that filing the Pippin SIR request will
have some negative impact on the appeal. 	We continue to be of the view that the
mere filing of the Pippin SIR request is a ministerial action.
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Permission to petition
Thomas asks the PTAB to give permission to file a petition prior to
permitting Pippin to “submit [i.e., file,] its request for conversion to a SIR.”
Paper 95, page 10:4-5.
The mere filing of the Pippin SIR request in the interference is a procedural
matter. The rules do not authorize the filing of a petition in a contested case on a
procedural matter. 37 CFR § 41.3(b)(2). In interferences, former petition practice
under pre-1984 rules was replaced by motions practice.
Thomas has had an opportunity to seek administrative redress from our
decision granting-in-part Pippin Miscellaneous Motion 1 via its Rehearing
Request. In considering the Rehearing Request, we have not imposed the normal
restrictions applicable to requests for rehearing. Rather, we have considered the
Rehearing Request on its merits without limiting our consideration to
misapprehension of or overlooked facts or argument.
Decision
Upon consideration of the Thomas Rehearing Request (Paper 98), and for
the reasons given, it is
ORDERED that the Thomas Rehearing Request is denied.
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By Electronic Transmission:
To Junior Party Thomas:
Richard A. Neifeld, Esq.
Robert W. Hahl, Esq.
Neifeld IP Law, PC
rneifeld@neifeld.com
rhahl@neifeld.com
To Senior Party Pippin:
R. Danny Huntington, Esq.
William H. Hughet, Esq.
Rothwell, Figg, Ernst & Manbeck, PC
dhuntington@rothwellfigg.com
whughet@rothwellfigg.com
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