LeVeen v. Edwards

Informative decision only: persuasive authority, not binding precedent. When an APJ has ordered that a party's principal brief at final hearing refer only to arguments and facts presented in its original motion (read to include the opposition and reply), and the party's brief nonetheless presents new arguments, the Board may strike the brief as not entitled to consideration, because review of an APJ's decision for abuse of discretion does not put the parties back where they were before the motions were filed. The Board may also, as here, order the offending party to show cause why compensatory attorney fees should not be imposed under 37 CFR § 1.616(a)(5) for new and frivolous arguments. No prior precedent directly addressed this issue in the text; the Board cites only Keebler for the abuse-of-discretion principle. For the party opposing the review request (here LeVeen), the decision means it need not rebut arguments and facts never presented to the APJ, since it had no opportunity to answer them. For the party seeking review (here Edwards), the decision means a brief that disregards the APJ's instruction can be stricken entirely, which left Edwards with no considered brief, and that it faces a show-cause order on compensatory attorney fees for new and frivolous arguments; changing counsel does not permit a fresh start. The Board relied on Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 9 USPQ2d 1736 (Fed. Cir. 1989), as a cf. citation for the point that under abuse-of-discretion review the board need not divine all possible afterthoughts of counsel asserted for the first time on review. LEGAL TEST OR STANDARD: Review of an APJ's decision at final hearing is for abuse of discretion. An APJ cannot abuse discretion on arguments or facts the party did not present and develop in its motion papers. Compliance with the APJ's instruction limiting the brief to arguments and facts in the original motion (including the opposition and reply) is required. Non-compliance supports striking the brief, and new and frivolous arguments support a show-cause order on sanctions under 37 CFR § 1.616(a)(5). TRIGGERING FACTS: Edwards sought review of a single judge decision (Paper No. 290) denying its late miscellaneous motion 29 and, alternatively, preliminary motion 28. The APJ had ordered that Edwards' principal brief refer only to arguments made and facts presented in its original motion and not include new arguments or new presentation of pertinent facts. Edwards' brief at final hearing raised, for the first time, arguments under 37 CFR § 1.4(b), 37 CFR § 1.48(b) and § 1.634, and insufficient notice that Fox had changed from inventor to corroborator. Edwards had also changed counsel after the APJ's decision. KEY QUOTE: "Final hearing for the purpose of reviewing an APJ s decision for abuse of discretion does not operate to put the parties back where they were before the motions were filed such that they could start afresh with a new set of facts and arguments." (Paper No. 348, p. 8) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board cited Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 1388, 9 USPQ2d 1736, 1738 (Fed. Cir. 1989) with a cf. signal. PRACTICE TIP: At final hearing in an interference, confine your brief to the arguments and facts presented in the motion, opposition and reply that the APJ decided, and explain why the APJ's treatment of those points was an abuse of discretion. Do not use a brief to raise new theories, even if new counsel has taken over, or you risk the brief being stricken and a fee-sanction show-cause order.