Bronshtein v. Roser

Informative decision only: persuasive authority, not binding precedent. The only point the text supports is that when a motion to amend claims under 37 CFR § 1.633(i) is contingent on the grant of a preliminary motion for judgment of no interference-in-fact under 37 CFR § 1.633(b), and that predicate motion is denied, the Board dismisses the contingent motion to amend without prejudice as moot. The text is only a short order that defers its reasoning to a later opinion not provided, so no fuller rule on motions to amend can be stated from it. The text does not name any prior Board precedent it overrules or modifies, and the order states no rule beyond its disposition. The party seeking judgment of no interference-in-fact (Bronshtein, junior party) lost that motion with prejudice. The opposing party (Roser, senior party) had its contingent motion to amend dismissed without prejudice as moot, so its amendment was never reached on the merits. The order cites no Federal Circuit, CCPA or Supreme Court authority; the fuller reasoning behind the designation is in a later opinion that is not in this text. LEGAL TEST OR STANDARD: None is stated in this order. The panel gave no findings or rationale and said a memorandum opinion explaining its rationale would follow in due course. The only operative disposition shown is that the contingent motion to amend was dismissed as moot once the motion on which it depended was denied. TRIGGERING FACTS: Bronshtein Preliminary Motion 1 (Paper 22) sought judgment of no interference-in-fact under 37 CFR § 1.633(b). Roser Preliminary Motion 1 (Paper 30) sought to present amended claims under 37 CFR § 1.633(i), contingent on Bronshtein Preliminary Motion 1 being granted. The first motion was denied, so the contingent motion was dismissed without prejudice as moot. KEY QUOTE: "FURTHER ORDERED that Roser Preliminary Motion 1 is dismissed without prejudice as moot." (Paper 54, p. 2) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: If you file a motion to amend claims that is contingent on another preliminary motion, expect dismissal as moot, without prejudice, if the predicate motion is denied. Do not rely on this order alone for any broader rule; read the later opinion the panel said would follow, and note that reconsideration was due 14 days after that opinion was entered.