Thomas v. Pippin

Informative decision only: persuasive authority, not binding precedent. When a party in a declared interference files a request to convert its involved application to a SIR (35 U.S.C. § 157; 37 CFR § 1.293) as an exhibit to a motion, and the Board grants leave, the request is properly filed in the interference under 37 CFR § 41.103, its filing is a ministerial action, and the Board may defer action until the Federal Circuit mandate is received. A party seeking to make a single-judge interlocutory order reviewable on appeal must seek review before a three-judge panel of the PTAB, because only then is there a decision "final for the purposes of judicial review." No prior precedent directly addressed this issue in the text; the Board relied on the statutes and rules it cites. For the opposing party in an interference (Thomas), a SIR request filed after judgment and during a Federal Circuit appeal cannot be defeated as untimely or as filed in the wrong file, and the filer's motive is not controlling. For the applicant (Pippin), the request may be filed in the interference with PTAB leave and will be sent to the proper USPTO unit once the mandate is received. A party unhappy with a single-judge order, such as one not authorizing motions, must promptly seek three-judge panel review, or the Board sees no final PTAB decision for the Federal Circuit to review. The Board relied on the en banc Federal Circuit decision in Copelands' Enterprises, Inc. v. CNV, Inc., 887 F.2d 1065 (Fed. Cir. 1989), which held that "decision" means "final decision," and applied its rationale to appeals under § 141. LEGAL TEST OR STANDARD: Section 157 set no filing time, and Rule 293 lets an applicant request conversion "at any time during the pendency of [its] . . . application". Rule 1.4(b) is read together with Rule 41.103, which vests the PTAB with jurisdiction over an involved application, so a paper may be filed in the application only with PTAB leave. A single-judge order is not a final decision under § 141 unless a three-judge panel reviews it (37 CFR § 41.2, definition of "final"). TRIGGERING FACTS: Pippin, senior party, filed Miscellaneous Motion 1 with the SIR request as Ex 1011 after judgment and while an appeal to the Federal Circuit was pending. The Board granted it in part. Thomas argued untimeliness, that only permission to file was sought, mootness under Rule 1.4(b), and an adverse effect on its appeal. Thomas never sought three-judge panel review of Judge Lee's order not authorizing its double patenting motions (Paper 31). KEY QUOTE: "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." (Paper 99, p. 7) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed Copelands' Enterprises, Inc. v. CNV, Inc., 887 F.2d 1065 (Fed. Cir. 1989), and extended its rationale to appeals under § 141. PRACTICE TIP: If you are dissatisfied with a single-judge interlocutory order in an interference, promptly ask for review by a three-judge panel of the PTAB. Do not rely on raising the issue for the first time at the Federal Circuit. Do not seek a petition on a purely procedural matter, since 37 CFR § 41.3(b)(2) does not authorize one.