LeVeen v. Edwards

Informative decision only: persuasive authority, not binding precedent. When a party seeks review at final hearing of an interlocutory decision, it may not change the thrust of the arguments it made to the administrative patent judge, and using the final hearing brief as a pretext to raise new, independent arguments on a matter not previously presented is sanctionable, even if the arguments are not frivolous. The Board declined to impose compensatory attorney fees here and instead gave notice to practitioners. No prior precedent directly addressed this issue in the text; the Board cited none on the point. For the opposing party in an interference, the decision means a final hearing review of an interlocutory ruling should be confined to the reasons and rationale actually litigated, and shifted arguments can be answered as improper. For the party seeking review, new counsel cannot restart the dispute from the beginning, and a changed argument risks a sanction such as compensatory attorney fees, here withheld only as an "abundance of fairness" warning. The Board relied on Hockerson-Halberstadt v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999), for that "abundance of fairness" notice, not as binding authority on the untimeliness rule itself. LEGAL TEST OR STANDARD: No multi-factor test. The Board treated as sanctionable, independent of frivolousness, using a final hearing review of an interlocutory decision as a pretext to submit new and independent arguments about a separate matter not previously raised before the Administrative Patent Judge. The arguments must bear a reasonable relationship to the propriety of the interlocutory decision's finding. TRIGGERING FACTS: Edwards sought final hearing review of an APJ interlocutory decision on miscellaneous motion 29 and preliminary motion 28, alleging abuse of discretion. Its brief argued 37 CFR 1.4(b), 37 CFR 1.48(b) and insufficient notice of inventorship change, which did not track the reasons for relief in its motions or the rationale of the decision. Edwards had changed counsel after the APJ decision, which did not excuse the change. KEY QUOTE: "That is not acceptable and is sanctionable without regard to whether the new arguments are frivolous." (Paper 351, p. 3) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board cited Hockerson-Halberstadt v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999), only for providing an abundance of fairness. PRACTICE TIP: When seeking final hearing review of an interlocutory order, argue only the reasons for relief presented in the original motion and attack the rationale of the decision actually rendered. Do not use new counsel's fresh theories, because the Board will treat them as sanctionable.