Charlton v. Rosenstein

When a three-judge motions panel has decided preliminary motions in an interference, review at final hearing is effectively reconsideration of the panel's own decision on the same record, so a party seeking review must show the panel overlooked or misapprehended something, with no de novo consideration and no new arguments. By contrast, a single-judge interlocutory order is reviewed at final hearing for abuse of discretion if procedural, and de novo by the two added judges if substantive. The Board may also sua sponte authorize a reconsideration request beyond the 14-day period of 37 CFR § 1.640(c). No prior precedent directly addressed this issue; the decision cites Miller v. Chester only for the point that an unauthorized late request would be untimely. A party opposing a three-judge preliminary-motions decision cannot count on a fresh look at final hearing and must show an overlooked or misapprehended point, so the Board treats the count as fixed before priority testimony. A party that prevailed on preliminary motions gains law-of-the-case stability and need not present alternative priority cases for possible count changes. The decision relies on the rules (37 CFR §§ 1.601(q), 1.610, 1.640(c), 1.645(b), 1.655) and cites no Federal Circuit, CCPA or Supreme Court authority. LEGAL TEST OR STANDARD: For a single-judge order reviewed at final hearing by three judges, first decide whether it is substantive (e.g., patentability) or procedural (e.g., granting discovery). Procedural issues get abuse of discretion review under 37 CFR § 1.655(a). Substantive issues are considered de novo by the two additional judges. For a three-judge order, the same record applies, new arguments are not authorized, there is no de novo consideration, and the requesting party must establish that the panel overlooked or misapprehended something. TRIGGERING FACTS: A three-judge motions panel (under 37 CFR § 1.610(b)) decided preliminary motions on 8 March 2000. The 14-day period under Rule 640(c) expired 22 March 2000. The Board sua sponte authorized reconsideration requests on 3 April 2000, and Rosenstein filed on 17 April 2000. Without that authorization the request would have been untimely, and the party itself could not extend the time. KEY QUOTE: "It should be apparent that when a 3-judge panel reviews its previous decision, the 3-judge panel, in effect, is reconsidering its earlier decision." (Paper 147, p. 6) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The decision cites Miller v. Chester, 13 USPQ2d 1387, 1388 col. 2 (Bd. Pat. App. & Int. 1989), by compare cite, for the point that an unauthorized request would be untimely. PRACTICE TIP: Treat a three-judge decision on preliminary motions as the Board's law of the case. File a timely request for reconsideration within 14 days under 37 CFR § 1.640(c), identifying specifically what the panel overlooked or misapprehended, and do not rely on final hearing for a fresh look.