by Charles L. Gholz and John F. Presper
37 CFR 41.125(c)(5) says that a party has a right to request a panel rehearing of "a decision [that] is not a panel decision," not that, it will forfeit its right to seek judicial review of the decision! If the authors of 37 CFR 41.125 (who no doubt included Judge McKelvey) had intended 37 CFR 41.125(c)(5) to impose that result, they could have said so in the draft rule.
In Gholz, Request Rehearing!, 16 Intellectual Property Today No. 6 (2009) at page 14, Mr. Gholz wrote that, while requesting rehearing was ordinarily a waste of time for both the requester and the APJs: the Federal Circuit's strange opinion in Pivonka v. Axelrod, ___ Fed. Appx. ___, 2009 U.S.App.LEXIS 3050 (Fed. Cir. 2009) (non-precedential) (opinion by C.J. Prost for a panel that also consisted of Ch.C.J. Michel and C.J. Scholl), has given interference practitioners a reason to request rehearing (no matter how low the probability of success) of adverse decisions in interlocutory orders in interferences [an enhanced version of this opinion is available to lexis.com subscribers]. In Pivonka, the panel of the Federal Circuit ducked review of an interlocutory decision in an interference by asserting that the appellant had not requested rehearing of that decision. Mr. Gholz argued that the panel's decision made no sense because: The APJ's interlocutory decisions (whether they are the decisions of individual APJs or the decisions of panels of APJs) are supposed to be merged into the final judgment. In support of that assertion, Mr. Gholz cited Crown Packaging Technology, Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1311, 90 USPQ2d 1186, 1188 (Fed. Cir. 2009) [enhanced version], which is one of the opinions discussed in this article. Then, in Gholz and Presper, The Burdens of Proof and Persuasion in a 35 USC 146 Action, 20 Intellectual Property Today No. 8 (2013) at page 16, the authors of this article: note[d] that none of the appellate opinions discussed in...[that] article decides the question of the burden of persuasion faced by a party to a 35 USC 146 [an annotated version of this statute is available to lexis.com subscribers] action that is attacking the propriety of an interlocutory decision by a single APJ, such as a decision refusing to authorize the filing of a substantive motion. However, we cited (and quoted from) the opinion of a district court authored by a famous judge (Judge White of the Northern District of California) in which that judge wrote that "the applicable standard for judicial review...[of such decisions] is that set forth in the Administrative Procedure Act," under which "the court must set aside actions of that Board that are arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law, and set aside factual findings that are unsupported by substantial evidence." Judge White concluded, not that such decisions were unreviewable, but that "such decisions are reviewed for abuse of discretion." [footnotes omitted]
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Charles L. Gholz is a Partner in Oblon, Spivak, McClelland, Maier & Neustadt, LLP; Alexandria, Virginia. His direct dial telephone number is 703/412-6485, and his email address is firstname.lastname@example.org.
John F. Presper is a Senior Associate in Oblon, Spivak, McClelland, Maier & Neustadt, LLP; Alexandria, Virginia. My direct dial telephone number is 703/412-3536, and my email address is email@example.com.