37 C.F.R. § 41.121

Motions

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(a) Types of motions—(1) Substantive motions. Consistent with the notice of requested relief, if any, and to the extent the Board authorizes, a party may file a motion:

(i) To redefine the scope of the contested case,

(ii) To change benefit accorded for the contested subject matter, or

(iii) For judgment in the contested case.

(2) Responsive motions. The Board may authorize a party to file a motion to amend or add a claim, to change inventorship, or otherwise to cure a defect raised in a notice of requested relief or in a substantive motion.

(3) Miscellaneous motions. Any request for relief other than a substantive or responsive motion must be filed as a miscellaneous motion.

(b) Burden of proof. The party filing the motion has the burden of proof to establish that it is entitled to the requested relief.

(i) A statement of the precise relief requested,

(ii) A statement of material facts (see paragraph (d) of this section), and

(iii) A full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence and the governing law, rules, and precedent.

(2) Compliance with rules. Where a rule in part 1 of this title ordinarily governs the relief sought, the motion must make any showings required under that rule in addition to any showings required in this part.

(3) The Board may order additional showings or explanations as a condition for filing a motion.

(d) Statement of material facts. (1) Each material fact shall be set forth as a separate numbered sentence with specific citations to the portions of the record that support the fact.

(2) The Board may require that the statement of material facts be submitted as a separate paper.

(e) Claim charts. Claim charts must be used in support of any paper requiring the comparison of a claim to something else, such as another claim, prior art, or a specification. Claim charts must accompany the paper as an appendix. Claim charts are not a substitute for appropriate argument and explanation in the paper.

(f) The Board may order briefing on any issue that could be raised by motion.

Notes of Decisions

Cited in 16 cases, 2006–2017 · leading case: Aqua Products, Inc. v. Matal

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Aqua Products, Inc. v. Matal (2017) cafc · cites it 2× “20(c) is nearly identical to 37 C.F.R. § 41.121 (b) (2010), a pre-existing provision govern- ing the few pre-AIA contested cases, such as interfer- ences.”

Cytologic, Inc. v. Biopheresis Gmbh (2010) dcd · cites it 6× “As the Court understands Cytologic’s argument, it does not dispute the Board’s holding pursuant to 37 C.F.R. § 41.121 (b) that Cytologic, “[a]s the moving party, [ ] bears the burden of proving that [Biopheresis]’s involved claims 23-41 are barred under U.”

Bamberg v. Dalvey (2016) cafc · cites it 2× “See 37 C.F.R. § 41.121 (b) (“The party filing the motion has the burden of proof to establish that it is entitled to the requested relief.”

Harari v. Lee (2011) cafc “See 37 C.F.R. § 41.121 (b). Compliance with the written description requirement is a question of fact that we review under the substantial evidence standard.”

Spine v. BIEDERMANN MOTECH GMBH (2010) dcd · cites it 2× “37 C.F.R. § 41.121 (b). For one claim to be patentably distinct from another, the first claim must not be obvious based on the subject matter of the second claim.”

Enzo Therapeutics, Inc. v. Yeda Research & Development Co. (2007) vaed · cites it 3× “First is the “Substantive Motion Pursuant to 37 C.F.R. § 41.121 (a)(1) to be Granted Benefit of an Earlier Application” (“Motion for Benefit”), 4 wherein Enzo requested that the Board revive the '215 application and accord Enzo the April 17, 1981, filing date on the ground that…”

Human Genome Sciences, Inc. v. Amgen, Inc. (2008) ded “37 C.F.R. § 41.121 (a)(1). “To be sufficient, a motion must provide a showing, supported with appropriate evidence, such that, if *468 unrebutted, it would justify the.”

Pioneer Hi-Bred International, Inc. v. Monsanto Technology LLC (2012) cafc “See 37 C.F.R. § 41.121 (b) (2010) (Board Rule 121(b)).”

Enzo Therapeutics, Inc. v. Yeda Research & Development Co. of the Weizmann Institute of Science (2006) vaed “On July 1, 2005, Enzo filed a motion pursuant to 37 C.F.R. § 41.121 (a)(1) ask *583 ing the Board to revive the '215 application and to accord Enzo the benefit of the April 17,1981, filing date on the basis that abandonment in 1984 was unintentional (“Motion for Benefit”).”

AlphaVax, Inc. v. Novartis Vaccines & Diagnostics, Inc. (2010) mad “37 C.F.R. § 41.121 (b). Concerning the first argument, the Board determined that Avax primarily relied on a paper subsequently published by the '694 Patent inventors that allegedly indicates that the alphavirus generated according to Example 7B4 of the '796 Application were not…”

Human Genome Sciences, Inc. v. Genentech, Inc. (2008) ded “37 C.F.R. § 41.121 (a)(1). “To be sufficient, a motion must provide a showing, supported with appropriate evidence, such that, if unrebutted, it would justify the relief sought.”

Troy v. Samson Manufacturing Corp. (2013) mad “Samson claims that Troy has waived his right to raise this issue before the Court, arguing that Troy was required to challenge the Board’s determination of priority by filing a substantive motion in the interference proceeding but failed to do so. Resp. Def. Samson Mfg. Corp. Pl.”

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