37 C.F.R. § 42.2

Definitions

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The following definitions apply to this part:

Affidavit means affidavit or declaration under § 1.68 of this chapter. A transcript of an ex parte deposition or a declaration under 28 U.S.C. 1746 may be used as an affidavit.

Board means the Patent Trial and Appeal Board. Board means a panel of the Board, or a member or employee acting with the authority of the Board, including:

(1) For petition decisions and interlocutory decisions, a Board member or employee acting with the authority of the Board.

(2) For final written decisions under 35 U.S.C. 135(d), 318(a), and 328(a), a panel of the Board.

Business day means a day other than a Saturday, Sunday, or Federal holiday within the District of Columbia.

Confidential information means trade secret or other confidential research, development, or commercial information.

Final means final for the purpose of judicial review to the extent available. A decision is final only if it disposes of all necessary issues with regard to the party seeking judicial review, and does not indicate that further action is required.

Hearing means consideration of the trial.

Involved means an application, patent, or claim that is the subject of the proceeding.

Judgment means a final written decision by the Board, or a termination of a proceeding.

Motion means a request for relief other than by petition.

Office means the United States Patent and Trademark Office.

Panel means at least three members of the Board.

Party means at least the petitioner and the patent owner and, in a derivation proceeding, any applicant or assignee of the involved application.

Petition is a request that a trial be instituted.

Petitioner means the party filing a petition requesting that a trial be instituted.

Preliminary Proceeding begins with the filing of a petition for instituting a trial and ends with a written decision as to whether a trial will be instituted.

Proceeding means a trial or preliminary proceeding.

Rehearing means reconsideration.

Trial means a contested case instituted by the Board based upon a petition. A trial begins with a written decision notifying the petitioner and patent owner of the institution of the trial. The term trial specifically includes a derivation proceeding under 35 U.S.C. 135; an inter partes review under Chapter 31 of title 35, United States Code; a post-grant review under Chapter 32 of title 35, United States Code; and a transitional business-method review under section 18 of the Leahy-Smith America Invents Act. Patent interferences are administered under part 41 and not under part 42 of this title, and therefore are not trials.

Notes of Decisions

Cited in 5 cases (2 in the last 5 years), 2015–2024 · leading case: Arthrex, Inc. v. Smith & Nephew, Inc.

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Arthrex, Inc. v. Smith & Nephew, Inc. (2018) cafc · cites it 6× “3 While the rules define “trial” as requiring “a contested case instituted by the Board based upon a petition,” 37 C.F.R. § 42.2 , the language of subsection 2 relating to remaining claims “in the trial” can be interpreted as meaning that there is no claim remaining for trial,…”

Intellectual Ventures II LLC v. Jpmorgan Chase & Co. (2015) cafc · cites it 4× “See 37 C.F.R. § 42.2 ; 77 Fed. Reg. 48756 . The PTO’s interpretation, however, is trumped by the clear language of the AIA.”

Global Equity Management (Sa) v. Ebay Inc. (2020) cafc “See 37 C.F.R. § 42.2 (defining “party” as “at least the petitioner and the patent owner”).”

CHOON'S DESIGN LLC v. WECOOL TOYS INC. (2023) njd “Zenacon, 2015 WL 539441 , at *15 (citing 37 C.F.R. § 42.2 ). Because Plaintiff did not disclaim Claim 8 in the context of any PTAB proceeding, and the PTAB never considered Claim 8, let alone issued an adverse judgment 8 The ’420 Patent appears to have been subject to two other…”

United Therapeutics Corporation v. Liquidia Technologies, Inc. (2024) cafc “§ 25 and 37 C.F.R. § 42.2 ). UTC asserted that statements lacking the required certifi- cations “forgo the guarantee of truthfulness imparted by a declarant’s acknowledgment of the possible Case: 22-2133 Document: 86 Page: 5 Filed: 06/27/2024 UNITED THERAPEUTICS CORPORATION v.”

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