(a) Order of consideration. The Board may take up petitions or motions for decisions in any order, may grant, deny, or dismiss any petition or motion, and may enter any appropriate order.
(b) Interlocutory decisions. A decision on a motion without a judgment is not final for the purposes of judicial review. If a decision is not a panel decision, the party may request that a panel rehear the decision. When rehearing a non-panel decision, a panel will review the decision for an abuse of discretion. A panel decision on an issue will govern the trial.
(c) Petition decisions. A decision by the Board on whether to institute a trial is final and nonappealable. A party may request rehearing on a decision by the Board on whether to institute a trial pursuant to paragraph (d) of this section. When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.
(d) Rehearing. A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply, or a sur-reply. A request for rehearing does not toll times for taking action. Any request must be filed:
(1) Within 14 days of the entry of a non-final decision or a decision to institute a trial as to at least one ground of unpatentability asserted in the petition; or
(2) Within 30 days of the entry of a final decision or a decision not to institute a trial.
[77 FR 48669, Aug. 14, 2012, as amended at 80 FR 28565, May 19, 2015; 85 FR 79129, Dec. 9, 2020]
Notes of Decisions
Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., 839 F.3d 1382 (Fed. Cir. 2016).
· cites it 3× “In a request for rehearing, the petitioner argued that the Board had erred by applying a “preponderance of the evidence” standard as opposed to an "abuse of discretion” standard as required by 37 C.F.R. § 42.71 (c) for reviewing requests for rehearing.”
Gtnx, Inc. v. Inttra, Inc., 789 F.3d 1309 (Fed. Cir. 2015).
· cites it 3× “After INTTRA filed the authorized motion, GTNX opposed, arguing that INTTRA had waived the § 325(a)(1) objection by not presenting it earlier, either before institution or within the 14 days allowed by the rule giving a right to seek reconsideration, 37 C.F.R. § 42.71 (d). Id.…”
In Re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016).
“The PTO argues that the differences between Alpha and Lehr are irrelevant to this appeal, and that, regardless, “the proper time for Magnum to challenge the Board’s actions would have been in a Request for Rehearing of the Institution Decision under 37 C.F.R. § 42.71 (c).”…”
Thryv, Inc. v. Click-To-Call Tech., LP, 140 S. Ct. 1367 (2020).
“See § 318(a); 37 CFR §§ 42.71 - 42.73. In any event, the Board is obligated to render a final-and judicially reviewable-decision within a year.”
Btg Int'l Ltd. v. Amneal Pharm. LLC, 923 F.3d 1063 (Fed. Cir. 2019).
“30135-51; see also 37 C.F.R. § 42.71 (d) (2016) ("A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the [PTAB].”
HP Inc. v. MPHJ Tech. Inv.., LLC, 817 F.3d 1339 (Fed. Cir. 2016).
“See 37 C.F.R. § 42.71 . After institution, MPHJ filed a response, HP filed a reply, and the Board held an oral hearing.”
Medtronic, Inc. v. Teleflex Innovations S.A.R.L., 70 F.4th 1331 (Fed. Cir. 2023).
“5 Teleflex contends Medtronic forfeited various argu- ments by failing to raise them in its Requests for Director Rehearing made pursuant to 37 C.F.R. § 42.71 (d), which requires the petitioning party to “specifically identify all matters the party believes the Board…”
Intellectual Ventures II LLC v. Ericsson Inc., 686 F. App'x 900 (Fed. Cir. 2017).
“37 C.F.R. § 42.71 (d)(2). It did not. Given the continuous focus on “an indication of an operating bandwidth” before and during oral arguments and Intellectual Ventures’ opportunity to seek a sur-reply or rehearing, we find no due process violation.”
Medtronic, Inc. v. Teleflex Innovations S.A.R.L., 69 F.4th 1341 (Fed. Cir. 2023).
“A system comprising: a guide catheter configured to be advance- able through a main blood vessel to a posi- tion adjacent to an ostium of a coronary artery, the guide catheter having a lumen extending from a hemostatic valve at a 6 Teleflex contends Medtronic forfeited various…”
— 37 C.F.R. § 42.71(d)(1) — 1 case
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