In this Analysis, Charles Gholz argues that even though requests for rehearing or reconsideration are seldom successful, the Federal Circuit’s strange opinion in Pivonka v. Axelrod, 2009 U.S. App. LEXIS 3050 (Fed. Cir. Feb. 19, 2009) has given interference practitioners a reason to request rehearing (no matter how low the probability of success) of adverse decisions in interlocutory orders. Mr. Gholz writes:
What the BPAI [Board of Patent Appeals and Interferences] Did in Pivonka v. Axelrod
In Pivonka v. Axelrod, Axelrod had suggested the interference, and it had asked that it be designated as the senior party based on entitlement to the filing date of an earlier application. However, when the interference was declared, it was not given the benefit of that filing date, and it was designated as the junior party. Moreover, according to the court's unenlightening opinion, "The Board [sua sponte] granted Axelrod twenty days from the date of its order to submit evidence satisfying § 41.202(d) . . . ."
As anyone who has ever prepared a § 41.202(d) showing knows, twenty days is an absurdly short period of time to prepare such a showing in most cases! However "Axelrod submitted evidence during the allotted time, which the Board accepted as sufficient under § 41.202(d)."
Then, during the first phase of the interference, Axelrod submitted a motion for a judgment that all of Pivonka's claims were unpatentable over certain references. The panel denied Axelrod's motion, but it sua sua sponte "set forth its own view that . . . [all of the claims in Axelrod's] patent are obvious [over Axelrod's primary reference and a new secondary reference] and ordered Pivonka to file a response showing why a judgment of invalidity [sic; unpatentability] should not be entered against . . . [all of its claims]." After considering Pivonka's response and Axelrod's reply, the panel entered judgment against Pivonka.
What the Court Did and Said in Pivonka v. Axelrod
On appeal, Pivonka argued (1) "that the Board abused its discretion by permitting the interference to proceed in the first place" and (2) "that the Board did not properly apply the law during its obviousness analysis." The court's disposition of the second issue is of no special interest to the interference bar, but its disposition of the first issue definitely is.
In a nutshell, the court ducked the issue--by asserting that Pivonka has [sic] waived that issue by not objecting to the orders authorizing the interference to go forward.
(footnotes omitted)