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Proposed Rule Changes For IPR Appeals

On December 3, 2015, the Federal Circuit issued a notice of proposed changes to its Rules of Practice, many of which relate to IPR practice under the America Invents Act. Copies of the proposed revisions is found here and the court’s summary of the revisions can be found here. Some of the proposed changes impact the manner by which appeals from the PTAB are docketed and the handling of confidential information from the parties.

Specifically, under current Federal Circuit Rule 15(b)(1)(A), docketing at the Federal Circuit occurs when the PTO sends a copy of the notice of appeal and certified list to the Federal Circuit. Pursuant to current Federal Circuit Rule 17(b)(1), this must occur no later than 40 days after the notice of appeal is filed with the PTO. Thus, the current practice may result in some delay in docketing at the Federal Circuit. Under the proposed rule, docketing will take place upon receipt of the notice of appeal, which must be filed “simultaneously” at the PTO and Federal Circuit. The proposed revised Practice Notes accompanying Federal Circuit Rule 15 would clarify that “A petition for review or appeal is docketed when it is listed on the docket and assigned a docket number in CM/ECF.”

Another proposed change is to Federal Circuit Rule 31(a)(1)(B), which specifies the deadline for the appellant’s brief. Under the current rule, the appellant’s brief in an appeal from the PTO is due within 60 days of docketing at the Federal Circuit. The proposal would change this rule such that the appellant’s brief in an appeal of a PTAB decision would be due within 60 days after certified list is served pursuant to Federal Circuit Rule 17(c).

As a practical matter, the actual time for filing the appellant’s brief after filing a notice of appeal may not change substantially from current practice because the brief would not be due until 60 days after the PTO serves the certified list.

Parties appealing from a PTAB decision should be mindful that the Federal Circuit has its own set of rules relating to treatment of confidential information. One proposed rule change would specify that information on appeal will lose its confidential status if presented without a confidential label in a motion under Federal Circuit Rule 27 or a brief under Federal Circuit Rule 28.

Comments to the proposed rule changes may be submitted by close of business on Monday, January 4, 2016. Instructions for submitting comments are available at the Federal Circuit’s website

© 2020 Foley & Lardner LLPNational Law Review, Volume V, Number 342

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About this Author

George C. Beck, Foley Lardner, Patent Lawyer, Post Grant Proceedings Attorney,
Partner

George C. Beck is a partner and intellectual property lawyer with Foley & Lardner LLP. His practice extends to all aspects of intellectual property law. He currently focuses his practice on patent counseling, procurement and post-grant proceedings before the U.S. Patent & Trademark Office.

Mr. Beck has prepared and prosecuted patent applications in a variety of technical areas, including consumer electronics, liquid crystal display technology, telecommunications, semiconductor devices and manufacturing, semiconductor manufacturing test...

202.945.6014
Stephen B. Maebius Foley Lardner Intellectual Property Lawyer
Partner

Stephen (Steve) B. Maebius is a partner and intellectual property lawyer with Foley & Lardner LLP. He has led teams within Foley handling a variety of different kinds of IP work, including IP due diligence reviews, infringement and validity opinions, international portfolio management, licensing, litigation with parallel inter partes reviews, reexaminations and interferences, and pharmaceutical patent term extensions. Two IP transactions in which Mr. Maebius has participated were awarded "Deal of Distinction" status by the Licensing Executives Society. He is a former member of the firm’s Management Committee and former chair of the Intellectual Property Department. Prior to becoming a lawyer, he was a patent examiner in the Biotechnology Group of the U.S. Patent & Trademark Office.

Representative Matters

  • Lead counsel in successful defense of 6 Inter Partes Reviews filed by generic petitioners against a family of Orange Book-listed pharmaceutical patents covering a $1B controlled release product with parallel Hatch-Waxman litigation (IPR2013-00368, IPR2013-00371, and IPR2013-00372 - instituted but all claims found patentable in final written decision; IPR2015-01777, IPR2015-01778, and IPR2015-01782 - not instituted)
  • Prosecuted product-by-process patent listed in Orange Book that was upheld as valid and infringed in United Therapeutics v. Sandoz, 2014 U.S. Dist. LEXIS 121573 (D.N.J. Aug. 29, 2014)
  • Co-counsel for successful petitioner in Inter Partes Review filed against patent asserted in litigation against LED client (IPR2012-00005; decision affirmed on appeal)
  • Takeda Pharmaceutical Co. Ltd. v. John Doll (Fed. Cir. 2009) – co-counsel in precedential 2-1 decision remanding a double patenting rejection arising from patent reexamination (all claims confirmed to be patentable upon remand to the Patent Office)
  • Goldenberg & Immunomedics v. Cytogen & C.R. Bard (Fed. Cir. 2004) – co-counsel on appeal in reversal of summary judgment in client's favor in precedential 2-1 decision on doctrine of equivalents issue
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