Proposed Rule Changes For IPR Appeals

08 December 2015 PTAB Trial Insights Blog

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 AIA. 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.

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