March 2016 Amendments to the Federal Circuit Rules of Practice

31 March 2016 IP Litigation Current Blog

On March 30, the United States Court of Appeals for the Federal Circuit published amended Federal Circuit Rules of Practice. Below is a summary of the most significant changes that are likely to impact your practice before the Court, but if you are filing something after these rules go into place, it is important to read the applicable rules yourself to get the details.

First, the new rules apply to all appeals docketed on or after April 1, 2016. That’s right, you have less than 48 hours until your filings must follow the amended rules.

Second, many of the amendments simply recognize technology changes and legal changes. For example, Rule 3 no longer references docket cards. And, terminology has been changed to include reference to the Patent Trial and Appeal Board.

There are two areas of significant change. One involves Fed. Cir. Rule 25: Filing and Service. The rule has been entirely re-written. The other involves a new approach to material subject to a protective order, and new limitations on confidential marking. Fed. Cir. Rules 11, 17, 28 and 30 relate to those subjects.

Fed. Circ. Rule 25

The three primary things to remember about Rule 25 are: ECF, pdf, and pay.gov. Unless otherwise noted, all documents should be submitted through ECF, in pdf format. All fees are to be paid through pay.gov.

Paper copies of briefs, appendices, petitions for rehearing and petitions for hearing en banc are to be provided after the filing of the documents through ECF. Each type of filing has its own requirements for the number of paper documents to be filed and the deadline for filing the paper documents after the ECF filing. Take note that some of the deadlines are as little as 2 days. Failure to timely file the paper documents may result in the dismissal of the appeal or in the case proceeding solely on the properly filed briefs, even if the ECF version was filed on time.

Helpfully, the Practice Notes on Rule 25 provide various ways to contact the Clerk’s Office, along with its hours of operation, just in case you have questions.

Fed. Cir. Rules 11, 17, 27, 28 and 30

These amendments relate to the confidentiality of material that is subject to a protective order. They coordinate the confidentiality status of the record (Rule 11), attachments to motions (Rule 27), briefs (Rule 28), and the appendix (Rule 30). The amendments do not change the rules regarding when material subject to a protective order can lose its protection:

Material shall lose its status as subject to a protective order, however, if and when it has been removed from protected status under Federal Circuit Rule 30(h)(1)(B) or has appeared, without being marked confidential, in motion papers under Federal Circuit Rule 27 or a brief under Federal Circuit Rule 28 in this court. Federal Circuit Rules 27(m)(1) and 28(d)(1) tightly limit confidentiality markings in a motion, response, or reply and in a brief.

Rule 27(m), relating to Motions Containing Material Subject to a Protective Order, is revised to provide a fifteen word limit on the number of words marked confidential in a motion, response or reply. Repeating the marked words in the same motion, response or reply does not add to the count towards the fifteen word limit. A party may file a motion to treat more than fifteen words confidential, and must establish that the additional markings are both appropriate and necessary pursuant to a statute, administrative regulation or court rule. The motion is to be made at the same time as with the filing of the underlying motion, response or reply.

Rule 28(d)(5) is a new subsection that requires the parties to attempt to agree on confidential markings.

Fed. Cir. Rule 26

Confirming what most already believed, the new Rule 26 (c) recognizes that service by e-mail through ECF is delivered when transmitted, and three additional days are not added to the time to file a responsive document.

Fed. Cir. Rule 28 Practice Notes

The Practice Notes to Rule 28 permit a party to include the language of a patent or claim at issue on the inside of the front cover of the brief. The language is not included in the type-volume limitations so long as the same language is included in the brief.

Fed. Cir. Rule 47.4

This amendment requires the identification of parent corporations of the parties in the Certificate of Interest.

Fed. Cir. Rule 47.11

This amendment deleted the requirement that the Clerk of Court notify the parties of a change in panel composition.

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