Does the PTO have Authority to Regulate Briefing before the Federal Circuit?

by Dennis Crouch

Normally, a notice of appeal filed in federal appellate court does not include details on what particular issues are being appealed. That comes later in the appellant’s opening brief.  

One exception is found in R. 44 of the Federal Rules of Appellate Procedure (FRAP).  R. 44 requires notice of any Constitutional Challenge of a Federal or State statute.  This must be provided “immediately upon the filing of the record or as soon as the question is raised in the court of appeals.”  That constitutional challenge notice is then sent over to the US Attorney General (or respective state counterpart) who may want to intervene to defend the statute. Depending upon a few factors, the constitutional challenge notice may be due prior to the opening brief. This type of certification was provided in all the Arthrex-style challenges of PTAB appointments.

A second exception that is patent-law-specific is found in within the set of rules and regulations promulgated by the USPTO. 37 C.F.R. 90.2(a)(3)(ii).  The rules require that the notice of appeal of any IPR, CBM, or Post-Grant Review “provide sufficient information to allow the Director to determine whether to exercise the right to intervene in the appeal pursuant to 35 U.S.C. 143, and it must be served as provided in § 42.6(e) of this title.”  An example of this type of notice can be seen in the following notice of appeal. [ExampleNoticetoPTO].

My thought: It seems to me that the USPTO does not possess authority to require an applicant include certain elements within its notice of appeal.  The contents of the notice of appeal are governed by statutory law along with the rules of appellate procedure and the Federal Circuit’s own local rules of procedure.  None of those authorities require or suggest that the notice-of-appeal include the substantive elements required by the USPTO.  The US Courts are generally in control of determining their own procedures, and the PTO has no authority to amend those procedures for its own convenience.

Does this matter? In general, this is a rather small point, and the PTO’s approach is a practical and efficient solution. The key issues though are timing and strategy.  The PTO rule forces the appellant to figure out its appellate position 30-days early and also to disclose that position to the opposing party 30-days early.

7 thoughts on “Does the PTO have Authority to Regulate Briefing before the Federal Circuit?

  1. 5

    A few thoughts on this. It’s an interesting issue, but I don’t think it matters in practice.

    1. I don’t think these issue statements bind the parties or have consequences attached to them. I’ve seen a lot of issue statements that are just generic (whether the PTAB erred in invalidating claims x, y, and z), or explicitly open-ended and tentative (“issues we may raise may include…”). When the AIA was still new, the PTO may have found these statements useful to the extent they indicated that the appellant intended to make broad arguments on appeal that would affect other cases. Lately, they’re probably mostly useless. The PTO may want to consider getting rid of this requirement.

    2. A lot of courts of appeals require parties to file statements of issues before the opening brief is due. (See, e.g., the Federal Circuit’s docketing statement form, the Federal Circuit’s Rule 30(b)(1)(B), FRAP 10(b)(3)(A) (if less than the full transcript is ordered), FRAP 24(a)(1)(C) (IFP application). As with the PTAB notice of appeal, these issue statements–both in the Federal Circuit and in other circuits–are often broad and generic and aren’t treated as binding the parties. I think they’re meant to help the clerk’s office staff and to facilitate assembling the relevant parts of the lower tribunal record; they’re not treated as required disclosures of strategy.

    3. In light of waiver and forfeiture rules, there usually isn’t much mystery around what will be in an appellant’s opening brief.

    4. In light of (1)-(3), I’m not sure that it’s fair to say “The PTO rule forces the appellant to figure out its appellate position 30-days early and also to disclose that position to the opposing party 30-days early.” The requirement is minimal, has no real teeth, and isn’t much different from other dislosures you’ll probably have to make to the court of appeals a week or two later anyway.

    5. For the argument that the PTO lacks authority to require a statement of issues in connection with the notice of appeal, I think it depends on what consequences the PTO would attach. I think the PTO would be wrong (and offensively so) if it started treating the issue statement requirement as jurisdictional and arguing to the Federal Circuit that it lacks jurisdiction to proceed with appeals where the appellant’s statement was absent or deficient. But as long as it’s not doing that, I don’t see the problem. The PTO can require parties before it to do all sorts of formal things like use the electronic filing system, serve certain entities, format documents a particular way, make certain disclosures, etc. I don’t think they’re forbidden from requiring appealing parties to file a statement of issues, and from treating failures the same way they treat other failures to file required paperwork.

  2. 4

    Former rules 37 CFR 1.301-1.304 (until September 16, 2012) did not have this added requirement. It merely required that the notice of appeal to the CAFC be given to the Director and that it must be served, as provided elsewhere in the regulations.

    The rulemaking (proposed rule 77 FR 6879, Feb. 9, 2012; final rule 77FR48677, August 14, 2012) does not appear to have been entirely upfront with the public. It reads in part (pages 48626-7):

    “Current §§ 1.301 through 1.304, which relate to rules of practice in patent cases, are removed from part 1 and relocated to part 90. Paraphrasing of the statute in those rules is eliminated in the new rules in favor of directing the reader to the relevant statutory provisions. This change avoids the need for the Office to amend the rules when statutory amendments are made. It also avoids undue public reliance on the Office’s paraphrase of statutory text. The rules in part 90 better state the existing practice and are not intended to change the existing practice except as explicitly provided. …

    Section 90.2 requires parties filing an appeal under 35 U.S.C. 141, initiating a civil action pursuant to 35 U.S.C. 146, or electing under 35 U.S.C. 141(d) to proceed under 35 U.S.C. 146, to file a copy of the notice of appeal, complaint, or notice of election, respectively, with the Board in the appropriate manner provided in § 41.10(a), 41.10(b), or 42.6(b). The rule also requires that a complaint under 35 U.S.C. 146 be filed with the Board no later than five business days after filing the complaint in district court. These requirements ensure that the Board is aware of such proceedings and prevent further action within the Office consistent with the Board decision at issue in the appeal or civil action. Section 90.2 further requires that the complaint be filed with the Office pursuant to § 104.2 within the same five business day time period. That requirement similarly assures that the Office has adequate notice of the pending judicial review proceeding.”

    No mention seems to have been made of the added requirement to “provide sufficient information to allow the Director to determine whether to exercise the right to intervene in the appeal pursuant to 35 U.S.C. 143, and it must be served as provided in § 42.6(e) of this title.” as part of its explanation of the rulemaking (except, of course, the actual rule itself). As such, no comments challenging that added requirement were offered by any member of the public.

  3. 2

    If this is a rule only about appeals from PTO proceedings, and for providing notice for the PTO, not the Court, and while the PTO still has jurisdiction, I do not see the legal problem?
    If the required timing of this 37 C.F.R. 90.2(a)(3)(ii) rule is unfair or burdensome in general, and easily changed, then it would be a good candidate for a proposed rule change. [My limited experience has been that this does not usually happen unless well-explained rule problems are made directly to the correct and responsible PTO officials.]

  4. 1

    Why is the USPTO so set on interfering in private disputes, and usually in on the side seeking to invalidate an issued patent? They have one job. Yet they are wrecking our civil justice system in order to do the opposite.

    1. 1.1

      and usually in on the side seeking to invalidate an issued patent?

      Cue the (absent) discussion on duties of a FranchisOR to a FranchisEE in the ‘realm of Public Franchises.

      (or is that only apt for those aspects that one side would find convenient?)

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