In the pending Federal Circuit appeal In re Xencor, the USPTO Director recently filed an opposed motion asking the Court to remand the case back to the PTAB. The motion comes long after briefing has commenced and just days before the Director’s response brief was due, after already receiving an extension of time. Xencor has opposed the request, citing prejudice and lack of justification. This post examines the parties’ arguments.
As background, Xencor’s biotech patent application contains both Jepson and means-plus-function claims that were rejected by the PTAB on questionable written description grounds. The examiner had initially issued written description rejections, but withdrew the rejections during the PTAB appeal briefing. The PTAB then reinstated the rejections based upon its authority to find new grounds for rejection, and then reaffirmed its position on request for rehearing. Xencor then appealed to the Federal Circuit.
In its request for remand, the USPTO noted that it plans to “to issue a revised decision that clearly and thoroughly expresses the Agency’s view on the application of the case law to this important area of technology.” On point, the Agency has not admitted any errors it made during the process, it has not conceded any point of law or fact, or identified anything that was not sufficiently briefed — and so Xencor has opposed the motion for remand.
An odd feature of agency appeals is that the agency (here, the USPTO) is both the appellee and the tribunal itself. This dual role creates an inherent tension – the agency is defending its own decision while also being responsible for carrying out further review. In this case, the USPTO’s request for a remand seems likely to be an attempt to avoid an adverse appellate ruling by bolstering the agency’s position with a better reasoned opinion. But the ordinary approach here is to recognize that the agency already had its chance to issue a final decision, and that the USPTO should deal with the consequences on appeal rather than get a second (third) bite at the apple. The Federal Circuit will now need to assess whether remand is appropriate so late in the process, or whether the case is ripe for a decision on the current record.
But the Director can fully express the Agency’s view in her response brief on appeal. Remand is unnecessary for that purpose. _See id._ (“so the board can reevaluate the bases of its decision” is an insufficient justification).
Federal Circuit Rule 27(f) provides guidance on motions for remand:
A motion to . . . remand should be made as soon as the grounds for the motion are known. After the appellant . . . has filed its principal brief, the argument supporting . . . remand should be made in the response brief of the appellee.
Fed. Cir. R. 27(f). This provision does not provide much guidance, but there are some prior cases where the Federal circuit has appeared to generously grant remand if the USPTO requested an opportunity to reconsider its prior decision.
Remand “is usually appropriate” to allow an agency to reconsider its previous position.
Marin Partners v. Heaven Hill Distilleries, Inc., No. 2023-1624, 2023 WL 5286458, at *1 (Fed. Cir. Aug. 17, 2023) quoting dicta from SKF USA Inc. v. United States, 254 F.3d 1022, 1029 (Fed. Cir. 2001) (attempting to spell out a taxonomy of agency remand situations).
A key early case from the Federal Circuit on point is In re Hester, 838 F.2d 1193, 1194 (Fed. Cir. 1988). In that case the Federal Circuit denied the Patent Office motion for remand that was filed a few days before the merits brief was due and the appellant had already expended the time, money, and effort to file his brief. In addition to early filing, the court provided some examples of when remand is appropriate:
It is not the intent of the court to discourage the filing of any and all motions to remand. Parties may agree that remand is desirable, intervening law may warrant a remand, the Board may wish to concede to some or all of appellant’s demands, or other circumstances may be present that would indicate that remand is appropriate. However, none of those circumstances is present here.
The USPTO’s responsive brief is due on Friday, and so I expect the Federal Circuit to decide this motion quickly.