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.
Id.
The USPTO’s responsive brief is due on Friday, and so I expect the Federal Circuit to decide this motion quickly.
It is not necessarily that “This dual role creates an inherent tension.” As the Sup. Ct. held not long ago the PTO Director should get to reconsider and have the final word on her agencies decisions, not just the 3 APJs on the PTAB decision. Hence, the Director is not obligated to defend all APJ decisions at the Fed. Cir., and this is not the first time a Director has directed his or her solicitors to not do so.
“As the Sup. Ct. held not long ago the PTO Director should get to reconsider and have the final word on her agencies decisions…”
I don’t think anybody disputes that. What is in dispute is WHEN the PTO Director should get to reconsider and have the final word on their agency’s decision.
Well, there is no dispute as to what was done (the Ends reached), but that certainly does not mean that such Means to those Ends are above dispute.
In law (especially in law), the Ends do not justify the Means.
But here the Director IS defending the APJs’ decision and is NOT “directing … her solicitors not to do so.”
As Prof. Crouch pointedly said in his post: “On point, the Agency has not admitted any errors it made during the process, [and] it has not conceded any point of law or fact, or identified anything that was not sufficiently briefed[.]” All the Director/Agency has said is that it wants “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.” While that might seem to the uncareful reader to leave a theoretical possibility that the Agency might not defend the result reached by the APJs, I’ve got news for you — that theoretical possibility is approximately exactly zero. And that makes it not at all like the hypothetical case that you posit in your comment. The Office is not admitting error. It has decided it prefers to have its second thoughts be set forth in the decision that is being appealed, NOT in its brief defending that decision — and all this after the Agency got a good look at the applicant’s principal brief before the Federal Circuit. That’s a pretty darn good way to tilt the playing field in your favor on appeal! Literally go back in time and rewrite history, after it looks like things are going to turn out badly for you! The protagonists in AVENGERS:ENDGAME would be proud.
The unfairness of that notion to the applicant here would be just ridiculous. We have a system under which caselaw is made by adverse presentations in real cases where both sides are given a fair chance to win. That’s the system, and this sort of shenanigans makes a complete mockery of the adversary system. The Agency knew the rules and expectations it faced, and now it wants a do-over no private party ever gets just because it’s the Government and it wants it — something it would never extend to any applicant before it, ever. If the Agency wants to clearly and thoroughly expresses the Agency’s view on the application of the case law to this important area of technology, it can publish a Director’s memorandum — instead of sticking it to this applicant who played by the rules and spent a lot of opportunity cost doing it. This motion should be denied.
Agreed.
“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.”
Ah, but this isn’t the 1988 Federal Circuit. Remand should not be granted, but likely will.
“this isn’t the 1988 Federal Circuit”
So very true.
This one has been submitted to much more Supreme Court fire-hosing (without the gumption to fire back).
“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.”
Gee, ya think?
“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.”
Never forget that it is the position of the “career” officials at the PTO that they are entitled to get it wrong as many times as they want. Or can.
Never forget that it is the position of the “career” officials at the PTO that they are entitled to get it wrong as many times as they want. Or can.
+1
This case hits too close to home, and I’ll leave it at that. My prediction is that the Federal Circuit grants the motion.
Two points:
1) The USPTO has had a fine and fair chance to get this right the first time. The idea that they want now to pull it back from appeal to get a second chance is really a bit precious.
2) What is the big deal about getting overturned on appeal? So the USPTO was legally wrong when they said that 112(a) requires a description of the “equivalents” in an MPF claim. Big deal. There will now be a precedent clarifying that this is legally incorrect, which will be a service to future generations who might be tempted to make the same error. It is not as if they cut of one of the Director’s fingers every time the USPTO is reversed on appeal at the CAFC.
“)”
More flailing by Greg – but at least he – alone among the Sprint Left – has ventured even a hidden c1ue as to which side in the split of Sprint Left he leans toward in the Israel-Hamas conflict. The rest have been utterly silent.
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