Federal Circuit Overhauls Rules of Practice and Forms: Important Takeaways

Article co-written by Yuri Levin-Schwartz, Ph.D., a law clerk at MBHB.

Yesterday, the Federal Circuit issued extensive revisions to the 2019 Rules of Practice and also overhauled the vast majority of its required filing forms.  While all practitioners should take a comprehensive review of the new rules (which can be found here and apply to “all cases filed or pending on or after July 1, 2020, to the extent practicable”), a few of the most substantial and practical are provided below.

New Rules:

  • Federal Circuit Rule 25.1 (Privacy and Confidentiality of Filings):
    • New rule 25.1 notes that all filings will be presumed to be public, unless specially designated as confidential or filed under seal. Five years after filing, the Federal Circuit may also now “direct the parties to show cause why confidential filings (except those protected by statute) should not be unsealed and made available to the public.”  Cir. R. 25.1(a)(1). 
    • Under new rule 25.1, parties must also refrain from including, or at least redact, any personally identifiable information (PII) in any documents filed with the court (unless the party includes a statement of consent in the filing). Cir. R. 25.1(b).  Such PII includes “Social security numbers,” “Financial account numbers,” “Names of minors (use instead the minor’s initials),” “Dates of birth (use the year only),” and “Home addresses (use the city and state only).”  Id. 
    • Importantly, new rule 25.1 also limits each “motion, petition, response, reply, or brief” to “mark as confidential up to fifteen unique words (including numbers).” Cir. R. 25.1(d)(1)(A).  However, if the redactions are simply repeating redactions from one or more filings to which the filing is responding, those redactions do not count against the allotment for the responsive filing.  Fed. Cir. R. 25.1(d)(1)(D). 
    • New rule 25.1 also requires parties to file a non-confidential version of the brief that includes “adequate, general descriptor[s]” of the redacted words, numbers, or phrases over the redactions themselves (e.g., “dollar amount,” “number of items,” and “chemical name”). Cir. R. 25.1(e).  This requirement, however, does not apply to redactions in “exhibits, addenda, and appendices.”  Fed. Cir. R. 25.1(e)(1)(B).  

Example Amendments to Existing Rules:

  • Federal Circuit Rule 8 (Stay or Injunction Pending Appeal):
    • The Federal Circuit now requires any party seeking to file a Fed. Cir. R. 8 motion to “notify the Clerk’s Office as soon as possible.” Practice Notes to Rule 8.  Specifically, on “weekdays from 8:30 a.m. to 4:30 p.m. (Eastern Time),” parties should call “the Clerk’s Office at 202-275-8055,” and for any emergency filings outside of the normal operating hours, parties should call “call 202-275-8049 and email emergencyfilings@cafc.uscourts.gov.” 
  • Federal Circuit Rule 25(c)(3) (Paper Copies of Electronic Filings):
    • Amended rule 25(c)(3) removes the requirement for filing paper copies of electronic filings, except “as ordered by the court” and for “petitions for panel rehearing,” Fed. Cir. R. 25(c)(3)(B), “en banc or combined petitions,” Fed. Cir. R. 25(c)(3)(C), “briefs and appendices in en banc cases,” Fed. Cir. R. 25(c)(3)(D), “confidential versions” of confidential filings with the court, Fed. Cir. R. 25(c)(3)(E), and “corrected versions” of corrected filings with the court, Fed. Cir. R. 25(c)(3)(F).
  • Federal Circuit Rule 25(e)(1) (Proof of Service for Electronic Filings):
    • Amended rule 25(e)(1) removes the requirement for filing a proof of service for any filing “served on all parties through the court’s electronic filing system.” Cir. R. 25(e)(1).  This does not apply to filings that require paper or physical filings.  Fed. Cir. R. 25(e)(2).
  • Federal Circuit Rule 25(g) (Electronic Signature for Electronic Filings):
    • Amended rule 25(g) clarifies that electronic signatures on electronic filings must consist of either: “(1) the printed name of the individual preceded by the mark ‘/s/’ entered on the signature line or (2) an electronic signature from a commercial provider that complies with the Electronic Signatures in Global and National Commerce Act (ESIGN) (15 U.S.C. § 7001).” Cir. R. 25(g)(1)(A).  
  • Federal Circuit Rule 28(j) (Prohibition of Duplicative Briefs in Related Cases):
    • Amended rule 28(j) clarifies that a party cannot file a duplicative brief in a related case and, even if a portion of the brief in the related case is duplicative, the “party must so advise the court at the beginning of the brief section containing the duplicative content.” Cir. R. 28(j). 
  • Federal Circuit Rule 34(e)(2) (Limitation on the Number of Arguing Counsel):
    • Amended rule 34 clarifies that, “[a]bsent leave of court requested at least seven (7) days before argument, no more than two (2) counsel may argue on behalf of each side and no more than one (1) counsel may argue on behalf of each party.” Cir. R. 34(e)(2) (emphasis added). 

Revised Filing Forms:

In issuing the extensive revisions to the 2019 Rules of Practice, the Federal Circuit almost completely overhauled its previous filing forms.  The new filing forms can be found here.  Of particular note is the new formatting and style of almost all of the filing forms, as well as separate forms for notices of appeal (depending on the type of appeal taken), and revised requirements in some of the most commonly-used forms, including: Form 8A (Entry of Appearance), Form 9 (Certificate of Interest), Form 24 (Bill of Costs, maximum rates for which have now been set and incorporated into the form itself), and Form 30 (Certificate of Service). 

Final Notes:

As we continue to digest these new rules and procedures over the next few weeks, we will follow up with further updates.  And, of course, if you ever have any questions in the meantime about these new rules (or anything else), feel free to reach out any time.

George “Trey” Lyons, III is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm’s Cannabis Practice Group. Mr. Lyons helps clients protect their intellectual property by providing advice and crafting innovative solutions for the acquisition and enforcement of patent, copyright, and trademark rights. He also litigates and appeals these matters when necessary. lyons@mbhb.com

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