Authors: Justin A. Hendrix and Jacob A. Schroeder
Editor: Elizabeth D. Ferrill
To handle the potentially crushing wave of IPR appeals, the Federal Circuit has adopted two tools to manage its caseload—designating cases as companion cases and combining cases through consolidation. Due to the nature of IPR proceedings, the Patent Office frequently hears multiple individual cases that involve common claim construction or validity issues for related patents in the same family. To take advantage of these common issues, the Court often deems related cases as companion cases at the appeal stage, and sometimes combines them through consolidation.
By designating cases as companions—a practice the Court has used for quite some time in other contexts—the cases are assigned to the same three-judge panel. The same three judges, therefore, will hear all the related, or companion, appeals, thus promoting both efficiency and consistency. By contrast, through consolidation, the Court takes multiple related appeals and converts them into a single individual appeal. Once consolidated, the Court will receive a single set of briefs, preside over one oral argument, and issue only one decision—effectively treating multiple appeals as a single appeal. Through consolidation, the Court has significantly reduced the number of appeals from IPR decisions, effectively controlling the number of briefs it must review and the number of oral arguments over which it must preside. What is notable, however, is not merely that the Court uses consolidation to manage its caseload, but how the Court uses it.
Since the first appeal from an IPR decision in 2013 through the beginning of 2015, it was typically left to the parties to move to consolidate appeals when they so desired, such as to reduce redundant briefing. In the Federal Circuit’s Rules of Practice, however, the Practice Notes accompanying Rule 12 broadly state that “appeals may be consolidated on motion or by the court sua sponte.” Starting around mid-2015, the Court began frequently doing just that—consolidating appeals sua sponte, often times on the day it sets the schedule.
If a party disagrees with the Court’s decision to consolidate, it has some options, including moving to deconsolidate, requesting an expanded page limit, and even requesting to consolidate more appeals than the Court originally ordered. While the Court has resisted requests to deconsolidate appeals that it has combined, it has been willing to grant expanded page limits in appropriate circumstances. It may even be willing to grant additional time at oral argument.
Depending on whether the wave of appeals ebbs or flows, the Court may find new procedural tools to employ, or may ease the way in which it uses consolidation. But for now, these tools appear to be giving the Court effective control over its caseload of IPR appeals.
 See, e.g., Motion to De-consolidate, Software Rights Archive, LLC v. Facebook, Inc., Nos. 15-1649, -1650, -1651(June 3, 2015) (No. 31); Motion to Consolidate and Increase the Briefing Word Limit, Cooper v. Square, Inc., Nos. 15-1925, -1942, -1943 (Sept. 10, 2015) (No. 14).
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