Case: 17-1521
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`aflniteh étates QEuurt of gppealz
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`fur the jfemzral @Zircuit
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`ERICSSON INC., TELEFONAKTIEBOLAGET LM
`ERICSSON,
`Appellants,
`
`V.
`
`INTELLECTUAL VENTURES I LLC,
`Appellee
`
`2017-1521
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2015-
`01367.
`
`Decided: August 27, 2018
`
`STEVEN GARRETT SPEARS, Baker & Hostetler LLP,
`Houston, TX, argued for appellants. Also represented by
`GREGORY MATTHEW MCCLOSKEY, Cesari and McKenna,
`LLP, Boston, MA.
`
`BYRON LEROY PICKARD, Sterne Kessler Goldstein &
`Fox, PLLC, Washington, DC, argued for appellee. Also
`represented by LORI A. GORDON.
`
`Before REYNA, TARANTO, and CHEN, Circuit Judges.
`
`

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`ERICSSON INC. V. INTELLECTUAL VENTURES I LLC
`
`REYNA, Circuit Judge.
`
`Ericsson Inc. and Telefonaktiebolaget LM Ericsson
`appeal the final written decision of the U.S. Patent and
`Trademark Office’s Patent Trial and Appeal Board,
`finding that claims 1—3, 6—9, and 12—14 of U.S. Patent No.
`5,602,831 are not unpatentable under 35 U.S.C. §103.
`Because we conclude that the Board improperly did not
`consider portions of Ericsson’s Reply, we vacate and
`remand.
`
`I.
`
`THE ’831 PATENT
`
`Appellee Intellectual Ventures I LLC (“Intellectual
`Ventures”) owns U.S. Patent No. 5,602,831 (“the ’831
`patent”), entitled “Optimizing packet size to eliminate
`effects of reception nulls.” The ’831 patent expired on
`March 31, 2015.
`
`The ’831 patent is directed to increasing the reliability
`of a wireless communications system when a wireless
`receiver is moving by minimizing the. effects of burst
`errors that occur at the receiver.
`’831 patent, Abstract; id.
`col. 1 11. 5—8. The moving wireless communications devic-
`es disclosed in the ’831 patent transmit information via
`packets containing bits of information. Signal fading or
`signal drop-outs result in transmission errors in which
`some or all of the bits in the packet are not successfully
`received by the receiver. The ’831 patent refers to these
`transmission errors as “burst errors” or “nulls.”
`Id.
`
`col. 1 11. 23—29. Although nulls occur randomly, they can
`be predicted based on various signal drop characteristics,
`such as the speed the receiver is moving. For instance, at
`slow speeds, nulls are generally wider and the amount of
`time between nulls is longer, whereas at higher receiver
`speeds, the nulls are narrower and occur more frequently.
`See id. col. 2 11. 24—28.
`
`The ’831 patent describes various techniques in the
`prior art for reducing the effects of burst errors and nulls,
`
`

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`ERICSSON INC. V. INTELLECTUAL VENTURES I LLC
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`retransmission,
`including error correction techniques,
`transmitting over multiple frequencies, and using multi-
`ple transmitter stations in various locations.
`Id. col.
`1
`1. 35—col. 2 l. 11. The patent further notes that “ [a]nother
`technique for reducing the effects of burst errors involves
`interleaving multiple message packets
`together
`thus
`creating better burst error correction capabilities.”
`Id.
`col. 2 11. 4—6. Interleaving is a coding technique by which
`data is read into a two-dimensional register (e.g., columns
`of characters) column-by-column, and then read out of the
`register row-by-row. J .A. 4.
`Interleaving multiple pack-
`ets spreads out the effect of errors due to signal drops,
`such that any dropped signal will, at most, create only a
`loss of a small portion in each packet, rather than the loss
`of an entire packet. Regarding the prior art, the ’831
`patent notes that the efficacy of interleaving in reducing
`the effects of burst errors for portable receivers is limited
`when the size of the interleaved packet does not change:
`“transmitting a single interleaved packet size for varying
`signal drop-out conditions is not completely effective in
`minimizing burst error effects.” ’881 patent col. 2 11. 4—11.
`
`The ’831 patent discloses new methods of mitigating
`the effects of signal drops, specifically by encoding packets
`into packet blocks by interleaving the packets together
`into a register, and varying the number of packets encod-
`ed into each packet block according to signal drop charac-
`teristics, such as the speed at which the receiver is
`moving.
`Id. col. 2 11. 17—21, 34—48. Because of the inter-
`leaving, any burst errors are distributed between all
`packets in the packet block, which can then be decoded
`more easily. Id., Abstract; id. col. 7 11. 17—38. The ’831
`patent makes clear that the technique of “interleaving”
`was known in the art:
`
`Interleaving packets together is known in the
`art. However, varying the number of bytes in
`each packet interleaved together according to re-
`
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`ERICSSON INC. v. INTELLECTUAL VENTURES I LLC
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`ceiver speed is novel and provides substantial ad-
`vantages over existing interleaving techniques.
`
`the interleaving process
`Explaining further,
`discussed above increased the number of bytes in
`each packet successfully received by the receiver.
`However, if the speed of motion of the receiver
`changes, the signal drop-out characteristics also
`change as previously shown in FIGS. 3-5. Thus,
`the packet block size shown in FIG. 9 (9 packets)
`may not improve reception reliability at a new re-
`ceiver travel speed.
`
`To prevent more than one burst error (null)
`from occurring in any one packet block,
`the
`transmitter again adjusts the packet block size
`according to the new travel speed of the receiver.
`
`Id. col. 6 l. 42—col. 7 l. 26 (emphasis added).
`
`Claims 1 and 9 are the independent claims and, for
`purposes of this appeal, are illustrative:
`
`l. A method for transmitting a message packet to
`a receiver, comprising:
`
`identifying changes in signal drop-out characteris-
`tics each associated with the receiver;
`
`encoding packets into packet blocks;
`
`transmitting each packet block to the receiver;
`and
`
`varying the number of packets encoded in the
`packet block according to the changes in the sig-
`nal drop-out characteristics.
`
`9. A system for transmitting messages, compris-
`ing:
`
`

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`ERICSSON INC. V. INTELLECTUAL VENTURES I LLC
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`a receiver having a variable speed of motion, the
`receiver receiving packet blocks containing the
`messages;
`
`a transmitter for transmitting the packet blocks to
`the receiver; and
`
`an encoder for combining and varying the number
`of packets transmitted in each of the packet blocks
`according to the variable speed of the receiver.
`
`Id. col. 811. 47—55, col. 911. 27—34.
`
`H. PRIOR ART
`
`A. Reed
`
`US. Patent No. 4,939,731 (“Reed”) describes a data
`transmission protocol in which data signals are transmit-
`ted as a data packet. Each packet includes one or more
`blocks of data, called “send blocks” or “S-blocks,” each
`
`encoded with an error correcting code, or “codeword.” The
`exact number of S-blocks within each data packet depends
`
`on the baud rate in use—i.e., as baud rate increases, the
`number of S-blocks increases, as shown in Figure 7 below:
`
`S-BLOEKS CHARACTERS
`300 HTS/S
`Elllllllla 354
`s—awcx
`150 BUS/S
`m 6
`S-BLOCK
`75 BUS/S
`E:[: 2
`S—BLOIK
`
`Ho]
`
`J .A. 906.
`
`The codewords are further divided into numbered
`
`“Repetition blocks,” referred to as R-blocks. R-blocks can
`be concatenated with additional codewords to create an
`
`S-block. Reed describes how, during transmission, a data
`
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`ERICSSON INC. V. INTELLECTUAL VENTURES I LLC
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`bit interleaving scheme is employed over each S-block.
`For instance, Figure 4 shows a diagram of a packet of
`data comprised of a plurality of concatenated S-blocks,
`each S-block being formed of a plurality of interleaved
`R-blocks:
`
`MCKET
`
`BIB/T
`SYNC
`
`"“1NTERLEAVING—"
`
`//Z-I-I
`ll-23
`
`fia4.
`
`25
`
`16x23
`=322
`
`36:23
`=322
`
`J .A. 904.
`
`Reed describes how “further protection against burst
`errors may be provided by interleaving two or more blocks
`of data within each packet of data so that should burst
`errors occur these will be spread equally over the inter-
`leaved blocks so that the blocks may nevertheless be
`recoverable.” Reed, col. 2 11. 62—68 (J .A. 907).
`
`B. Mahany
`
`US. Patent No. 5,425,051 (“Mahany”) describes a
`“Radio frequency communication network having adap-
`tive parameters,” and teaches that changing the size of
`data packets can reduce the amount of data loss caused
`by fluctuations in signal energy and signal fading in RF
`communication.
`
`III. PTAB PROCEEDING
`
`Appellants Ericsson Inc. & Telefonaktiebolaget LM
`Ericsson (collectively, “Ericsson”) petitioned for
`inter
`partes review of the ’831 patent on June 10, 2015. Alt-
`
`

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`hough the ’831 patent had expired prior to Ericsson’s
`Petition, Ericsson proposed constructions in the Petition
`for various terms under the broadest reasonable interpre-
`tation standard, rather than the standard elucidated in
`Phillips U. AWH Corp, 415 F.3d 1303 (Fed. Cir. 2005) (en
`banc).
`
`The Board instituted inter partes review of the ’831
`patent on two grounds: (1) that claims 1—3, 6, 7, 9 and 12—
`14 were likely obvious over Reed and Mahany, and (2)
`that claim 8 was likely obvious over Reed, Mahany, and
`Webb. Webb is not relevant to this appeal. J .A. 2, 19. In
`its Institution Decision, the Board concluded that inde-
`pendent claims 1 and 9, which recite “encoding packets
`into packet blocks” and an “encoder for combining and
`varying the number of packets transmitted in each of the
`packet blocks,” respectively, do not require interleaving,
`and that Intellectual Ventures did not explain in its
`Preliminary Response why the Board should construe
`“encode” as requiring interleaving.
`J.A. 35. The Board
`additionally construed the terms “interleaving portions of
`each of the packets together,” and “common portions of
`each message packet are interleaved together” in explain-
`ing why it did not institute review on dependent claims
`10, 11, and 15. Although neither party requested con-
`struction of these terms, the Board construed these terms
`under the broadest reasonable interpretation standard to
`require interleaving portions from each of the packets in
`the packet block together, but not interleaving within a
`packet.
`J.A. 30—31.
`In finding that Ericsson had not
`established a reasonable likelihood of success in showing
`claims 10 and 11 to be unpatentable over the combination
`of Reed and Mahany,
`the Board explained that Reed
`teaches interleaving R-blocks, which involves interleaving
`portions of the same packet together, and not a portion of
`a first packet with a portion of a second packet, as re-
`quired by the Board’s construction. The Board further
`found that S-blocks are concatenated, and not interleaved.
`
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`Intellectual Ventures argued
`Following institution,
`for the first time in its Response that the claims must be
`construed under Phillips because the patent expired prior
`to the filing of the present proceeding. J .A. 256. Intellec-
`tual Ventures proposed, and Ericsson did not dispute,
`that under the Phillips standard,
`the term “encoding
`packets into packet blocks” in claim 1 should be construed
`as “forming blocks by interleaving packets together,” and
`that claim 9’s “an encoder for combining. .
`.” limitation
`means “an encoder for forming blocks by interleaving
`packets together and varying the number of packets
`transmitted in each of the blocks.” J .A. 248. The adop-
`tion of these constructions would mean that both inde-
`
`limitation requiring the
`a
`include
`claims
`pendent
`formation of blocks by “interleaving packets together.”
`
`After adopting the new constructions, the Board “re-
`visit[ed] whether the combination of Reed and Mahany
`teaches ‘encoding packets into packet blocks,’ .
`.
`. and ‘an
`encoder for combining and varying the number of packets
`transmitted in each of the packet blocks.”’
`J.A. 13—14.
`Specifically, the Board focused on “whether the prior art
`teaches interleaving packets together
`to form packet
`blocks in a way that results in varying the number of
`packets encoded in the packet blocks.” J .A. 15.
`
`Ericsson’s Reply discussed how interleaving is known
`in the prior art,
`that Reed alone teaches interleaving
`packets together, and that Reed and Mahany together
`teach the “interleaving packets together” limitation.
`
`In the Final Written Decision, the Board found that
`Ericsson had not proven the challenged claims obvious in
`light of Reed and Mahany. The Board’s decision relied
`entirely on its conclusion that Reed taught only one type
`of interleaving, interleaving of R-blocks within an S-block
`(or a “packet,” in the nomenclature of the ’831 patent), as
`opposed to the interleaving of packets with other packets
`within a packet block (i.e., S-blocks with S-blocks) as‘
`
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`In characterizing the issue,
`required in the ’831 patent.
`the Board conceded that “the issue is not whether the
`
`general concept of interleaving was known in the prior
`art—it was.” J .A. 15. “Rather, the issue is whether the
`prior art teaches interleaving packets together to form
`packet blocks in a way that results in varying the number
`of packets encoded in the packet blocks.” Id.
`In conclud-
`ing that Reed did not teach this limitation,
`the Board
`rejected the portions of Ericsson’s Reply that argued that
`to a person of ordinary skill, given that
`interleaving
`packets together was known in the art, “[t]he difference
`between interleaving R-blocks together and interleaving
`S-blocks together is insubstantial at best,” holding that
`this was a new theory beyond the scope of a proper reply
`as defined in 37 C.F.R. § 42.23(b). The Board stated that
`the reply is “not an opportunity for Petitioner to identify,
`for the first time, new and different prior art elements
`that are alleged to satisfy the claim requirements,” and
`declined to consider pages 13—14 of Ericsson’s Reply. J .A.
`18—19. The Board then concluded that Reed taught only
`the interleaving of R-blocks with R-blocks, and thus did
`not
`teach the required interleaving of S-blocks with
`S-blocks disclosed in claim 1 of the ’831 patent. In light of
`its conclusion as to claim 1, the Board decided that Erics-
`son had not shown claims 1—3, 6—9, and 12—14 to be
`unpatentable. Ericsson appeals. We have jurisdiction
`under 28 U.S.C. § 1295(a)(4)(A).
`
`IV. DISCUSSION
`
`Obviousness is a question of law with underlying fac-
`tual findings relating to “the scope and content of the
`prior art, differences between the prior art and the claims
`at issue, the level of ordinary skill in the pertinent art,
`and any objective indicia of non-obviousnes.” Randall
`Mfg. U. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013); see
`Graham U. John Deere Co. of Kan. City, 383 US. 1, 17—18
`(1966). We review the Board’s underlying factual findings
`for substantial evidence and its legal conclusion on obvi-
`
`

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`U. Cellular Commc’ns
`ousness de novo. HTC Corp.
`Equip, LLC, 877 F.3d 1361, 1369 (Fed. Cir. 2017); In, re
`Mouttet, 686 F.3d 1322, 1330—31 (Fed. Cir. 2012). Deci-
`sions related to compliance with the Board’s procedures
`are reviewed for an abuse of discretion. Bilstad v. Waka-
`
`lopulos, 386 F.3d 1116, 1121 (Fed. Cir. 2004). “An abuse
`of discretion is found if the decision: (1) is clearly unrea-
`sonable, arbitrary, or fanciful; (2) is based on an errone-
`ous conclusion of law; (3) rests on clearly erroneous fact
`finding; or (4) involves a record that contains no evidence
`on which the Board could rationally base its decision.” Id.
`
`Under PTO regulations, the Board is entitled to strike
`arguments improperly raised for the first time in a reply.
`See 37 C.F.R. § 42.23(b) (“All arguments for the relief
`requested in a motion‘must be made in the motion. A
`reply may only respond to arguments raised in the corre-
`sponding opposition, patent owner preliminary response,
`or patent owner response”).
`
`Ericsson argued on pages 13 and 14 of its Reply that,
`given the admitted state of the art regarding interleaving
`disclosed in the ’831 patent, Reed’s teachings regarding
`interleaving rendered obvious the interleaving of packets
`described in the ’831 patent.
`Specifically,
`the Reply
`argued that
`“[t]he
`difference between interleaving
`R-blocks together and interleaving S-blocks together is
`insubstantial at best,” and that Reed “suggests that an
`added benefit would be obtained from interleaving larger
`data portions.”
`J.A. 325—26. The Board characterized
`this portion of Ericsson’s Reply as raising a new theory of
`obviousness, one that was not addressed in the Petition or
`responding to arguments raised in the Patent Owner
`Response. J.A. 19. We disagree.
`
`Given the admissions Within the ’831 patent itself, the
`arguments raised in Ericsson’s Petition, and the Board’s
`own evolving understanding of whether claim 1 requires
`the formation of blocks by “interleaving packets together,”
`
`

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`the Board’s decision not to consider portions of Ericsson’s
`Reply was error. ,As an initial matter, the ’831 patent
`discusses how interleaving was known in the prior art. In
`addition, Ericsson’s Petition describes how one of skill in
`the art would be familiar with the concepts of interleav-
`ing. See ’831 patent col. 2 11. 4—6, col. 6 l. 42—col. 7 l. 26;
`J.A. 105—06, 108, 109. For instance, the Petition charac-
`terizes the description of interleaving in the ’831 patent
`as “simply a recitation of a textbook block interleaving
`technique well-known to a POSA at the time the ’831
`Patent was filed.”
`J.A. 105—06. Similarly, the Petition
`identifies a person of ordinary skill in the art relative to
`the ’831 patent as someone having “an understanding
`of .
`.
`. coding and interleaving, and the reverse processes
`of deinterleaving and decoding as used for wireless com-
`munications.” J .A. 109. The Petition expressly contem-
`plated the
`possibility that
`“[t]o
`the
`extent
`that
`interleaving can also be considered encoding packets into
`blocks, this is also disclosed by [Reed].”
`J.A. 126. The
`portions of the Reply the Board declined to consider
`expressly follow from these contentions raised in the
`Petition—namely, that there is no substantial difference
`between interleaving R-blocks within S-blocks, and inter-
`leaving S-blocks with S-blocks.
`I
`
`The Board’s error was parsing Ericsson’s arguments
`on reply with too fine of a filter. Given the acknowledg-
`ment in the patent that interleaving was known in the
`art, Ericsson was entitled to argue on reply that the
`distinction in the specific type of interleaving between
`Reed and the ’831 would have been insubstantial to a
`
`person of skill in the art. The error was exacerbated by
`the fact that the significance of interleaving arose after
`the Petition was filed, in that the Board adopted a differ-
`ent construction of the “encoding” terms after the Petition
`instituting inter partes review was granted. Additionally,
`as the missing interleaving limitation was the essential
`basis of the Board’s decision in concluding that claim 1
`
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`had not been shown unpatentable, Ericsson should have
`been given an opportunity to respond.
`See 5 U.S.C.
`§554(b)(3),
`(c) (The agency must “timely inform[ ]” the
`patent owner of “the matters of fact and law asserted,”
`and must provide “all
`interested parties opportuni-
`ty .
`.
`. for the submission and consideration of facts [and]
`arguments...
`[and] hearing and decision on notice”).
`Undoubtedly, this was a special case in which Petitioner,
`Patent Owner, and the Board all initially applied the
`broadest
`reasonable interpretation claim construction
`standard, and only after
`institution applied Phillips
`instead.
`In light of these changed circumstances,
`the
`Board revisited its approach to the claims in light of this
`error, and Ericsson likewise deserved an opportunity to do
`the same.
`
`Our decision should not be viewed as changing or
`challenging the Board’s practice of limiting the scope of
`replies pursuant to its regulations. This court’s precedent
`supports the Board’s discretion to reject arguments raised
`for the first time in a reply. Under the PTO’s regulations,
`the Board has discretion to determine whether a petition
`for inter partes review identified the specific evidence
`relied on in a reply and when a reply contention crosses
`the line from the responsive to the new. Ariosa Diagnos-
`tics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir.
`2015).
`In Ariosa, this court upheld the Board’s rejection
`of a reply that relied on previously unidentified portions
`of a prior art reference to make a meaningfully distinct
`contention, because the cited portions of prior art were
`not identified or discussed in the petition or accompany-
`ing declarations.
`Id. at 1364, 1367—68.
`In contrast,
`Ericsson does not identify a previously unidentified piece
`of prior art to make a meaningfully distinct contention,
`but
`instead expands the same argument made in its
`Petition: that Reed discloses that its S-blocks (i.e., “pack-
`ets”) are further encoded into packet blocks through
`interleaving. Nor does Ericsson’s arguments in its Reply
`
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`constitute an “entirely new rationale” worthy of being
`excluded, as in Intelligent Bio-Systems, Inc. U. Illumina
`Cambridge Ltd., 821 F.3d 1359. 1370 (Fed. Cir. 2016). In
`Intelligent Bio-Systems, the petitioner supported its new
`theory of invalidity by reference to new evidence, citing “a
`number of non-patent literature references which were
`not relied upon to support unpatentability in the Peti-
`tion.” Id. at 1366. This court upheld the Board’s decision
`refusing the reply because the petitioner “relied on an
`entirely new rationale to explain why one of skill in the
`art would have been motivated to combine” the relevant
`
`Id. at 1370. Here, Ericsson cites no
`prior art references.
`new evidence and merely expands on a previously argued
`rationale. as to why the prior art disclosures are insub-
`stantially distinct from the challenged claims.
`
`We vacate the Board’s decision below and remand for
`
`the Board to consider all of the arguments in Ericsson’s
`Reply and the dependent claims.
`
`VACATED AND REMANDED
`
`COSTS
`
`No costs.
`
`

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`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`NOTICE OF ENTRY OF
`
`JUDGMENT ACCOMPANIED BY OPINION
`
`OPINION FILED AND JUDGMENT ENTERED: 08/27/2018
`
`The attached opinion announcing the judgment of the court in your case was filed and judgment was entered on
`the date indicated above. The mandate will be issued in due course.
`
`Information is also provided about petitions for rehearing and suggestions for rehearing en banc. The questions
`and answers are those frequently asked and answered by the Clerk's Office.
`
`No costs were taxed in this appeal.
`
`Regarding exhibits and visual aids: Your attention is directed Fed. R. App. P. 34(9) which states that the clerk
`may destroy or dispose of the exhibits if counsel does not reclaim them within a reasonable time after the clerk gives
`notice to remove them. (The clerk deems a reasonable time to be 15 days from the date the final mandate is issued.)
`
`FOR THE COURT
`
`/s/ Peter R. Marksteiner
`
`Peter R. Marksteiner
`Clerk of Court
`
`cc: Lori A. Gordon
`
`Gregory Matthew McCloskey
`Byron Leroy Pickard
`Steven Garrett Spears
`
`17-1521 - Ericsson Inc. v. Intellectual Ventures I LLC
`United States Patent and Trademark Office, Case No. lPR2015-01367
`
`

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`Case: 17-1521
`
`Document: 41-3
`
`Page: 1
`
`Filed: 08/27/2018
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`(15 of 16)
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`
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`PETER R. MARKSTEINER
`CLERK OF COURT
`
`UNITED STATES COURT OF APPEALS
`
`FOR THE FEDERAL CIRCUIT
`
`7 17 MADISON PLACE, N.W.
`WASHINGTON, DC. 20439
`
`CLERK’S OFFICE
`202-275-8000
`
`'
`
`Information Sheet
`
`Petitions for Rehearing and Petitions for Hearing and Rehearing En Banc
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`1. When is a petition for rehearing appropriate?
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`The Federal Circuit grants few petitions for rehearing each year. These petitions for
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`rehearing are rarely successful because they typically fail to articulate sufficient
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`grounds upon which to grant them. Of note, petitions for rehearing should not be used
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`to reargue issues previously presented that were not accepted by the merits panel
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`during initial consideration of the appeal. This is especially so when the court has
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`entered a judgment of affirmance without opinion under Fed. Cir. R. 36. Such
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`dispositions are entered if the court determines the judgment of the trial court is based
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`on findings that are not clearly erroneous, the evidence supporting the jury verdict is
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`sufficient, the record supports the trial court’s ruling, the decision of the administrative
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`agency warrants affirmance under the appropriate standard of review, or the judgment
`or decision is without an error of law.
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`2. When is a petition for hearing/rehearing en banc appropriate?
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`En bane consideration is rare. Each three-judge merits panel is charged with deciding
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`individual appeals under existing Federal Circuit law as established in precedential
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`opinions. Because each merits panel may enter precedential opinions, a party seeking
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`en banc consideration must typically show that either the merits panel has (1) failed to
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`follow existing decisions of the US. Supreme Court or Federal Circuit precedent or (2)
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`followed Federal Circuit precedent that the petitioning party now seeks to have
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`overruled by the court en banc! Federal Circuit Internal Operating Procedure #13
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`identifies several reasons when the Federal Circuit may opt to hear a matter en banc.
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`3. Is it necessary to file either of these petitions before filing a petition for
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`a writ certiorari in the US. Supreme Court?
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`No. A petition for a writ of certiorari may be filed once the court has issued a final
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`judgment in a case.
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`For additional information and filing requirements, please refer to Fed.
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`Cir. R. 40 (Petitions for Rehearing) and Fed. Cir. R. 35 (Petitions for
`
`
`
`
`
`Hearing or Rehearing En Banc).
`
`
`
`
`Revised August 21, 2018
`
`

`

`Case: 17-1521
`
`Document: 41-4
`
`Pagezl
`
`Filed208/27/2018
`
`(16 of 16)
`
`
`
`PETER R. MARKSTEINER
`CLERK OF COURT
`
`UNITED STATES COURT OF APPEALS
`
`FOR THE FEDERAL CIRCUIT
`
`717 MADISON PLACE, N.W.
`WASHINGTON, DC. 20439
`
`CLERK’S OFFICE
`202-275-8000
`
`Information Sheet
`
`Filing a Petition for a Writ of Certiorari
`
`There is no automatic right of appeal to the Supreme Court of the United States from
`
`judgments of the Federal Circuit. Instead, a party must file a petition for a writ of
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`certiorari which the Supreme Court will grant only when there are compelling reasons. See
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`Supreme Court Rule 10.
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`Time. The petition must be filed in the Supreme Court of the United States within 90 days
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`of the entry of judgment in this Court or within 90 days of the denial of a timely petition for
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`rehearing. The judgment is entered on the day the Federal Circuit issues a final decision in
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`your case. The time does not run from the issuance of the mandate. See Supreme Court
`Rule 13.
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`Fees. Either the $300 docketing fee or a motion for leave to proceed in forma pauperis with
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`an affidavit in support thereof must accompany the petition. See Supreme Court Rules 38
`and 39.
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`Authorized Filer. The petition must be filed by a member of the bar of the Supreme Court
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`of the United States or by the petitioner as a self-represented individual.
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`Format of a Petition. The Supreme Court Rules are very specific about the content and
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`formatting of petitions. See Supreme Court Rules 14, 33, 34. Additional information is
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`available at httpszllwww.supremecourt.gov/filingandrules/rules guidanceaspx.
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`Number of Copies. Forty copies of a petition must be filed unless the petitioner is
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`proceeding in forma pauperis, in which case an original and ten copies of both the petition
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`for writ of certiorari and the motion for leave to proceed in forma pauperis must be filed.
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`See Supreme Court Rule 12.
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`'
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`Filing. Petitions are filed in paper at Clerk, Supreme Court of the United Stdtes, 1 First
`Street, NE, Washington, DC 20543.
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`Effective November 13, 2017, electronic filing is also required for filings submitted by
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`parties represented by counsel. See Supreme Court Rule 29.7. Additional information
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`about electronic filing at the Supreme Court is available at
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`https://www.supremecourt.gov/filingandrules/electronicfiling.aspx.
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`No documents are filed at the Federal Circuit and the Federal Circuit provides no
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`information to the Supreme Court unless the Supreme Court asks for the information.
`Revised August 21, 2018
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`