In re: XENCOR, INC v. United States, 254 F.3d 1022, 1029 Fed. Cir. 2001 . In such cases, re- mand is…

N OTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: XENCOR, INC.,
Appellant
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2023-2048
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 16/803,690.
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ON MOTION
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Before L OURIE, P ROST , and STOLL , Circuit Judges.
P ROST , Circuit Judge.
O R D E R
Xencor, Inc. has filed its opening brief challenging the
final written decision of the Patent Trial and Appeal Board
rejecting its patent claims. The Director of the United
States Patent and Trademark Office (“USPTO”) now moves
to waive Federal Circuit Rule 27(f) and remand so that the
USPTO’s Appeals Review Panel can be convened to “clarify
the USPTO’s position on the proper analysis of Jepson-for-
mat and means-plus function claims in the field of biotech-
nology, and particularly in the antibody art,” and issue “a
revised decision.” Xencor opposes the motion.
Case: 23-2048 Document: 35 Page: 1 Filed: 01/23/2024

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IN RE: XENCOR, INC. 2
An agency may properly request a remand to recon-
sider its previous position. SKF USA Inc. v. United States,
254 F.3d 1022, 1029 (Fed. Cir. 2001). In such cases, re-
mand is usually appropriate if the agency expresses a “sub-
stantial and legitimate” concern about its earlier decision.
Id. Here, the Director has raised such concerns, arguing
that the novelty and complexity of the issues presented in
this case favor a more thorough evaluation and explanation
than provided in the Board’s final written decision, and
that remanding could preserve resources.
To be sure, it would have been preferable for the Direc-
tor to have filed this motion before Xencor “expended the
time, money, and effort to file [its] brief,” In re Hester, 838
F.2d 1193, 1193–94 (Fed. Cir. 1988). But an “agency may
request a remand (without confessing error) in order to re-
consider its previous position” even after the opening brief
is filed, SKF, 254 F.3d at 1029, and we do not view the cir-
cumstances of this remand request as suggesting improper
motive. We further agree with the Director that Xencor’s
concern that remand might impact patent term adjustment
is conjecture at this time and insufficient to override the
benefits of remand here, particularly given we are confi-
dent that proceedings will be conducted expeditiously.
Accordingly,
I T I S O RDERED T HAT :
(1) The motion to remand for further proceedings con-
sistent with this order and the motion is granted.
Case: 23-2048 Document: 35 Page: 2 Filed: 01/23/2024

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IN RE: XENCOR, INC. 3
(2) Costs to Xencor.
January 23, 2024
Date
F OR THE COURT
Case: 23-2048 Document: 35 Page: 3 Filed: 01/23/2024

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