Case: 23-2048 Document: 35 Page: 1 Filed: 01/23/2024

NOTE: This order is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

In re: XENCOR, INC., Appellant ______________________

2023-2048 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 16/803,690. ______________________

ON MOTION ______________________

Before LOURIE, PROST, and STOLL, Circuit Judges. PROST, Circuit Judge. ORDER 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: 2 Filed: 01/23/2024

2 IN RE: XENCOR, INC.

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, IT IS ORDERED THAT: (1) The motion to remand for further proceedings con- sistent with this order and the motion is granted. Case: 23-2048 Document: 35 Page: 3 Filed: 01/23/2024

IN RE: XENCOR, INC. 3

(2) Costs to Xencor. FOR THE COURT

January 23, 2024 Date