United States: PTAB: What to Expect On Remand

Only a portion of Federal Circuit decisions on appeals from IPRs and CBMs have remanded the cases in full or in part to the Patent Trial and Appeal Board ("PTAB"). These remanded cases have been working their way through the PTAB, leading to new final written decisions.

While there are rules and statutes governing the timing of the trial phase of a PTAB proceeding, there are no such rules governing the remand process. Thus, a review of the PTAB docket is needed to determine what a party can expect on remand. While the procedures used on remand can be panel-specific, there are some similarities.

Teleconference with the Board

Jurisdiction returns to the PTAB upon issuance of the Federal Circuit's mandate. See Federal Circuit Rule 41. A teleconference with the PTAB may occur within a week to about a month after the mandate issues. While most orders do not indicate whether a party requested the teleconference, one order commented that no teleconference occurred because the parties failed to request one. adidas AG v. NIKE, Inc., IPR2013-00067 (Aug. 10, 2016) (Paper 62). While they are common, a teleconference does not always occur. See, e.g., Corning Optical Comm'ns RF, LLC v. PPC Broadband, Inc., IPR2013-00340 (May 20, 2016) (Paper 82) (without a prior teleconference, the PTAB issued an order to confer to determine whether supplemental briefing was necessary).

Briefing on Remand

The PTAB typically authorizes the parties to submit five- to 15-page briefs explaining the impact of the Federal Circuit's ruling. But the Board has twice denied briefing following a request and has once decided not to authorize briefing when no party had made a request. See, e.g., Corning Optical Comm'ns RF, LLC v. PPC Broadband, Inc., IPR2013-00340 (May 20, 2016) (Paper 85); adidas AG v. NIKE, Inc., IPR2013-00067 (Aug. 10, 2016) (Paper 62).

Simultaneous briefing by the petitioner and the patent owner is common. See, e.g., Shaw Indus. Group, Inc. v. Automated Creel Sys., Inc., IPR2013-00132 (June 3, 2016) (Paper 49) at 4 ("We are not persuaded that Petitioner should file its brief first and Patent Owner should respond because neither party is seeking relief from the Board, as would be the case when a motion and opposition are filed.") But some panels stagger the briefing, with the petitioner filing an opening brief and the patent owner filing a response a week later. See, e.g., Sipnet EU S.R.O. v. Straight Path IP Group, Inc., IPR2013-00246 (Mar, 29, 2016) (Paper 68) at 2.

No New Evidence

Ever since the first panel handled a remand in Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026 (Sept. 1, 2015) (Paper 77) at 3, it appears that the PTAB has ordered that no new evidence may be filed with the briefs. However, the PTAB recently ordered briefing on whether new declaratory evidence would be appropriate.  SAS Inst., Inc. v. ComplementSoft, LLC, IPR2013-00226 (Dec. 15, 2016) (Paper 48) at 4. When citing evidence, the Board has ordered that the parties must provide citations to the existing record where the evidence originally was introduced.  See, e.g., Sipnet EU S.R.O. v. Straight Path IP Group, Inc., IPR2013-00246 (Mar. 29, 2016) (Paper 68) at 2.

Timing of New Final Written Decision

The PTAB often takes about 3-6 months from the date of the Federal Circuit's mandate to issue its new final written decision on remand, although there are outliers. In the cases that have received a second final written decision, the results have been mixed, with the PTAB sometimes reversing and other times maintaining its findings from the original final written decision. In most remands, the PTAB has found that the petitioner did not show the reviewed claims to be unpatentable.

Chart Summarizing PTAB Remands

The chart below summarizes the procedural aspects of the cases that have been remanded to the PTAB.  When no comments are provided, that indicates there has been no reported activity on the docket:

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.