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PTAB Publishes SOP for Handling Remands from the Federal Circuit

Author: John Alemanni; Andrew W. Rinehart Date: November 28, 2017

The Patent Trial and Appeal Board (“PTAB”) recently issued a Standard Operating Procedure (“SOP”) for remands from the Federal Circuit. Remands of America Invents Act trials (IPR, CBM, and PGR) and ex parte and reexamination appeals are all included within the scope of the procedures. The SOP establishes a goal of issuing decisions on remanded cases within six months of the Federal Circuit’s mandate.

According to the SOP, parties should contact the Board within ten business days after a Federal Circuit mandate to arrange a teleconference. Prior to the teleconference, the Board requires the parties to seek agreement, if possible, on suggested remand procedures including the submission of additional briefing and evidence. In considering the need for additional briefing and evidence, the Board will consider whether the parties already had adequate opportunities to address issues raised by the remand. Any party seeking to re-open the evidentiary record must show: (1) why the evidence already before the Board is inadequate and (2) good cause why additional evidence is necessary. In most cases an additional oral hearing will not be authorized.

The Board provided six typical remand scenarios: (1) erroneous claim interpretation, (2) failure to consider the evidence, (3) inadequate explanation by the Board, (4) erroneous application of law, (5) lack of due process / denial of Administrative Procedure Act (“APA”) rights, and (6) improper consideration of the arguments. According to the SOP, briefing will likely be allowed for all but scenario 3. Additional evidence and oral argument will typically only be permitted for scenario 5, although the Board will still weigh the considerations described above under the particular facts of each case. For parties involved in remanded proceedings before the Board, this set of procedures will provide greater predictability as to when additional briefing and evidence will be permitted, if at all.