While the volume of appeals from the PTAB to the Federal Circuit continues to climb—FY2017 marked the second consecutive year in which PTAB appeals outnumbered district court appeals at the Federal Circuit—the affirmance rate for the PTAB has continued to decline. This trend has brought increased importance to the PTAB procedures for handling remands from the Federal Circuit. Until recently, however, no official position existed for remands at the PTAB, and instead individual panels were left to decide the schedule and scope of procedures.
This changed in November 2017 when the PTAB issued a new set of procedures, Standard Operating Procedure 9 (“SOP 9”), titled “Procedure for Decisions Remanded from the Federal Circuit for Further Proceedings.” While an SOP is not legally binding or enforceable, the document still gives parties a better idea of what to expect at the PTAB following a remand from the Federal Circuit. On its face, the SOP emphasizes a goal of having remands completed within six months of the Federal Circuit’s mandate. This goal was also reiterated in a recent “Chat with the Chief” where the PTAB’s Chief Judge briefly discussed the new remand procedures.
SOP 9 prescribes that a remanded case begins with a series of meetings. Within 30 days of a Federal Circuit decision remanding a case to the PTAB—no need to wait for the mandate—the panel judges for that case will meet with the Chief Judge or Deputy Chief Judge. The purpose of this meeting is to discuss the issues from the Federal Circuit’s decision and what procedure the panel expects to employ in the remand. Within ten days of the Federal Circuit’s mandate, the parties in a remanded case are to contact the PTAB and arrange a teleconference with the panel. The teleconference with the parties and the panel should take place within a month of the Federal Circuit’s mandate. Before the teleconference, SOP 9 states that the parties “shall meet and confer” on proposed procedures for the remand. The SOP identifies eleven categories of procedural issues on which the parties are encouraged to reach agreement for the remand, covering various issues ranging from the order in which any new briefs shall be filed to limitations on any new evidence the parties intend to submit.
While still emphasizing case-specific flexibility and encouraging the parties to jointly propose procedures for a remand, SOP 9 also provides general guidance on what default procedures to expect. A chart in Appendix 2 of the SOP succinctly describes whether additional briefing, additional evidence, and/or oral arguments will be heard in cases remanded for any of six common remand grounds. The contemplated remand grounds are: erroneous claim interpretation, failure to consider the evidence, inadequate explanation by the Board, erroneous application of law, lack of Due Process/denial of APA rights, and improper consideration of the arguments. By default, no new evidence and no further oral hearings will be had under any of these scenarios, except for lack of Due Process/denial of APA rights. There is still substantial discretion left to individual panels on whether to allow any new briefing following remand.
For five of the six contemplated remand scenarios, SOP 9 provides only conditional guidance on whether additional briefing will be allowed. The one exception is again remands on a lack of Due Process or denial of APA rights. For those remands, additional briefing appears to be an unconditional default. For the other remand grounds, the default guidance is always subject to an “unless” clause relating to the adequacy of prior briefing. This means that the availability of additional briefing in most appeals could hinge on whether the panel determines that the issue for remand was fully and adequately briefed in the existing record. It will be interesting to see the extent to which future panels use these “unless” clauses to foreclose requests for additional briefing that otherwise meet the default guidance from SOP 9.
At least two PTAB panels have addressed procedures for remand after the issuance of SOP 9. In Google Inc. v Intellectual Ventures II LLC, a panel of Judge Michael Kim, Judge Patrick Scanlon, and Judge Kristina Kalan rejected a joint proposal from the parties for additional briefing following a remand. The panel noted that the Federal Circuit’s basis for remanding the case was a lack of adequate explanation from the panel. As such, and in express accordance with the default guidance in SOP 9, the panel concluded that additional briefing was not appropriate. However, the panel allowed the parties to each file a three-page paper identifying locations in the record having relevant evidence and arguments. The panel instructed that no arguments were to be included in these papers. In ScentAir Technologies, Inc. v. Prolitec, Inc., the Federal Circuit remanded the case for reconsideration of the denial of a Motion to Amend, in light of the Federal Circuit’s en banc decision in Aqua Products. SOP 9 suggests that reconsideration of a Motion to Amend falls under the heading of erroneous application of the law, which by default triggers additional briefing unless the law was fully briefed on the prior record. Without discussion of SOP 9, a panel consisting of Judge Jameson Lee, Judge Michael Fitzpatrick, and Judge Christopher Crumbley accepted the parties’ joint proposal for additional briefing and no submission of new evidence, nor further oral arguments.
It is unlikely that these rules alone will provide the final word on the handling of remands. First, the non-binding nature of a standard operating procedure certainly leaves open the possibility that these procedures could be revised at another time—either through an additional SOP or through a more formal rule-making process. Second, absent binding rules, the PTAB’s inconsistency on remand may prompt parties to challenge the PTAB’s remand processes to the Federal Circuit, which could lead the Federal Circuit to impose more specific requirements on how the PTAB should conduct remands. Third, even without action from the Federal Circuit, the PTAB could use an expanded panel to provide additional guidance on the handling of remands, similar to the recent use of an expanded panel on the subject of sovereign immunity.
1 Appeals Filed in Major Origins, United States Court of Appeals for the Federal Circuit, http://www.cafc. uscourts.gov/sites/default/files/the-court/statistics/Hist_Caseld_by_Major_Origin_10-year.pdf; Michael Joffre, Pauline Pelletier, and Jon Wright, PTAB At 5: Part 3 – Fed. Circ. Statistics, Law360 (Sep. 13, 2017, 1:44 PM EDT), http://www.skgf.com/uploads/1560/doc/PTAB_At_5_Part_3_%E2%80%94_Fed._Circ._Statistics.pdf.
2 Matthew Bultman, Once A Mystery, PTAB Remands Start To Take Shape, Law360 (February 9, 2017, 2:03 PM EST), https://www.law360.com/articles/890109/once-a-mystery-ptab-remands-start-to-take-shape.
3 Full text of Standard Operating Procedure 9 is available on the USPTO website at: https://www.uspto.gov/ sites/default/files/documents/sop_9_%20procedure_for_decisions_remanded_from_the_federal_circuit.pdf.
4 SOP 9 at 1.
5 Slides of webinar available from USPTO website at https://www.uspto.gov/sites/default/files/documents/ chat_with_the_chief_v2_12_19_17.pdf.
6 SOP 9 at 1-2, 5.
7 Id. at 8.
9 IPR2014-00787 (Paper 56) (PTAB Nov. 28, 2017) at 3.
10 IPR2013-00179 (Paper 67) (PTAB Dec. 22, 2017) at 2.
11 See SOP 9 at 13, 8.
12 IPR2013-00179 (Paper 67) (PTAB Dec. 22, 2017) at 2.
13 See Ericsson Inc. and Telfonaktiebolaget LM Ericsson, v. Regents Of The University Of Minnesota, IPR2017‑01186, -01197, -01200, -01213, -01214, -01219 (PTAB Dec. 19, 2017)
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