PHOSITA

Authored by Genni Ellis, February 1, 2018 at 1:21 pm
USPTO

In November of 2017, the USPTO Patent Trial and Appeal Board (PTAB) published Standard Operating Procedure 9 (SOP 9), which addresses how the board will handle cases remanded from the Federal Circuit Court of Appeals to the PTAB. SOP 9 “creates internal norms for the administration” of the PTAB, while “provid[ing] guidance to the parties, the public, and the [PTAB.]”  According to SOP 9, PTAB plans to issue “decisions on remanded cases within six months of the PTAB’s receipt of the Federal Circuit’s” order remanding the case.

In order to facilitate this six-month goal, once PTAB is notified the case is being remanded, the Chief Administrative Patent Judge and the Deputy Chief Administrative Patent Judge discuss each remanded case with a panel.  Within 30 days of the PTAB receiving the mandate, which releases jurisdiction to the Board, the panel, the Chief Judge, and/or Deputy Chief Judge will meet to discuss the Federal Circuit decision issues and establish procedures for preparing a remand decision (such as timelines, additional briefing, etc.). 

Appendix 1 of SOP 9 provides guidance for panels for their remand meetings with the Chief Judge and/or the Deputy Chief Judge. The topics to be discussed during that meeting depend on the facts and circumstances of the case. The meeting participants may provide a short summary of issues to discuss in the meeting, such as procedural history, issues on remand, case briefing, related appeals, procedural instructions from the Federal Circuit, substantive issues the panel may need to address, remand proceeding procedures, the issue of whether to expand the panel based on SOP 1, policy considerations, and whether any decision by the panel could be considered precedential.

Appendix 2 of SOP 9, provides guidance to parties on remand procedural issues. The Appendix states, “procedure and pace of a remand following a Federal Circuit decision will vary, depending on the type of case, legal and factual issues involved, the specific instructions from the Federal Circuit, the recommendations of the parties, and any other particularities of the case.”

For remanded litigation cases, parties must contact the PTAB within ten business days after the Federal Circuit mandate to arrange a panel teleconference. Prior to the teleconference, parties are expected to meet and make a good faith attempt to propose a procedure on remand. For example, is additional briefing necessary? If additional briefing is necessary, other details should also be proposed such as whether filings should be concurrent, which party will open if filings are not concurrent, subject matter limitations, length, briefing schedule, etc. Parties are also expected to meet and confer as to potential evidentiary issues, such as whether parties should be able to supplement the evidentiary record, limitations on the type of additional evidence, additional evidence submission schedule, and any other procedural issues. Although the parties propose procedures, the panel ultimately will decide the procedures for remand based on the scope determined from the Federal Circuit’s reasoning and instructions.

Keep in mind, there is not a statutory time limit for completion of a reopened proceeding. The panel will consider the time and expense involved. For example—in regard to additional briefing—the panel may decide to allow extra briefing due to a change in the law, or a new/revised claim construction not previously considered. However, if parties have had adequate opportunity to address issues raised by remand, then additional briefing may be denied. If a party wishes to re-open the evidentiary record, they “must demonstrate why evidence before the PTAB is inadequate, and good cause as to why additional evidence is necessary.” Again, in keeping with the PTAB’s six-month response goal, the panel will consider how much time will be necessary for additional briefing and additions to the evidentiary record. If new evidence is allowed in, there may also be a need for an additional oral hearing. The additional briefing, evidence, and oral hearings will likely take more time than the six-month goal. SOP 9 includes Default Trial Procedures for Common Remand Scenarios as guidance for practitioners (see image above). This guide indicates the likelihood of the PTAB granting additional briefing, evidence, or oral argument based on the issue addressed on remand.

The PTAB also has Remand procedure considerations which guide ex parte and re-examination appeals. Either the PTAB or the Examiner will take the remanded cases as directed by the Federal Circuit if “outstanding rejections can be addressed by the [PTAB] with further explanation of a finding of fact/conclusion of law; [there is] a new ground of rejection based on further findings of fact or the current record; and/or if the reversal requires a need for further prior art searching by Examiner and/or issuance of a patent or reexamination certificate.” If a matter of law or fact is raised by the Federal Circuit, there may be a request by the PTAB for further briefing. However, this should be a rare occurrence.

Though SOP 9 is helpful in understanding the USPTO’s goal for efficiency, is the PTAB’s goal of a six-month decision turn-around serving the Federal Circuit’s purpose of each remand? Or is it merely serving the purpose of moving the docket?