Remands at the PTAB -- Board Issues Standard Operating Procedure 9

By Andrew Williams --

Earlier this month, the Patent Trial and Appeal Board released it Standard Operating Procedure 9 entitled "Procedure for Decisions Remanded from the Federal Circuit for Further Proceedings."  To date, the Federal Circuit has remanded about 42 cases to the Board for further processing.  In all but the most recent, the panel had to determine what procedures to use on an ad hoc basis.  Of course the Board has been able to look at what other panels have done in previously remanded cases, and the parties to the remand were certainly able to highlight the past procedures that were most favorable to their particular cases.  But in most cases, the panels were creating procedures on the spot without any apparent guidance.  This SOP 9 seeks to remedy this situation by setting up a mandatory "Remand Meeting" between the panel and Chief Judge and/or Deputy Chief Judge.  The involvement of the Chief Judge should introduce an element of consistency into the remand procedures.  In addition, SOP 9 provides how the remand proceedings are to be initiated by requiring the parties to contact the Board within 10 business days after the mandate issues to arrange a teleconference.  This should streamline the proceedings because previously it was unclear whether the impetus for initiating the procedures was on the Board or the parties.  In fact, in the case of Nike v. Adidas, IPR2013-00067, because the parties did not reach out to the Board for four months after the mandate issued, the Board decided that future briefing would not be permitted in the case (however, briefing was ultimately permitted in that case to address the outcome in the Aqua Products case).  Finally, SOP 9 provides that "[t]he Board has established a goal to issue decisions on remanded cases within six months of the Board's receipt of the Federal Circuit's mandate."  While this has been an unofficial goal espoused by representatives of the Board since the first remanded case of Microsoft Corp. v. Proxyconn, Inc., and the Board has in most cases kept to this timeframe, it is nice to see it made official -- especially in view of the fact that the AIA did not provide a statutory timeframe for remands.

Appendix 1 of SOP 9 provides guidance for the panels in preparing for the remand meetings with the Chief Judge.  The potential topics to be discussed at this meeting include: (1) the procedural history of the case, (2) the issues on remand, (3) the contemplated procedures for the proceedings on remand, and (4) any potential policy considerations.  This remand meeting is not intended to address the substantive outcome of the case.  SOP 9 also specifies that the panel is to schedule the remand meeting within thirty days of receiving the notice of the Federal Circuit opinion.  Of course, because the mandate does not issue until the time for seeking rehearing has expired, this remand meeting should occur well before the parties contact the panel to discuss the case.

Appendix 2 to SOP 9 provides guidance for the parties.  There were eleven identified issues on which the parties are requested to seek agreement before the call with the Board: (1) whether additional briefing is necessary, (2) subject-matter limitations on briefing, (3) the length of briefing, (4) whether the briefs are to be field concurrently or sequentially, (5) if sequential, which party will file the opening brief, (6) whether a second brief should be permitted from either party, (7) the briefing schedule, (8) whether the parties should be permitted to introduce evidence, (9) limitations on the type of additional evidence, (10) the schedule for permitting additional evidence, and (11) any other relevant procedural issues.  Because of the new goal of 6 months from mandate to decision, any party seeking to introduce new evidence should be prepared to show good cause why it is necessary, and to demonstrate that the previous record is inadequate.

The Board also identified six different remand scenarios for post-grant procedures before the Board: (1) erroneous claim interpretation, (2) failure to consider evidence, (3) inadequate explanation by the Board, (4) erroneous application of law, (5) lack of due process/denial of APA rights, and (6) improper consideration of the arguments.  In addition, it provided the following chart for the default procedures related to additional briefing, additional evidence, and oral argument:

By including this list, the Board may influence what arguments are advanced at the Federal Circuit.  For example, parties challenging decisions of the Board will be encouraged by this chart to argue that there was a lack of due process and/or a denial of APA rights, because such findings will have the best chance of changing the previous outcome of the Board through additional briefing, submitting additional evidence, and/or participating in another oral argument.  On the other hand, parties have been successful at the Federal Circuit in arguing that the Board did not adequately explain its position in the final written decision.  This will likely end up being a pyrrhic victory because this chart suggests that panels will not likely entertain additional briefing or the submission of additional evidence in such cases.  As a result, even though the party might end up with a better explanation, the outcomes in these cases will not likely change.

SOP 9 and the above-referenced table have already been utilized in at least one case.  In Google Inc. v. Intellectual Ventures II LLC, IPR2014-00787, the Board held a telephone conference call with the parties on November 21, 2017.  The parties had requested additional briefing in view of the remand decision because the evidence relevant to the issues raised by the Federal Circuit was located in disparate locations in the record.  However, the reason for the remand was inadequate explanation by the Board, and the SOP 9 table indicates that additional briefing will not be allowed unless the original briefing was inadequate.  As a result, the Board denied the request for additional briefing, but authorized each party to provide an itemized listing of where the relevant evidence could be found.  Hopefully this case is indicative of SOP 9's apparent goal of making remand procedures more consistent and streamlined in the future.

Comments

[nancy Linck]

Interestingly, SOP 9 notes that all decisions of the Federal Circuit in reexainations are treated as remands to the PTO. That makes sense in view of the fact that the Federal Circuit has not always been consistent with the language it uses in deciding a case. For example, if a claim is held not unpatentable by the Board and reversed by the Federal Circuit, that only goes to the grounds considered by the Board and not all grounds for patentability raised by the patentee. It would not be right to cancel the claim without considering the patentee's other bases for patentability. However, as the situation now stands, that is exactly what the Office appears to be doing in AIA proceedings. Reversals in AIAs should also be treated as remands to the Office. They are not, to my knowledge.

[Paul F. Morgan]

Thanks. The statistic "To date, the Federal Circuit has remanded about 42 cases to the Board for further processing" is interesting. Even though that is presumably a relatively small___? % of IPR decisions appealed, it shows that they are definitely not all Rule 36 rubber stamped as some have alleged. By now that must also have educated some APJs as to better IPR decision drafting.
How does that 42 remand number compare to the number of actual reversals?