Addressing the scope of a remand from the US Court of Appeals for the Federal Circuit, the Patent Trial and Appeal Board (PTAB or Board) declined to consider evidence and arguments presented for the first time on remand. Corning Optical Communications RF, LLC v. PPC Broadband, Inc., Case No. IPR2013-00340 (PTAB., Aug. 4, 2016) (Lee, APJ).

Corning Optical filed a petition requesting inter partes review of several claims on a coaxial cable connector. The PTAB issued a final written decision (FWD) finding the claims to be unpatentable over the prior art. The patent owner appealed. On appeal, the Federal Circuit vacated the PTAB’s determination of unpatentability and remanded.

On remand, the PTAB directed the parties to identify which issues the PTAB must reconsider on remand and whether those issues require additional briefing or submission of new evidence. The patent owner argued that the petitioner had failed to identify two entities as real parties-in-interest, requiring dismissal of the petition and termination of the proceeding. Although the patent owner had not raised this issue before the PTAB’s FWD in the present proceeding, the patent owner had timely raised this issue in a related proceeding.

The PTAB generally declined to consider any issues on remand not presented before the FWD. Specifically, the PTAB declined to consider the real party-in-interest issue, finding that “Patent Owner did not raise it before the Federal Circuit while the case was on appeal, and has not sufficiently explained in [its response to the PTAB’s order] why we should consider the new issue now at this late stage.”

The panel explained that because the “2014 FWD was vacated only for specific errors,” it “need only correct those errors . . . Nothing more is required.”