In November 2017, the Patent Trial and Appeal Board (PTAB) issued Standard Operating Procedure (SOP) 9, explaining the procedures it will use to address remands from the US Court of Appeals for the Federal Circuit. The PTAB explained that it has established a goal to issue decisions on remanded cases within six months of its receipt of the Federal Circuit’s mandate.
SOP 9 addresses appeals from both post-grant trials and ex parte procedures, and explains that the chief judge and/or the deputy chief judge and/or their delegates will discuss each remanded case with each respective panel before the Federal Circuit issues its final mandate and before the panel expends substantial effort on the case. This meeting will normally occur within 30 days of receiving notice of the Federal Circuit’s decision and prior to the Federal Circuit issuing its mandate.
SOP 9 includes two appendices: Appendix 1 provides discretion to panels in preparing for panel meetings, and Appendix 2 provides guidance to parties on remand procedures and includes illustrative examples of remand procedures followed by the PTAB in recent cases.
Appendix 2 explains that parties in remanded trial cases must contact the PTAB within 10 business days after the mandate issues to arrange a teleconference with the panel. The appendix further explains that prior to the teleconference, the parties must meet and confer in a reasonable and good faith attempt to propose a procedure on remand, including, but not limited to:
- Whether additional briefing is necessary
- Subject matter limitations on briefing
- Length of briefing
- Whether the parties should file briefs concurrently or sequentially
- If briefs are filed sequentially, which party should open the briefing
- Whether a second brief from either party should be permitted
- The briefing schedule
- Whether either party should be permitted to supplement the evidentiary record
- Limitations, if any, on the type of additional evidence that will be submitted
- The schedule for submitting additional evidence, if any
- Any other relevant procedural issues
These remand teleconferences with the panel are expected to take place within the first month after the mandate.
SOP 9 also explains that, although the panel will consider procedures proposed by the parties, the panel itself will ultimately decide the procedures to be followed on remand, e.g., whether to permit additional briefing and additional evidence (testimonial and documentary) or hold additional hearings following a remand. SOP 9 further explains that while there is currently no statutory time limit for completing a re-opened proceeding following remand, delays caused by re-opening the record after remand may be inconsistent with the goal of issuing a remand decision within six months from the mandate.
For the benefit of the parties, SOP 9 includes a guide in Appendix 2 that provides a set of Default Trial Procedures for Common Remand Scenarios, specifically listing Erroneous Claim Interpretation, Failure to Consider the Evidence, Inadequate Explanation by the Board, Erroneous Application of Law, Lack of Due Process/Denial of APA [Administrative Procedure Act] rights, and Improper Consideration of the Arguments. The guide explains that in most situations, the parties may submit new briefing but no new evidence or oral arguments for all typical scenarios, except due process and APA violations. Only those latter two scenarios are contemplated by the PTAB as being amenable to new evidence and new oral arguments.
Practice Note: The common scenarios chart in SOP 9 shows that the PTAB expects new briefing to be the primary mechanism to address issues on remand from the Federal Circuit. Parties can expect that opportunities to introduce new evidence or participate in a new oral argument will be narrowly limited to remands addressing lack of due process or denial of APA rights.