On November 16, 2017, the USPTO issued new procedures (“Standard Operating Procedure 9”) for governing cases remanded from the Federal Circuit. These procedures are applicable to all decisions remanded from the Federal Circuit to the PTAB, including decisions resulting from IPR, PGR and CBM trials as well as ex parte appeals and reexamination proceedings.
The procedures state a goal of issuing decisions within 6 months after the Federal Circuit’s mandate. (The mandate typically issues 37 days after judgment if no party sought rehearing or 52 days after the judgment if the Director intervened and no party sought rehearing.) The procedures also provide guidance for both parties and PTAB panels to determine when additional briefing, evidence, or oral hearings may be warranted.
Two appendices are included. Appendix 1 instructs PTAB panels to meet with PTAB leadership to discuss the issues raised on remand by the Federal Circuit. These meetings take place just before the mandate issues from the Federal Circuit and are “not intended to address the likely substantive outcome” of cases.
Appendix 2 provides detailed guidance for parties and panels on remand procedure. This guidance instructs parties in trial cases to arrange a teleconference with the panel within 10 business days after the mandate issues. Before this meeting, parties must meet and confer to propose a remand procedure. Parties are encouraged to seek agreement on any or all of:
- 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; and
- any other relevant procedural issues.
Appendix 2 concludes with a summary of common remand scenarios by prior panels and includes the following charts setting “default” procedures (which the PTAB may deviate from at its discretion):
FIGURE 1 – Trial Appeals
FIGURE 2 – Ex Parte Appeals And Reexamination Appeals