On November 16, 2017, the Patent Trial and Appeal Board (hereinafter, “the Board”) issued a revised Standard Operating Procedure 9 with two appendices (collectively, “SOP 9”) to provide guidance on the procedure for handling all decisions on cases remanded from the Court of Appeals for the Federal Circuit, including decisions resulting from inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) review, as well as ex parte and reexamination appeals. SOP 9 does not create any legally enforceable rights, but is intended to create “internal norms for the administration of the Board to promote consistency” and provide “guidance to the parties, the public, and the Board regarding Board decisions remanded from the Federal Circuit.”

Summary / Take-Away Points for Practitioners

  1. The remand procedure will likely need to be completed within six months of the mandate’s issuance by the Federal Circuit.
  2. Once the Federal Circuit’s mandate is issued, the parties must contact the Board within 10 business days to arrange a teleconference with the panel, and the teleconference must take place within the first month after the mandate’s issuance. Prior to the teleconference, the parties must meet and confer to make a reasonable and good-faith effort to reach agreement on various remand procedure issues (e.g., determining whether additional briefing is necessary, etc.)
  3. For remanded trial cases (e.g., IPR, PGR, CBM review):
    1. Additional briefing is generally allowed for all remand scenarios considered in SOP 9 (i.e., erroneous claim interpretation, failure to consider the evidence, erroneous application of law, lack of due process / denial of Administrative Procedure Act (APA) rights, and improper consideration of the arguments)—subject to certain requirements and limitations—except for the “inadequate explanation by the Board” scenario. The key consideration for the Board in determining whether to allow additional briefing will be whether the parties have had an adequate opportunity to address the issues raised by the remand;
    2. Additional evidence is generally not allowed, unless (1) the remand was due to a lack of due process / denial of APA rights; or (2) the remand was due to an erroneous claim interpretation and the evidence of record is insufficient to afford due process. The party seeking to reopen the record must demonstrate why the existing evidence is inadequate and show good cause why additional evidence is necessary; and
    3. Additional oral argument is generally not allowed unless the remand was due to a lack of due process / denial of APA rights and oral argument is necessary to afford due process. Oral argument may be authorized, however, in certain situations where new evidence is permitted.
  4. For remanded ex parte or reexamination cases, prosecution / reexamination is generally not reopened under the different remand scenarios unless there has been a due process violation.
  5. Proceedings on remand generally will not be stayed, even when a writ of certiorari has been filed with the Supreme Court. But parties may contact the Board to request authorization to file a motion for a stay of proceedings on remand, which will be considered on a case-by-case basis.

The “requirements” and considerations set forth for the panels and the parties in SOP 9 are further explained below. “Requirements” and Considerations for the Panel (Appendix 1)

SOP 9 requires the panel that issued the remanded decision to schedule a meeting with the Chief Administrative Patent Judge, the Deputy Chief Administrative Patent Judge, and/or their assigned delegates within 30 days of receiving notice of the Federal Circuit’s decision. This remand meeting needs to occur before the Federal Circuit’s mandate, which is usually issued 37 days after the judgment is rendered (if no party seeks rehearing or a stay of the mandate) or 52 days after the judgment (if the Director intervenes).[1] The meeting is not intended to address the likely substantive outcome, and the panel must be prepared to discuss the following potential topics:

  • Procedural history: including the procedural history before the appeal to the Federal Circuit, the outcome and rationale of the Federal Circuit’s decision, and the procedural history of any related appeals.
  • Issues on remand: including any specific procedural instructions from the Federal Circuit and the substantive issues the panel may need to address.
  • Contemplated procedures for the proceedings on remand: including whether the panel anticipates additional briefing from the parties, an additional oral hearing, and/or reopening the record to permit introduction of additional evidence, as well as whether there should be a recommendation to expand the panel.
  • Policy considerations: including whether the Federal Circuit’s decision highlights any novel, evolving, or contentious issues of law or policy or raises any issues of particular importance to the USPTO or the patent community, as well as whether the decision on remand should be considered for precedential designation.

Although the above summary pertains to actions required from the panel, it is important for practitioners to note that, by the time they have the teleconference with the panel, the panel will be up to speed on the facts and issues of the remanded case from having had to prepare for and participate in the remand meeting.

“Requirements” for the Parties in Trials (Appendix 2)

Parties in remand trial cases are required to contact the Board within 10 business days after the Federal Circuit’s mandate is issued to arrange a teleconference with the panel, and the teleconference must take place within the first month after the mandate’s issuance. Prior to the teleconference, the parties must have a meet and confer in a reasonable and good faith effort to reach agreement on the remand procedures (e.g., 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). The parties must then propose the remand procedure to the panel.

Considerations for the Parties in Trials (Appendix 2)

SOP 9 explains that, although the panel will consider the parties’ proposed procedures, the panel will ultimately decide on the remand procedures resulting from trials, guided by the following considerations:

  • General: the scope of the remand, as determined from the reasoning and instructions provided by the Federal Circuit, as well as its effect “on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings” will be considered. The time and expense that would be involved for permitting additional briefing and new evidence will also be considered.
  • Additional briefing: whether the parties have already had an adequate opportunity to address the issues raised by the remand will be considered (e.g., a new or revised claim construction or a change in the law may justify additional briefing).
  • Additional evidence: the evidentiary record will generally not be re-opened, and the party seeking to do so must demonstrate why the evidence already before the Board is inadequate and show good cause as to why additional evidence is necessary. The panel will also consider whether additional briefing would be sufficient—without the submission of additional evidence—and how much additional time would be needed to develop any new evidentiary record.
  • Additional oral argument: an additional oral hearing will generally not be authorized. But oral hearing may be allowed in limited situations where new evidence is permitted.

In addition to the considerations specified above, SOP 9 provides a chart reflecting the likelihood of the Board permitting additional briefing, evidence, or oral argument under different remand scenarios:

SOP 9 clarifies, however, that the above remand scenarios are provided as “exemplary guidance only.”

Considerations for Ex Parte and Reexamination Appeals (Appendix 2)

SOP 9 provides a separate section in Appendix 2 for ex parte and reexamination appeals, for which reversals at the Federal Circuit are considered to be remanded cases to the USPTO for further action. Whether the Board or a USPTO examiner will be responsible for handling the remanded case depends on the following:

  1. Whether the Federal Circuit directed a particular entity of the USPTO to act upon the remand;
  2. Whether the outstanding rejections can be further addressed by the Board either with further explanation of a finding of fact or conclusion of law or with a new ground of rejection based on further findings of fact or reasoning based on the current record; and/or
  3. Whether a reversal requires a need for further prior art searching by the examiner and/or issuance of a patent or reexamination certificate.

The Board may ask the appellant or parties to provide further briefing on a matter of law or fact raised by the Federal Circuit, whereas additional evidence is only permitted upon reopening of prosecution before the examiner. SOP 9 then provides a chart showing default appeals procedures for common remand scenarios:

Again, SOP 9 clarifies that the above are merely default scenarios and that circumstances not contemplated may necessitate a different procedure.

Examples of Common Remand Scenarios (Appendix 2)

SOP 9 then provides specific examples of what happened in prior cases involving common remand scenarios, as summarized in the chart below (cited case names and numbers are omitted below):[2]

Lastly, SOP 9 points out that, in all cases, absent good cause, proceedings on remand generally will not be stayed once the Federal Circuit has issued its mandate, even when a party has petitioned the Supreme Court for a writ of certiorari. In trials, the parties may contact the Board to request authorization to file a motion for a stay of proceedings on remand, which will be considered by the Board on a case-by-case basis with particular focus on whether the Supreme Court’s judgment could affect the Board’s decision on remand.