PTAB Issues New Procedures for Remands from the CAFC

By: Oliver Richards

On November 16, the Patent Trial and Appeal Board amended its standard operating procedures and issued new guidance for parties as to what happens after the Federal Circuit remands a case. Prior to this guidance, PTAB panels were left to create ad-hoc procedures in consultation with the parties when the CAFC remanded a case. Now, the PTAB has issued a standardized set of guidelines creating a uniform procedure for how remands will be dealt with in the future.

According to the newly-issued Standard Operating Procedure (Procedure 9), in a case that has been remanded from the Federal Circuit, the panel will have a meeting with the Chief and Deputy Chief Judges of the PTAB prior to the mandate issuing from the Federal Circuit. At this meeting, the panel will discuss the outcome and rationale of the Federal Circuit decision and decide what issues need to be decided on remand. In addition, the Chief and Deputy will work with the panel to devise specific procedures for the case during remand, taking account of the nature of the remand, and will discuss any policy considerations that should be addressed on remand. Once the CAFC issues its mandate (which officially gives the case back to the PTAB), the Board has set a goal to issue a remand decision within six months.

Parties are advised to contact the Board within ten business days after the mandate issues to arrange a teleconference with the panel. Prior to that teleconference, parties are "encouraged" to meet and confer and reach agreement on what additional briefing and/or evidence might be appropriate for the remand proceeding. Teleconferences with the panel will take place within the first month after the mandate issues. As to expected results, the new guidance goes through a number of common types of remand decisions from the CAFC (e.g. incorrect claim construction, erroneous application of the law, etc.) and discusses exemplar procedures that might be used for these types of cases. With a few exceptions, most situations will involve new briefing but not new evidence.

If you are facing a remand to the PTAB after a CAFC decision, please consult these procedures in detail. They are available here.