United States: PTAB: What to Expect On Remand

Only a portion of Federal Circuit decisions on appeals from IPRs and CBMs have remanded the cases in full or in part to the Patent Trial and Appeal Board ("PTAB"). These remanded cases have been working their way through the PTAB, leading to new final written decisions.

While there are rules and statutes governing the timing of the trial phase of a PTAB proceeding, there are no such rules governing the remand process. Thus, a review of the PTAB docket is needed to determine what a party can expect on remand. While the procedures used on remand can be panel-specific, there are some similarities.

Teleconference with the Board

Jurisdiction returns to the PTAB upon issuance of the Federal Circuit's mandate. See Federal Circuit Rule 41. A teleconference with the PTAB may occur within a week to about a month after the mandate issues. While most orders do not indicate whether a party requested the teleconference, one order commented that no teleconference occurred because the parties failed to request one. adidas AG v. NIKE, Inc., IPR2013-00067 (Aug. 10, 2016) (Paper 62). While they are common, a teleconference does not always occur. See, e.g., Corning Optical Comm'ns RF, LLC v. PPC Broadband, Inc., IPR2013-00340 (May 20, 2016) (Paper 82) (without a prior teleconference, the PTAB issued an order to confer to determine whether supplemental briefing was necessary).

Briefing on Remand

The PTAB typically authorizes the parties to submit five- to 15-page briefs explaining the impact of the Federal Circuit's ruling. But the Board has twice denied briefing following a request and has once decided not to authorize briefing when no party had made a request. See, e.g., Corning Optical Comm'ns RF, LLC v. PPC Broadband, Inc., IPR2013-00340 (May 20, 2016) (Paper 85); adidas AG v. NIKE, Inc., IPR2013-00067 (Aug. 10, 2016) (Paper 62).

Simultaneous briefing by the petitioner and the patent owner is common. See, e.g., Shaw Indus. Group, Inc. v. Automated Creel Sys., Inc., IPR2013-00132 (June 3, 2016) (Paper 49) at 4 ("We are not persuaded that Petitioner should file its brief first and Patent Owner should respond because neither party is seeking relief from the Board, as would be the case when a motion and opposition are filed.") But some panels stagger the briefing, with the petitioner filing an opening brief and the patent owner filing a response a week later. See, e.g., Sipnet EU S.R.O. v. Straight Path IP Group, Inc., IPR2013-00246 (Mar, 29, 2016) (Paper 68) at 2.

No New Evidence

Ever since the first panel handled a remand in Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026 (Sept. 1, 2015) (Paper 77) at 3, it appears that the PTAB has ordered that no new evidence may be filed with the briefs. However, the PTAB recently ordered briefing on whether new declaratory evidence would be appropriate.  SAS Inst., Inc. v. ComplementSoft, LLC, IPR2013-00226 (Dec. 15, 2016) (Paper 48) at 4. When citing evidence, the Board has ordered that the parties must provide citations to the existing record where the evidence originally was introduced.  See, e.g., Sipnet EU S.R.O. v. Straight Path IP Group, Inc., IPR2013-00246 (Mar. 29, 2016) (Paper 68) at 2.

Timing of New Final Written Decision

The PTAB often takes about 3-6 months from the date of the Federal Circuit's mandate to issue its new final written decision on remand, although there are outliers. In the cases that have received a second final written decision, the results have been mixed, with the PTAB sometimes reversing and other times maintaining its findings from the original final written decision. In most remands, the PTAB has found that the petitioner did not show the reviewed claims to be unpatentable.

Chart Summarizing PTAB Remands

The chart below summarizes the procedural aspects of the cases that have been remanded to the PTAB.  When no comments are provided, that indicates there has been no reported activity on the docket:

Date of Mandate

How long after mandate for hearing

Who requested hearing?

Order on Remand Briefing

Final Decision

Remand Results

Microsoft Corp. v. Proxyconn, Inc. IPR2012-00026 & IPR2013-00109US 6,757,717

8/25/2015

2 days

Petitioner

Paper 77 Simultaneous briefing; 15 pages

Paper 80 12/8/2015

Maintained claims not patentable

Sipnet EU S.R.O. v. Straight Path IP Group, Inc., IPR2013-00246US 6,108,704

1/14/16

7 weeks

unknown

Paper 68 Petitioner brief - 7 pages Patent Owner reply - 7 pages

Page 73 5/23/2016

Reverse prior decision; not establish unpatentable

MotivePower, Inc. v. Cutsforth, Inc.,IPR2013-00274US 7,990,018

2/29/16

1 month

unknown

Paper 37 Simultaneous briefing; 5 pages

Paper 44 9/9/16

Maintained most claims not patentable; Reversed prior decision -not establish unpatentable for some

Adidas AG v. Nike, Inc.,IPR2013-00067US 7,347,011

4/4/2016

4 months to order

none

Paper 62 No briefing since no party requested it

Corning Optical Comm'ns RF, LLC v. PPC Broadband, Inc., IPR2013-00340IPR2013-00345IPR2013-00346IPR2013-00347US 8,323,060US 8,313,353US 8,287,320

4/15/2016

1 month to Order

No hearing

Paper 82 board orders parties to discuss whether there should be briefing PAper 85 Denied request for briefing

Paper 89 11/16/2016

Maintained claims not patentable

Corning Optical Comm'ns RF, LLC v. PPC Broadband, Inc.,
IPR2013-00342
US 8,323,060

4/15/2016

1 month to Order

Paper 51 board orders parties to discuss whether there should be briefing Paper 55 Denied request for briefing

Paper 57 10/12/2016

Reverse prior decision; not establish unpatentable

Ariosa Diagnostics, Inc. v. Verinata Health, Inc.,
IPR2013-00276 & IPR2013-00277
US 8,318,430

12/23/2015

3 weeks

unknown

Paper 49 Petitioner brief - 15 pages Patent Owner reply - 15 pages

Paper 64 8/15/2016

Maintained not establish unpatentable

Dell, Inc. v, Acceleron, LLC, IPR2013-00440US 6,948,021

4/21/2016

3 weeks

Both parties

Paper 46 Simultaneous briefing; 10 pages

Paper 49 8/22/2016

Reverse prior decision; not establish unpatentable

Shaw Indus. Group, Inc. v. Automated Creel Sys., Inc.,
IPR2013-00132
US 7,806,360

11/14/2016

1 month

unknown

Paper 48 Simultaneous briefing; 5 pages

SAS Inst., Inc. v. ComplementSoft, LLC,
IPR2013-00226
US 7,110,936

11/14/2016

1 month

unknown

Paper 48 Simultaneous briefing; 5 pages

Respironics, Inc. v. Zoll Medical Corp, IPR2013-00322
US 6,681,003

7/29/16 Fed. Cir. Decision

Parties filed joint motion to terminate on 11/21/16

Nuvasive, Inc. v. Warsaw Orthopedic, Inc., IPR2013-00206 & IPR2013-00208
US 8,251,997

9/30/2016

1.5 months

Paper 73 Patent Owner brief ; 10 pages; Petitioner no longer a party

Veeam Software Corp. v. Symantec Corp.,IPR2014-00090
US 7,024,527

8/30/16 Fed. Cir. Decision

Neste Oil Oyj, v. REG Synthetic Fuels, LLC, IPR2013-00578
US 8,231,804

11/9/16 Fed. Cir. Decision

Medtronic, Inc. v. Nuvasive, Inc., IPR2013-00507 & IPR2013-00508US 8,187,334

11/9/16 Fed. Cir. Decision

Olympus America, Inc. v. Perfect Surgical Techniques, Inc.,
IPR2014-00233
US 6,030,384

11/15/16 Fed. Cir. Decision

Google Inc. v. Unwired Planet, LLC,
CBM2014-00006
US 7,203,752

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