Smoothing the Way for Appellate Success in the PTAB

Robert M. Asher

By Robert Asher. Co-Chair of our Patent Practice Group

December 2017 PTAB Alert

While the Patent Trial and Appeal Board would prefer that its final written decision mark the last  it sees of an inter partes review or other AIA (America Invents Act) proceeding, the Federal Circuit Court of Appeals occasionally reverses and remands a case back to the PTAB for further consideration.  In the absence of rules and, in particular, without a statutory deadline for issuing a final decision following remand, confusion has reigned over cases returning to the PTAB from the Federal Circuit.

The PTAB recently announced Standard Operating Procedure (“SOP”) 9, which lays out procedures for handling remanded cases. The PTAB set a goal to issue a final written decision on remanded cases within six months of the Federal Circuit’s mandate.

To speed remanded cases, the chief judge of the PTAB and/or the deputy chief judge and/or a delegated judge will discuss issues raised in each remanded case with the panel that issued the original decision between the date of the appellate decision and the date the mandate issues.  (Mandate is the document by which an appellate court formally closes an appeal and transfers jurisdiction, in this case back to the PTAB.)

The focus of the judges’ meeting will be on the process to be applied and on the issues raised by the Federal Circuit, not on the substantive outcome of the case. For example, the PTAB must determine early on whether additional briefing or oral hearing will be required and whether new evidence may be introduced.

Since the panel will be primed to proceed, the parties must likewise be prepared to move quickly when a case has been remanded. They need to try negotiating agreement on procedures such as briefing, scheduling and additional evidence.

Then the parties must consult with the panel, no later than one month after the mandate, to have the PTAB finalize these procedures in light of its earlier discussions with the chief judge or his designee and the proposal of the parties.  SOP 9 provides the panel with guidance, based on previous panel decisions, as to the procedures to be followed.

A successful appeal of an adverse decision normally leads to a remand. A reversal that finally determines a case in favor of the appellant, as we were able to secure for our client in Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed.Cir. 2016), is quite rare.

Successful practitioners will benefit from reviewing the SOP guidelines upon winning an appeal. It is counsel’s duty to get involved early and to move the case along quickly to ready it for decision in advance of the six-month aspirational goal. These guidelines are welcome news to the successful appellant.