May 2018
CIPA Journal
By Timothy P. McAnulty; Michael R. Galgano
On 16 November 2017, the United States Patent and Trademark Office released Standard Operating Procedure 9 (SOP9), addressing the procedure for handling decisions remanded from the United States Court of Appeals for the Federal Circuit to the Patent Trial and Appeal Board (PTAB).1e.g., inter partes reviews (IPR), post grant reviews (PGR), and covered business methods reviews (CBM), and “Considerations Guiding Remand Procedures in Ex Parte and Reexamination Appeals,” e.g., appeals to the PTAB that originated from an examiner’s decision and are subsequently appealed to the Federal Circuit2.
Prior to the release of SOP9, decisions remanded from the Federal Circuit to the PTAB were determined on an ad hoc basis. This resulted in inconsistent procedures, unpredictable timeframes, and led to general uncertainty for the parties involved as to how the PTAB would handle the case on remand. For example, parties did not readily know if the PTAB would request or authorize additional briefing by the parties, permit additional evidence, or hold additional hearings. Nor could the parties readily predict the schedule or timing of events post-remand.
SOP9 strives to address these concerns through the implementation of normalized procedural guidelines for both the PTAB and the parties.
SOP9 procedures are designed to standardize the PTAB’s decision-making process by providing guidance to the public, the parties, and the PTAB3on handling remands. Notably, in relation to the PTAB itself, the guidance sets time limits (e.g. a six-month goal for the panel to issue its decision aft er remand.4) and instructs each panel assigned to a remand to meet and discuss the case with either the Chief Administrative Patent Judge or Deputy Chief Administrative Patent Judge5.
SOP9 instructs the panel assigned to a remanded decision to schedule a meeting with the Chief Judge, Deputy Chief Judge, and/or a delegate assigned by the Chief Judge/Deputy Chief Judge “within 30 days of receiving notice of the Federal Circuit’s decision.”6Th is meeting serves not only as an early opportunity for the panel to discuss the procedures for preparing a decision on remand, but also as an opportunity for the panel to discuss the issues addressed by the Federal Circuit that must be reconsidered on remand7. SOP9 identifies several topics that the panel should consider on a case-by-case basis, such as procedural history concerns and potential public policy considerations.8
The remainder of SOP9 is directed toward the parties involved in the remanded case. The guidance provides “Considerations Guiding Remand Procedures in Trials,”9 and also provides some “illustrative examples from recent cases.”10
Notably, the guidelines require the involved parties to inform the PTAB panel within ten business days of the Federal Circuit’s “mandate”, and arrange a teleconference with the PTAB panel.11 The teleconference should take place within the first month aft er the mandate.”12 And, prior to this teleconference, the parties are required to “meet and confer in a reasonable and good faith attempt to propose a procedure on remand.”13 Procedural aspects for consideration include:
1. whether additional briefing is necessary;
2. subject-matter limitations on briefing;
3. length of briefing;
4. whether the parties should file briefs concurrently or sequentially;
5. if briefs are filed sequentially, which party should open the briefing;
6. whether a second brief from either party should be permitted;
7. the briefing schedule;
8. whether either party should be permitted to supplement the evidentiary record;
9. limitations, if any, on the type of additional evidence that will be submitted;
10. the schedule for submitting additional evidence, if any; and
11. any other relevant procedural issues.14
Even with this mandatory requirement to meet and confer, “the panel will ultimately decide the procedures to be followed on remand.”15 The guidance does, however, shed light on how the panel will likely handle the substantive and procedural aspects of the remanded IPR, PGR, or CBM proceeding.16 Specifically, SOP9 sets forth “exemplary guidance” on how panels will likely address the remand.17 For example, where the Federal Circuit remands a trial decision because it finds the PTAB failed to consider evidence, the panel will likely permit additional briefing by the parties, but is not likely to permit additional evidence or an oral argument.18 Conversely, in a scenario where the Federal Circuit remands a trial decision because it finds that the PTAB issued a final decision that denies a party sufficient notice of the issues and opportunity to respond, the panel is likely to permit additional briefing, additional evidence, and an oral argument.19
This guidance is summarized in a table entitled “Default trial procedures for common remand scenarios” (reproduced overleaf).20
Similar to the exemplary guidance provided for parties in remanded trials, SOP9 provides default PTAB procedures for parties involved in remands from more traditional ex parte and reexamination appeals.21 For example, in a scenario where the Federal Circuit remands an ex parte appeal due to the PTAB’s failure to consider evidence, the PTAB is unlikely to reopen prosecution “unless the evidence of record is deemed entirely insufficient to support the rejection(s)” and will otherwise rely on the evidence already contained in the record.22 In a remand of an appeal stemming from a denial of adequate notice and opportunity to respond, the PTAB is likely to reopen prosecution by entering a new ground of rejection and offering the applicant the opportunity to respond.23
This guidance is outlined in a table entitled “Default appeals procedures for common remand scenarios” (reproduced on the opposite page).24
These tables reflect general guidance and do not set specific procedures that the PTAB will follow in every case.25
Putting the Guidance into Practice—Remands Issued Before 16 November 2017
Following SOP9’s release on 16 November 2017, several PTAB panels began directly referencing the guidance in orders on the conduct of the proceedings – even in remands from the Federal Circuit that were issued before the guidance was released.26
Clearly, these cases could not abide by every requirement, e.g., some of the timetabling requirements, the PTAB was able to integrate some aspects of the guidance. These orders may serve as a useful preview for remands issued after 16 November 2017, which will embrace all aspects of the guidance.27 They also illustrate some of the range of grounds for a remand.
In Google, the Federal Circuit vacated and remanded the PTAB’s anticipation and obviousness determinations because the PTAB findings “lacked adequate rationale”29– which sounds familiar to some EPO practitioners. After being remanded to the PTAB, the parties had a teleconference call with the panel to “discuss the parties’ request for additional briefing.”30 Despite the parties’ requests for ten pages of additional briefing, which would be used to identify and address where in the record the relevant evidence and arguments were located, the panel explained that SOP9 “suggests that additional briefing may not be called for when… the reason for the remand is inadequate explanation by the [PTAB].”31Thus, the panel declined to allow for additional briefing. Instead, the panel allowed each party to fi le a paper, not to exceed three pages in length, to list relevant locations of evidence in the record, but the parties were precluded from incorporating any arguments.32 33
This decision does indicate that the PTAB is seeking to follow the defaults provided in the guidance, even before it became effective. Despite the explicit language that it will follow the SOP9 guidelines, the panel did provide the parties a limited opportunity to be heard. As this example shows, it is still not conclusive whether the PTAB will strictly follow the default procedures provided in SOP9, and practitioners should continue to monitor upcoming decisions to have a better understanding of how the guidance is implemented.
In CaptionCall, the Federal Circuit vacated and remanded the PTAB’s anticipation and obviousness determinations because the PTAB “failed to consider material evidence and failed to explain its decisions to exclude the evidence.”35 The Court instructed the PTAB on remand to admit and consider certain testimony evidence.36 After being remanded, the parties engaged in a teleconference call with the panel to discuss remand procedures concerning additional briefing and evidence.37During the conference, the patent owner requested briefing to address testimony, documentary evidence, and claim construction decisions.38The panel, “mindful of the Federal Court’s remand instructions [and SOP9 guidance],” only authorized briefing on the testimony.39The briefing was also limited to specific issues relating to the testimony and could be no more than 10,000 words.40 The petitioner was allowed to file a responsive brief addressing the same issues within the same word limit.41 Lastly, the panel allowed the patent owner to submit exhibits of the transcript related to the testimony in question, but no other evidence.42
The PTAB directly acknowledged SOP9. But, again, it did not directly align itself with the suggested default procedure. As indicated in the table above, the default procedures for remands relating to the PTAB’s failure to consider evidence is to allow additional briefing but not allow additional evidence. While the PTAB did limit the amount of evidence that will be permitted, it did allow the patent owner to submit additional evidence. And, while the PTAB departed only slightly from the default procedures, this may suggest that the PTAB is willing to adjust the procedures on remand to the particular case. Again, practitioners should continue to watch for upcoming decisions before making any specific conclusions on how strictly the PTAB will apply the guidance in SOP9.
Since the release of SOP9 there have been at least five Federal Circuit decisions remanding an issue to the PTAB. In none of these had the PTAB issued any orders at the time of writing. Three of these illustrate more general issues that may arise, and they are therefore most useful to exemplify the types of reasons for remand to the PTAB, and consider what approach might be taken.
In Microsoft , the Federal Circuit, while affirming the PTAB’s claim construction, vacated and remanded in part determinations of anticipation and obviousness.44 On appeal, the petitioner argued that the PTAB failed to address each alleged anticipation ground and failed to give proper effect to the expert’s testimony in its obviousness determination.45 The Court agreed with both of the petitioner’s arguments and vacated the PTAB’s patentability determinations.46 The Court instructed the PTAB upon remand to review each anticipation ground, as well as provide adequate explanation as it relates to the expert testimony in the obviousness determination.47 One can expect the PTAB to revisit and issue a new final decision without any additional briefing.
In Bosch¸ the Federal Circuit, while affirming the PTAB’s finding of unpatentability of the patent’s original claims, vacated and remanded the denial of the patent owner’s contingent motion to amend the claims.49 The Federal Circuit agreed with the patent owner that the PTAB had impermissibly assigned the burden of proof onto the patent owner rather than the petitioner50, and held that the PTAB did misapply the burden of proving patentability.51 The Federal Circuit vacated and remanded the holding as it applies to the proposed substitute claims.52 This case raises the question of how willing the PTAB is to permit additional briefing in these circumstances.
In Takeda, the Federal Circuit vacated and remanded the PTAB’s finding that the proposed substitute claims lacked sufficient written description.54 The Court explained that the PTAB’s rejection was in error because two of the so-called dependent claims were actually independent claims.55 And, as the PTAB did not make factual findings relevant to any other grounds, the Court held that it must vacate and remand the decision.56 This may illustrate how the PTAB will address procedures on remand when the PTAB fails to properly consider the evidence in its final written decision, and also provide insight into other expected remand scenarios such as when the PTAB fails to make an adequate explanation or consider all of the relevant evidence.
On its face, SOP9 outlines a procedure with recommended guidance aimed at providing uniformity to remanded cases. However, as SOP9 itself indicates, the guidance is still discretionary. The approach follows a trend seen in a number of jurisdictions, such as the UK for somewhat greater hands-on guidance in the use of procedures to make effective use of those procedures. It will be interesting to see just how those develop and whether there are broader lessons to be learned.
Endnotes
1 SOP9 does not create any legally enforceable rights; however, the procedures described are considered “part of the [PTAB]’s deliberative process” and therefore provide critical guidance to all persons involved in the remand proceedings. Patent Trial and Appeal Board, Standard Operating Procedure 9, Procedure for Decisions Remanded from the Federal Circuit for Further Proceedings, at 1.
2 Id. at 2, 5, 9.
3 Id. at 1.
4 SOP9 does recognize that “certain scenarios may necessitate an extension of the six-month goal for issuing a remand decision.” Id. at 1.
5 Id. at 1–2.
6 Id. (footnote omitted).
7 Id. at 3.
8 Id.
9 in SOP9, Appendix 2
10 Id. at 2.
11 Id. The mandate is the formal transfer of jurisdiction from the Federal Circuit back to the PTAB, which occurs after the Court issues its opinion.
12 Id.
13 Id.
14 Id.
15 Id.
16 Id. at 8.
17 Id.
18 Id. at 8, 13. SOP9 does note certain limitations to these default procedures. For example, in this same scenario – a remand for failure to appropriately consider the evidence – despite the default procedure of permitting additional briefing, if the evidence was fully briefed on the record, the panel is unlikely to allow additional briefing. Id. at 8.
19 Id. at 8, 13. SOP9 does provide additional limitations to these default procedures. Id. at 8.
20 Id.
21 Id. at 9.
22 Id. at 9, 12.
23 Id. at 9, 15.
24 Id. at 9.
25 Id. at 8–9.
26 Dish Network L.L.C. v TQ Beta, LLC, IPR2015-01756, Paper No. 33 (P.T.A.B. Jan. 23, 2018); Riverbed Technology, Inc. v Silver Peak Sys., Inc., IPR2014-00245, Paper No. 44 (P.T.A.B. Jan. 19, 2018); HTC Corp. v NFC Tech., LLC., IPR2014-01198, Paper 59 (P.T.A.B. Dec. 11, 2017).
27 While SOP9 was mentioned in orders on remand in Dish Network, Riverbed Technology, and HTC Corp., all of these decisions settled and therefore do not provide any additional insight into the procedural processes.
28 Google Inc. v Intellectual Ventures II LLC, IPR2014-00787, Paper No. 56 (P.T.A.B. November 28, 2017).
29 Google Inc. v Intellectual Ventures II LLC, No. 2016-1543 (Fed. Cir. July 10, 2017).
30 Id. at 2.
31 Id. at 3.
32 Id. at 2–3.
33 Ed. Th is seems a welcome approach to using PTAB time efficiently, even if attorneys may rankle at it.
34 CaptionCall, L.L.C. v Ultratec, Inc., IPR2013-00540, Paper No. 91 (P.T.A.B. Jan. 3, 2018)
35 Ultratec, Inc. v CaptionCall, LLC, No. 2016-1706 (Fed. Cir. Aug. 28, 2017).
36 Id. at 2.
37 Id.
38 Id. at 4–5.
39 Id. at 5.
40 Id. at 6.
41 Id.
42 Id. at 9–10.
43 Microsoft Corp. v Parallel Networks Licensing, LLC, No. 2016-2515 (Fed. Cir. Dec. 1, 2017).
44 Id. at 3.
45 Id. at 11–12, 14.
46 Id. at 12–13, 18.
47 Id.
48 Bosch Auto. Serv. Solutions, LLC v Matal, No. 2015-1928 (Fed. Cir. Dec. 22, 2017).
49 Id. at 2.
50 Id. at 22–23.
51 Bosch, No. 2015-1928, at 22–23.
52 Id.
53 Takeda Pharm. Co. Ltd. v Array Biopharma Inc., No. 2017-1079 (Fed. Cir. Dec. 26, 2017).
54 Id. at 2.
55 Id. at 5–6.
56 Id. at 6.
Originally printed in CIPA Journal in May 2018. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm’s clients.
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