Since the introduction of the Patent Trial and Appeal Board (PTAB), a long standing question has been, "What happens when the Federal Circuit sends a case back to the board?" Despite PTAB proceedings beginning in 2012, appeals of PTAB decisions to the Federal Circuit did not begin until 2015. Law360 reached to Finnegan partner Jason E. Stach to discuss some of the trends that have emerged out of PTAB remands.
One challenge that attorneys are facing with PTAB remands is that there is no clear guidance. Stach believes that a framework of rules that address things such as a time frame for parties to request a conference call after the mandate issues from the Federal Circuit would be helpful. He said, "Something like that to give people some guidance and the board some guidance, at least to give a little bit of uniformity to the proceedings. But after that, the remands are going to potentially vary widely in what they cover. So I think at that point it’s going to be a panel-specific, case-specific decision on how the remand is going to proceed." Stach was also asked about outcomes of the cases returned to the PTAB. He said, "Just because you won at the Federal Circuit does not mean that you are necessarily going to win on remand. You still need to do your job and persuade the PTAB, they’re still going to look at it with a careful eye."
