PTAB Issues First Decision on Remand from Federal Circuit

In an article discussing Microsoft v. Proxyconn—the Patent Trial and Appeal Board's (PTAB) first decision on remand from the Federal Circuit—Managing Intellectual Property cited Finnegan's AIA Blog. The blog post sheds light on how the PTAB may handle issues that remain following remand from the Federal Circuit. The post states, "This decision shows that, when reversed by the Federal Circuit on a particular invalidity ground, on remand the PTAB may find unpatentability on a ground not previously relied on in the original final written decision. We do not know yet whether the PTAB’s position will hold up on appeal, but petitioners should consider including alternative grounds in petitions (e.g., a ground that is stronger under a different claim construction) as insurance in the event of a reversal."