PTAB Issues New Standard Operating Procedure Addressing Remands from Federal Circuit: The New Standards and How They May Affect Your Remand

by Sterne, Kessler, Goldstein & Fox P.L.L.C.

Sterne, Kessler, Goldstein & Fox P.L.L.C.

On November 16, 2017 the U.S. Patent and Trademark Office posted a new Standard Operating Procedure (SOP) addressing the conduct of cases remanded from the Federal Circuit to the Patent Trial and Appeal Board (PTAB). New “SOP 9” provides instructions to panels of the PTAB as well as guidance to the public on how remand proceedings are to be conducted. At a high level, the new SOP seeks to formalize the criteria for authorizing additional briefing, the introduction of new evidence, and the availability of additional oral hearings. The SOP confirms the PTAB’s goal of completing remand proceedings within six months of the Federal Circuit’s mandate. The SOP also directs panels of the PTAB to proactively consult with the Chief Judge, the Deputy Chief Judge, or one of the Vice Chief Judges within a month of the Federal Circuit decision. The SOP explains that this consultation procedure is intended in part to allow PTAB leadership to consider whether an expanded panel and precedential designation are warranted.

Because the SOP has not been formally promulgated, it does not have the force of law. Nevertheless, it provides important guidance to those involved in remands on how the PTAB will conduct remand proceedings. First, the SOP provides that parties in remanded trial cases are to contact the PTAB within ten business days after the Federal Circuit’s mandate. Second, the SOP indicates that teleconferences with the parties and the PTAB should take place within a month of the mandate. Third, prior to communicating with the PTAB, the SOP asks the parties to meet and confer “in a reasonable and good faith attempt to propose a procedure on remand.” The issues that the parties are expected to consider are: 

(1) whether additional briefing is necessary;
(2) subject matter limitations on briefing;
(3) the 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 procedural issues.

The SOP categorizes the issues on remand (e.g., erroneous claim interpretation, failure to consider the evidence, inadequate explanation by the PTAB, erroneous application of law, lack of due process or denial of APA rights, improper consideration of the arguments) and then indicates whether additional briefing, new evidence, or an additional oral hearing is likely to be allowed in each scenario. In the case of remanded PTAB trial proceedings (i.e., inter partes review, covered business method review, post-grant review, and interferences), additional briefing is likely to be authorized in every category except for “inadequate explanation” by the PTAB. The SOP notes that additional evidence—which may itself require additional briefing to address objections and require cross-examination—is unlikely to be allowed in any scenario unless there has been a due process or APA violation that justifies reopening the record. The same applies to additional oral hearings, which are unlikely to be authorized unless it is necessary to afford due process.

The above guidance differs for remands of ex parte examination (i.e., patent applications) and ex parte reexaminations. For those examinational proceedings, as distinct from PTAB trials, prosecution will not ordinarily be reopened unless there has been a due process violation that requires the applicant or patent owner to file a response (e.g., to a new ground of rejection).

The SOP also addresses the impact of a party’s attempt to obtain Supreme Court review. It states that “[i]n all cases, absent good cause, proceedings on remand generally will not be stayed once the Federal Circuit has issued its mandate, even when a party has petitioned the Supreme Court for a writ of certiorari.” It provides that in trials, a party may contact the panel and request authorization to file a motion to stay the remand for this reason. The panel may order briefing on the issue or resolve it through a conference call. The primary consideration will be whether any judgment by the Supreme Court would impact the PTAB’s decision on remand.

In the case of trials, the SOP generally notes that remand procedures are guided by the scope of the remand, the substance of the Federal Circuit’s decision (e.g., its reasoning and instructions), as well as considerations of efficiency and economy “to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b); see also 35 U.S.C. §§ 315(b), 326(b). With these overarching considerations in mind, the PTAB is likely to continue its existing practice of entertaining focused briefing limited to issues remanded to it by the Federal Circuit. The PTAB is unlikely to allow additional evidence or another oral hearing unless due process requires it. As was the ad hoc practice prior to this SOP, parties should meet and confer promptly after a Federal Circuit decision and plan to contact the PTAB within in ten business days of mandate to secure whatever process they believe is needed to resolve outstanding issues.

This SOP also creates an interesting process for having PTAB panels consult with PTAB leadership to evaluate whether a decision should be designated precedential. The SOP explains that the Chief Judge may elect to expand the panel assigned to the remanded case to, for example, address an issue of “importance.” The SOP highlights that this may occur where a remanded case involves any “novel, evolving, or contentious issues of law or policy (i.e., not limited to the particular case) or raises any issues of particular importance to the Office or the patent community).” It remains unclear what level of deference “precedential” designations will receive upon review by the Federal Circuit, but this new initiative to identify candidates for a precedential designation suggests that the Office is interested in using it more frequently.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Sterne, Kessler, Goldstein & Fox P.L.L.C. | Attorney Advertising

Written by:

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Sterne, Kessler, Goldstein & Fox P.L.L.C. on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.