On November 17, 2017, the Patent Trial and Appeal Board (the “Board”)—the division of the United States Patent and Trademark Office that handles inter-partes review proceedings—announced new internal operating procedures that will govern how the Board will handle inter partes review proceedings that the Court of Appeals for the Federal Circuit remands to the Board after appeal.
See P.T.A.B. Standard Operating Procedure (“SOP”) 9
The SOP provides for a panel conference to be held within 30 days of issuance of the Federal Circuit’s decision (and thus, likely before issuance of the CAFC’s mandate). In addition to the panel of APJs previously assigned to the IPR in question, the conference will include representatives of the Chief and Deputy Chief Administrative Patent Judges. The conference may include discussion of general policy issues as well as issues specific to the IPR in question.
Appendix II of the SOP will be of particular interest to counsel in a remanded IPR. This appendix describes required conferences between counsel to the parties, and among counsel and the panel (potentially an expanded panel, depending on the result of the APJs’ internal conference). It also describes exemplary situations where additional briefing, additional argument, or even the taking of additional evidence will be ordered, depending on the basis for the Federal Circuit remand (
e.g., erroneous claim construction, the Board’s failure to explain its reasoning). Critically, the SOP notes that (1) remanded IPR proceedings are generally expected to be completed within six months of issuance of the mandate, and (2) panels will consider stay requests in individual cases, but generally the Board does not expect to stay remanded IPR proceedings while a party seeks a
writ of certiorari from the Supreme Court.
Publication of the SOP appears to reflect optimism on the part of the Board that the Supreme Court will not disrupt IPR procedures—or eliminate IPRs entirely—in deciding the
Oil States case now pending before the Court. Oral argument in that case will take place on Monday, November 27.
