PATENT TRIAL AND APPEAL BOARD
`
`STANDARD OPERATING PROCEDURE 9
`
`Procedure for Decisions Remanded from the Federal Circuit for
`Further Proceedings
`
`This Standard Operating Procedure (SOP) addresses the procedure for
`handling all decisions on cases remanded from the Court of Appeals for the
`Federal Circuit (Federal Circuit) to the Patent Trial and Appeal Board (Board) for
`further proceedings. This SOP creates internal norms for the administration of the
`Board to promote consistency. It also provides guidance to the parties, the public,
`and the Board regarding Board decisions remanded from the Federal Circuit. This
`SOP does not create any legally enforceable rights. The procedures described in
`this SOP are part of the Board’s deliberative process.
`
`The Board has established a goal to issue decisions on remanded cases
`within six months of the Board’s receipt of the Federal Circuit’s mandate. The
`mandate makes the judgment of the Federal Circuit final and releases jurisdiction
`of the remanded case to the Board.
`
`The Chief Administrative Patent Judge (Chief Judge) and the Deputy Chief
`Administrative Patent Judge (Deputy Chief Judge) believe that identifying and
`discussing potential issues soon after the Federal Circuit’s opinion will facilitate
`timely issuance of decisions on remand. Thus, the Chief Judge and/or the Deputy
`Chief Judge will discuss each remanded case with the panel before the issuance of
`the mandate, and before the panel expends substantial effort on the case. The
`Chief Judge and Deputy Chief Judge request that the panel schedule a meeting
`within thirty days of receiving notice of the Federal Circuit’s decision.1 The panel
`
`1 Please note that this meeting is expected to occur before the mandate issues from
`the Federal Circuit. Under Rule 41(b) of the Federal Rules of Appellate Procedure,
`a mandate “must issue 7 days after the time to file a petition for rehearing expires,
`or 7 days after entry of an order denying a timely petition for panel rehearing,
`petition for rehearing en banc, or motion for stay of mandate, whichever is
`later.” Because there is a 30-day period under Fed. Cir. R. 40(e) for filing a
`rehearing petition, the mandate usually issues 37 days after judgment if no party
`seeks rehearing or a stay of the mandate. However, in cases in which the Director
`
`SRA - Exhibit 2129
`Facebook, Inc. et al. v. SRA, LLC
`IPR2013-00480
`
`

`

`may arrange for the meeting by contacting the Chief Judge’s or Deputy Chief
`Judge’s administrative assistant.
`
`The Chief Judge and/or Deputy Chief Judge may assign delegate(s) to meet
`with the panel in lieu of, or in addition to, the Chief Judge and Deputy Chief Judge.
`The Chief Judge may also elect to expand the panel assigned to the remanded case
`in accordance with SOP 1. The Chief Judge, however, expects panel expansion to
`be a rare occurrence.
`
`Panels should be prepared to discuss the issues presented by the Federal
`Circuit’s decision, as well as the expected procedure for preparing a remand
`decision. Specific guidance for panels regarding preparing for remand meetings
`can be found in Appendix 1 to this SOP. Given the early timing of the meeting in
`the remand process, the meeting is not intended to address the likely substantive
`outcome.
`
`The parties should expect the remand process to vary somewhat depending
`on the type of case and the issues presented. Appendix 2 to this SOP provides
`guidance to parties on remand procedures, plus illustrative examples from recent
`cases. Notably, certain scenarios may necessitate an extension of the six-month
`goal for issuing a remand decision.
`
`has intervened, Rule 40 of the Federal Rules of Appellate Procedure allows for 45
`days for any party to petition for rehearing. Thus, when no party petitions, the
`mandate will issue 52 days after judgment in those cases.
`
`2
`
`

`

`PATENT TRIAL AND APPEAL BOARD
`
`STANDARD OPERATING PROCEDURE 9
`
`APPENDIX 1
`
`Guidance for Panels in Preparing for Remand Meetings with the Chief Judge
`and/or Deputy Chief Judge
`
`This Appendix to SOP 9 provides guidance to panels in preparing for the
`remand meetings discussed in SOP 9. The Chief Judge and Deputy Chief Judge
`expect that a remand meeting will occur in every remanded case. As noted in
`SOP 9, the Chief Judge or Deputy Chief Judge may assign delegate(s) to meet with
`the panel in lieu of, or in addition to, the Chief Judge and Deputy Chief Judge.
`The Chief Judge also may elect to expand the panel assigned to the remanded case
`for the specific reasons articulated in SOP 1 (e.g., to address an issue of
`importance).
`
`The topics to be discussed at a remand meeting depend on the facts and
`circumstances of each case. In preparing for the meeting the panel should consider
`the following general topics, if relevant to their particular remand. The panel is
`welcome—although not required—to provide to the meeting participants a short
`(e.g., not to exceed two pages), informal summary addressing these and/or other
`issues in advance of the meeting. The likely substantive outcome need not be
`determined or discussed at this early stage.
`
`Potential Topics for Remand Meetings
`
`The procedural history, including the procedural history prior to the appeal
`to Federal Circuit, as well as the outcome and rationale of the Federal Circuit
`decision, as well as the procedural history of any related appeals.
`
`The issues on remand, including any specific procedural instructions from
`the Federal Circuit and the substantive issues the panel may need to address.
`
`Any contemplated procedures for the proceedings on remand, including
`whether the panel anticipates additional briefing from the parties, an additional oral
`hearing, and/or reopening the record to permit introduction of additional evidence.
`
`3
`
`

`

`The panel should consider whether to recommend that the Chief Judge expand the
`panel, taking into account the factors expressed in SOP 1.
`
`Any possible policy considerations, including whether the Federal Circuit’s
`decision highlights any novel, evolving, or contentious issues of law or policy (i.e.,
`issues not limited to the particular case) or raises any issues of particular
`importance to the Office or the patent community. The panel should contemplate
`whether a decision on remand, which involves such an issue, might be considered
`for precedential designation.
`
`4
`
`

`

`PATENT TRIAL AND APPEAL BOARD
`
`STANDARD OPERATING PROCEDURE 9
`
`APPENDIX 2
`
`Guidance for Parties Regarding Remand Procedures
`
`This Appendix to SOP 9 provides guidance to the parties on procedural
`issues. The procedure and pace of a remand following a Federal Circuit decision
`will vary depending on the type of case, the legal and factual issues involved, the
`specific instructions from the Federal Circuit, the recommendations of the parties,
`and any other particularities of the case. Considerations guiding remand
`procedures and common remand scenarios based on a non-exhaustive sample of
`remanded cases are discussed below.
`
`Parties in remanded trial cases are to contact the Board within ten (10)
`Parties in remanded trial cases are to contact the Board within ten (10)
`business days after the mandate issues to arrange a teleconference with the panel.
`business days after the mandate issues to arrange a teleconference with the panel.
`Before the teleconference, the Parties shall meet and confer in a reasonable and
`good faith attempt to propose a procedure on remand. Parties are encouraged to
`seek agreement, if possible, on remand procedures including, but not limited to:
`(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. Teleconferences
`with the panel should take place within the first month after the mandate.
`
`Considerations Guiding Remand Procedures in Trials
`
`Although the panel shall consider procedures proposed by the parties, the
`panel ultimately will decide the procedures to be followed on remand. For
`example, the panel will decide whether to permit additional briefing and additional
`evidence (testimonial and documentary) or hold additional hearings following a
`remand.
`
`5
`
`

`

`The panel will consider the scope of the remand, as determined from the
`reasoning and instructions provided by the Federal Circuit, as well as “the
`effect . . . on the economy, the integrity of the patent system, the efficient
`administration of the Office, and the ability of the Office to timely complete
`proceedings.” See 35 U.S.C. §§ 316(b), 326(b) (setting forth considerations for
`prescribing regulations under the AIA). Although no statutory time limit exists for
`completion of a re-opened proceeding following remand, the Board recognizes that
`delays caused by re-opening the record after remand may be inconsistent with the
`Board’s stated goal of issuing a remand decision within 6 months from the
`mandate. The panel also will consider the time and expense involved that
`permitting additional briefing and new evidence will add to the proceeding. This
`approach is consistent with the expression of Board policy in 37 C.F.R. § 42.1(b):
`“This part shall be construed to secure the just, speedy, and inexpensive resolution
`of every proceeding.”
`
`Additional briefing
`
`In deciding whether to allow additional briefing by the parties, the panel will
`take into account whether the parties already have had an adequate opportunity to
`address the issues raised by the remand. For example, a new or revised claim
`construction not previously considered may lead the panel to seek additional
`briefing from the parties. See Microsoft Corp. v. Proxyconn, Inc., Case No.
`IPR2012-00026 (Paper 77) (PTAB Sept. 1, 2015). A change in the law usually
`would justify additional briefing to ensure that the parties’ positions under the
`changed authority are presented and considered. Additional briefing, when
`permitted, will normally be limited to the specific issues raised by the remand. See
`Proxyconn, supra; see also Dell Inc., v. Acceleron, LLC, Case No. IPR2013-00440
`(Paper 46) (PTAB May 26, 2016).
`
`Additional evidence
`
`In most cases, it will not be necessary to re-open the evidentiary record to
`new testimonial or documentary evidence. A party seeking to re-open the
`evidentiary record should be prepared to demonstrate why the evidence already
`before the Board is inadequate and show good cause why additional evidence is
`necessary. The panel will take into account whether the parties have already had
`
`6
`
`

`

`an adequate opportunity to address the issues raised by the remand with the
`evidence already of record. The panel will also consider whether additional
`briefing is sufficient without the submission of additional evidence.
`
`The panel will also consider how much additional time will be necessary to
`develop a new evidentiary record. For example, opening the record to new
`documentary evidence may require additional briefing to establish a proper
`foundation for the evidence and resolve any objections. See SAS Inst., Inc. v.
`ComplementSoft, LLC, Case No. IPR2013-00226 (Paper 55) (PTAB Jan. 18,
`2017). The Board’s discovery rules govern testimonial evidence and cross-
`examination. See id.
`
`Additional Oral Argument
`
`In most cases, an additional oral hearing will not be authorized. Normally,
`the existing record and previous oral argument will be sufficient. However, in
`those situations where new evidence is permitted, the panel may authorize
`additional oral argument.
`
`7
`
`

`

`Default Trial Procedures for Common Remand Scenarios*
`
`The chart below reflects the likelihood of the Board permitting additional
`briefing, evidence, or oral argument for various types of issues addressed on
`remand. The circumstances of any particular case may justify different outcomes.
`
`Additional Briefing
`
`Additional Evidence
`
`Remand
`Scenario
`Erroneous
`Claim
`Interpretation
`
`Failure to
`Consider the
`Evidence
`Inadequate
`Explanation
`by the Board
`
`Erroneous
`Application of
`Law
`Lack of Due
`Process/Denial
`of APA rights
`
`Improper
`Consideration
`of the
`Arguments
`
`Yes, unless the claim
`interpretation to be applied on
`remand was proposed by one of
`the parties and the effect thereof
`has been fully briefed
`Yes, unless the evidence was
`fully briefed on the record
`
`No, unless the briefing on the
`issues is inadequate for the
`Board to have made a decision
`in the first instance
`Yes, unless the law was fully
`briefed on the record but not
`reflected in Board decision
`Yes
`
`Yes, unless argument is fully
`briefed in the record
`
`No, unless evidence of
`record is insufficient to
`afford due process
`
`No
`
`No
`
`No
`
`Oral
`Argument
`No
`
`No
`
`No
`
`No
`
`Yes, for parties whose
`rights have been violated,
`unless additional briefing
`on evidence of record is
`sufficient to afford due
`process
`No
`
`Yes, if
`necessary to
`afford
`due process
`
`No
`
`*These particular remand scenarios are provided for exemplary guidance only and
`do not reflect all scenarios that have been or may result from remands by the
`Federal Circuit.
`
`8
`
`

`

`Considerations Guiding Remand Procedures in Ex Parte and Reexamination
`Appeals
`
`
`In ex parte appeals and reexamination appeals, reversals at the Federal In ex parte appeals and reexamination appeals, reversals at the Federal
`Circuit are considered to be remanded cases to the PTO for further action. Either
`Circuit are considered to be remanded cases to the PTO for further action.
`the Board or the examiner will take up remanded cases depending upon
`(1) whether the Federal Circuit directed a particular part of the Office to act upon
`remand, (2) whether the outstanding rejections can be further addressed by the
`Board either with further explanation of a finding of fact or conclusion of law or
`with a new ground of rejection based on further findings of fact or reasoning based
`on the current record, and/or (3) whether a reversal requires a need for further prior
`art searching by the examiner and/or issuance of a patent or reexamination
`certificate. Although expected to be a rare occurrence, the Board may ask the
`appellant or parties to provide further briefing on a matter of law or fact raised by
`the Federal Circuit. For example, in the case of intervening Federal Circuit law,
`the Board may seek appellant’s or the parties’ positions on the application of such
`law to the particular facts already of record. Additional evidence is only permitted
`upon reopening of prosecution before the examiner.
`
`Default Appeals Procedures for Common Remand Scenarios
`
`These procedures are default and circumstances not contemplated may
`necessitate a different procedure.
`
`Remand Scenario
`Erroneous Claim Interpretation
`
`Failure to Consider the Evidence
`
`Inadequate Explanation
`
`Erroneous Application of Law
`
`Lack of Due Process/Denial of
`APA rights
`Improper Consideration of the
`Arguments
`
`Prosecution/Reexamination Reopened
`No, unless alternative claim interpretation renders the
`present rejection(s) moot
`No, unless the evidence of record is deemed entirely
`insufficient to support the present rejection(s)
`No – the Board provides additional explanation or
`reverses on the present record
`No, unless the correct application of the law renders the
`present rejection(s) moot
`Yes – typically in the form of a new ground of rejection
`
`No – arguments that were not sufficiently briefed before
`the Board are deemed waived
`
`9
`
`

`

`Specific Examples of Common Remand Scenarios
`
`1. Remand for erroneous claim interpretation
`
`In trials, some panels have permitted additional briefing on remand limited
`to the Federal Circuit’s claim interpretation. New evidence was not permitted in
`those cases. See, e.g., Microsoft Corp. v. Proxyconn, Inc., Case Nos.
`IPR2012-00026, IPR2013-00109 (Paper 77) (PTAB Sept. 1, 2015) (after remand
`due to unreasonably broad claim interpretation, the Board authorized simultaneous
`briefing, but not new evidence or the use of prior art not previously considered in
`the Board’s final written decision); Straight Path IP Grp., Inc. v. Sipnet EU S.R.O.,
`Case No. IPR2013-00246 (Paper 70) (PTAB Mar. 29, 2016) (after a remand
`finding error in the Board’s claim interpretation, the Board authorized briefing
`directed to the impact of the decision on the trial proceeding, but did not authorize
`new evidence or new argument); PPC Broadband, Inc. v. Corning Optical
`Commc’ns RF, LLC, Case No. IPR2013-00342 (Paper 55) (PTAB Aug. 4, 2016)
`(after remand due to unreasonably broad claim interpretation, the Board denied
`requests for additional briefing where the requests addressed new issues not related
`to claim interpretation).
`
`In ex parte and reexamination appeals, the Board has taken up the case
`and issued a new Decision on Appeal where the record is clear upon remand. See,
`e.g., Application No. 11/610,411 (after remand for consideration of PTO policy on
`“configured to” claim language, the Board issued an affirmance decision);
`Reexamination Control Nos. 90/008,326, 90/011,287 (after remand for
`consideration of District Court’s alternative claim construction of the same patent,
`the Board maintained its claim interpretation under the PTO’s broadest reasonable
`interpretation standard); Reexamination Control No. 90/012,366 (the Board
`entered a new ground of rejection based on prior art already of record in light of
`alternative claim interpretation); Reexamination Control Nos. 95/001,305,
`95/001,548, 95/001,939 (the Board considered the rejection anew in light of the
`Federal Circuit’s claim interpretation and entered a new ground of rejection based
`on new reasoning in light of the new claim interpretation).
`
`However, cases have been taken up by or have been remanded to the
`examiner for further consideration in situations where a new claim interpretation
`
`10
`
`

`

`renders moot all maintained rejections before the Board, or upon specific order by
`the Federal Circuit. See, e.g., Application No. 12/392,192 (for an anticipation
`rejection rendered moot by the Federal Circuit’s claim interpretation, the Board
`remanded to the examiner for additional findings directed to the new claim
`interpretation); Reexamination Control No. 90/012,364 (the Board remanded to the
`examiner for consideration of claim interpretation under a different standard after
`the patent had expired); Reexamination Control Nos. 95/001,715, 95/001,716
`(administrative remand to the examiner because the Federal Circuit “directed the
`examiner to reevaluate the prior art based on the court’s claim construction”);
`Reexamination Control No. 95/002,169 (after reversal at Federal Circuit for
`“unreasonably broad” claim interpretation, examiner issued Reexamination
`Certificate); Application No. 10/906,508 (after remand for failing to give
`patentable weight to the preamble, the Board remanded to the examiner for further
`action).
`
`2. Remand for a failure to properly consider the evidence
`
`In trials, the Board has authorized additional briefing related to the
`
`evidence, but not the admission of new evidence. See, e.g., Ariosa Diagnostics v.
`Verinata Health, Inc., Case No. IPR2013-00276, IPR2013-00277 (Paper 49)
`(PTAB Jan. 13, 2016) (after remand for failure to sufficiently consider a piece of
`evidence, the Board permitted additional briefing about that evidence, but did not
`allow admission of additional evidence).
`
`However, where the Board was able to further consider briefing and
`evidence already of record, the Board did not allow further briefing. See PPC
`Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, Case No. IPR2013-00340
`(Paper 85) (PTAB Aug. 4, 2016) (after remand for failure to make factual findings
`regarding certain limitations, the Board denied requests for additional briefing and
`evidence and decided the issues on remand based on the arguments and evidence
`already of record).
`
`In ex parte and reexamination appeals, when evidence is lacking in the
`record or the Examiner made insufficient factual findings based on the evidence,
`cases have been taken up by or have been remanded to the examiner for further
`consideration. See, e.g., Reexamination Control Nos. 95/001,166, 95/000,166,
`
`11
`
`

`

`95/001,122, 95/001,401 (after reversal based on lack of supporting evidence, the
`examiner took action directly to issue Reexamination Certificate); Application No.
`09/874,423 (after reversal for insufficient evidence to support the Board’s findings,
`the Board administratively remanded to the examiner for further consideration);
`Application No. 10/529,984 (after remand for insufficient evidence, the examiner
`took action in issuing a new rejection); Application No. 11/645,067 (after remand
`for insufficient evidence to support rejection, the Board administratively remanded
`the case to the examiner for reconsideration of anticipation rejection); Application
`12/762,841 (after remand for failure to consider overlooked amendments and
`evidence, the Board administratively remanded to the examiner for a first
`consideration).
`
`However, the Board has considered sufficiently examined and briefed, yet
`overlooked, evidence on remand, and has considered the evidence of record again
`when specifically instructed by the Federal Circuit’s decision to do so. See, e.g.,
`Reexamination Control Nos. 95/000,326, 95/000,378 (the Board issued a new
`decision with further detailed explanation after Federal Circuit’s remand for failure
`to consider the general knowledge of the skilled artisan); Reexamination Control
`No. 95/001,134 (after Federal Circuit’s determination that substantial evidence did
`not support the Board’s findings of a lack of nexus and that the secondary
`consideration evidence was not commensurate in scope with the claims, the Board
`entered a new ground of rejection with further explanation); Reexamination
`Control No. 95/000,067 (after Federal Circuit’s remand for relying on facts without
`considering the facts in light of the Board’s new claim interpretation, the Board
`included additional fact finding from the record consistent with the Board’s
`interpretation); Application No. 10/529,984 (after remand for failure to properly
`consider specific factual findings, the Board issued a decision discussing the
`particular findings and reversing the rejection); Application No. 10/991,878 (after
`vacating the Board’s decision for failure to identify evidence supporting its
`findings and remanding for the Board to “consider whether the evidence of record
`is sufficient to maintain the Examiner’s rejection,” the Board issued a decision
`reversing the rejection for lack of evidence).
`
`12
`
`

`

`3. Remand for the Board’s failure to adequately explain its reasoning
`
`In trials, some panels have authorized limited additional briefing, but not
`
`new evidence. See, e.g., Cutsforth, Inc. v. MotivePower, Inc., Case No. IPR2013–
`00274 (Paper 37) (PTAB Mar. 31, 2016) (after remand for failure to adequately
`describe its reasoning for its obviousness determination, the Board authorized
`additional briefing limited to design choice as a reason to modify the art); In re
`Warsaw Orthopedic, Inc., Case Nos. IPR2013-00206, IPR2013-00208 (Paper 73)
`(PTAB Nov. 16, 2016) (after remand for failure to explain how the prior art
`discloses a claim limitation, the Board authorized additional briefing but not new
`evidence).
`
`In ex parte and reexamination appeals, the Board has added further
`explanation without remanding to the examiner when the record is sufficient to do
`so. See, e.g., Reexamination Control No. 95/000,443 (after remand for
`consideration of what reason, if any, to combine prior art, the Board reconsidered
`its obviousness decision on the record already present).
`
`4. Remand for erroneous application of the law
`
`In trials, a remand has warranted additional briefing and a supplemental
`motion to amend. See, e.g., Veritas Techs. LLC v. Veeam Software Corp., Case
`No. IPR2014-00090 (Papers 40, 42) (PTAB Jan. 27, 2017) (after remand for
`improperly denying a motion to amend, the Board authorized Patent Owner to
`refile its motion to amend (and supporting arguments) as a supplemental motion,
`Petitioner to file a supplemental opposition, and Patent Owner to file a
`supplemental reply).
`
`In ex parte and reexamination appeals, the examiner has taken up cases or
`the Board has remanded cases to the examiner for further consideration where the
`Federal Circuit’s decision renders moot all the rejections before the Board. See,
`e.g., Reexamination Control Nos. 95/000,072, 95/001,001, 95/000,153 (after
`reversal due to the Board’s error in obviousness determination, the examiner took
`action directly to issue a Reexamination Certificate); Reexamination Control No.
`95/001,469 (after remand to consider original claims after a patent expired with
`pending claim amendments, the Board entered an administrative remand to the
`examiner to consider the original patent claims in light of the evidence of record);
`
`13
`
`

`

`Application No. 11/578,646 (after vacating the rejection and remanding for
`insufficient legal reasoning in an obviousness determination, the Board remanded
`to the examiner for reconsideration in light of Federal Circuit’s decision);
`Application No. 10/868,312 (after vacating the rejection and remanding for error in
`applying the printed matter doctrine, the Board remanded to the examiner for
`reconsideration in light of Federal Circuit’s decision); Application No. 12/825,505
`(after reversal of obviousness rejection, the Board administratively remanded to the
`examiner for further consideration).
`
`However, the Board has addressed the legal issue upon remand when
`sufficiently briefed on the record. See, e.g., Reexamination Control No.
`95/000,196 (after remand for application of wrong priority date for one of the
`claims, the Board entered new grounds of rejection based on later prior art also of
`record); Reexamination Control Nos. 95/001,188, 95/001,169 (after remand for
`consideration of Federal Circuit decision in a related case, the Board entered a new
`ground of rejection); Application No. 10/378,261 (after reversal due to Board error
`in an obviousness determination, the Board issued a new decision reconsidering
`the evidence of record, pursuant to the Federal Circuit decision, and reversing the
`obviousness rejection); Application No. 08/478,995 (after remand on PTO’s
`motion due to intervening case law in obviousness-type double patenting rejection,
`the Board issued a new decision properly addressing the secondary consideration
`evidence of record); Application No. 09/832,440 (after remand for failure to
`engage in a proper enablement analysis, the Board entered a new decision applying
`the missing analysis and affirming the rejections on appeal).
`
`5. Remand for lack of due process or a denial of a party’s procedural
`rights under the Administrative Procedure Act (APA)
`
`In trials, some panels have authorized additional briefing and additional
`
`evidence. See, e.g., SAS Inst., Inc. v. ComplementSoft, LLC, Case No. IPR2013-
`00226 (Paper 55) (PTAB Jan. 18, 2017) (authorizing briefing and additional
`declaratory evidence, where Federal Circuit found that final written decision
`violated APA notice requirements by adopting a new claim interpretation
`“midstream”).
`
`14
`
`

`

`However, other panels have not authorized submission of additional
`evidence where additional briefing was sufficient to provide a fair opportunity for
`a party to respond. See Dell Inc. v. Acceleron, LLC, Case No. IPR2013-00440
`(Paper 46) (PTAB May 26, 2016) (after remand for denying the Patent Owner a
`fair opportunity to respond to arguments raised by a Petitioner for the first time at
`oral argument and subsequently adopted by the Board in its final written decision,
`the Board permitted additional briefing on the untimely raised issue).
`
`In ex parte and reexamination appeals, the Board has addressed due
`process concerns by entering a new ground of rejection and offering the
`opportunity for the applicant or patent owner to respond accordingly. See, e.g.,
`Reexamination Control No. 95/001,134 (after remand for improper burden shifting
`and relying on new reasoning that constituted a new ground of rejection, the Board
`addressed the issues in a new decision entering a new ground of rejection);
`Reexamination Control Nos. 95/000,067, 95/001,702 (after remand for further
`consideration of rejections not addressed by the Board in the first decision, the
`Board issued a new decision with new grounds of rejection); Application Nos.
`10/306,057, 10/868,312 (after remand because the Board’s decision introduced a
`new ground of rejection, the Board issued a new decision designating the
`affirmance in the original decision as a new ground of rejection); Application No.
`10/770,937 (after remand for the Board’s decision introducing new ground of
`rejection, the Board issued a second decision on request for rehearing designating
`the original decision as a new ground of rejection).
`
`Where a new issue was not considered by the examiner in the first instance,
`the Board has remanded the appeal to the examiner. See, e.g., Reexamination
`Control No. 95/001,555 (after remand for failure to consider certain proposed
`rejections that were not addressed by the examiner, the Board entered an
`administrative remand to the examiner for a first consideration).
`
`15
`
`

`

`6. Remands for failure to properly consider the arguments before the
`Board, such as misapprehending arguments, overlooking arguments,
`improperly considering arguments that were untimely raised, or
`improperly considering timely arguments as untimely
`
`In trials, additional briefing has been permitted. See Dell Inc. v. Acceleron,
`LLC, Case No. IPR2013-00440 (Paper 46) (PTAB May 26, 2016) (after remand for
`denying the Patent Owner a fair opportunity to respond to arguments raised by a
`Petitioner for the first time at oral argument and subsequently adopted by the
`Board in its final written decision, the Board permitted additional briefing on the
`untimely raised issue).
`
`In ex parte appeals and reexaminations, the Board has reviewed
`arguments that were overlooked but were properly briefed on appeal. See, e.g.,
`Reexamination Control No. 90/010,278 (after remand on PTO’s motion
`acknowledging failure to address an argument on appeal, the Board issued a new
`decision on appeal); Application No. 11/811,156 (after remand for failure to
`address arguments related to analogous art, the Board issued a new decision
`considering the overlooked arguments and affirming the rejections).
`
`Petition for a writ of certiorari filed in the Supreme Court
`
`In 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.2 In trials, a party may
`
`2 Parties are encouraged to review the Federal Rules of Appellate Procedure, the
`Federal Circuit Rules of Practice, and the Rules of the Supreme Court of the
`United States for specific timing requirements. See, e.g., Sup. Ct. R. 13(1)
`(“Unless otherwise provided by law, a petition for a writ of certiorari to review a
`judgment in any case, civil or criminal, entered by a state court of last resort or a
`United States court of appeals (including the United States Court of Appeals for
`the Armed Forces) is timely when it is filed with the Clerk of this Court within 90
`days after entry of the judgment.”). The time period to petition the Supreme Court
`is separate from the Federal Circuit’s issuance of the mandate to the Board. Parties
`are reminded that the Federal Circuit may entertain motions to stay the mandate
`pending the filing of a petition for a writ of certiorari in the Supreme Court under
`Rule 41(d) of the Federal Rules of Appellate Procedure.
`
`16
`
`

`

`contact the Board to request authorization to file a motion for a stay of proceedings
`on remand. The Board will consider such requests on a case-by-case basis. The
`Board may require briefing on a motion to stay the remand proceedings, or, for
`convenience, the iss