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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 

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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. 

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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. 

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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. 

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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) 

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. 

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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 

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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 crossexamination. 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. 

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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. 

Remand 

Scenario 

Additional Briefing Additional Evidence Oral 

Argument 

Erroneous 

Claim 

Interpretation 

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 

No, unless evidence of 

record is insufficient to 

afford due process 

No 

Failure to 

Consider the 

Evidence 

Yes, unless the evidence was 

fully briefed on the record 

No No 

Inadequate 

Explanation 

by the Board 

No, unless the briefing on the 

issues is inadequate for the 

Board to have made a decision 

in the first instance 

No No 

Erroneous 

Application of 

Law 

Yes, unless the law was fully 

briefed on the record but not 

reflected in Board decision 

No No 

Lack of Due 

Process/Denial 

of APA rights 

Yes Yes, for parties whose 

rights have been violated, 

unless additional briefing 

on evidence of record is 

sufficient to afford due 

process 

Yes, if 

necessary to 

afford 

due process 

Improper 

Consideration 

of the 

Arguments 

Yes, unless argument is fully 

briefed in the record 

No 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. 

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Considerations Guiding Remand Procedures in Ex Parte and Reexamination 

Appeals 

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 

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 Prosecution/Reexamination Reopened 

Erroneous Claim Interpretation No, unless alternative claim interpretation renders the 

present rejection(s) moot 

Failure to Consider the Evidence No, unless the evidence of record is deemed entirely 

insufficient to support the present rejection(s) 

Inadequate Explanation No – the Board provides additional explanation or 

reverses on the present record 

Erroneous Application of Law No, unless the correct application of the law renders the 

present rejection(s) moot 

Lack of Due Process/Denial of 

APA rights 

Yes – typically in the form of a new ground of rejection 

Improper Consideration of the 

Arguments 

No – arguments that were not sufficiently briefed before 

the Board are deemed waived 

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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 

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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, 

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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). 

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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); 

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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”). 

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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). 

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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. 

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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 issue may be discussed and decided in a conference call. In 

deciding whether to stay remand proceedings, the Board’s primary consideration is 

whether the Supreme Court’s judgment would impact the Board’s decision on 

remand. See, e.g., Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., Case No. 

IPR2013-00132 (Paper 54) (PTAB Aug. 12, 2016) (the Board, sua sponte, staying 

remand proceedings after petition for writ of certiorari filed), (Paper 60) (Oct. 14, 

2016) (maintaining stay after briefing because the Board was persuaded that a 

Supreme Court decision could impact the Board’s assessment of the remanded 

issue); SAS Inst., Inc. v. ComplementSoft, LLC, Case No. IPR2013-00226 (Paper 

48) (PTAB Dec. 15, 2016) (denying stay request after a conference call), (Paper 

57) (PTAB Feb. 8, 2017) (denying request to stay because the issue on remand was 

separable from, and not influenced by, the question presented in the petition for a 

writ of certiorari). The Board’s decision not to stay remand proceedings does not 

affect the right of a party to apply to the Supreme Court for a writ of certiorari. 

17 

Case 6:20-cv-00507-ADA Document 68-1 Filed 02/17/23 Page 18 of 18