NOTE: This order is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

NESTLE PURINA PETCARE COMPANY,

Appellant

v.

OIL-DRI CORPORATION OF AMERICA,

Appellee

______________________ 

2017-1744

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2015-

00737. 

______________________ 

ON MOTION

______________________ 

Before DYK, O’MALLEY, and HUGHES, Circuit Judges.

PER CURIAM. 

O R D E R

This case is an appeal from an inter partes review 

(“IPR”) proceeding in which the Patent Trial and Appeal 

Board (“Board”) instituted review as to all challenged 

claims of Appellee Oil-Dri Corporation of America’s (“OilDri’s”) animal litter patent, but only as to one of the five 
2 NESTLE PURINA PETCARE CO. v. OIL-DRI CORP. OF AMERICA

grounds of unpatentability set forth in Appellant Nestlé 

Purina Petcare Company’s (“Nestlé’s”) IPR petition. 

Nestlé appeals the Board’s final written decision upholding all instituted claims. See Nestlé Purina Petcare Co. v. 

Oil-Dri Corp. of Am., IPR2015-00737, Paper No. 37, 2016 

WL 4375267 (P.T.A.B. June 20, 2016).

While briefing on appeal was pending, Nestlé filed a 

motion for remand to the Board based on documents that 

Oil-Dri produced to Nestlé in the parallel district court 

litigation. See Appellant Mot. Remand, ECF No. 40. 

According to Nestlé, these documents refute certain 

arguments that Oil-Dri made to the Board during the IPR 

proceeding regarding the scope of the prior art at issue. 

Nestlé also asserts that the documents establish that OilDri committed fraud against the Board by making material misrepresentations about the prior art, and that 

remand is required for the Board to reconsider its institution decision and/or final written decision in view of the 

documents, as well as to consider whether to impose 

sanctions.

Although Oil-Dri initially opposed the motion, it has 

since withdrawn its objection to remand in view of the 

Supreme Court’s decision in SAS Institute Inc. v. Iancu, 

138 S. Ct. 1348 (2018), and our order in Polaris Industries 

Inc. v. Arctic Cat, Inc., No. 2017-1870, -1871, 2018 WL 

2435544 (Mem) (Fed. Cir. May 30, 2018). See Appellee 

Rule 28(j) Letter, ECF No. 80. In Polaris, we held that 

SAS constitutes an intervening change in the law, and 

that a party may seek a remand to address noninstituted 

grounds. See Polaris, 2018 WL 2435544, at *1–2. Oil-Dri 

now asserts that remand is appropriate for the Board to 

consider all grounds in Nestlé’s IPR petition, consistent 

with SAS and Polaris, and contends that, because a 

remand would likely involve further development of the 

record, the Board should also be permitted to consider the 

documents that Nestlé contends necessitated remand in 

the first place in connection with the grounds as to which 
NESTLE PURINA PETCARE CO. v. OIL-DRI CORP. OF AMERICA 3

the IPR was originally instituted. Oil-Dri disputes, 

however, Nestlé’s assertions of fraud, and objects to 

Nestlé’s request for the Board to consider sanctions. 

Nestlé, for its part, agrees that remand is appropriate 

under SAS and Polaris, but maintains that the Board 

should also be permitted to determine whether sanctions 

are appropriate. See Appellant Rule 28(j) Letter, ECF No. 

81.

At oral argument, the parties confirmed that there is 

little daylight between their respective positions. See 

Oral Arg. at 1:35–38, Nestle Purina Petcare Co. v. Oil-Dri 

Corp. of Am. (No. 2017-1744), available at 

http://oralarguments.

cafc.uscourts.gov/default.aspx?fl=2017-1744.mp3 (“There 

is agreement that the case should be remanded here.”); id. 

at 10:20–28 (“[W]ith respect to the issue of remand, the 

differences here are fairly minor.”). Both parties agree 

that remand is appropriate to consider all petitioned 

grounds of unpatentability and the newly discovered 

evidence. They disagree, however, on two points. First, 

as described above, the parties dispute whether the Board 

should be instructed to consider the propriety of fraud and 

sanctions; Nestlé argues it should, while Oil-Dri argues it 

should not. See id. at 3:30–55, 10:45–11:10, 12:40–55. 

Second, they dispute whether and how we should resolve

one of Nestlé’s arguments related to the prior art’s disclosure of particle size, which Nestlé alleges the Board failed 

to address in its final written decision. Nestlé urges us to 

address the argument in the first instance on appeal and 

to “provide some guidance to the Board on the issue” in 

our remand decision. See id. at 7:20–45, 8:55–10:00, 

17:00–18:15. Oil-Dri asserts that the argument is waived, 

and, in any event, is without merit. See id. at 14:00–

16:35. 

We agree with the parties that remand is necessary 

and appropriate in light of SAS and Polaris. On remand, 

the Board may consider Nestlé’s allegations of fraud and 
4 NESTLE PURINA PETCARE CO. v. OIL-DRI CORP. OF AMERICA

the propriety of sanctions, but we decline to require the 

Board to do so. We also decline to address Nestlé’s particle size argument for the first time on appeal. We leave it 

to the Board to consider that argument to the extent it 

was properly presented in Nestlé’s IPR petition.

Accordingly,

 IT IS ORDERED THAT: 

(1) The parties’ joint request for remand pursuant 

to SAS is granted. On remand, the Board shall 

take appropriate action consistent with SAS. 

(2) Pursuant to the parties’ agreement, the Board 

may consider the documents relevant to Nestlé’s 

original motion for remand that the parties submitted to this court.1 We do not, however, require 

the Board to address the issues of fraud or sanctions in connection with those documents. 

(3) Each side shall bear its own costs.

(4) Pursuant to Federal Circuit Rule 41, this order shall constitute the mandate.

 FOR THE COURT

 June 11, 2018 /s/ Peter R. Marksteiner 

 Date Peter R. Marksteiner

 Clerk of Court

1 Because the parties agree that remand under SAS 

is appropriate and that the Board should be permitted to 

consider the documents, Nestlé’s original motion for 

remand is denied as moot.