PTAB Rejects Consideration Of New Issues On Remand

Addressing the scope of a remand from the US Court of Appeals for the Federal Circuit, the Patent Trial and Appeal Board (PTAB or Board) declined to consider evidence and arguments presented for the first time on remand. Corning Optical Communications RF, LLC v. PPC Broadband, Inc., Case No. IPR2013-00340 (PTAB., Aug. 4, 2016) (Lee, APJ).

Corning Optical filed a petition requesting inter partes review of several claims on a coaxial cable connector. The PTAB issued a final written decision (FWD) finding the claims to be unpatentable over the prior art. The patent owner appealed. On appeal, the Federal Circuit vacated the PTAB's determination of unpatentability and remanded.

On remand, the PTAB directed the parties to identify which issues the PTAB must reconsider on remand and whether those issues require additional briefing or submission of new evidence. The patent owner argued that the petitioner had failed to identify two entities as real parties-in-interest,