PTAB: What to Expect On Remand

Only a portion of Federal Circuit decisions on appeals from IPRs and CBMs have remanded the cases in full or in part to the Patent Trial and Appeal Board ("PTAB"). These remanded cases have been working their way through the PTAB, leading to new final written decisions.

While there are rules and statutes governing the timing of the trial phase of a PTAB proceeding, there are no such rules governing the remand process. Thus, a review of the PTAB docket is needed to determine what a party can expect on remand. While the procedures used on remand can be panel-specific, there are some similarities.

Teleconference with the Board

Jurisdiction returns to the PTAB upon issuance of the Federal Circuit's mandate. See Federal Circuit Rule 41. A teleconference with the PTAB may occur within a week to about a month after the mandate issues. While most orders do not indicate whether a party requested the teleconference, one order commented that no teleconference occurred