SOP 3 (rev. 2, formerly SOP 9): Procedure for Decisions Remanded from the Federal Circuit for Further Proceedings

SOP 3 sets the Board's procedure for handling cases remanded from the Federal Circuit. It sets a goal of deciding remanded cases within six months of receiving the mandate, requires parties in remanded trials to contact the Board within ten business days after the mandate issues to arrange a panel teleconference, and supplies default rules, by remand scenario, on additional briefing, evidence and oral argument in trials and on reopening prosecution in ex parte and reexamination appeals. Both sides in a remanded trial must act quickly: contact the Board within ten business days of the mandate and meet and confer on a proposed remand procedure before the teleconference. The panel decides the procedure. Additional evidence is the exception, so a party seeking it must show why the existing record is inadequate and show good cause. In ex parte and reexamination appeals, further briefing is expected to be rare, and new evidence is allowed only if prosecution is reopened before the examiner. The SOP relies on 35 U.S.C. §§ 316(b) and 326(b) and 37 CFR § 42.1(b), and it creates no legally enforceable rights. WHAT IT DOES: Sets a goal of issuing remand decisions within six months of the Board's receipt of the mandate. Requires parties in remanded trials to contact the Board within ten business days after the mandate issues and to meet and confer on eleven listed procedural topics, including briefing, evidence and schedules. The panel decides the procedure after considering the scope of the remand, the factors in 35 U.S.C. §§ 316(b) and 326(b), and time and expense. Additional briefing is usually limited to the issues raised by the remand. The record is reopened to new evidence in few cases, and additional oral argument is not usually authorized. A chart gives defaults by scenario: erroneous claim interpretation, failure to consider evidence, inadequate explanation, erroneous application of law, lack of due process or denial of APA rights, and improper consideration of arguments. A second chart gives defaults for whether prosecution or reexamination is reopened in ex parte and reexamination appeals. Remand proceedings are generally not stayed pending a certiorari petition absent good cause. WHO AND WHEN: Applies to all Board decisions on cases remanded from the Federal Circuit: trials, ex parte appeals and reexamination appeals. Trial parties contact the Board within ten business days after the mandate issues, and the teleconference should take place within the first month after the mandate. The document lists the date as October 5, 2023, and the USPTO lists it as current. The text gives no separate effective date. It replaces Standard Operating Procedure 9 (rev. 1). KEY QUOTE: "In most cases, it will not be necessary to re-open the evidentiary record to new testimonial or documentary evidence." (p. 3, Additional evidence) EARLIER GUIDANCE AFFECTED: It replaces Patent Trial and Appeal Board Standard Operating Procedure 9 (rev. 1). It cites Board decisions, such as Microsoft Corp. v. Proxyconn, Inc., Dell Inc. v. Acceleron, LLC and SAS Inst., Inc. v. ComplementSoft, LLC, as illustrations of remand practice. PRACTICE TIP: Within ten business days after the mandate, contact the Board to arrange the panel teleconference, and before it meet and confer with the other side on a proposed remand procedure covering the eleven listed topics. If you want new evidence, be ready to show why the existing record is inadequate and show good cause.