is a Director with Sterne, Kessler, Goldstein & Fox. Mr. Wright co-chairs the firm’s appellate practice, and co-chairs its PTO litigation practice. He focuses his practice on contested proceedings before the United States Patent & Trademark Office. He is a recognized leader in inter partes review practice where there is co-pending district court litigation or a USITC investigation. He is familiar with the challenges faced by both patent owners and third-party requesters in these complex proceedings.
As of March 17, 2017, the Federal Circuit has remanded 23 post-grant proceedings back to the Patent Trial and Appeal Board (PTAB) for further consideration. But there are no rules governing remands: no deadlines and no set procedures. Even the Trial Practice Guide is silent. To shed some light on how the PTAB is handling remands, we analyzed these cases in detail and have spotted a few notable trends. We first provide some general statistics about appeals from post-grant proceedings to the Federal Circuit. We then discuss the types of issues remanded and discuss how the PTAB is handling them. Finally, we provide some practical takeaways.
The immediate modification to the page limits for motions to amend is more in line with reality given the high burdens placed on patent owners. Even when patent owners sought additional pages, the norm was a three to five page extension. So getting ten extra pages is a welcome change. Changing the page limits, alone, is unlikely to impact the calculus underlying the strategic choice to amend. But when the choice is made to amend, patent owners will be better able to meet their burden.