Parties have some say in shaping post-remand procedure at the PTAB.
The Federal Circuit remanded Microsoft Corp. v. Proxyconn, 789 F.3d 1292 (Jun. 16, 2015) to the PTAB after affirming-in-part, reversing-in-part, and vacating-in-part the Board's decision that all but one challenged claim was unpatentable. In particular, the Federal Circuit revised the construction of several claim terms, vacated the unpatentability determinations based on those constructions, and remanded the case for reconsideration of the affected challenges. The Board's decision on remand was entered as paper 80 in Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026 (Dec. 9, 2015).
The Board first had to establish procedures for handling cases on remand. After the parties failed to reach agreement on how to proceed, the Board ordered them each to file one further brief limited to addressing the remaining unpatentability challenges in light of the Federal Circuit's revised claim constructions. The briefs were limited to 15 pages with no replies authorized, and were due in 7 business days. The Board also determined that its authority to render a decision on remand was not constrained by the time limit on final written decisions, because (a) the original final decision had been entered by the time limit, and (b) it would be otherwise impossible for the Board to act in accordance with the Federal Circuit's mandate.
The Board then reconsidered the vacated determinations in light of the revised claim constructions. The analysis largely paralleled that of the original final written decision and reached the same conclusions, though the Board was assiduous in tailoring the discussion to the Federal Circuit's claim constructions and taking into account the parties' argument in the remand briefs.
Noteworthy was the Board's designation of the decision on remand as a "final written decision" (Paper 80 at 18). Thus Proxyconn has another opportunity to request reconsideration of, and appeal from, this decision. Stay tuned!
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