Developments in IPR Remands from the Federal Circuit During the First Half of 2017
Previously, we reported the outcomes of remands from the Federal Circuit to the PTAB in IPR cases through 2016. [https://www.knobbe.com/news/2017/02/ipr-appeals-outcomes-fed-circ-remands-ptab-law360]. This note is an update to that report, surveying the outcomes and status of remands to the PTAB in the first half of 2017.
To date this year, the PTAB has only issued one post-remand IPR decision (Athena Automation Ltd., v. Husky Injection Molding Sys. Ltd., IPR2013-00290, Paper 61 (P.T.A.B. Apr. 28, 2017)). In this case, the Fed. Cir. held that a certain reference incorporated another reference for the purposes of an anticipation analysis and remanded to the PTAB to determine anticipation considering the material incorporated by reference. On remand, the PTAB reversed their original final written decision with respect to the claims at issue, resulting in those claims being held unpatentable as anticipated in light of the incorporated material. Athena marks the first remanded IPR decision in which the initial determination in favor of the patent owner was reversed to find for the petitioner.
In our previous survey, we reported that the PTAB issued decisions after remand in an average of 7.4 months. Since then, the PTAB has slowed down somewhat issuing decisions on remands. Presently, the pendency on remand is roughly 6-10 months. There are two remanded case that have been pending for over 12 months, the longest has been pending over 16 months.
Of the 16 IPR remands and one CBM remand in 2016, four terminated in settlement this year, three of which terminated before the PTAB issued its first order on the remand proceedings. Of the other 13 remands, one settled prior to 2017, 6 remain pending, and 6 (including Athena) have reached a second final written decision. The four settlements in 2017 are a noteworthy change because only one remanded case settled prior to 2017. Even that case settled nearly in 2017 (Dec. 29, 2016). It is possible that parties in remanded IPR proceedings have begun to consider the outcome of a remand sufficiently unpredictable that the remand spurred them into settlement.
Additionally, in remanded cases this year, the PTAB has issued a handful of orders regarding briefing and additional evidence. These orders have followed the trend of allowing briefing in most remand proceedings, but not new evidence.
In addition to the 6 pending cases that were remanded in 2016, the Fed. Cir. has remanded 12 IPRs so far in 2017. All of the cases remanded by the Fed. Cir. in 2017 remain pending. Continued monitoring of the pending remands will likely provide added insight into the workings and outcomes of those proceedings.