Cases remanded to the PTAB by the Federal Circuit are beginning to resurface.[1]   The PTAB decided two such cases this month.   See  Dell, Inc. v. Acceleron, LLC, Nos. 2015-1513, -1514 (Fed. Cir. March 15, 2016), on remand, IPR2013-00440, Paper 49 (PTAB Aug. 22, 2016) and Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Nov. 15, 2015), on remand, IPR2013-00277, Paper 62 (PTAB Aug. 15, 2016).  While the PTAB maintained its original position in the Ariosa case, it modified its position in the Dell case, determining that two claims it previously held anticipated, and thus unpatentable, were not unpatentable based on “the guidance from the Federal Circuit.”  Dell Decision on Remand at 3.

In Dell, among other things, the PTAB originally concluded the Petitioner had established that claims 3 and 20 (directed to a “computer network appliance”) were unpatentable.  Remand op. at 2.  With respect to these two claims, the Federal Circuit vacated the PTAB’s decision and remanded for their reconsideration.  Id. at 3.  With respect to claim 3, the Federal Circuit determined that the PTAB “improperly considered arguments presented by the Petitioner for the first time at oral hearing.”  Id. at 6.  That determination was based on the fact that the Petitioner for the first time argued at oral hearing that one reference – Hipp –disclosed certain information not previously identified by the Petitioner.  While not entirely clear, it appears the Petitioner had also raised the issue in its Reply.  See id. at 7-9.  However, just as it could not raise a new argument at oral argument, it was not proper to do so in its Reply.  Id.

With respect to claim 20, the Federal Circuit determined that a limitation in claim 20 required “a microcontroller module configured for remote polling.”  Id. at 11.  According to the PTAB, Petitioner applied a construction of “polling” in its Reply and Remand Briefing different than it had applied in its Petition without providing a “sufficient reason” for doing so.  Id. at 12.  Applying the original construction, the PTAB determined that Hipp did not expressly disclose the subject limitation and that the Petitioner did not argue inherency.  Id. at 13. Thus, the PTAB concluded that Petitioner had failed to establish that Hipp anticipates claim 20.

While the Federal Circuit has remanded very few of the PTAB cases it has reviewed, Dell and Ariosa reflect careful consideration by the Federal Circuit on appeal and by the PTAB on remand.  Given that AIA reviews are still relatively new and that not much guidance has been provided through case law,[2] decisions such as Dell and Ariosa are helpful for both the PTAB and the user community.

[1] Cases in which the Federal Circuit has reversed the PTAB, such as Straight Path IP Group v. Sipnet EU SRO, 806 F.3d 1356 (Nov. 25, 2015) (IPR2013-00246) are not addressed here.  The question whether the PTAB must follow such a reversal is left for another day.

[2] At this time, we have one Supreme Court case (Cuozzo v. Lee) and approximately 55 Federal Circuit opinions (other than Rule 36 opinions).