Microsoft V. Proxyconn Back At The PTAB: Rules For Remand

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...