Rehearing Requests & CAFC Remands to Tax PTAB Resources
As discussed on Tuesday, sometimes the Court of Appeal for the Federal Circuit (CAFC) will find it necessary to remand an appeal to the Patent Trial & Appeal Board (PTAB). Likewise, sometimes the Solicitor will seek remand in appropriate circumstances. Historically remand occurs in about 10-15% of appeals from the agency on a yearly basis (sometimes less). In any given year this meant only a handful of cases required “re-work” from the PTAB as the number of appeals from the PTAB to the CAFC was relatively modest.
Thanks to the wildly popular post-grant patent challenge mechanisms of the America Invents Act (AIA), all of that is about to change.
As to the CAFC, while historically remand was somewhat uncommon (10-15%), for this first wave of AIA appeals, I would expect that number to hover around 20%-25%. That is, as many as 200+ proceedings will find their way back to the PTAB in the first year or two. These remands are also expected to languish as items outside the statutory deadlines of the AIA.
Significant delays on rehearing will almost certainly be leveraged as a tactic to forestall finality, especially for non-practicing entities (NPEs). Indeed, if such “delay requests” become the norm, overall pendency of AIA proceedings through appeal to the CAFC will be greatly aggravated. On top of this would be the inevitable lengthening of CAFC pendency due to the influx of new AIA appeals. Given the vision of Congress to provide for an expedited administrative option to patent litigation, keeping the process moving— from start to finish—is imperative to the long term efficacy of the AIA. Should Congress disrupt funding to the agency, or fail to recognize the need for continued support and additional horsepower, the progress made to date could all unravel very quickly.