          NOTE: This order is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                 ______________________

      NESTLE PURINA PETCARE COMPANY,
                  Appellant

                            v.

      OIL-DRI CORPORATION OF AMERICA,
                   Appellee

                 ______________________

                       2017-1744
                 ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2015-
00737.
                 ______________________

                     ON MOTION
                 ______________________
   Before DYK, O’MALLEY, and HUGHES, Circuit Judges.
PER CURIAM.
                        ORDER
    This case is an appeal from an inter partes review
(“IPR”) proceeding in which the Patent Trial and Appeal
Board (“Board”) instituted review as to all challenged
claims of Appellee Oil-Dri Corporation of America’s (“Oil-
Dri’s”) animal litter patent, but only as to one of the five
2     NESTLE PURINA PETCARE CO.   v. OIL-DRI CORP. OF AMERICA



grounds of unpatentability set forth in Appellant Nestlé
Purina Petcare Company’s (“Nestlé’s”) IPR petition.
Nestlé appeals the Board’s final written decision uphold-
ing all instituted claims. See Nestlé Purina Petcare Co. v.
Oil-Dri Corp. of Am., IPR2015-00737, Paper No. 37, 2016
WL 4375267 (P.T.A.B. June 20, 2016).
     While briefing on appeal was pending, Nestlé filed a
motion for remand to the Board based on documents that
Oil-Dri produced to Nestlé in the parallel district court
litigation. See Appellant Mot. Remand, ECF No. 40.
According to Nestlé, these documents refute certain
arguments that Oil-Dri made to the Board during the IPR
proceeding regarding the scope of the prior art at issue.
Nestlé also asserts that the documents establish that Oil-
Dri committed fraud against the Board by making mate-
rial misrepresentations about the prior art, and that
remand is required for the Board to reconsider its institu-
tion decision and/or final written decision in view of the
documents, as well as to consider whether to impose
sanctions.
    Although Oil-Dri initially opposed the motion, it has
since withdrawn its objection to remand in view of the
Supreme Court’s decision in SAS Institute Inc. v. Iancu,
138 S. Ct. 1348 (2018), and our order in Polaris Industries
Inc. v. Arctic Cat, Inc., No. 2017-1870, -1871, 2018 WL
2435544 (Mem) (Fed. Cir. May 30, 2018). See Appellee
Rule 28(j) Letter, ECF No. 80. In Polaris, we held that
SAS constitutes an intervening change in the law, and
that a party may seek a remand to address noninstituted
grounds. See Polaris, 2018 WL 2435544, at *1–2. Oil-Dri
now asserts that remand is appropriate for the Board to
consider all grounds in Nestlé’s IPR petition, consistent
with SAS and Polaris, and contends that, because a
remand would likely involve further development of the
record, the Board should also be permitted to consider the
documents that Nestlé contends necessitated remand in
the first place in connection with the grounds as to which
NESTLE PURINA PETCARE CO.   v. OIL-DRI CORP. OF AMERICA   3



the IPR was originally instituted. Oil-Dri disputes,
however, Nestlé’s assertions of fraud, and objects to
Nestlé’s request for the Board to consider sanctions.
Nestlé, for its part, agrees that remand is appropriate
under SAS and Polaris, but maintains that the Board
should also be permitted to determine whether sanctions
are appropriate. See Appellant Rule 28(j) Letter, ECF No.
81.
     At oral argument, the parties confirmed that there is
little daylight between their respective positions. See
Oral Arg. at 1:35–38, Nestle Purina Petcare Co. v. Oil-Dri
Corp.     of   Am.     (No.   2017-1744),     available   at
http://oralarguments.
cafc.uscourts.gov/default.aspx?fl=2017-1744.mp3 (“There
is agreement that the case should be remanded here.”); id.
at 10:20–28 (“[W]ith respect to the issue of remand, the
differences here are fairly minor.”). Both parties agree
that remand is appropriate to consider all petitioned
grounds of unpatentability and the newly discovered
evidence. They disagree, however, on two points. First,
as described above, the parties dispute whether the Board
should be instructed to consider the propriety of fraud and
sanctions; Nestlé argues it should, while Oil-Dri argues it
should not. See id. at 3:30–55, 10:45–11:10, 12:40–55.
Second, they dispute whether and how we should resolve
one of Nestlé’s arguments related to the prior art’s disclo-
sure of particle size, which Nestlé alleges the Board failed
to address in its final written decision. Nestlé urges us to
address the argument in the first instance on appeal and
to “provide some guidance to the Board on the issue” in
our remand decision. See id. at 7:20–45, 8:55–10:00,
17:00–18:15. Oil-Dri asserts that the argument is waived,
and, in any event, is without merit. See id. at 14:00–
16:35.
    We agree with the parties that remand is necessary
and appropriate in light of SAS and Polaris. On remand,
the Board may consider Nestlé’s allegations of fraud and
4        NESTLE PURINA PETCARE CO.   v. OIL-DRI CORP. OF AMERICA



the propriety of sanctions, but we decline to require the
Board to do so. We also decline to address Nestlé’s parti-
cle size argument for the first time on appeal. We leave it
to the Board to consider that argument to the extent it
was properly presented in Nestlé’s IPR petition.
     Accordingly,
     IT IS ORDERED THAT:
     (1) The parties’ joint request for remand pursuant
     to SAS is granted. On remand, the Board shall
     take appropriate action consistent with SAS.
     (2) Pursuant to the parties’ agreement, the Board
     may consider the documents relevant to Nestlé’s
     original motion for remand that the parties sub-
     mitted to this court. 1 We do not, however, require
     the Board to address the issues of fraud or sanc-
     tions in connection with those documents.
     (3) Each side shall bear its own costs.
     (4) Pursuant to Federal Circuit Rule 41, this or-
     der shall constitute the mandate.


                                     FOR THE COURT

    June 11, 2018                     /s/ Peter R. Marksteiner
        Date                          Peter R. Marksteiner
                                      Clerk of Court




     1  Because the parties agree that remand under SAS
is appropriate and that the Board should be permitted to
consider the documents, Nestlé’s original motion for
remand is denied as moot.
