PTAB Remand Not Always Deja Vu

When appealing a decision of an administrative agency such as the Patent Trial & Appeal Board (PTAB), reversal is quite rare. This is because rarely will a pure question of law (with no facts in dispute) control the outcome of such an appeal  Rather, a typical PTAB appeal to the Federal Circuit will dispute whether the agency record fully supports its decision, or is complete with respect to required fact finding. In these cases vacatur and remand are appropriate.

Since 2016, as the volume of appeals from the PTAB has increased, so to has the number of remands to the agency. Where a PTAB record is incomplete, one might expect the agency to simply remedy the shortcoming on remand to maintain its earlier decision. However, two years of recent statistics reflect a more balanced outcome.

As shown in the chart below, over 50% of remands reverse some aspect of the original ruling.

When filtering out settlements, the relative ratios remain roughly the same as to whether or not the original ruling is maintained.

Breaking these statistics down further, not surprisingly, Petitioner appeals (seeking cancellation of claims found not unpatentable) are more likely to yield a new result once the Federal Circuit takes issue with the PTAB’s patentability reasoning.

On the other hand, a successful Patent Owner remand shows an even split as to whether the original determination is ultimately maintained.

The high level takeaways are that the Board is not simply looking to gap fill on remand to support its original decision, but is taking a reasoned approach to reconsidering these records.

Practically speaking, and as reflected in the charts above, it appears to be more difficult for the Board to find claims patentable once the Federal Circuit takes issues with its original patentability reasoning. On the bright side, however, Patent Owner appeals ending in remand are not always the long road to defeat.