PTAB Revisited: Avoiding Federal Circuit Remands

Remand or Reversal?

Appeals from the Patent Trial & Appeal Board (PTAB) have now become a major component of the Federal Circuit's docket. Given the deferential "substantial evidence" standard accorded PTAB decisions, upward of 60% of such appeals are simply affirmed — many without further comment. The remainder of PTAB appeals include a mixed bag of partial affirmances, reversal and/or remands. While both reversal and remand outcomes are appellate "wins" for Patent Owners, a remand for a Patent Owner is often a winning of the Federal Circuit appeal battle only to lose the PTAB war.

When a case is remanded to the PTAB, a second decision is targeted to issue within six months time. In some instances further briefing is authorized, but in many cases it is not. Further, it is exceedingly rare for a second oral hearing to be conducted.