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Michele Van Patten Frank was quoted in Law360 on March 21, 2018, about the trend of reversals being determined by the Federal Circuit, versus remands, when the USPTO fails to support its decision that an invention is unpatentable, highlighting the need for investors to carefully consider arguments about a potential remedy on appeal.

"It's an interesting trend to take note of," said Ms. Frank. "Given how this case turned out, I think it gives patent applicants the insight and motivation to really think about trying to seek a reversal as opposed to just a remand."

The latest example came last month in a case involving a patent application for an improved drain valve filed by inventor Kenneth Hodges. Several claims were rejected because a patent examiner found they were anticipated by earlier patents. The examiner also decided the application’s claims were obvious. Hodges appealed to the Federal Circuit after the USPTO's Patent Trial and Appeal Board upheld the examiner's rejections.

In a precedential decision, a three-judge panel vacated and remanded the board's obviousness finding because the board didn’t adequately explain its reasoning. The judges also agreed there was not substantial evidence to support one of the board's anticipation rulings.

"Some might have felt [remand] would have been the typical outcome," Frank said. "This is showing a movement in the direction toward holding it to a reversal."

The Hodges decision is precedential due to the Federal Circuit stating the PTAB in certain instances either failed to make factual findings to support its conclusions or its findings didn’t have an adequate basis in the record. The judge cited that when the USPTO fails to carry its burden of establishing unpatentability during examination, the applicant is "entitled to the patent."

The appeals court may then be "more willing to make those decisions to reverse, as opposed to remand," Frank said.