Background
Percept Technologies Inc. appealed from a Patent Trial and Appeal Board proceeding in IPR2023-00495. During the appeal, the Director of the U.S. Patent and Trademark Office moved to remand the matter for additional proceedings. Percept opposed the motion.
The Director expressed a substantial and legitimate concern that the decision under review did not adequately explain, for any asserted ground in the petition, how the cited prior art satisfied the disputed claim limitation requiring “a dynamic eye tracking mechanism in communication with the lens.” Percept objected in part because a remand would cause further delay.
The Court’s Holding
The Federal Circuit granted the Director’s motion for the limited purpose of providing further explanation concerning the issues identified in the order and the remand motion. Relying on SKF USA Inc. v. United States, the court explained that remand is usually appropriate when an agency seeks to reconsider its position based on a substantial and legitimate concern about its earlier decision.
The court acknowledged Percept’s concerns about additional delay and stated that it expected the Director to conduct the remand proceedings expeditiously. The order did not impose an express deadline or direct a particular timetable. Each party was ordered to bear its own costs.
Key Takeaways
- An agency’s substantial and legitimate concern about the adequacy of its prior reasoning ordinarily supports remand for reconsideration or further explanation.
- The remand was limited to further explanation of how the asserted prior art allegedly meets the disputed dynamic-eye-tracking claim limitation.
- The court expressed an expectation that the Director would proceed expeditiously but imposed no express timing requirement.
Why It Matters
The nonprecedential order illustrates the Federal Circuit’s willingness to permit the Patent Office to address deficiencies in the reasoning supporting a PTAB decision rather than requiring the appellate court to resolve the merits on an inadequately explained record.
For parties in patent appeals, the order also shows that delay concerns may be acknowledged without defeating an otherwise justified agency-remand request or producing a binding deadline for the remand proceedings.