Federal Circuit vacates and remands to PTAB with instructions to “address the relevant factors…under the proper legal standard”

Or, “Things that should never have to be said”

In In re Global IP Holdings, LLC, Fed. Cir., No. 2018-1426, July 5, 2019, the Federal Circuit so held/said, after the Examiner and PTAB maintained the position held to be without legal basis for over 4 years. See, USSN 14/632238, the reissue application of US Patent No. 8,690,233.

Not every applicant has the means or determination to take a 112 to the Federal Circuit – and they shouldn’t have to unless and until the PTO has made a prima facie case. Its disappointing that this case had to go so far simply to remind the PTO of their initial burden.

The attached decision should be helpful to those of us facing such rejections.  In Re Global IP Holdings 18-1426.Opinion.7-5-2019