In re McFadden v. USPTO: Federal Circuit Reverses-in-Part USPTO Patentability Ruling
Pro se inventor Brian McFadden challenged the USPTO’s rejection of his information-exchange optimization patent (US16/231749) at the Federal Circuit. After 413 days, the court issued a split decision — reversing in part, vacating in part, and remanding — sending portions of the case back to the agency for further proceedings.
Federal Circuit splits the difference in McFadden information-exchange patent dispute
In re Brian McFadden (Case No. 24-2107) is a pro se inventor appeal filed at the U.S. Court of Appeals for the Federal Circuit on 19 July 2024. McFadden challenged the USPTO’s patentability determination regarding US Application No. 16/231749, which discloses a system and methods for controlling and optimizing information distribution between users in an information exchange — broadly applicable to social, professional, or data-routing network contexts.
The Federal Circuit closed the case on 5 September 2025 with a three-part disposition: it reversed the USPTO on certain patentability grounds, vacated the agency’s ruling on others, and dismissed part of the appeal outright. The remand returns unresolved issues to the USPTO for further examination, meaning the application is not finally disposed of — McFadden retains the opportunity to pursue allowance on the remanded claims.
A 413-day appellate timeline is consistent with contested Federal Circuit patent appeals, though the split outcome is relatively uncommon and suggests the court identified both clear legal error in the USPTO’s reasoning on some grounds and procedural or jurisdictional deficiencies on others. The public record does not disclose the specific claim rejections at issue or the precise scope of each disposition component, leaving the full commercial significance of the remand uncertain.
Filing to Appeal Dismissed in Part in 413 days
413 days — above-average duration for a Federal Circuit patent appeal
Federal Circuit’s split ruling: what reversed, vacated, and remanded each mean
Three-way disposition: reversed, vacated, and remanded explained
A Federal Circuit reversal means the court found the USPTO committed legal error that warrants overturning its determination on specific grounds. A vacatur nullifies the agency’s ruling without necessarily deciding the merits, typically requiring re-examination. A partial dismissal ends certain appeal grounds without reaching them — often for lack of jurisdiction or improper procedural posture. Together, these signal a complex, multi-issue appeal where no single disposition resolved everything.
Multi-part appellate outcomeMcFadden wins partial reversal — but patent is not yet granted
The reversal-in-part is a meaningful win for McFadden: it means the Federal Circuit found the USPTO wrong on at least one patentability ground, which the agency must now accept. The vacatur-in-part reopens other grounds for fresh agency analysis rather than leaving adverse rulings intact. However, the patent has not been allowed — the remand means prosecution continues, and ultimate allowance depends on USPTO’s re-examination of the surviving and remanded issues.
Partial win — prosecution continuesAgency must re-examine — reversal constrains future rejection rationale
Where the Federal Circuit reversed, the USPTO is bound by that determination and cannot re-assert the same legal error on remand. The vacated portions return the agency to a neutral starting point — it may reach the same or a different conclusion, provided it applies correct legal standards. The partial dismissal preserves the agency’s position on those specific grounds. Overall, the USPTO faces a constrained re-examination with elevated scrutiny on the reversed issues.
Agency remand with legal constraintsInformation-exchange optimization patent remains live — watch the remand
US16/231749 covers methods for controlling and optimizing information distribution between users — a claim space with potential relevance to social platforms, enterprise communication tools, and data-routing middleware. The Federal Circuit’s willingness to reverse USPTO on at least one ground suggests the claims may have stronger patentable merit than the agency credited. Companies operating in information exchange or user-data routing should monitor the remand outcome, as a granted patent in this space could support future enforcement activity.
Monitor remand for enforcement riskFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | In re: BRIAN MCFADDEN | Individual | Pro se inventor — applicant for US16/231749 covering information distribution optimizationSearch in Eureka ↗ |
| Defendant | DERRICK BRENT, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office | Individual | Acting Director of the USPTO, representing agency patentability determination authoritySearch in Eureka ↗ |
| Plaintiff counsel | Brian McFadden | Attorney | Counsel for In re: BRIAN MCFADDENSearch in Eureka ↗ |
| Defendant counsel | Farheena Yasmeen Rasheed | Attorney | Counsel for DERRICK BRENT, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark OfficeSearch in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | Court of Appeals for the Federal CircuitSearch in Eureka ↗ |
Official order — verbatim text
The court’s order — ‘REVERSED-IN-PART, VACATED-IN-PART, AND REMANDED’ with partial dismissal — reflects a granular, issue-by-issue appellate review rather than a wholesale disposition. At the Federal Circuit, reversal requires finding that the USPTO committed legal error that was not harmless; vacatur typically signals that the agency’s reasoning was legally deficient but the merits were not fully resolved. The remand returns the application to the USPTO under binding corrected legal standards, while the partial dismissal forecloses those specific grounds from further appellate review. Neither party achieved a complete resolution.
US16/231749 — System and Methods for Optimizing Information Distribution Between Users
US Application No. 16/231749 (published as US20190197070A1) discloses a system and methods for controlling and optimizing information distribution between users in an information exchange. The application title suffix ‘Continued’ suggests this is a continuation or continuation-in-part of an earlier application, indicating McFadden has been developing this technology concept across multiple prosecution cycles. The technical domain sits at the intersection of information retrieval, network communication protocols, and user-preference optimization — areas that are highly active in both commercial product development and patent prosecution.
Claims in this space often face Section 101 abstract-idea rejections under Alice Corp., as well as prior-art challenges under Sections 102 and 103 given the volume of prior art in social networking and information-routing technologies. The Federal Circuit’s willingness to reverse at least part of the USPTO’s rejection suggests the claims may articulate a sufficiently specific technical improvement or inventive concept to survive at least one of those hurdles. For competitors in enterprise communication, social platforms, or data-distribution middleware, the eventual claim language — if the application issues — will define a potential enforcement perimeter.
Should your product team run an FTO against US16/231749?
Any organisation developing systems that route, filter, rank, or optimise the flow of information between users — including social platforms, enterprise messaging tools, recommendation engines, and data-exchange middleware — should assess potential exposure to US16/231749. The application’s continuation status suggests claim scope may have evolved across multiple prosecution rounds, and the Federal Circuit remand means a grant could occur without further public notice to competitors. An FTO analysis is most valuable now, before any grant event.
PatSnap Eureka’s FTO Search Agent can map US16/231749’s published claims and specification against your product architecture, flag claim elements that may read on your implementation, and surface related family members or continuation applications in the same lineage. Eureka also tracks prosecution status updates in real time, so your team receives an alert the moment the USPTO acts on the remand — giving you lead time to adapt product design or prepare a freedom-to-operate opinion before any grant-based enforcement risk materialises.
Run a freedom-to-operate analysis on US20190197070A1 to assess your product’s exposure
Run FTO in Eureka →Similar Federal Circuit patentability appeals in information-exchange technology
Explore comparable Federal Circuit appeals involving USPTO patentability rejections in information distribution, user-data routing, and network optimization technologies.
What In re McFadden signals for the information-exchange IP landscape
A Federal Circuit reversal against the USPTO in a pro se appeal is unusual — and the split outcome raises questions every IP professional in the information-platform space should consider.
Pro se reversals at the Federal Circuit are rare and worth tracking
Most pro se appeals against USPTO patentability rulings fail at the Federal Circuit. A reversal-in-part here suggests the court identified clear, substantive legal error in the agency’s analysis — not merely procedural grounds. For IP counsel, this case is a reminder that USPTO examination quality is judicially reviewable and that applicants need not be represented to succeed on appeal.
Remanded applications can become granted patents — and enforcement tools
A remand to the USPTO does not end prosecution; it restarts it under corrected legal standards. If US16/231749 ultimately issues, it will carry the weight of Federal Circuit scrutiny behind it. Companies in the information-distribution and user-data-routing sectors should track this application’s prosecution docket for grant events that could signal a licensing or enforcement campaign.
MCFADDEN v DERRICK — key questions answered
The Federal Circuit issued a split disposition: it reversed the USPTO’s patentability ruling in part, vacated it in part, and dismissed part of the appeal, remanding the case for further USPTO proceedings. The patent application US16/231749 was not finally rejected or granted — prosecution continues under corrected legal standards.
US16/231749, published as US20190197070A1, is a patent application filed by Brian McFadden covering a system and methods for controlling and optimizing information distribution between users in an information exchange. The ‘Continued’ designation in the title suggests it is a continuation application, building on earlier related prosecution history.
A Federal Circuit reversal-in-part means the court found the USPTO committed legal error on specific grounds. The agency is bound by the reversal on remand and cannot re-apply the same flawed reasoning. For the applicant, it means those rejected grounds must be reconsidered favourably, though the patent is not automatically granted — further examination proceeds under corrected standards.
The public record does not disclose the specific basis for the partial dismissal. At the Federal Circuit, partial dismissals in patent appeals typically result from failure to preserve arguments at the Patent Trial and Appeal Board level, lack of appellate jurisdiction over certain issues, or procedural defects in the notice of appeal. The dismissed grounds are foreclosed from further appellate review.
After remand, the USPTO must re-examine the application applying the legal standards the Federal Circuit directed. The agency may allow the claims, issue new rejections on different grounds, or reach the same outcome on permissible rationale for vacated issues. The applicant can respond, amend claims, and — if rejected again — appeal to the Patent Trial and Appeal Board and potentially back to the Federal Circuit.
PatSnap Eureka searches patents and litigation data to answer instantly.