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« In re Magnum Oil Tools Int'l, Ltd. (Fed. Cir. 2016) | Main | IPRs Threatened/Filed as Money-Making Strategy »

August 15, 2016

Comments

This en banc review is desirable of the most criticized procedural aspect of IPRs in the Cuozzo briefs, which the Sup. Ct. did not directly address. But it will NOT have a significant effect on IPR practice in general irrespective of the outcome. Claim amendments are only even requested in a very small percentage of IPRs, for good reasons, and those good reasons will continue. The claims cannot be broadening in any respect per the IPR statute, they cannot normally even be introduced or be of any help in existing litigation [which triggers 80% of IPRs], they eliminate the original claims for which they are substituted, they risk creating non-infringement defenses, and last but not least they trigger the serious recovery restraints of the IPR "intervening rights" statute for any and all assertions of the amended claims.
Nor is any decision in this case likely to ignore the issue of due process for the other party if a changed claim is inserted during an inter partes trial without an adequate rebuttal opportunity.

Mr. Morgan,

There is an even more fundamental problem with claims being added to a granted patent that have only been vetted by the patent owner: such is just not a true examination by the only body - under law - allowed (required) to DO claim examination to allow claims to reach the granted stage.

I realize that your viewpoint is typically on the accused infringer's side, but this much more fundamental problem affects everyone - patent holder and any accused infringer.

Skeptical, that is a important addition to my last sentence above. The PTAB does not do, nor has any capacity for, prior art searches or initial claim examinations of new claims. In an IPR only the petitioner can [and thus must] provide that function for the "substitute" claims that the IPR statute and the PTAB allow to be entered in an IP, in order for the PTO to meet its agency duties.

Mr. Morgan,

Your view does not suffice - the "can and must" is simply not in accord with the grant of power from the Legislative branch to the Executive branch and the power to have a granted patent.

The PTO is NOT meeting its agency duties when it does not do the examination itself.

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