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October 04, 2017


The cogitations comment - and the extent to which that comment were applied - are indeed a troubling reflection on just how badly the AIA was written.

That we have an en banc body of judges, whose primary purpose is to instill clarity to patent law, unable (unwilling?) to come close to any meaningful consensus** on the law should be one gigantic red flag.

**Outside of the extremely narrow holding of the case - note as well that even what is the holding appears to be NOT agreed upon between the different pluralities, vis a vis OMalley and one of the FIVE other opinions.

Oil States may yet clean this up, but Congress should take off its blinders (blinders induced by Citizens United), and get ready to focus on examination in the fist instance INSTEAD of any post grant mechanism.

Hey Andrew,

This fractured Federal Circuit en banc decision just proves how poorly the AIA (Abominable Inane Act) was drafted by Congress generally and specifically with regard to IPRs. It further highlights how PTAB has been allowed operate as a rogue adjudicator in violation of due process generally and the APA specifically-O'Malley's and especially Reyna's opinion noted that the requirement by the USPTO for the patent owner to have the burden to prove the patentability of the proposed amended (substitute) claim was based on a PTAB panel ruling, one that was even initially denominated as informative, not precedential. In other words, the USPTO/PTAB failed to even provide "notice and comment" required by the APA for such a rule. Hopefully, SCOTUS will make this problem with IPRs academic by ruling in Oil States (as it should) that PTAB cannot constitutionally adjudicate the validity of issued patents (which are clearly personal property as recognized by statute and by over 200 years of court precedent, including by SCOTUS in McCormick Harvesting).

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