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« Oil States Energy Services, LLC v. Greene's Energy Group, LLC -- Positions Taken in Selected Amicus Curiae Briefs | Main | Is a Patent a Private or Public Right? -- Supreme Court Hears Oral Arguments in Oil States Energy Services, LLC. v. Greene's Energy Group, LLC »

November 29, 2017

Comments

Interestingly, SOP 9 notes that all decisions of the Federal Circuit in reexainations are treated as remands to the PTO. That makes sense in view of the fact that the Federal Circuit has not always been consistent with the language it uses in deciding a case. For example, if a claim is held not unpatentable by the Board and reversed by the Federal Circuit, that only goes to the grounds considered by the Board and not all grounds for patentability raised by the patentee. It would not be right to cancel the claim without considering the patentee's other bases for patentability. However, as the situation now stands, that is exactly what the Office appears to be doing in AIA proceedings. Reversals in AIAs should also be treated as remands to the Office. They are not, to my knowledge.

Thanks. The statistic "To date, the Federal Circuit has remanded about 42 cases to the Board for further processing" is interesting. Even though that is presumably a relatively small___? % of IPR decisions appealed, it shows that they are definitely not all Rule 36 rubber stamped as some have alleged. By now that must also have educated some APJs as to better IPR decision drafting.
How does that 42 remand number compare to the number of actual reversals?

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