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September 03, 2014


A trial then it is.

Albeit an Article I trial - let's watch out for some unintended consequences of private personal property rights in Article I trial courts....

Andrew, thanks for the summary.

I love it when courts create doctrines in one context and then lawyers try to misapply those doctrines elsewhere. If I'm enforcing a patent against a competitor, and I have related application(s) pending (whether related by subject matter or formally by continuation status or both), it makes sense to say that confidential information I get from the competitor during the litigation can't be used to enhance my position vis-a-vis that competitor during prosecution of the related application(s). This includes barring my lawyers in the litigation from participating in patent prosecution.

But IPRs and PGRs are a different kettle of fish: in all instances I'm defending my patent. I'm therefore not surprised by the PTAB's decision nor by the decision of the district court in the Endo cases. I'm disappointed that the lawyers on the other sides even tried to assert a bar, because the situations are obviously not analogous. Indeed, it was the accused infringers who dragged the patentees before the PTAB; seeking to assert a prosecution bar in such a case is a fine example of chutzpa.

What I'd really like to know is when the PTAB is going to acknowledge the corolloary to its determination that IPRs and PGRs aren't prosecution: if that's the case, then claim construction standard should be akin to that of the court, and not BRI applied during patent prosecution. (I know, in principle the patentee can amend but in practice it can't and even the permitted amendments are narrowing amendments.)


Would it be fair to say that chutzpa is not limited to the parties in the matter, but to the Article I Court itself for its seeming double standard treatment?

How about the chutzpa of even taking a case into consideration and removing one of the property rights from the bundle of property rights? Here, I am talking about the taking of the presumption of validity. That taking - regardless of any final decision - happens immediately and not appealable to a true Article III Court. Thus we have a taking without any compensation by an executive agency Article I Court (in - as you suggest - a litigation status). Do you think that in such a status that due process is implicated for that taking of the stick? I know that to many, such a stick carries tremendous value.

More (unintended - or not - consequences) stemming from a closer look at the Article I/ Article III nature tied to a litigation/examination question can be raised if one receives the emailed updated from Greg Aharonian.

Mr. Aharonian raises several legitimacy issues for the PTAB based on whether or not the patent right is a private right (which is where the law indicates, labeling a patent as private property) or a public right.

This is not an idle distinction - especially given the context of this post.

I apologize if this is a stupid question, but doesn't this bar only apply to the attorneys? So there wouldn't be anything barring the *client* from using information learned in a litigation setting (from one group of attorneys) to redirect patent prosecution (by another group of attorneys), right?? And possibly a client that has in-house patent counsel and so might be particularly expected to notice what was said in each situation? If so, I do understand the need for an ethics rule, but it's really just window dressing here.

Dear Not Butter,

Confidential documents are often produced in litigation subject to a Protective Order entered by the Court. Only certain individuals have access to such documents, and the Court Order prohibits them from disclosing the confidential information contained. Therefore, the client does not have access to the information. In addition, even though one or more in-house attorneys are often designated under the order, they are usually subject to similar prosecution bar provisions. Sorry if I did not make this clear in the post, and thanks for the question.


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