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« Federal Circuit Denies Rehearing En Banc in Ariosa v. Sequenom | Main | Webinar on Patent Litigation and Motions to Stay »

December 03, 2015



Let me again point out, as has David Boundy, that while 314 (d) may prohibit appeals of whether the IPR was properly instituted, the APA does permit such appeals, and has not been expressly accepted by the AIA. Certainly institution of an IPR in violation of 315(b), as alleged by MCM Portfolio, would constitute an act by the PTAB which is "not in accordance with law."

Also, the statement by the Federal Circuit that there "is notably no suggestion that
Congress lacked authority to delegate to the PTO the power to issue patents in the first instance" fails to address whether that right is deemed "private" or "public," and especially fails to support the further statement that it "would be odd indeed if Congress could not authorize the PTO to
reconsider its own decisions." In fact, Congress has already stated, in 35 USC 261, that patents "shall have the attributes of personal property." "Personal property" is not a public right. Also notably absent is any discussion of how 35 USC 261 impacts this "private" versus "public" right question.

Admittedly, the Federal Circuit panel is bound by the precedent in Patlex. But whether Patlex's view that patents are "public" and not "private" rights is still problematical, given that 35 USC 261 treats patents as if they were "personal property." It is one thing for the patent owner to ask for correction from the USPTO. It is an entirely different matter to allow a 3rd party to invalidate that right in an Article I tribunal and thus deny the patent owner the right to jury trial under the 7th Amendment in an Article III court to adjudicate those rights.


Oops, my previous comments should have said "excepted" not "accepted."


Sorry, I should used your name, not "Michael" in my previous two comments. Still trying to get enough caffeine into my body!

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