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April 19, 2016


"[T]he PTAB noted that the Patent Owner did not provide any authority that precluded the PTAB from deciding... eligibility under § 101... where a non-final district court ruling on § 101 exists."

I doubt that they could cite any such authority. The authority that I find suggests exactly the opposite. Invalidity in an Art. III court must be proven by clear-&-convincing evidence because of the § 282 presumption of validity. By contrast, invalidity in a CBM must only be proven by preponderance of the evidence (35 U.S.C. § 326(e)). Therefore, there is no reason why a district court decision against invalidity should preclude the PTAB from finding unpatentability. The evidentiary standards are different, in such a way as to make issue preclusion inapplicable here.

If the PTAB holds for § 101 patentability, that might preclude a district court from ruling the claims invalid. And if the district court were to hold the claims invalid under § 101, that would preclude the PTAB from finding them patentable under § 101. There is nothing out of order, however, in the district court saying "the challenger has not shown these claims invalid by clear-&-convincing evidence," but the PTAB looking at the same evidence and saying "the challenger has shown these claims unpatentable by a preponderance of the evidence."

GrzeszDel points out quite clearly how one of the sticks in the bundle of property rights within a granted patent has a very real and material effect, and that the initiation point at which that stick is taken without recompense or chance of Article III review is a material violation of constitutional protections afforded the property that is a granted patent.

This defect appears to be NOT fixable by either the executive or judicial branches, as this is a clear and unambiguous intent of the law as written by the legislative branch.

I will leave the necessary results of such a situation up to the reader's critical thinking...

This PTAB CBM 101 decision contrary to the D.C. S.J decision on the same claims will be interesting to see on appeal at the Fed. Cir. since [assuming the BRI vs Phllips claim scope is not also a factor in issue] this should be the same Alice-101 test for a CBM as for the D.C.?

But note that this was not a final decision of the D.C., and in the D.C. the defendant had at least two additional hurdles to get S.J. granted that did not apply in the CBM: a burden of clear and convincing evidence AND the absence of disputed facts requiring a trial precluding S.J.

[Also, without having seen either the PTAB or the D.C. S.J. decision I would take a bet that the PTAB did a more though job of documenting its Alice-101 decision than the D.C. did in simply denying S.J. They have a lot of experience with it.]

Showing yet again why it's absurd to have different standards for IPRs and PGRs at the PTO versus proceedings before real courts.

Skeptical points out that this taking-effect of a property right "is a clear and unambiguous intent of the law as written by the legislative branch." But says the judicial branch cannot resolve it. If this is the taking of private property without compensation, it violates the fifth amendment's takings clause, and could be stricken by a court as unconstitutional.

Of course any court refusing to recognize such a violation of the takings clause would probably say something about patents being quasi-property, and thus not qualifying for fifth amendment protection in this particular case.

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