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« Conference & CLE Calendar | Main | Intellectual Ventures I LLC v. J. Crew Group, Inc. (E.D. Tex. 2016) »

August 28, 2016

Comments

The prolonged interference with commerce caused by the interminable quality of inter partes reexam, and ex parte reexam, was essential to the PTO's proposing post-grant review in the first place. I know because when I was GC, I testified on behalf of the Office in the first place in 2003 in Congress on just this issue. If as the Court held here, the litigant got adequate notice of the issues in order to respond during the proceeding, why should the Board disregard the intention of the statute to impel expeditiousness? The ITC has for decades been doing proceedings in similar time frames covering not only invalidity but also infringement. As with complaints about the difficulty of amending claims in view of prior art that's already known, the issues that these arguments raise are typical of lawyers who, trained in one form of proceeding, are having difficulties adjusting to another form or proceeding. That doesn't make the new proceeding in any way flawed.

"As with complaints about the difficulty of amending claims in view of prior art that's already known, the issues that these arguments raise are typical of lawyers who, trained in one form of proceeding, are having difficulties adjusting to another form or proceeding. That doesn't make the new proceeding in any way flawed."

It took me several minutes to pick my jaw up off the floor after reading that. It's not just not germane to the discussion, it's clearly written by someone who spent the overwhelming majority of his career far, far from working with people who invent things, and who's never drafted a patent application. (Mr. Toupin's name does not appear on the list of patent attorneys at the USPTO.)

Mr. Toupin's attitude - which can be characterized as, "Outcomes are unimportant, as long as they're achieved quickly" - goes far in explaining how it is that PTO officials aren't at all embarrassed by having a body, viz. PTAB, that nearly always says that the PTO's own examiners do a piss poor job. Lack of shame seems to be more and more in vogue in Washington these days, among both elected and unelected officials.

Mr. Toupin: Surely there is a compromise between doing the job quickly and doing it well (or at least correctly). While a possible cause of the PTAB's actions here have to do with timing the issue is compliance with the APA, so perhaps it is better to acknowledge that as the principal basis for seeking review..

It is not necessary or absolutely required that the PTAB complete every IPR in 12 months; Congress was wise enough to accord the Board with an extra 6 months as needed. One way of looking at the situation as it has developed is that the PTO has been overly submissive in its interpretation of the statute (much like the Office (and the Federal Circuit, for that matter) has abdicated its role in implementing the Supreme Court's subject matter eligibility jurisprudence). The Office had the option of making 12 month a aspirational goal not a hard-and-fast deadline, and permitting patentees every opportunity to address the IPR petitioner's challenge. Instead, the Office has used the expeditious resolution provisions to, in the view of many, short circuit the process to patentees' detriment. Which is a justified complaint in my view.

Thanks for the comment.

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