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« The PTAB Strikes Back -- Issues Order Prohibiting St. Regis Mohawk Tribe from Filing Any Additional Papers in IPR | Main | Top Four Stories of 2017 »

January 09, 2018


Hey Andrew,

I'm glad that Achates was overruled-how can an error by PTAB on a question of law (e.g., a time bar for filing IPRs) be deemed by Congress to be non-reviewable by an Article III court? Does "separation of powers" and 5th Amendment "due process" meaning anything today? What is truly shocking is that the 4 dissenting Federal Circuit judges don't seem to understand that.

I will take exception to your post EG and ask that you take the time to realize that the four dissenting were doing so based on understanding the separation of powers in that they were not engaging in re-drafting of the (admittedly) abysmally written AIA.

When all else fails, turn to the words of the statute.

It is the words of the statute (also admittedly, in a strict reading) that provide for NO review of the institution decision.

That this strict reading collides with the (thirdly admitted, desired proper working of the separation of powers) is a fault of the statute as written.

The proper action of the court is to EITHER a) rule as the law as written with a vociferous admonition of the Congress to do a better job, or b) declare the law - as written - to be invalid because the law - as written - violates Constitutional requirements of separation of powers.

Getting "used to" the court rewriting the law in the statutory law domain of patent law leaves me....

Hey Skeptical,

Fair enough response. And I completely agree that the AIA (Abominable Inane Act) is "abysmally written."

But can a question of law (i.e., when does a "time bar" occur?)be non-reviewable by an Article III court, and pass muster under the APA, much less 5th Amendment "due process." More significantly, the "time bar" provision goes the question of whether USPTO has subject matter jurisdiction to even entertain the IPR. Can such an issue really be deemed non-reviewable by Congress and again pass 5th Amendment "due process"?


Your questions (to return the compliment) are indeed fair enough of a response.

HOWEVER, as I posted, the proper response from the courts is to NOT engage in redrafting in order to save the abysmal effort of Congress.

If the words (strictly, but fairly) are read "straight up" and DO run into the problems that you mention, then the options to the court are to void the law or not void the law and note vociferously the unfortunate consequences of the law as written.

EITHER is better than not only greenlighting "legislating from the bench," but given the rampant failures in the AIA, sets a dangerous precedent (nigh - EXPECTATION) that such legislating from the bench will multiply in the future.

Hey Skeptical,

Fair enough points again and well said. We can only wish that the AIA (Abominable Inane Act) would sink into oblivion. A hatchet job all the way. A ruling in Oil States that IPRs are unconstitutional would do much to "pull the plug" on it.

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