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« PTAB Life Sciences Report | Main | Science Application International Corp. v. United States (Fed. Cl. 2018) »

February 06, 2018


What a crock. Judges Dyk and O'Malley say, "You didn't challenge the PTO's authority to promulgate the regulation at issue, so we can't pass judgment on the propriety of the regulation." They both then say, the PTAB properly interpreted the reg, with O'Malley adding, "If it were up to me, I would rule that the reg was improperly promulgated and/or ultra vires." Judge Newman simply says, "If the patentee disclaims the claims before institution of the IPR, there's nothing to have an IPR on."

So two of the three judges agree this "proceeding" should never have made it to the PTAB's desk and the PTAB wasn't authorized to issue its "ruling", yet that "ruling" stands in place and Arthrex is precluded from pursuing similar claims in a continuation application. Ridiculous.

At least Judge O'Malley has made it clear to the next patentee who disclaims claims to avoid an IPR that it should challenge the director's authority to promulgate the regs at issue. Small consolation for Arthrex, though. And there's no guarantee the Judge O'Malley will be on that panel.

But is it really true that one could otherwise obtain valid claims in a continuation that are not patentably distinct from expressly disclaimed claims in a parent application?

Mr. Morgan,

I am thinking that you are misunderstanding the nature of what is being disclaimed.

The disclaimer (as I understand it - I provide that it may be I that misunderstand the situation) is related to what the patent holder is seeking to enforce against a particular party, rather than a disclaimer that the claims themselves are invalid against all parties.

Skeptical [Anon?] see 35 USC 253 "Disclaimer."

Mr. Morgan,

Thank you, that was most helpful.

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