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« SAS Institute Inc. v. Iancu (2018) | Main | Genome Structure of the American Cockroach »

April 24, 2018

Comments

Gorsuch: "what happens if someone later emerges from the woodwork, arguing that it was all a mistake and your patent should be canceled?"

Well, so what? Everybody who has anything to do with patents knows the standards of patentability/validity, including that an obscure prior publication is just as potent a validity killer as an earlier US patent specification. This is the only way to be fair, as between the inventor and the public.

Would Judge Gorsuch have it otherwise? Does he grasp the consequences of what he is arguing for? Surely not!

The dissent of Justice Gorsuch is a tour de force in explaining the historical background, well worthy of an alumnus of University College, Oxford where he was a Marshall scholar and obtained a D Phil in law.


"Moreover, because IPR proceedings involve the same basic matter as the grant of a patent, they also fall within the public rights doctrine."

Hey Andrew,

That statement by the majority opinion is utter malarkey. The majority opinion has conflated the patent grant process (an examination) with the patent validity determination process (which is an adjudication, and which still, in my view and Gorsuch's, can only be properly carried out by an Article III court in view of a proper reading of McCormick Harvesting). Indeed, the majority opinion should have done its “legislative intent” homework. Congress', and especially the Senate's version of the AIA characterize IPRs, as well as the other post-grant proceedings as being adjudicative, whereas the grant of the patent is strictly an ex parte examination. See especially Matal’s, A Guide to the Legislative History of the America Invents Act, p. 443, footnote 53. To put it bluntly, the examination which grants the patent is in no way “the same basic matter” as an IPR adjudication. For the majority opinion to say otherwise so as to put a granted patent within the cross-hairs of the “public-rights doctrine," to use my later father's expression, "won't hold soap."

Thanks for that comment, Paul Cole. You always say that one should refrain from commenting till after reading the Decision. Good advice!

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