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April 10, 2018


Hey Andrew,

Whether "neither party has the burden of persuasion with regard to Motions to Amend after the Aqua Products" would "have any practical impact for parties appearing before [PTAB]," it's still appalling that PTAB acts in this rogue manner as to the rules governing IPRs. Frankly, PTAB is bucking for an adverse APA ruling.

Even the "olive branch" offering smacks of the administrative agency having no regard for anything but its own views (and survival, albeit they seem NOT to get in their own way, seeing what they have done while Oil States is still in front of the Supremes - vis a vis at least the sovereign immunity situation of American Indian Tribes).

Although IPR claim amendment procedural improvements appear to be needed, the statement here that "there have still been many more motions denied than granted (even in part)" has to be taken in context with the fact that only a small percentage of patent owners ever even attempt to amend any of their IPR subject claims, and some of those attempts are made way too late.
If the PTO Director changes IPR claim interpretation from BRI to Philips it may encourage even more patent owners to risk not amending claims by unrealistic expectations of more difference than there actually is in most cases.

I do not see how you get to "risk not amending claims" through this supposed "unrealistic expectations" of "more difference than there actually is."

There is either a difference (generally), or there is not.

If not, then going away from BRI will have no effect (one way or another).

If a difference exists, then going away from BRI should be effected.

Either way, there is no reason - no cogent reason - to stay with BRI.

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