CAFC Confirms Constitutionality Of PTAB Procedure

January 14, 2016

The CAFC has held that it is constitutional for the same PTAB judges who institute an inter partes review to also make the final decision on patentability.  Ethicon Endo-Surgery, Inc. v. Covidien LP, No. 2014-1771 (Fed. Cir. January 13, 2016).  The Patent Owner, Ethicon, argued that the PTAB’s final decision (which cancelled Ethicon’s patent claims) was invalid because it was made by the same Judges who elected to institute review.  (Id. at 8).  Ethicon argued that this procedure “raised serious due process concerns” because once the Judges decided to institute review (based on a preliminary look at a partial record) they were predisposed against the patent.  (Id. at 9).  The CAFC disagreed, citing several Supreme Court cases approving similar administrative procedures in which the same ALJ presides over both preliminary matters and ultimate decisions.  (Id. at 9 - 10).  Ethicon also argued that Congress assigned responsibility for institution decisions to the patent office’s Director (35 U.S.C. § 314) with the intention of insulating the Board from such decisions. (Id. at 13).  The CAFC again disagreed, saying that Congress also granted the Director the power to delegate that duty to the Board. (Id. at 13 – 17).

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Judge Newman Says Post Grant Review Should Not "Stack The Deck Against The Patentee"

December 5, 2015

In a recent CAFC decision, Judge Newman complains in her dissent that the “purpose of post-grant review is not to stack the deck against the patentee,...

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