En Banc Federal Circuit Dodges PTAB Constitutionality

On May 11, 2017, the United States Court of Appeals for the Federal Circuit issued an order denying the en banc petition filed by Cascades Projection LLC. See Cascades Projection LLC v. Espon America, Inc. Cascades asked the Federal Circuit to bypass panel consideration and take this matter immediately en banc to once and for all decide whether it is constitutional for the Patent Trial and Appeal Board (PTAB) to invalidate patents granted by the United States Patent and Trademark Office (USPTO).

The request of Cascades seeks to overturn a panel decision in MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284 (Fed. Cir. 2015), cert. denied 137 S. Ct. 292 (2016). Judge Newman voted to deny en banc hearing, preferring the case to proceed first to a three-judge panel. Judge Newman did, however, say: “There is no doubt that a patent is a property right, with the attributes of personal property.”

Judge O’Malley and Judge Reyna both voted to proceed directly to en banc consideration. Judge O’Mally concluded her brief dissent saying: “Because these issues are complex and could have far reaching consequences, they deserve the attention of the full court.” Judge Reyna’s dissent, a forceful and compelling dissent that deserves fuller treatment in a future article, raises significant questions that will no doubt eventually be addressed by the Federal Circuit en banc at some point. Both O’Mally and Reyna see the Supreme Court’s decision in McCormick Harvesting Mach. Co. v. C. Aultman & Co., 169 U.S. 606, 609 (1898) as dispositive, and standing for the proposition that Article III courts alone can invalidate patents. Judge Reyna also explained that he sees significant separation of powers issues, as well as inconsistent Federal Circuit precedent that requires immediate en banc consideration.

Not surprisingly, the three judges who were responsible for MCM Portfolio — Chief Judge Prost, Judge Dyk and Judge Hughes — believed that they were correct then and now, and there is no need to reconsider what is already decided; namely that Congress can allow an Article I tribunal adjudicate public rights. This trio filed a concurring opinion, authored by Judge Dyk, which understandably attempts to defend MCM Portfolio, but which makes several inaccurate claims that deserve exposure.


First, Judge Dyk wrote:

“In Patlex, the court upheld the constitutionality of ex parte reexaminations conducted by the PTO. In doing so, the court expressly affirmed the power of an Article I tribunal to adjudicate, in the first instance, the validity of an issued patent.”

Not true. In Patlex the Federal Circuit said that the reexamination statute “carries no insult to the Seventh Amendment and Article III.” The Federal Circuit did NOT say that an Article I tribunal can adjudicate a patent as being invalid, as Judge Dyk incorrectly asserts. In fact, as I’m sure Judge Dyk is well aware, the decision-maker in reexamination is a patent examiner. Reexamination is an examination conducted by examiners who are taking a second look at an issued patent when it has come to the attention of the Office that there is a substantial new question of patentability. Reexamination is, in fact, examination, not adjudication. Reexamination is not an administrative trial proceeding conducted by an Article I tribunal. There is no Article I tribunal making any determination in reexamination. Therefore, Judge Dyk is wrong.

Second, Judge Dyk wrote: “Patlex and MCM did not differ in their interpretation of McCormick Harvesting Machine Co. v. Aultman, 169 U.S. 606 (1898).”

This statement is pure nonsense. One might be able to say that Patlex did not differ with McCormick, and is a logical extension of McCormick, but MCM is an absolute departure and at direct odds with McCormickMcCormick dealt with the then reissue statute. The Supreme Court explained: “The object of a patentee applying for a reissue is not to reopen the question of the validity of the original patent, but to rectify any error which may have been found to have arisen from his inadvertence or mistake.”

The Supreme Court in McCormick also explained:

It has been settled by repeated decisions of this Court that when a patent has received the signature of the Secretary of the Interior, countersigned by the Commissioner of Patents, and has had affixed to it the seal of the Patent Office, it has passed beyond the control and jurisdiction of that office, and is not subject to be revoked or cancelled by the President or any other officer of the government. It has become the property of the patentee, and as such is entitled to the same legal protection as other property.

The only authority competent to set a patent aside, or to annul it, or to correct it for any reason whatever, is vested in the courts of the United States, and not in the department which issued the patent. And in this respect a patent for an invention stands in the same position and is subject to the same limitations as a patent for a grant of lands.

(internal citations omitted).

Patlex, which dealt with reexamination of applications by an examiner — not by an Article I tribunal — could be considered a next step beyond McCormickMCM, however, simply cannot be viewed as consistent with either Patlex or McCormick on any level. Indeed, the Supreme Court was abundantly clear in McCormick, which remains good law. The courts of the United States (i.e., Article III courts), not the department that issued the patent, is the only entity vested with the authority to set aside or annul a patent right. Since the PTAB is not a court of the United States, it has no authority to invalidate patent rights. It is just that simple.

In other words, the PTAB has been and continues to clearly and directly operate in violation of the Supreme Court’s easy to understand mandate announced in McCormick.

Clearly, the object of a post grant petition is precisely to reopen the question of the validity of the original patent in front of an Article I tribunal, and not to rectify any error. Therefore, MCM fundamentally contradicts and misinterprets McCormick. In fact, the PTAB refuses to allow amendments despite the seemingly clear language of 35 U.S.C. 316(d), which says that 1 amendment is allowed. The PTAB does this by arriving at the ridiculous interpretation that 316(d) only provides the right to ask for an amendment and not the right to actually amend. The net effect is the PTAB is foreclosing the patent owner’s ability to rectify an error by refusing amendments, which means the Article I tribunal is reopening the question of patentability in an adjudicative manner without an ability to rectify an error. That fundamentally, directly and rather conclusively violates the express holding of the Supreme Court in McCormick.


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Join the Discussion

38 comments so far.

  • [Avatar for Night Writer]
    Night Writer
    May 16, 2017 03:59 pm


    I’d rather rat out a mafia hit man than file a complaint against a DOJ lawyer.

  • [Avatar for Edward Heller]
    Edward Heller
    May 16, 2017 03:34 pm

    Well, anon, the government lawyers were all but sanctioned for misrepresenting facts to the courts in the O-man immigration order dispute.

    There does seem to be some ethical problem at the DOJ. Perhaps the SG should look into it.

  • [Avatar for Anon]
    May 16, 2017 01:09 pm

    My point is not merely one of “forcing someone else to spend time correcting things.”

    The point is that it appears that there is NO holding anyone responsible for ethical violations of duty of candor to a tribunal from those for whom it might be arguable that a higher ethical duty exists**.

    **arguable along the line of thought that tighter ethics should be in place the more power and closer nexus with the ability to change or impact law / the very reason why attorneys have ethics rules in the first place.

    I would like you to change your focus from one of “a better argument” or even “what IS the controlling law” to a more critical “is that behavior even ethically permitted.”

    The more I think about this, the greater my indignation grows.

  • [Avatar for Edward Heller]
    Edward Heller
    May 16, 2017 11:55 am

    Well, anon, I of course think the entire case argued by the PTO/DOJ is bogus, particularly their implying that scire facias actions had not right to a jury trial simply because the actions were filed in Chancery. The implication left in the minds, that validity trial were not tried to a jury, is completely false. Yet they never attempt to clear the record, forcing others spend time correcting things.

  • [Avatar for Anon]
    May 15, 2017 11:01 pm

    Mr. Heller,

    I heard you.

    Do you hear me?

  • [Avatar for Edward Heller]
    Edward Heller
    May 15, 2017 10:08 pm

    Bob Armitage and David Kappos.

    IBM was long behind reexaminations in all their flavors and was a consistent advocate of taking validity away from juries. Armitage was high on harmonization, and always liked the European way which included oppositions and revocation actions.

    I recall the discussion at the AIPLA board meeting some years ago about this where Armitage was high on getting validity into the hands of APJs.

    Well, they succeeded.

  • [Avatar for Anon]
    May 15, 2017 09:03 pm

    Mr. Heller,

    To your comment of “ Their job is to provide legal representation.” I say great – now please read my posts and see if you have any qualms on the ethics involved in the provision of said legal representation.

    I do hope ( I do I do I do) that you understand why ethics needs to apply to government attorneys that are “doing their job.”

  • [Avatar for Night Writer]
    Night Writer
    May 15, 2017 08:30 pm

    @30 Ed the Ned, so who do you hold responsible for IPRs?

  • [Avatar for Edward Heller]
    Edward Heller
    May 15, 2017 07:10 pm

    Night, I met most of the DOJ lawyers involved right after ending the oral argument in MCM. They all came up and introduced themselves. Very friendly and polite.

    They are doing the best job they know how for the government even if they do not believe in the position themselves. Their job is to provide legal representation. It is hard to do when your own client really does not have a case.

    Anyway, these folks are just good lawyers and worthy opponents on the battlefield of justice. I commend them.

    The real problem are the folks behind the AIA and IPRs, and those folk are Bob Armitage, Gary Griswold, David Kappos, and the AIPLA. These are the scary ones, especially as they are so polished and pleasing of appearance and speech, etc. There is little wonder why they are at the top of the pyramids of power. They could sell you ice cream in Alaska.

  • [Avatar for Night Writer]
    Night Writer
    May 15, 2017 06:51 pm

    Just to be clear, I would avoid any contact with DOJ people and would be loath to file a complaint against them for their conduct regarding a brief. I am more afraid of them than the mafia.

  • [Avatar for Night Writer]
    Night Writer
    May 15, 2017 06:50 pm

    @26 Anon: I agree with your ethical criticism of the DOJ. I just think our country has become one where unless you can bring them to justice for what they have done that they don’t care. It isn’t just patent law that has turned into a joke. It is the whole country.

    From what I’ve seen of the people at the DOJ, they are scarier than the criminals they prosecute.

  • [Avatar for Anon]
    May 15, 2017 06:14 pm

    Heating => jesting- did not catch that autocorrect.

  • [Avatar for Anon]
    May 15, 2017 06:12 pm

    So then Night Writer, is the Department of Justice an Orwelllian play on words?

    Heating aside, my question is less one of any type of desired End in and of itself, and more of an indictment that ethical rules apply (or should especially apply) when government attorneys present legal views and advocacy to a tribunal. I know of no “mulligan” for ethics because you are an attorney working for the government.

    Maybe Gene can amend his FOIA request…

  • [Avatar for Night Writer]
    Night Writer
    May 15, 2017 05:26 pm

    @23 Anon the DOJ has been off the rails since writing Benson.

    I said it years ago, and I will say it again. This ain’t gonna happen. As much as I would like it too. The courts are more political bodies now than judicial bodies. They know what would happen if they did this. So, they never will.

  • [Avatar for Gene Quinn]
    Gene Quinn
    May 15, 2017 04:55 pm


    Not trying to have any cake and eat it too. Just pointing out that Judge Dyk is wrong. He says that Patlex supports his opinion, which is clearly does not if you actually read it.


  • [Avatar for Anon]
    May 15, 2017 04:43 pm

    Well David presents a strong view, I have been wondering about the possible ramifications of my own post above in consideration of the government attorneys who signed off on the brief.

    In light of the recent couple of threads inquiring as to the ethical restraints on PTAB judges, do we have another possible ethical breach?

    This time, it is not judges that would be at the focal point. I would have to imagine that attorneys even in the employ of the US government do NOT get a “free pass” when it comes to ethical constraints on items that directly deal with tribunals.

    I have to imagine that the duty of candor carries even to government attorneys.

    The omission then from the brief of any mention of controlling law – as pointed out by EG – is a serious offense. The DOJ does not get to operate in a vacuum and only brief their desired result in the face of known controlling law that suggests the contrary. They must acknowledge the controlling law and then argue as to why this would be different.

    The ethics rules are in place to prevent this very type of advocacy in order to achieve a desired End.

    Having a desired End is not bad. Being zealous in pursuit of that desired End is not bad. Violating a duty of candor to a tribunal because controlling law is not in your favor and omitting entirely that controlling law IS bad.

  • [Avatar for Edward Heller]
    Edward Heller
    May 15, 2017 04:34 pm

    Oil States has now filed its reply brief. Hopefully someone will post it so that it can be read by everybody.

  • [Avatar for David]
    May 15, 2017 03:57 pm

    Gene you can’t have your cake and eat it too. Either title vests or it doesn’t. If your position is that it vests and the patent is property, then the PTO, either with an examiner or an APJ, can’t invalidate the patent. The law is very clear on this point.

    After Wellness, the patent holder can probably consent to the Article I invalidation during reexamination.

  • [Avatar for Gene Quinn]
    Gene Quinn
    May 15, 2017 03:21 pm


    Examiners are responsible for reexamination, just the same way examiners are responsible for examination. An appeal from reexamination would go to the PTAB, just the same way that it would go to the PTAB from an examiner in examination. No one in the industry says, believes or thinks that an Article I tribunal is involved in the examination of patents.

    Judge Dyk was wrong to say that Patlex stands for the proposition that an Article I tribunal can adjudicate validity. What Patlex says is that an examiner can reevaluate a patent when there is a substantial new question of patentability as part of a re-examination. There is no examination in a post grant challenge, so Patlex does not support MCM, or anything Judge Dyk says.

    In fact, the word “Board” does not appear anywhere in the Patlex decision. Not sure what other proof is requires to demonstrate the clear error of what Judge Dyk has written.


  • [Avatar for Night Writer]
    Night Writer
    May 15, 2017 02:57 pm

    @16 Ed the Ned (and @17 David)

    I think Ed the Ned has it right too. Let’s not forget that if the claims are substantially amended that you can’t sue for past infringement.

    Now, if only, Ed the Ned would disown Benson (the heart of evil.)

  • [Avatar for Teddy]
    May 15, 2017 02:45 pm

    “There is no Article I tribunal making any determination in reexamination.”

    Then why does the PTAB adjudicate reexaminations? Here’s the PTAB creating and lodging its very own rejections for claims in a reexamination: https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2016002427-05-05-2017-1

    Seems like an Article I adjudication to me.

  • [Avatar for David]
    May 15, 2017 02:36 pm

    Ned gets it.

  • [Avatar for Edward Heller]
    Edward Heller
    May 15, 2017 02:22 pm

    Gene, on a second point, the constitutionality of re-examinations versus the constitutionality of IPRs, you have to ask yourself whether “procedures” amount to a hell of beans? In both procedures, the ultimate result is the cancellation of a claim for invalidity. (They call it unpatentability, but that term is a term properly use only for unissued claims.)

    The opportunity to amend in both procedures is a red herring, a shiny object meant to distract. Amended claims are essentially new claims and the patentability of such new claims is an entirely separate issue from whether the government has the authority, the constitutional power, to cancel, without the consent of the patent owner, a claim from an issued patent which the government believes is invalid.

  • [Avatar for Edward Heller]
    Edward Heller
    May 15, 2017 02:15 pm

    Gene, Patlex distinguished McCormick on the basis of its view that Congress had the power to authorize the PTO to correct PTO errors. What it believed McCormick held was that when the patent owner only requested correction of the patent owner’s mistakes, the PTO had no “authority” to cancel claims in an issued patent without the consent of the patent owner.

    MCM somewhat agreed with this and in a stretch cited the authority that McCormick relied upon, American Bell Telephone, for the same effect that the only problem was lack of the statute.

    In both cases, McCormick was distinguished.

    Also, in both cases, the patent owner’s Article III and Seventh Amendment rights were held not violated because of its conclusion that patents were public rights. In both cases, Patlex and MCM, the basis for the holding that patents were public rights is that they were created by statute. MCM also went through a number of recent cases, including Stern v. Marshall, which it interpreted in favor of its holding.

    I hope this clarifies somewhat the situation, not that I agree with either the Newman court or the Dyk court on its conclusion that McCormick was about statutory power rather than constitutional power to adjudicate the validity of a patent or that correcting the mistake of the government had any bearing on the issue of whether Congress had statutory power or not.

  • [Avatar for Anon]
    May 15, 2017 12:02 pm


    I believe that your point concerning the patent holder’s consent is critical.

    This does tie back into the attack on the property that is known as a granted patent by way of the “Public Right” trickery.

    No matter how noble the “Ends” may be of removing (once granted) a patent property that “is suspect,” any Means by which the End is obtained must remain kosher.

    Means that flat out change what a patent is – as in the “Public Rights” arguments – will carry catastrophic consequences – and not just the ones that have been sounded out by those desiring a truly strong patent system.

    The truth be told is that any and all property exists (in the sense of any property rights being enforceable) ONLY in conjunction with “the State” and the “public” t001s by which enforcement – by the State – is achieved.

    Those that are ardently proposing some type of “Public Rights” view are (knowingly or unknowingly) well down the slippery slope of denigrating the strong patent rights that supply the fuel to the fire of a prosperous nation.

    One way to alleviate concerns of the Constitutional (and that means the full Constituional protections of property, and not just in the patent law section) property protections is to draft a system that requires consent of the property holder.

    I fully understand that this may make it difficult to revoke patents when a patent holder does not want their patent revoked, but the Ends simply cannot ignore the Means and property – being property – must not be cheapened and turned into something that exists merely at the “permission” of the State.

    One concern that is often bandied about as the driver for the Ends is “low quality patents that should not have been granted in the first place.”

    The answer to that concern MUST come from actions put in place PRIOR to grant.

    Maybe it is because I have a background in more than law (engineering and management with hard good products), but one does not fix quality problems by ignoring the manufacturing process itself and then post-manufacturing trying to “inspect in” quality with a defect removal scheme.

    No company employing such a management technique would last very long in the real world.

    Why on earth would we want that in our government innovation control program?

  • [Avatar for David]
    May 15, 2017 10:36 am


    Patlex has to be overruled.

    The plaintiffs’ bar is concerned with the viability of ex parte reexamination, correct?

    After Schor and Wellness, consent likely addresses the constitutional problem in ex parte reexamination.

    Patlex goes away, and Wellness steps in. Ex parte reexamination doesn’t go anywhere.

    Does everyone feel better?

    This is the smart and correct argument.

    The argument made by Gene (about Patlex), conversely, will sink the ship.

    For the record: I don’t believe that any of the litigants have argued what Gene has. Some dance around reexamination somewhat, but none have taken it to this extreme.

  • [Avatar for Anon]
    May 15, 2017 10:30 am


    I think that there exists a very large misperception as to what a “Public Right” is.

    This exists not only in the blogosphere, but deeply into the courts as well.

    Briefs by a public agency are not briefs by a private concern, so when those public agency briefs omit critical elements (as EG noted above), this is NOT a matter of mere oversight, and is much more a matter of unethical practice of law. At the very least, those responsible for vetting and providing permission for a brief to be so slanted as to omit entirely such a critical element need to be held accountable. As I mentioned, those serving clients are at times bound by competing ethics to achieve the client’s goals…

    (which should not be taken as an excuse of unethical actions such as omitting controlling law – it is not and the attorney duty of candor to a tribunal still makes it an ethical breach to fail to disclose to the tribunal legal authority KNOWN to the attorney to be directly adverse to the position of the client and not disclosed by opposing counsel)

    … but in the case of the government’s brief and its omission, there is no outside client creating such a temptation and this then can ONLY be viewed as an attempt by the Executive agency attorney to advance a desired policy position through manipulation of the legal system.

    Even (and indeed especially) government attorneys making legal arguments (and this brief is such) are held to ethical standards in the name of justice.

  • [Avatar for Chris Gallagher]
    Chris Gallagher
    May 15, 2017 10:10 am

    “Congress shall have power… to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

    Everyone seems to agree that Congress has the power to codify patent law. Once exercised however it would seem that no matter how ” limited” the “times” there must be some time however small when the exclusive right is established and settled. But as matters stand there is no time whenever when PTAB cannot nullify its exclusivity during its term. This unlimited timing flaw alone would appear to render PTAB’s IPR power or congressional capacity to confer its unlimited exercise ANY time during a patent’s term (even if only one hour before its expiry) unconstitutional on its face. Or am I just oversimplifying the “public rights” doctrine.

  • [Avatar for EG]
    May 15, 2017 09:23 am

    Hey Gene,

    Timely post by you on the denial of rehearing en banc in Cascades Projection on the “private v. public rights” issue that is at the hear of this debate on the constitutionality of IPRs. On Patently-O in response to the Oil States’ petition for cert to SCOTUS on the same issue, the DOJ opposed, again based upon patents being a “public right” not a “private property right” per Patlex. The question of how does 35 USC 261 impact this issue is conspicuous by its absence in the DOJ brief. In addition, the DOJ brief distinguishes McCormick Harvesting by arguing it held “only that the Patent Act in its then-current form provided no basis for cancelling an original patent based on the rejection
    of a later reissue application”-that argument doesn’t hold water as SCOTUS was very clear in McCormick Harvesting that only an Article III tribunal (not the Patent Office) had the constitutional authority to invalidate a patent. Is see similar misreferences to O’Reilly v. Morse-SCOTUS invalidated Morse’s Claim 8 not on the basis of “preemption” or some other 101 basis, but actually because of lack of “enablement” (per current 35 USC 112(a)/112, first paragraph) for Claim 8 as Morse had only shown enablement of his specific telegraphic way to send messages, not all (or even close) to all ways to send such messages electronically.

  • [Avatar for Anon]
    May 15, 2017 08:15 am


    I think that I see where you are coming from, but I think that you are missing the nuances being discussed.

    If you are concerned with a slippery slope of ANY post-grant treatment of a granted property right, back into the Executive branch controlled administrative agency known as the Patent Office…

    (and the should-be-well-recognized low controls of any “judicial” functions within that administrative agency – controls in the vein of separation from the political controls exercisable by whichever political party in charge)

    …then yes, I do see your concern, and share a concern that by “accepting” encroachment of the property right, we will not be able to stop the slide down that slope.

    That being said, I think it worthwhile to explore just what those different steps entail.

    For example, without such exploration, we would not have seen Ron’s post at 5 which highlights some very real problems of what is going on now that we have slid down that slippery slope.

    I do not think that this is a matter of trying to find some “middle ground” and sacrificing some protections that rightfully belong to the bundle of sticks in the property rights that a granted patent provides. I can see where you might look on this as that though, and thus share – in part – your concern.

    As with any “takings” types of laws – be it zoning or eminent domain or whatever – it is not a matter that ALL takings are, can be, or even should be disallowed. Rather, it is a matter of making sure that we remain aware of takings AS they take place, that we remain aware of the other Constitutional protections already in place that Congress STILL must abide by, and that we remain aware that when we DO decide to let a system exist that does engage in takings, that those other Constitutional protections are not eroded away.

  • [Avatar for Ron Katznelson]
    Ron Katznelson
    May 15, 2017 03:35 am

    Please do not mischaracterize my comment as saying anything about what would make IPRs constitutional – I was only commenting on the misconception that IPRs permit claim amendments. Whether claim amendments are available or not, there is nothing that can be changed about IPR to make them constitutional. This is because, IPR proceedings adjudicate private rights, which can only be extinguishing in Article III courts with a right to a jury trial. The Federal Circuit had it wrong because it failed to focus on the actual rights in dispute in IPR adjudications.

  • [Avatar for Invention Rights]
    Invention Rights
    May 14, 2017 08:48 pm

    Ron, this is a very important observation. I worry that the powers that be are going to counter with a “reform” that yields a few more amendments. This does not nearly bring it into line with due process necessary to protect a property right and promote progress in useful arts.

    First, as you noted identifying patentable claims is an iterative, negotiatiative process. You neglected to mention the conferences which are encouraged in examination where several proposed amendments are worked over in real time. If the PTO solicitor wants to argue that IPR is akin to examination them this is the type of robust amendment demanded.

    Secondly, a patent owner does not know if an amendment is required to save his patent until the PTAB issues a final decision, at which point they will not even consider it. Is he supposed to wager his patent on guessing the minds of the panel before they consider the arguments???

    Finally, amendment almost certainly robs the patent owner of damages for intervening infringement. That is fine in a reissue where the patent owner surrenders his original patent, perhaps even in a reexam requested by the patent owner. But not in IPR where the petitioner is an infringer that could not win in district court, and the amendment is extorted from the patent owner begging the PTO not to reverse its prior decisions allowing the claims.

  • [Avatar for David]
    May 14, 2017 07:23 pm

    If your argument is that reexamination is constitutional because it allows amendments whereas IPR doesn’t not, prepare to have IPR rammed down your throats by the Feds.

    When it happens, you will only have yourselves to blame.

  • [Avatar for Ron Katznelson]
    Ron Katznelson
    May 14, 2017 06:39 pm

    I agree with Anon;
    The fact that IPRs provide no right for claim amendments makes IPR pure adjudicatory. In contrast, the examination process is iterative as a matter of right. In examination, the first rejection is non-final and the applicant can amend the claims as a matter of right, and the examiner must give reconsideration to applicant’s amendment. 37 C.F.R. §§ 1.111, 1.112. Further, the patent statute expressly recognizes that additional iterations for examination and claim amendments may be required and provides for continued examination of applications in 35 U.S.C. § 132(b) as a matter of right, (“RCE”s). Similarly, reexamination and the pre-AIA inter partes reexamination are bona fide examination processes permitting multiple opportunities to amend the claims. Even after final rejection or action closing prosecution, amendments necessitated by the new rejection can be made. 37 C.F.R. § 1.116. Wait, there is more: even in reexamination, additional opportunities are available in certain circumstances by filing a Request for Continued Reexamination (“RCR”). See MPEP § 2440(II), “Second or Subsequent Request Filed During Reexamination.” Even on appeal – at the last stage after examination or reexamination – if the Appeal Board issues a new rejection on appeal, prosecution can be reopened with ability to amend again the claims as a matter of right. 37 C.F.R. §§ 41.50(a)(2)(i), 41.50(b)(1) and 41.77(b).

    Let no one even try to insinuate that “one motion to amend the patent,” 35 U.S.C. § 316(d)(1) – a motion which may not be granted – is anything like the essential robust rights to amend claims in examination or reexamination.

  • [Avatar for Anon]
    May 14, 2017 05:26 pm


    One minor nit – something that you have been corrected on before:

    In fact, the PTAB refuses to allow amendments despite the seemingly clear language of 35 U.S.C. 316(d), which says that 1 amendment is allowed.

    There simply is NO allowance for even a single amendment.

    What is allowed is the ability to ask for an amendment.
    This is just not an amendment of right.

    the patent owner may file 1 motion to amend
    motion to amend is NOT the right to have an amendment.

    As I mention, this is a nit, as it does not take away from the larger gist of your post (but at the same time, you do not need to have that line of thought of “They are not giving me what I deserve” in the form of any “right to amend” that is just not present)

  • [Avatar for David]
    May 14, 2017 02:46 pm


    The arguments have been explained many times over. Gene and others can argue that reexamination is constitutional whereas IPR is not, but don’t act surprised when the issue doesn’t catch the attention of the clerks in the cert pool.

    It is no secret that patentees use reexamination to prepare patents for litigation. This isn’t clever.

    So, pick your poison.

  • [Avatar for Night Writer]
    Night Writer
    May 14, 2017 02:28 pm

    So, @1 David, your substance is “Patlex fails if MCM fails.” Just a naked assertion.

  • [Avatar for David]
    May 14, 2017 11:42 am

    What an awful write up.

    Greedy, greedy lawyers protecting their reexamination books

    Patlex fails if MCM fails. Pigs get fat, and hogs get slaughtered.

    With arguments like this, you deserve the IPR process.