{"id":355,"date":"2016-01-13T18:57:33","date_gmt":"2016-01-13T23:57:33","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=355"},"modified":"2016-01-19T04:17:58","modified_gmt":"2016-01-19T09:17:58","slug":"just-because-you-can-doesnt-mean-you-should","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=355","title":{"rendered":"Just Because You Can, Doesn&#8217;t Mean You Should"},"content":{"rendered":"<p>In <em>Ethicon Endo-Surgery, Inc. v. Covidien LP<\/em>, [2014-1771](January 13, 2016), the Federal Circuit held that the same panel of the PTAB can make the decision to institute an IPR and the final written decision, and that the PTAB did not err in finding the claims obvious.<\/p>\n<p>The Federal Circuit held that neither the statute nor the Constitution precludes the same panel of the Board that made the decision to institute inter partes review from making the final determination, rejecting Ethicon&#8217;s challenge that this process\u00a0raises \u201cserious due process concerns.\u201d\u00a0\u00a0The Federal Circuit said that\u00a0combining the decision to institute with the final decision in a single panel is less problematic than other procedures approved by the Supreme Court. The Federal Circuit said that both\u00a0the decision to institute and the final decision are adjudicatory decisions that\u00a0do not involve combining investigative and\/or prosecutorial functions with an adjudicatory function, and found the procedure\u00a0directly analogous to a district court determining whether there is \u201ca likelihood of success on the merits\u201d and then later deciding the merits of a case.<\/p>\n<p>Even if not Constitutionally infirm, a procedure that requires a panel of the Board to decide to institute without receiving evidence from the patent owner, and then deciding whether they were wrong does seem to be biased against the Patent Owner.\u00a0 The USPTO proposed a\u00a0pilot program, under which an IPR trial will be conducted by a panel of three APJs, two of whom were not involved in the determination to institute the IPR.\u00a0 The\u00a0USPTO published a request for comments in the Federal Register on August 25, 2015, seeking public comment on the\u00a0proposed pilot program, and the comment deadline was later extended to November 18, 2015.\u00a0\u00a0The AIPLA weighed-in in favor of the change, noting that it would remove the actual or perceived bias in the process.<\/p>\n","protected":false},"excerpt":{"rendered":"<p>In Ethicon Endo-Surgery, Inc. v. Covidien LP, [2014-1771](January 13, 2016), the Federal Circuit held that the same panel of the PTAB can make the decision to institute an IPR and the final written decision, and that the PTAB did not &hellip; <a href=\"https:\/\/patents.harnessip.com\/?p=355\">Continue reading <span class=\"meta-nav\">&rarr;<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[6],"tags":[],"class_list":["post-355","post","type-post","status-publish","format-standard","hentry","category-patent-law"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/355","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=355"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/355\/revisions"}],"predecessor-version":[{"id":356,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/355\/revisions\/356"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=355"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=355"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=355"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}