Judge Newman dissents from the denial of Ethicon’s petition for rehearing en banc. Judge Newman criticizes the PTO’s rule-making authority which, pursuant to 37 C.F.R. § 42.4(a), assigns the decision of whether to institute an IPR to the PTAB, the same entity which decides the merits of the IPR. The statute gave the Director the responsibility of deciding whether to institute an IPR and the PTAB the responsibility of deciding the merits of the IPR.
Judge Newman believes that the practice of assigning the same PTAB panel to both institute and conduct an IPR is contrary to the statute and has the taint of prejudgment, i.e., the merits phase is merely “rubber stamping” the institution decision. Statistics show that the PTAB has reversed course and found patentability after institution in just 9% of IPRs. The PTAB invalidated 82.5% of the claims that came before it after institution. This problem weakens the patent system and reduces public confidence in post-grant proceedings and the patent system as a whole.
Ethicon Endo-Surgery, Inc. v. Covidien LP, Case No. 2014-1771 (June 22, 2016); On Petition for Rehearing En Banc, Dissenting Opinion by: Newman, J.; Appealed From: United States Patent and Trademark Office, Patent Trial and Appeal Board. Read the full opinion here.