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is a Law Clerk at Amster, Rothstein & Ebenstein LLP and recent graduate of Fordham University School of Law. At Amster, Rothstein & Ebenstein LLP, he has worked in all areas of intellectual property law, including patents, trademarks, copyrights, and unfair competition. He has assisted clients in obtaining, maintaining, and enforcing their intellectual property portfolios.
Since the Federal Circuit’s decision in Aqua Products, Inc. v. Matal confirmed that the burden of persuasion on a the patentability of amended claims in a motion to amend in an inter partes review proceeding (and presumably other post issuance PTAB proceedings) is placed on the petitioner, the theoretical rationale for Section 282(a)’s presumption of validity is no longer present for such amended claims. 872 F.3d 1290 (Fed. Cir. 2017) (en banc). In particular, there is no government agency that is tasked with performing the inquisitorial examination that gave rise to the original presumption. How can there be a presumption that the government agent charged with examining the patent claims did his or her job, when there is no such person assigned to perform that job?
JTEKT Corp. v. GKN Automotive Ltd., No. 2017-1828 (Fed. Cir. 2018) raises the important question of whether the Court of Appeals for the Federal Circuit can refuse to hear an appeal by a non-defendant petitioner from an adverse final written decision in an inter partes review (“IPR”) proceeding, on the basis of a lack of a patent-inflicted injury-in-fact, when Congress has statutorily created the right for “dissatisfied” parties to appeal to the Federal Circuit.