Comments on: Are Patent Claims Treated Like a “Nose of Wax” at the U.S.P.T.O? http://www.patentspostgrant.com/lang/en/2009/12/are-patent-claims-treated-like-a-%e2%80%9cnose-of-wax%e2%80%9d-at-the-u-s-p-t-o Patents Post Grant is the leading legal blog, providing daily insight into patent reexamination, patent reissue and post grant review strategies. Sat, 04 Feb 2012 04:51:43 -0600 http://wordpress.org/?v=2.8.5 hourly 1 By: Chico Gholz http://www.patentspostgrant.com/lang/en/2009/12/are-patent-claims-treated-like-a-%e2%80%9cnose-of-wax%e2%80%9d-at-the-u-s-p-t-o/comment-page-1#comment-7 Chico Gholz Tue, 08 Dec 2009 16:05:18 +0000 http://www.patentspostgrant.com/?p=506#comment-7 (1) Note that In re Etter was en banc. That doesn't mean that either the BPAI or the CAFC couldn't distinguish it, but I do think that both the board and the court treat en banc opinions (even dicta in en banc opinions) with enhanced respect. (2) I think that Agilent v. Affymetrix was one of the worst CAFC opinions to come down recently--at least in terms of its practical effect on interferences. I was lead author of the AIPLA's amicus brief in support of Affymetrix's petition for rehearing en banc (which was denied), and I wrote up that opinion in "How Should 'Copied'Claims Be Interpreted?." 16 Intellectual Property Today No. 9 at page 11 (2009) However, it is the law of the land--and I agree that it says what Todd says that it says. (1) Note that In re Etter was en banc. That doesn’t mean that either the BPAI or the CAFC couldn’t distinguish it, but I do think that both the board and the court treat en banc opinions (even dicta in en banc opinions) with enhanced respect.

(2) I think that Agilent v. Affymetrix was one of the worst CAFC opinions to come down recently–at least in terms of its practical effect on interferences. I was lead author of the AIPLA’s amicus brief in support of Affymetrix’s petition for rehearing en banc (which was denied), and I wrote up that opinion in “How Should ‘Copied’Claims Be Interpreted?.” 16 Intellectual Property Today No. 9 at page 11 (2009) However, it is the law of the land–and I agree that it says what Todd says that it says.

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