The Senate Must Vet Vishal Amin

By Paul Morinville
April 23, 2017

Vishal Amin

As Senior Counsel of the House Judiciary Committee, Vishal Amin was a primary architect of the Patent Trial and Appeal Board (PTAB), the administrative tribunal that has destroyed thousands of patents, destabilized the U.S. patent system, and sent venture capital and countless technology startups fleeing to China.

Inventors who create jobs by using U.S. patents to bring new ideas to existing companies, or to start their own are all suffering from the U.S. Patent and Trademark Office (USPTO) implementation of the PTAB created under the America Invents Act (AIA). Vishal Amin was a primary architect of the AIA. But now President Trump has nominated Mr. Amin to serve as White House Intellectual Property Enforcement Coordinator, sometimes referred to as the “IP Czar”. The Senate must consider the effects of the AIA in Mr. Amin’s confirmation process.

In the AIA, Congress granted the USPTO broad power in the PTAB to weed out those few patents that were granted but perhaps should not have been. However, largely due to the PTAB, the U.S. patent system now ranks 10th in the world, tied with Hungary.

The PTAB invalidates at least one claim in more than 95% of patents it reviews. Claims are selected for review by the petitioner, who is almost always the accused infringer or some company acting in their place to hide the identity of the true petitioner. Invalidating just one claim can destroy the case for infringement and thus the patent. The cost of defending a single PTAB starts at $500,000 and burns many years of the patent’s life when you factor in the administrative process and inevitable appeal. That lost time does not come back, so it really destroys the heart of the patent’s enforceable life— that limited time when the technology will be most commercially valuable and viable. Big corporations “gang tackle” inventors by filing multiple PTABs against the same patent, thus driving the cost of defending a patent into the millions of dollars. PTAB is obscenely unfair and damaging far beyond the patent’s value.

PTAB damages capitalization of our most important new technology startups – those with innovative new technologies that must be protected by patents. These are the very companies that have historically created most of our new jobs.

While we weaken our patent system, China strengthens its patent system. China is now the global leader in patent filings with twice as many filed than the United States in 2015 and more than the top 20 countries combined. This is causing venture capital that once propelled startups here to move to China. Along with funding goes job creation and economic growth, but more importantly, the leading position in new technology creation on the world stage also goes. The loss of leading in technology will have a dramatic effect on our national security and we will be forced to purchase technology critical to our national infrastructure and potentially military from China.

Changing PTAB rules may help for a while, but cannot fix the PTAB’s systemic problems because PTAB rules will change with every new administration. While a patent’s term is 20 years, PTAB rules will likely change every four years. This leaves the patent system perpetually unstable and as such unable to drive economic growth and job creation because patents will never be able to attract investment for early stage startups.

Not surprisingly, the PTAB is the most used patent litigation venue. Far more than even the Eastern District of Texas. The PTAB, an administrative tribunal, invalidates property rights without a jury and under completely different rules than an Article III court (see PPC Broadband, Inc. v. Corning Optical Communications), which puts the PTAB in conflict with 220 years of black letter law, precedent and the U.S. Constitution.

Vishal Amin was an architect and the primary driver behind the AIA and the PTAB. He must explain his reasoning for the most damaging legislation to American innovation in U.S. history.

These questions must be asked of Vishal Amin in his confirmation hearings. Unless he can reasonably and satisfactorily explain his position on these issues, it must be assumed he is not qualified for the position of White House Intellectual Property Enforcement Coordinator.

 

The Issues Inventors Vishal Amin
May private property be taken by an Article I administrative tribunal? NO ?
Is an issued patent a private property right? YES ?
Is a patent owner entitled to due process under the 5th amendment? YES ?
Do PTAB rules provide due process for the patent owner? NO ?
Is a patent owner entitled to a trial by jury under the 7th amendment? YES ?
Can the USPTO “fix” patents after issuance without harming the integrity of the patent system? NO ?
Is the PTAB inconsistent with the presumption of validity in §282 of the Patent Act? YES ?
Should Article III courts be bound by PTAB decisions as to validity of issued patents? NO ?
In light of PTAB, are patents securing to Inventors the exclusive Right to their Discoveries? NO ?

 

The Author

Paul Morinville

Paul Morinville is Managing Director of US Inventor, Inc., which is an inventor organization working in Washington DC and around the US to advocate for strong patent protection for inventors and startups. Paul has been walking the halls of Congress knocking on doors and sitting down with hundreds of offices to explain the damage suffered by inventors due to patent reforms. Paul is an independent inventor with dozens of patents and pending patent applications in enterprise software. He is also CEO of OrgStructure, LLC, an early stage enterprise middleware provider in Northwest Indiana.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 19 Comments comments.

  1. Night Writer April 23, 2017 10:20 am

    It looks more and more like Google is controlling the Trump policies.

  2. Randy Landreneau April 23, 2017 10:31 am

    Under the last administration the great engine of American innovation, our unique American Patent System, was kneecapped by the America Invents Act. The Innovation Act (HR 9), which I’m sure Mr. Amin supported, would have finished the job. Considering how important innovation and small business creation are to America, and how strong patent rights are key to that, how could President Trump be so misinformed?

  3. Anon April 23, 2017 11:00 am

    Paul,

    The table of issues is profound, and may even serve as a litmus test for any conversation on the merits. Kudos for so succinctly summarizing important keys.

    That being said, I do not agree fully with the answers therein.

    To wit: The answer to “Is the PTAB inconsistent with the presumption of validity in §282 of the Patent Act?” is immaterial to the actual controlling issue.

    As I have attempted to explain, the operation of the PTAB is entirely consistent with the presumption of validity in §282 if only because a patent is no longer the same granted patent once the initiation decision point occurs.

    It is at that initiation decision point that the granted patent loses some of the sticks in its bundle of sticks that make up the property right of the valuable granted property. And it is only after that initiation decision point that the item can truly be said to be “in” the PTAB, where the Executive Branch Agency is being consistent with operations of items within that branch.

    The problem as I have attempted to make clear is that the answer provided here continues to ask the wrong question.

    The proper question is NOT whether or not the PTAB is “consistent” with other parts of the statute; but rather, the proper question is can Congress write a subsequent law that ignores other Constitutional protections that have inured to a property right?

    The fault here is not the PTAB – it is Congress, and it is a fault of Constitutional proportions (the takings argument). This distinction is not trivial, as has been seen by the courts only too willing to answer the wrong question being put before them and avoiding answering the more “heavy” Constitutional question that is the real sticking point.

    Along similar legal lines, I would also re-frame the last question in the table from:

    In light of PTAB, are patents securing to Inventors the exclusive Right to their Discoveries?

    to:

    Did Congress overstep their authority as provided under the Constitutional limitation of “securing to Inventors the exclusive Right to their Discoveries?” by violating the precepts of proper takings (in at least, the takings are performed by the Executive [read that as political] branch, and the taking (of valuable sticks) is completed with zero Article III review [directly] of the initiation decision point AND zero remuneration of the greatly reduced value of losing that clear and convincing level of presumption as well as the invocation of BRI without an actual right to amend (the right to ask for an amendment is not – and cannot reasonably be – the same as an actual right to amend.

    These issues transcend Trump; they transcend Mr. Amin, and they transcend even Congress acting as a whole in passing a Constitutionally deficient America Invents Act. It is not the first time that an Act of Congress has failed proper Constitutional scrutiny and it will not be the last.

    But we must be clear in pointing out the who and the why, and not conflate the PTAB with an error belonging to Congress (as has been done several times now before the courts).

  4. Night Writer April 23, 2017 11:12 am

    I think the problem is the table of companies that Trump assembled. I don’t think Trump has the depth of knowledge of the technology industry to understand patents and the people he is putting in charge do not either (his son-in-law with no experience) or Google sponsored people (e.g., Lee or the chap above).

    We are doomed. Google has kicked our bu##s.

  5. Anon April 23, 2017 11:21 am

    Night Writer,

    Your pessimism (while indeed real) is just not germane.

    As long as a single attorney can follow the legal principles in the first instance, and continue to champion those same principles, no amount of money or bought influence will be able to maintain the charade in the long run. THAT is one of the saving graces of this country – and it is a saving grace that I personally still believe in.

  6. Night Writer April 23, 2017 11:57 am

    @5 Anon: Sure, Anon. How is anti-trust law doing? Labor law? Both targets of corporate money over a 20 year period. Both are mere shadows of what they used to be.

  7. Anon April 23, 2017 12:05 pm

    Night Writer,

    If you are going to personally quit and throw up your hands, then I would prefer that you went away silently.

    Others are not deterred and are taking action.
    Yes, it is a difficult path.
    No, it is not an impossible path.

    Help, or get out of the way.

  8. IPdude April 23, 2017 12:50 pm

    This is not a good sign of things to come but let’s wait and see who he appoints as Director. It seems to me that if Google had successfully infiltrated this administration they would have kept Lee on.

  9. Invention Rights April 23, 2017 12:52 pm

    Paul, if readers were to make appointments with their Senators in Washington, would someone from U.S. Inventor be available to join them to present these concerns? Taking down the PTAB and those responsible could be a winner if we step up and join you.

  10. Randy Landreneau April 23, 2017 1:06 pm

    Night Writer,

    The Innovation Act passed the House 325 to 91 in December 2013. We stopped it in the Senate. It came back stronger than ever in 2015. The experts said it could not be stopped in the House, and we stopped it. This was done on a shoestring. With a little support, there’s no telling what we can do.

  11. Night Writer April 23, 2017 1:15 pm

    @10 Randy: that is great. The problem I have is that they will keep coming and coming and coming with Google bucks. But, I agree we should keep fighting. (I think the way to fight is with empirical evidence and with going after the highly unethical people Lemley.)

    @8IPdude: No Google doesn’t want Lee to stay on. They want someone much harsher.

    @7 Anon: I think am entitled to my opinions.

  12. Paul Morinville April 23, 2017 1:27 pm

    Invention Rights, I will do everything possible to join whoever wants to go to Washington.

  13. cmm3rd April 23, 2017 1:50 pm

    Excellent article, Paul. It should be sent to every US Senator.

    What Senate Committee is holding a confirmation hearing for Mr. Amin?

  14. Anon April 23, 2017 4:25 pm

    Night Writer,

    No one is saying that you are not entitled to your opinions. I am saying that the opinion as you expressed it at post 4 is unhelpful, and it is my opinion that the cause would be better off if you kept such negativity to yourself.

    But by all means, if you want to aid and abet the Big Corp Efficient Infringer crowd with such a “gee, this is hopeless” opinion, then have at it.

    Just don’t be shocked when I express my opinion in reply.

  15. Paul Morinville April 23, 2017 8:42 pm

    cmm3rd, The hearing will be in the Judiciary Committee (Senate). It is not scheduled yet. Trump nominated him just before recess, but nobody knows if he was passed to the Senate yet. There should be a hearing scheduled soon. I have no idea how long the process is from nomination to hearing.

    I have been in the Senate for the last week and will be there this week. It has been delivered to 80 or so offices. It will be to every office by the end of the week.

  16. IPdude April 23, 2017 9:01 pm

    Paul,
    I understand this is not good news and may be a foreshadowing on Trump’s patent policy but isn’t his pick for director more relevant?

  17. Paul Morinville April 23, 2017 9:14 pm

    IPDude, He dropped Michelle Lee after it was made clear that she has attempted to run through new regulations (fee increase) while trying to hide it by not reporting it as significant in the Federal Register. See: http://www.ipwatchdog.com/2017/03/08/uspto-breaks-president-trump-one-in-two-out-executive-order/id=79270/

    It looks to me at this point that he listens to feedback and is not afraid to change his position if he learns it is a problem. I am hopeful that some of the Senator offices that I’ve spoken with in the last week will help him realize that this guy is not the right guy. If they do I am hopeful he will drop it.

    I personally doubt that Michelle Lee will be held over in any position despite the rumors that she will get a different post. Maybe I’m too optimistic, but it is the only way to Make America Great Again and drain the swamp at the same time.

  18. jbavis April 24, 2017 2:02 pm

    “the enemy of my enemy is my friend” implies that Uber and IPR’s has potential as “friends”. Gather some $funds + pro-bono effort to file IPR against the patents Google is relying on against Uber over what they believe will be a large part of their future revenue stream.

    If an IPR really only costs $20k, then how hard would it be to convince a few patent lawyers to each contribute $5k and a couple weekends to help Google see the evils of IPR’s?

    In other words, instead of fighting the giant, gently persuade him to switch sides. Guaranteed to work? No – but think about how much Google has spent on accumulating patents AND on the filing of patents based on their home grown R&D – at what point do they start viewing patents as assets and therefore that IPR’s as a threat to their assets?

  19. Eric Berend April 24, 2017 10:44 pm

    This infringer’s tool is exactly why, as an inventor, I cannot risk disclosure through the classic, lawful U.S. patenting process.

    There are inventors whose inventions, by and large, tend towards improvements in existing designs. And then, there are those for who the concept of invention means wholly new technology. So far, the majority of my innovation, has manifested as the latter.

    The “…job creation and economic growth, but more importantly, the leading position in new technology creation…” is one of the primary reasons I was put on the Earth. And, if I have any sense of my own dignity; let alone ambitions as to industrialization and wealth creation; I dare not risk subjecting my property to such scathing (radical, academic anti-property cabal), corrupt (K Street, etc.), unwarranted (presumption of validity upon issuance) un-Constitutional (“…securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”) review.

    And, I know that I am not alone. Any inventor now sufficiently alarmed by the current state of affairs in the patent space, must be appalled at the unbelievably derogatory treatment we are subjected to, in every aspect of this supposedly legitimate patent prosecution process.