Recently, there has been some public debate over research regarding the validity of patents that are upheld in federal district court and which are then invalidated through various review challenges instituted at the Patent Trial and Appeal Board (PTAB). One particular commentator trotted five examples out of a set of patents upheld in district court and invalid at the PTAB to note that an apples-to-apples comparison of the data shows that the district court and the PTAB are deciding validity on different grounds; for instance, an argument made under to 35 U.S.C. § 112 for indefiniteness may have failed at district court, but the PTAB invalidated claims over 35 U.S.C. § 102 for anticipation based on submitted prior art. The two decisions on validity happened on different grounds, and thus there’s no actual controversy, at least in the minds of some.
When going through the list of patents that have been deemed valid in district court and then invalidated through PTAB proceedings, there are 58 cases where the patent is invalidated at the PTAB on the same statutory grounds asserted at district court and which did not lead to invalidity. So, contrary to any notion that any data we’ve published fails to pass muster, there is plenty of evidence that the activities of the PTAB present an unfair playing ground for patent owners who are dragged before it, often after those patent owners have already been victorious in district court in proceedings where Article III federal judges have confirmed the validity of those patents.
There are even multiple instances in which a patent was challenged in district court and upheld as valid, and then the same entity challenges the same grounds at the PTAB and successfully gets the patent invalidated. U.S. Patent No. 7092029, entitled Strobe Lighting System for Digital Images, was asserted in a case filed by Imperium IP Holdings against Korean tech giant Samsung in the Eastern District of Texas in June 2014. This is a case in which the damages award against Samsung was enhanced because of willful infringement and demonstrably false testimony presented at trial. A jury verdict filed in the case in February 2016 determined that Samsung had not proven that asserted claims of the ‘029 were obvious, surviving a 35 U.S.C. § 103 challenge. In May 2015, Samsung petitioned the PTAB for an inter partes review trial of the ‘029 patent, again challenging the patent on Section 103 grounds. A final written decision issued by the PTAB in December 2016, after the district court jury awarded damages and the judge enhanced damages for Samsung’s egregious conduct, found the ‘029 patent as invalid for Section 103 obviousness, the same statute under which Samsung failed to win on invalidity in district court.
Twice in the Western District of Wisconsin, a collection of eight patents owned by Wisconsin-based mobile communications firm Ultratec were upheld as not invalid. The first time, in a summary judgment filed September 2014, a judge granted Ultratec’s motion that seven of the asserted patents were not anticipated by prior art submitted by defendants Sorenson Communications and CaptionCall, surviving Section 102 challenges. A jury verdict entered October 2014 in the case against Sorenson and CaptionCall further upheld the validity of claims across all eight Ultratec patents which were challenged on Section 103 grounds for obviousness.
And then, Sorenson and CaptionCall turned to the PTAB to successfully invalidate each of the eight Ultratec patents, challenging the same grounds that were challenged by them as defendants in district court. In a final written decision issued by the PTAB in May 2015, U.S. Patent No. 7555104, titled Relay for Personal Interpreter, was declared invalid for Section 103 obviousness after it survived Section 103 obviousness in district court. Another final written decision issued by the PTAB in March 2015 determined that claims of U.S. Patent No. 5909482, same title as the ‘104 patent, were invalid on Section 102 anticipation and Section 103 obviousness grounds. Very specifically, claim 1 of the ‘482 patent was invalidated at the PTAB on the same Section 102 grounds on which that claim was upheld at district court, and claim 6 was invalidated at the PTAB on the same Section 103 grounds on which that claim was upheld at district court. Similar stories could be told about the other six Ultratec patents, each of which ended up being invalidated at the PTAB through trials which were petitioned by the district court defendants.
In April 2016, the District of New Jersey entered a stipulation and an order of dismissal in a patent infringement case after a consent judgment was entered by plaintiff Jazz Pharmaceuticals and defendant Wockhardt Bio. In that consent judgment, defendant Wockhardt had admitted that an abbreviated new drug application (ANDA) it filed with the U.S. Food & Drug Administration (FDA) was a technical act of infringement of 18 patents owned by Jazz and asserted in the case. Although Wockhardt did not rebut the statutory presumption that the patents were valid and enforceable, such arguments of invalidity were made by another defendant in the case. As Jazz’s original complaint filed in January 2013 notes, defendant Amneal Pharmaceuticals filed an ANDA covering a new drug infringing the same patents but its ANDA application included a Paragraph VI certification that the patents were invalid or unenforceable. An answer filed by Amneal in April 2013 repeated the invalidity defense, challenging each claim of 10 Jazz patents on invalidity grounds under Sections 101, 102, 103 and 112. Similar invalidity arguments against Jazz’s patents-in-suit were made by Lupin Pharmaceuticals in a counterclaim that firm filed in the case as a defendant in February 2016.
Despite the fact the district court did not invalidate patents which Amneal and Lupin argued were invalid, and patents which led Wockhardt to stipulate to a permanent injunction in district court, six Jazz Pharmaceutical patents then met an untimely demise at the PTAB. In July 2016, the PTAB declared claims of U.S. Patent No. 7668730, titled Sensitive Drug Distribution System and Method, invalid under Section 103 obviousness. This was in an IPR proceeding petitioned by Amneal and Wockhardt as well as Par Pharmaceutical, another defendant in Jazz’s district court case. The ‘730 patent was one of the Jazz patents which Amneal had alleged was invalid in the district court proceedings. Wockhardt, the entity stipulating to an injunction in the district court patent case, was a petitioner in IPRs finding each of the six Jazz patents invalid; Amneal was a petitioner in eight trials.
So clearly, the slanted playing field of the PTAB is resulting in the invalidation of patents upheld in district courts, patents which are being deemed willfully infringed, patents which are being invalidated after the petitioner already stipulates to an injunction caused by the assertion of those patents. These are but a few examples.
If one final point can be made about recent criticism of data published on this website, it’s curious how someone could pick five examples “at random” and then consider those to be representative of a whole. It is even more curious how those five examples that support the criticism could have been randomly selected when there are 58 examples that specifically and unequivocally prove the exact opposite. It almost seems as if those “random” examples were specifically and intentionally cherry-picked. Whatever the case may be, the claim that district courts and the PTAB reach the same conclusions when you focus only on 102 and 103 grounds is so grossly exaggerated as to be literally false.