The USPTO Must End Repeated and Concerted Patent Attacks

By Gene Quinn
October 30, 2018

“While the USPTO claims that sequential challenges are not the problem that they have been made out to be, the drumbeat about weak estoppels after a final decision at the PTAB are echoing in the patent-holder community,” wrote Bob Stoll, former Commissioner for Patents at the United States Patent and Trademark Office in an article published on IPWatchdog.com in July 2018. Indeed, that drumbeat continues to grow only louder as the problem of sequential, and multiple challenges, only continues to grow as repeated patent attacks challenging the same claims over and over are becoming a common strategy.

Recently another Petition for Writ of Certiorari was filed with the United States Supreme Court asking the Court to do something about the problem of multiple post issuance challenges against the same patent – even the same patent claims. If the Court takes the case it will clarify the proper role of AIA proceedings within the wider scheme of the patent system and determine whether title to a patent ever quiets, or whether it can be endlessly challenged in a never-ending series of duplicative challenges until the patent owner finally loses all rights. See Supreme Court asked to apply Multiple Proceedings rule to end harassing validity challenges.

“‘One bite at the apple’ is a basic premise of the PTAB,” said Chris Israel, Executive Director of The Alliance for U.S. Startups & Inventors for Jobs (USIJ). “Congress never intended the PTAB to become a tool for large, incumbent corporations to delay and repeatedly attempt to kill a valid patent. But this is what the Board has become.” The ‘PTAB” Israel refers to is the Patent Trial and Appeal Board created by the America Invents Act (AIA) to administer the newly created post-issuance challenge proceedings at the USPTO.

A recent study by Robins Kaplan LLP covering all inter partes reviews (IPRs) filed through June 2018 shows that a number of very large companies file multiple petitions challenging the same patent claims over and over again. For example, Apple – the top overall filer of IPR challenges – filed duplicative petitions 56% of the time (i.e., Apple filed multiple petitions attacking the very same claims). The next four leading IPR filers also file duplicative petitions – for Samsung 38% of IPR petitions filed were duplicative, for Google 38% of IPR petitioners were duplicative, for Microsoft 59% of IPR petitions were duplicative, and for LG 34% of IPR petitions were duplicative.

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Despite the extraordinary number of duplicative petitions, the USPTO continues to say there is not a real problem with serial, sequential or a multiplicity of challenges. Obviously, the data demonstrates otherwise. The USPTO convinces itself that there is not much of a problem here because 67% of patents are only challenged once, and 20.2% of patents are challenged twice, so 87.2% of patents are challenged only once or twice. See The Real IPR Gauntlet. But by the USPTO’s own admission there are patents that are challenged 3, 4, 5, 6, and even 7 or more times. And the reality the USPTO misses is when the challenge is successful the first time there is no need for a second or subsequent challenge. So citing to patents that fall at the PTAB in the first challenge does nothing to change the reality that there are patent owners that are being harassed by a multiplicity of filings at the PTAB.

Those patents that are challenged a second, third, or seventh or eighth time were found to have valid claims in each of the prior challenges, yet the PTAB continued to institute fresh new challenges. Obviously, those patents must have been well written to survive so many challenges, and they must have been quite valuable. So, this problem of a multiplicity of challenges is for those well-written, high-quality patents that cover extremely valuable innovations. Aren’t those the very innovations the patent system is supposed to foster and protect?

To make matters worse, while patent owners have been vilified using pejorative terms such as ‘patent troll’, the large entities that are filing multiple petitions challenging the same claims over and over again often work with profit-seeking entities such as Unified Patents and RPX.

Why is it that innovators such as Universities and independent inventors are caricatured as patent trolls while entities such as Unified Patents and RPX, who exist for the sole purpose of destroying property, are somehow let off the hook or even celebrated? In a different era, about 100 years ago, those large corporations and their allies who ganged up on smaller companies and individuals were characterized as ‘robber barons’ and caricatured as ‘fat cats’.

In truth, the America Invents Act (AIA) is written to prevent entities like Unified Patents and RPX from challenging patents on behalf of its members, which if we are being honest everyone in the industry knows they do. Sure, Unified Patents and RPX claim their ‘members’ do not control decisions on which patents are challenged, or make any legal decisions, but when a member is confronted with a patent it always seems to get challenged immediately thereafter, so who is fooling who? Finally, the Federal Circuit has seen through the charade, and is attempting to put some real legal meaning into the term privy, as that term is actually defined in every other area of the law. See Applications in Internet Time v. RPX Corporation, 897 F.3d 1336 (2018) (“these facts, which, taken together, imply that RPX can and does file IPRs to serve its clients’ financial interests”).

The AIA makes clear that patent owners should not have to endure repeated patent attacks at the PTAB. Even the best inventions, covered by well-written patents, are prone to be stripped of their protections at the PTAB if they are subjected to repeated and concerted attacks by challengers. The challengers know this, which is why they file multiple challenges against each patent, against the same claims, keeping patent owners continually on the defensive until all claims are finally lost. Indeed, the patent battle is not over until all claims are finally lost, and despite explicit protections in the AIA to prevent such harassment the PTAB and the USPTO do nothing to stop it.

“The original notion of the IPR process, to provide an opportunity to challenge low quality patents in lieu of lengthy court proceedings, has given way to a system in which a few large corporations systemically and repeatedly attack quality patents held by their competitors,” said Israel. “Patent-intensive startups are especially impacted by this abuse. To protect inventors and the jobs they create, the USPTO needs to take clear and effective action to tighten its rules and address this problem.”

USPTO Director Andrei Iancu has already done much (see here, here, here, here and here) to begin to reform the PTAB, but there is much left that he can still do before he has exhausted all avenues of reform under his control.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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 28 Comments comments. Join the discussion.

  1. Pro Se October 30, 2018 3:27 pm

    My patent value is a step above dirt, if I want to avoid a 14th IPR filing from the same group of co-operatives. I’ve been told they will just keep using new affiliated cases as a new bar to keep filing them because “privity” has been misconstrued into this “controlled by” narrative. Every “customer” of an infringer is a new IPR the infringer can fund after the Infringer’s year is up.

    Or, a “fund” pops up to file the IPR, or Unified Patents, and then RPX will give it a try for their “client”.. And of course, the “client” itself gets a crack at it..

    You’d think after 10 IPRs on the same portfolio, the USPTO would accept the patent is valid? A portfolio should have a global challenge limit, like 8.

  2. Robert Paul Taylor October 30, 2018 6:24 pm

    Gene, this is an excellent piece. Even the best and most defensible of patents will fall if they are subjected to a sufficient number of repetitive challenges, each of which creates a probabilistic chance that some judge will get it wrong. The doctrines of res judicata and stare decisis, along with the estoppel provisions of the AIA, are intended to prevent this nonsense and to bring about finality and repose so the parties can move on. Let us be hopeful that the new PTO Director will put some limits on what petitions get allowed in this context.

  3. Tony Blake October 31, 2018 2:49 am

    Anyone who’s practiced patent prosecution long enough knows that most Examiners are lazy, poorly trained idiots (I used to be one myself) who just want to get their counts and will allow anything if you fight hard enough. And if you go to trial, the average juror is not nearly educated enough to understand the vast majority of patents well enough to make any informed decisions. So the only place that patents are truly properly examined is during an IPR when there’s a real advocate on the other side. And I shouldn’t be estopped from getting my day in court before the board just because someone else already challenged a patent. That’s not how res judicata works in other areas of the law and it shouldn’t work like that in patent law either.

  4. Paul Cole October 31, 2018 3:39 am

    I seem to remember a thing called res judicata, and a maxim: interest civitatis est ut sit finis litium. Why is this forgotten in the USPTO?

    In particular, multiple challenges against the same patent by the same or a closely related challenger are a clear abuse.

  5. Glen October 31, 2018 5:13 am

    This is just plain common sense. Motivate the innovators by protecting them from robber barons.

  6. Valuationguy October 31, 2018 9:29 am

    I agree with Gene’s article…but feel that it fails to capture that Iancu IS trying to change the serial attack vectors that most of the efficient infringers use to get an IPR approved. He however needs time….which is the bureaucracy’s greatest ally.

    Remember that Iancu only became Director in February….and much of his initial effort needed to be getting up to speed and removing SOME of the career people that Lee installed to promote her (i.e. Google’s) agenda of weakening patents to clear the field for Silicon Valley giants to “innovate” on the backs of all the patent owners who came before.

    In that time he has addressed several major issues (including the BRI v Phillips issue, empowering amendment process, etc.) and booted former Chief PTAB ALJ Ruschke (who was a HUGE part of the problem) to the side.

    The statistics on serial challenges are dominated by PAST practice….not current practice….so be understanding when calling for further change (from Iancu) when it is already evident that Iancu is working toward the same goal.

    Understand that if the Dem’s take the House at the midterms….it is highly likely that all patent “reform” in the form of legislation will be driven by Google’s personal Congresscritter, Rep Zoe Lofgren…..who is a worse opponent of patent owners than even Goodlatte.

  7. Nicholas October 31, 2018 9:51 am

    I am an innovator not a patent attorney and even I can see the injustices here. AIA is not in place so that well protected patents can be destroyed through challenges by “big money.” Furthermore, it doesn’t take a patent attorney or a ” rocket scientist” to figure out that repeated challenges against a single claim is harassment.

  8. PTO-Indentured October 31, 2018 10:02 am

    Formula: The patent battle is not won until the patentee is undone.

    Oh…– and a final twisting of the knife — provide for destitution if a U.S. independent inventor’s case just ‘stands out’ in any way: make patentee pay all attorneys fees, pay all attorneys fees with compounding interest (make him or her bankrupt).

    Note: for the tech elite companies named above the cost of IPR ‘serial kills’ is a no-brainer not-even 1/1000th of one percent of their resources. Barely a blink of an eye.

  9. Mike October 31, 2018 10:26 am

    Google, Apple, Microsoft, Facebook, Samsung, etc. Efficient infringers: Today’s modern-day Robber Barons. Sounds appropriate.

    Robber Baron Efficient Infringers. “RBEIs” (pronounced “rubies”).

    “What’s a ruby?, you say? Well I’m glad you asked. A RBEI is an entity who infringes upon patents and also lobbies for weakening the patent system so it can continue to steal these protected property rights away from inventors. Take for example Google …”

  10. litig8or October 31, 2018 1:00 pm

    A problem is when a NPE dusts off an old patent that they acquired from a real company (e.g., HP) and claims that the patent covers the iPhone. Another scenario is that some vaguely-worded patent is asserted against an iPhone when in the inventors claimed something entirely different and lawyers are trying to fit the patent claims on the iPhone because Apple has deep pockets and lawyers like getting $$$$ through litigation instead of selling products. In both cases Apple engineers developed the product with absolutely no knowledge of such patents.

    Take a look at the infringement cases that have been filed in the last 20 years and there are tends of thousands like this. That is a big problem. Those are the kinds of patents that aren’t driving innovation and those types of lawsuits put a tax on innovation and are a net drag on society.

    Of course there are cases of willful infringement. But they are rare.

  11. Josh Malone October 31, 2018 1:06 pm

    Why not make PTAB voluntary for small enitites? If it becomes a cheaper and faster alternative to district court, we will go. There is no need to force it on us. Don’t tell me one $500K IPR per infringer is fair. I can decide if it is fair. If it csnnot deliver, we can take care of it in a real court and jury.

  12. Pro Say October 31, 2018 4:00 pm

    litig8or: “… instead of selling products. In both cases Apple engineers developed the product with absolutely no knowledge of such patents.”

    Selling products? No knowledge?

    Now; respectfully, you know better than to bring up such things as if they have anything at all to do with the validity, infringement, and value of patents.

    But hey; the folks at anti-patent sites and entities like Arstechnica, Reddit, Gizmodo, and the Electronic Frontier Foundation welcome such viewpoints with open arms.

  13. SVI October 31, 2018 4:34 pm

    @litig8tor #8 “A problem is when a NPE dusts off an old patent that they acquired from a real company (e.g., HP) and claims that the patent covers the iPhone. Another scenario is that some vaguely-worded patent is asserted against an iPhone when in the inventors claimed something entirely different and lawyers are trying to fit the patent claims on the iPhone because Apple has deep pockets and lawyers like getting $$$$ through litigation instead of selling products. In both cases Apple engineers developed the product with absolutely no knowledge of such patents.”

    Why are these scenarios a problem? If HP invented technology that one can argue is being used in an iPhone, and then the patent was re-assigned to another entity, that entity should be encouraged to assert its rights as the patent holder. Likewise, if the holders of a vaguely worded patent wish to exercise their rights against Apple, why is this a problem? Apple has the means to defend itself (and the means to hire the best engineers in the world and make them aware of existing IP).

    All your ideas erode patent protections for those who most need protection and protects the first trillion-dollar company in the US, which least needs protection. Do you really not see the folly of your interpretation, nor where that interpretation will lead?

  14. Anon October 31, 2018 4:57 pm

    litig8or,

    As you profess to have litigated patent cases, you are (or should) be aware that state of mind (i.e., “ In both cases Apple engineers developed the product with absolutely no knowledge of such patents.“) does not have bearing on infringement (as opposed to willful infringement).

    Your post comes across as you mouthing the typical anti-patent Kool-Aid that Efficient Infringers have been using for years. Not sure if that was your intent, but that is the result.

  15. Troll-Killer October 31, 2018 7:34 pm

    Yes, we all know that whether or not Apple engineers have knowledge of a patent is not relevant for infringement, it’s somewhat rich to hear tech companies called robber-barons who are stealing innocent inventor’s IP when these companies have never seen the patents in question. And while Apple may have the money to defend themselves against patent trolls, many smaller companies do not.

    Since we have a patent office that will allow almost anything with at best a cursory examination process, the only time patents get truly examined for validity is at the IPR level. So restricting IPR rights seems like folly that would only encourage more lawsuits based on garbage patents that never should have been issued.

  16. Josh Sohn October 31, 2018 8:43 pm

    At first blush, it does seem intuitively unfair for a patentee to defeat one IPR, and then another, and then another, but lose all his patent rights if he loses a single IPR on the nth go-around. But consider the process for *getting* a patent. A patent applicant can lose before the Examiner, and then lose again, and again, but can keep filing continuations ad infinitum until he finally notches a single “win” and gets a patent. So at the prosecution stage, the patentee can lose-lose-lose-lose-lose until he gets a single win, which wipes out all the prior losses and results in a patent. Viewed in this light, there’s a pleasing symmetry if a patentee can win-win-win-win-win at the PTAB until he gets a single loss, which wipes out all the prior wins and results in the patent being taken away.

  17. EG November 1, 2018 7:20 am

    Hey Gene,

    That no form of res judicata or estoppel seems apply to serial IPR filers just reflects that they were intended to kill patents, not to provide any sort of “fair and balanced” forum for adjudicating patent validity.

  18. Paul Cole November 1, 2018 11:30 am

    @ EG

    Having met Josh Malone at the AIPLA conference and attended the subsequent film and seminar, the problem is strikingly apparent. But the problem is not so much one of legislation as of the PTAB judges grossly failing to regulate their procedure. Given that it is at that level, it is not inappropriate for the USPTO to revise its procedures, and it is to be hoped that Director Iancu will grasp the point and take action.

    In Europe we have multiple parties but a single opposition. The PTAB should operate a similar procedure, and those who fail to join an initial application should not enjoy the right to make a further application save in exceptional circumstances. And issues explored before the federal courts should be regarded as res judicata and not re-explored at the USPTO.

  19. Randy Landreneau November 1, 2018 12:41 pm

    @Josh Malone #11: During the debate leading up to the passage of the AIA, there was ample discussion of the need to block repetitive PTAB attacks on patents, and there was apparently language to that end. But large entities found a way to get around it. I know four inventors who, between them, have been through over 200 IPRs. Inventors with anything significant are being destroyed.

    If the various changes being discussed end up making the PTAB fair, faster and cheaper, inventors would choose it over Article III courts. If the PTAB is not fixed, or if it is and then a future Patent Office Director changes it back, inventors should not be forced into it. The one group mentioned in our Constitution as having intellectual property rights should have them.

  20. Pro Say November 1, 2018 12:53 pm

    T-K @ 15: “Since we have a patent office that will allow almost anything with at best a cursory examination process, the only time patents get truly examined for validity is at the IPR level. So restricting IPR rights seems like folly that would only encourage more lawsuits based on garbage patents that never should have been issued.”

    Says the guy who’s never tried to get a patent application through the PTO.

    Furthermore, according to USPTO 2017 PAR statistics: (https://www.uspto.gov/sites/default/files/documents/USPTOFY17PAR.pdf) in 2017 373,093 cases were allowed and a stunning 302,466 cases were abandoned.

    And when you consider that some 95%+ of these abandoned applications were written and prosecuted by very knowledgeable, very experienced patent attorneys and patent agents, the case for just how difficult it actually is to obtain a patent cannot be questioned.

    Josh @ 16: Respectfully, you (apparently) are not appreciating the claim iteration process; which is simply a common aspect of multi-step patent prosecution.

    There’s nothing unseemly, unfair, or unreasonable about this.

  21. Anon November 1, 2018 1:06 pm

    TK @ 15,

    it’s somewhat rich to hear tech companies called robber-barons who are stealing innocent inventor’s IP when these companies have never seen the patents in question.

    Josh @ 16,

    Your view of “getting” is flawed, as estoppel applies, and there is no such thing as a “free pass” in obtaining something in a later continuation that was rejected in an earlier family member.

    I suggest that you check yourself for anti-patent bias, and realize that rewarding innovation is what is involved in the patent system.

    That’s a fair first take.

    But that neglects the context to which you also allude to: there is NO requirement of mental state for this type of “theft” to occur. It is important to remember that patent law does NOT have any such “you must know about that source” to be “guilty” of infringing THAT source. The larger context of theft then may include the notion that even after being informed that THAT item is protected, the larger companies STILL engage in the “theft” of Efficient Infringement.

    Thanks for bringing up a nuance worth explicating.

  22. staff November 1, 2018 3:53 pm

    ‘USPTO Director Andrei Iancu has already done much (see here, here, here, here and here) to begin to reform the PTAB’

    We agree, but admin reviews are a far bigger problem for small entities than all other patent holders. What will work for them will not work for us. When we have to fight to keep our patents we go out of business.

    The IPR section of AIA was ‘sold’ to Congress with the promise it would be a faster and cheaper: better way to settle patent disputes than the courts, but that can only be if all other factors between the 2 proceedings are the same, or at least no more prejudicial to inventors. If factors such as the law or standards as applied in admin reviews are more prejudicial to inventors, we will be at a disadvantage and therefore admin reviews cannot be better. We believe the best way to ensure admin review will be better is to make them only with the consent of the patent holders. That will also protect our right to trial by juries. If admin reviews truly are faster/cheaper/better, we will jump at the chance to use them. If they are not, we will then have recourse to the courts as the Constitution demands. That is the only fair and just solution. No doubt, that would be an ‘inconvenience’ to our large competitors who prefer to rob us in peace and at will as they presently are permitted to do under current law.

    For our position and the changes we advocate (the rest of the truth) to restore the patent system, or to join our effort, please visit us at https://aminventorsforjustice.wordpress.com/category/our-position/
    or, contact us at aifj@mail.com

  23. Anon November 1, 2018 3:56 pm

    It appears that somehow my post was garbled – apologies for the confusion.

  24. Troll-Killer November 1, 2018 4:12 pm

    Pro Say, I would hardly call a 55% allowance rate a stunning demonstration of how difficult it is to obtain a patent. I’ve gotten many patents allowed that had no real innovation other than the creative lawyering I had to do to make the claims seem novel and eventually wear down the examiner. I keep thinking that there’s no way these applications will get anywhere, yet the PTO keeps allowing them.

    If we actually had a legitimate examination process, I might feel more sympathy for inventors that have to go through the IPR process. But after seeing all the garbage claims that the PTO allows, it’s hard to see how the system is rewarding innovation.

  25. Anon November 1, 2018 8:48 pm

    TK,

    I do not believe that you are an attorney who obtains patent protection for innovators.

    Your “I’ve gotten many patents allowed that had no real innovation other than the creative lawyering I had to do to make the claims seem novel and eventually wear down the examiner.” comes across as canned and insincere.

    Further, it sounds as you do not have a grasp of your ethical requirements (if indeed you are an attorney).

  26. SVI November 1, 2018 10:03 pm

    @TK “Yes, we all know that whether or not Apple engineers have knowledge of a patent is not relevant for infringement, it’s somewhat rich to hear tech companies called robber-barons who are stealing innocent inventor’s IP when these companies have never seen the patents in question.”

    They have armies of patent/IP attorneys and related staff paid to, among other things, make the company aware when it’s infringing. If those staff aren’t doing their job, that’s the company’s fault.

    “And while Apple may have the money to defend themselves against patent trolls, many smaller companies do not.”

    We hear this troll mythology a lot, and it makes no sense. Apple is the target of legit infringement cases and illegitimate cases too because Apple makes an obscene amount of money. Small companies have no money to go after. The idea that trolls target small companies is absurd.

    “Since we have a patent office that will allow almost anything with at best a cursory examination process, the only time patents get truly examined for validity is at the IPR level. So restricting IPR rights seems like folly that would only encourage more lawsuits based on garbage patents that never should have been issued.”

    If you believe what you say your focus should be on recommending fixes to the examination process. Leaving that broken and then instituting another process that also needs to be fixed adds to the jeopardy and weakens patent protections and valuations. That’s exactly what you want. But why? What good does it do?

  27. Troll-Killer November 1, 2018 10:14 pm

    Anon,

    Are you really telling me that you’ve never added an alternative embodiment to a spec that wasn’t disclosed by the inventor? Maybe by disclosing different materials, or performing methods steps in a different order, or rearranging components? Or that you’ve never drafted a claim to cover things not envisioned by the inventor?

    At most firms, this type of creativity is expected of a good patent prosecutor. Is it ethical? Probably not, but we all do it.

  28. Anon November 2, 2018 9:58 am

    TK,

    My questioning of your status is only reinforced with your answer.

    In all seriousness, if you believe that what you do is unethical, and you want to use the excuse of “everyone does it,” then your ethical standing as an attorney is questionable on that basis alone (and whether or not the underlying actions are indeed ethical or unethical).

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