“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.
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.