“Rather than addressing ‘bad patents’ as was Congress’s intent during the development of the IPR process, these serial petitions appear to reflect coordinated efforts by certain organizations to undermine the strength of our patent system.”
In their latest letter weighing in on intellectual property issues, Senators Thom Tillis (R-NC) and Chris Coons (D-DE) have expressed their concerns about the effects of “serial” inter partes review (IPR) petitions on the U.S. patent system.
In March, the senators sent a letter to Karyn Temple, Register of Copyrights, to ask a series of questions about the Copyright Office’s ability to handle the likely impact of Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. Today’s letter was addressed to USPTO Director Andrei Iancu and similarly asked Iancu to respond to a list of five pointed questions about the Office’s willingness to take action on serial IP challenges.
The questions essentially ask Iancu to combat the problem via practical solutions that he has the authority to implement. These include:
- to adopt a presumption that additional petitions will not be entertained on the same patent once an IPR is instituted “in the absence of compelling circumstances”;
- to modify the first factor set forth in General Plastic Industrial Co. Ltd. v. Canon Kabushiki Kaisha IPR2016-01357 to clarify that different petitioners, rather than just “the same petitioner”, are likewise barred from instituting multiple IPRs against the same patent;
- to consider affiliates or a prior petitioner to be the “same petitioner”;
- to require executive management of a petitioning entity to provide a sworn affidavit listing all parties with which any person in the petitioning entity has collaborated on IPR petitions against the challenged patent; and
- to designate Valve Corp. v. Electronic Scripting Products, Inc.—which held that “serial and repetitive attacks”, even by different petitioners weigh against institution—as precedential.
The senators asked that Iancu respond to these questions by May 9, 2019.
The letter was apparently prompted in part by stakeholder input. “We have heard from both large companies with tremendous innovation pipelines as well as small companies and patent-intensive startups that they are facing extensive serial attacks on their patent portfolios,” the senators wrote.
“Rather than addressing “bad patents” as was Congress’s intent during the development of the IPR process, these serial petitions appear to reflect coordinated efforts by certain organizations to undermine the strength of our patent system.”
While Tillis and Coons said that making the General Plastic decision precedential was a “step in the right direction,” it has not been enough. “We have continued to hear concerning reports of abusive serial petitions even after General Plastic became precedential, as well as overlapping instituted proceedings that have not been joined. This not only allows petitioners to have multiple bites of the apple, but also allows them to modify and refine their evidence and strategies after learning the initial arguments of the patent owner.”
Last year, the Alliance of U.S. Startups and Inventors for Jobs (USIJ) released a report detailing the organization’s research into serial attacks on high quality patents at the Patent Trial and Appeal Board (PTAB). The report found that Apple was the top filer of IPRs, and that “56 percent of the IPR petitions filed by Apple are duplicative in that they challenge the same claims from the same patents Apple has already challenged in other petitions. The remaining four of the top five IPR petitioners have also filed duplicative petitions in more than one-third of their [cases] (Samsung, Google, Microsoft, LG).”
Today’s letter makes it clear that Tillis and Coons believe Iancu should and can be doing more to resolve these issues. It said: “The USPTO already has the authority to combat the problem, and we hope that you will use it.”