Tillis, Coons Ask Iancu to Take Action on Serial IPR Challenges

By IPWatchdog
April 10, 2019

“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.”

Senator Chris Coons (left) and Senator Thom Tillis.

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:

  1. 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”;
  2. 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;
  3. to consider affiliates or a prior petitioner to be the “same petitioner”;
  4. 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
  5. 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.”

 

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Discuss this

There are currently 9 Comments comments.

  1. Josh Malone April 10, 2019 4:42 pm

    The problem is the whole notion of “discretion”. These panels have total discretion to institute or not institute. They give lip service to §314(a), §325(d), the General Plastics factors, etc. At the end they just say “we decline to exercise our discretion”. Every week they are continuing to institute review of patents 1) applying broadest reasonable interpretation, 2) on the same prior art considered in examination and reexamination, 3) that are being adjudicated in district court, 4) ignoring the time bar via privity shenanigans, 5) violating the federal rules of civil procedure. They recently instituted review on the DDR Holdings ‘399 patent that survived a 13 years of litigation and became the gold standard for patent eligibility cited extensively in the MPEP. Many other examples in my LinkedIn feed.

    Why doesn’t Director Iancu start making the institution decisions personally as required by the statute?

  2. Gene Quinn April 10, 2019 5:16 pm

    It looks like inventors finally have strong allies on both sides of the isle in the Senate. Hopefully Director Iancu will pursue the reforms suggested by the Senators. He should.

  3. JPM April 10, 2019 5:57 pm

    Serial filings of IPR’s are a serious burden on inventors it needs to be stopped immediately. Let’s all hope that Director Iancu listens and implements these suggestions ASAP.

    In a perfect world, the kangaroo court PTAB would just shut down entirely.

  4. Pro Say April 10, 2019 8:16 pm

    From the 1,000’s of hard-working independent American inventors and their 1,000’s of hard-working counsel from across our great country:

    Thank you Senators Coons and Tillis — and your like-minded colleagues — for this and your continuing effort to stop this long, damaging assault on American innovation.

    Thank you.

  5. The Time Is Now To Act April 10, 2019 10:12 pm

    IPR is structurally defective in its premise and in its execution. Ditch it. Period.

  6. Jury April 10, 2019 10:31 pm

    I am shocked Andrei Ianci did not fix this right away, the idea that a infinger can take you to a court even if they lose they can continue to try to invalidate your product indefinitely as long as they want. This needs to be fixed yesterday.

    April 17th will be very interesting what Tillis and Coone’s Come up with. People with patents need to get paid and protected. Right know it seems pointless to have a patent or even to get one. I hope they get rid of EBay and Alice, they should just scrap AIA Act PTAB, it’s only helped the rich Tech companies become more richer by not having to pay for infringing an inventors patent. Great reads, thanks for the info.

  7. Anon April 10, 2019 10:53 pm

    If any action is taken on multiple IPRs, would this have any bearing on petitioners’ ability to file a CBM as well?

  8. Anon April 11, 2019 7:44 am

    To any extent that ““Rather than addressing ‘bad patents’ as was Congress’s intent during the development of the IPR process,” the IPR process is fundamentally flawed as it is a disconnected (read that as having zero meaningful feedback to correcting any earlier process step) and “closing the doors after the horse has left the barn” type of band-aid.

    Well before the AIA, and active during the AIA with my legislative representatives, I attempted to point out these fallacies and instead steer reform towards improving the examination process itself as the only way to actually addressing “bad patents.”

    Instead, going the path of “post grant” ONLY weakens patent rights across the board for ALL patents and does nothing to address ANY root cause for “bad patents” existing in the first place.

    Anyone with any substantial real world manufacturing experience tied to “post grant” field service and warranty work would immediately recognize that post grant work completely divorced from front end “manufacturing” is a losing business proposition.

  9. The Time Is Now To Act April 11, 2019 4:14 pm

    The Congressional hand is not easily washed here in terms of their over-delegation to the USPTO post AIA signing and non-involvement in the actual design/implementation of IPR that ensued.

    Sens Coons/Tillis should be involved and, going forward, on a day to day basis until the system is fixed and every inventor is protected.

    Congress got sold a line of bull; many helped sell the bull to the other members of Congress.

    And now, not surprisingly, it’s out in the open and stinks like manure in the summer heat.