“What happened to me is happening to others like me. Each week I get to hear from other inventors and their experience with PTAB. This system is broken and is ruining small businesses and the morale of U.S. innovators.”
On Wednesday, May 25, United States Patent and Trademark Office (USPTO) Director Kathi Vidal and a panel of academics from Silicon Valley participated in a 90-minute, live Q&A webinar regarding the state of the USPTO. I attended virtually.
I am a five-time world jump rope champion and the only jump roper to design and patent a jump rope handle technology. I was granted my two patents (US 7,789,809 B2 and US 8,136.208 B2) in 2010/2012. I started my jump rope manufacturing business, JumpNrope, in 2010 here in Louisville, Colorado. I am proud to also say that I source all my jump rope parts and pieces from U.S. vendors. We make all our jump ropes by hand in Colorado.
My technology not only changed the sport of jump rope by offering a precision speed jump rope handle, but it also changed the fitness industry. To date, hundreds of companies have infringed on my patent, including Rogue Fitness, the largest fitness distributor for CrossFit and Strongman. As detailed in my case, I believe that Rogue has willfully infringed on my patent since 2012 by selling tens of millions of dollars’ worth of infringing jump ropes per year.
A Fruitless Fight
I served Rogue with a notice of infringement in 2018 and lost both my patents in November of 2021. Rogue filed a petition for inter partes review (IPR) with the Patent Trial and Appeal Board (PTAB) and the case was fast tracked through the PTAB, where my patents were ultimately found invalid. My lawyers felt that the PTAB got my case wrong, so we appealed to the Federal Circuit. In November of 2021, just three days after attending my hearing in Washington, DC, we received an email from the Federal Circuit with a one-word decision indicating that my case was “affirmed”. The ruling is called a ”Rule 36” judgment.
I was told that was the end of the road for my fight. However, I decided to take it upon myself to research what had happened to me. I found a group, US Inventor, and soon learned I was not alone. They, like I, believed what had happened to me was terribly wrong. This inspired me to continue to understand more about the system and what was happening to other inventors like me.
I attended the webinar on May 25 to understand how Director Vidal is going to make changes to the PTAB. She had some optimistic statements, such as that she wants to encourage innovation, to resolve abuse in the PTAB, and to use the first principles of the America Invents Act (AIA) when resolving an issue. One panelist said that the PTAB is more favorable for inventors because the judges are technically trained – much more technically trained then district judges – making it a better option for inventors. The PTAB is also cost-effective for inventors and takes less time than the district court, this panelist said.
Inventors Don’t Always Want a ‘Fast-Track’
When I served Rogue in 2018 my case was stayed in Ohio pending the IPR. This is not what I or my lawyers wanted. I wanted my case to be tried in court, with a jury. This case was the biggest moment of my life. I was “all in” and not looking for a “fast” track, a deal on time or a more economical route. My patents are my livelihood. I have been busting my butt since 2008 and changing the idea of jump rope both through technology and content. I have been to over 600 CrossFit Gyms around the world and have conducted nearly 900 jump rope seminars to athletes and coaches. I was the head coach to the largest jump rope team in the nation and have worked with thousands of kids. I am a creator and an innovator.
My case took four years. I don’t think this is fast. I spent hundreds of thousands of dollars on this case—any savings I have is gone. To me this is A TON of money. I lost all my license agreements, and every day I get to watch my infringer sell my technology. I humbly rent an 800-square foot apartment with my husband in Colorado. Each day I pick up the pieces, wondering what happened.
What if I had “won” at the PTAB? My case would be brought back to Ohio. This equates to more time and more money.
I believe the “technical judges” of the PTAB used the wrong standards in my case. I don’t practice law, but when my lawyers and US Inventor explained what happened to me, it seemed to me that ANY invention that is held to the PTAB’s standard may be deemed obvious and seen as an invalid patent. I understand now why 84% of patents are invalidated at the PTAB.
I wanted a jury; I wanted a fair trial where we could use evidence. I wasn’t allowed that.
Rogue also received a “fast track”—straight out of court. They got to dodge a bullet! I believe I have credible evidence of Rogue’s infringement that would have held up in district court. An IPR for Rogue is a huge cost savings and less burden for them. As an example for this article, if Rogue was past due $20 million in royalties to me, they see that an IPR will cost $2 million and they can spend less time and money, and their burden of proof is lower. It is a great deal for Rogue.
A Broken System
What happened to me is happening to others like me. Each week I get to hear from other inventors and their experience with PTAB. This system is broken and is ruining small businesses and the morale of U.S. innovators.
I spent my money on securing my two patents. I received a red ribbon certificate. It reads:
“Grants to the person(s) having title to this patent the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States of America or importing the invention into the United States of America for the term set forth below, subject to the payment of the maintenance fees as provided by the law.”
I served Rogue for infringement. I did not ask for my valid patents to be re-examined. I asked for a trial, a jury and for my RIGHT to exclude others from making, using, offering for sale or selling my technology.
The system is faulted. My case, along with others, should be re-opened and reviewed. This is the only way to learn what went wrong, how to fix it and to create change for the future.
There is one thing I have learned being a team athlete my entire life. I don’t see a loss as a loss. I see it as a time to get back up and get stronger. When my patents were invalidated by the PTAB, I certainly felt a loss. However, finding other inventors like me, with similar stories, we are starting to rally together and we are getting stronger. We are asking to be heard and not just told that change will happen, but to see actions that prove it.
After attending the USPTO webinar, I took some time to reflect. I asked myself, “what am I doing?” As I listened to the panelists and thought about my experience with the PTAB, it made me feel that all along my patents have been invalid. Did I pay a large sum of money to the UPSTO and receive a faulty sense of security for my invention? Why did the USPTO give me my patents? Did I falsely advocate for my patent when I set up licensing deals in the past? Is it just my imagination that hundreds of companies, Amazon retailers and overseas manufactures sold and continue to sell my idea? Was it ok that Rogue profited off my idea?
If the problem with the PTAB is a problem that dates back to the beginning, with the examiners that gave me my patent, then I want to know that. I deserve to know that, and so do the future inventors who are also spending their time and money on receiving “faulty” patents.
If, however, all along my invention/patents have been valid, which I believe they have been, then I want to focus on Ms. Vidal’s words during the webinar. She stated that she wants to encourage innovation and resolve abuse in the PTAB. I challenge her and the rest of the UPSTO to look deeper into the abuse by listening and asking inventors what they have experienced at the PTAB. They will find that the PTAB is giving false hope to inventors. Their false hope sounds good out loud, but it is just words and not workable solutions for us. I was forced down this road and I lost my patents.
I want Ms. Vidal to work with me, and other inventors. To take a walk in our shoes. To open our cases, review them, and see the struggles we have experienced.
If I could go back in time and make one request, it would be to have had a choice. My patents are my everything, my livelihood. I wanted a jury and the right to defend my invention. I wanted to spend as much time/resources as I had on this. I think my request to have a choice is fair, and should be considered as a future change to the PTAB.