Posts Tagged: "inter partes"

The timing of the announcement is curious given that Michelle Lee’s days seem numbered as Director of the Office. As first reported on IPWatchdog.com, Commerce Secretary Wilbur Ross has interviewed at least three candidates for the position of Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Those receiving interviews were Phil Johnson, former Vice-President for Intellectual Property Strategy & Policy for Johnson & Johnson, Randall Rader, former Chief Judge of the United States court of Appeals for the Federal Circuit, and an unidentified patent attorney characterized by one source as a dark horse candidate.

If you are having trouble figuring out how Zond could have had 371 claims, lost all of them, but only 1,220 claims were instituted out of 1,377 claims challenged, you understand the problem. These are not misprints or mistakes. Zond had 371 unique patent claims, but because of the IPR gang tackling phenomena those 371 claims were challenged a total of 1,377 times, but instituted only 1,220 times. Thus, the number of institutions is more than three times the number of unique claims Zond owned. In other words, the institution rate shouldn’t have been 88.6%, it should have been closer to 329%!

Russ Slifer: “And as you know by statute the Director is tasked with making the institution decision on an IPR but that’s been delegated to the PTAB for obvious logistical reasons. There’s no way that the front office could read through all petitions and make a decision itself so it had to be delegated to the Board. But sometimes there are cases that probably should be reconsidered on whether institutions should have be made – and maybe it’s because the art that is relied on is the same or substantially the same as what was in prosecution. Or maybe there is a financial hardship of the patent owner or the IPR will not resolve all of the outstanding validity issues that are pending in a district court. So there could be certain categories of reasons that you could basically an interlocutory appeal to the Director for reconsideration. I think that is one way to help address some of the potential abuses or hardships on the patent owner if there’s been several IPRs that have been instituted against a patent from different parties. Right now the system does not allow for reconsideration once a decision has been made. That’s just one example.”

Patent claims being adjudicated valid in federal district court and then being killed in an administrative proceeding at the PTAB is exactly the problem so many of us saw coming. Time and time again throughout the debates in Congress, and all through the legislative history, post grant proceedings were explained as being a faster, low-cost alternative to litigating validity disputes in Federal District Court. That was just a lie. Post grant proceedings at the PTAB are not cheap, and they are not an alternative to district court proceedings. The PTAB is duplicative and anti-patent. In fact, because of the different standards used between district courts and the PTAB, and because district courts presume patents are valid pursuant to 35 U.S.C. 282, different outcomes are practically inevitable.