USIJ Release: USIJ Releases Analysis Highlighting Problem of Serial Patent Challenges at USPTO’s PTAB
Serial inter partes reviews (IPRs) have become a widespread and disastrous unintended consequence of America Invents Act of 2011. USIJ documents extent of problem and provides detailed recommendations to USPTO.
WASHINGTON, D.C. – The Alliance for U.S. Startups & Inventors for Jobs today released a detailed analysis highlighting the problem of serial inter partes reviews (IPRs) at the U.S. Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB). The IPR process at the PTAB, which was established under the America Invents Act of 2011 (AIA), was intended to save time and money by providing an alternative to district court litigation for challenging the validity of the minority of patents that are questionable. In practice, the process has been abused by large corporations who have initiated repeated IPR challenges against valid patents, in ways not intended by Congress or tolerated in district court. “‘One bite at the apple’ is a basic premise of the PTAB,” said Chris Israel, Executive Director of 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.”
Based on a recent study by Robins Kaplan LLP covering all IPRs filed through June 2018, it has become clear that a number of very large companies, often working with profit-seeking entities such as Unified Patents and RPX, are filing multiple petitions challenging the same patent claims. For the top overall IPR filer, Apple, 56% of its petitions were duplicative (i.e., it filed multiple petitions attacking the same claims). For the next four leading IPR filers, over a third of their petitions were duplicative (Samsung (38%), Google (38%), Microsoft (59%), and LG (34%)).
Throughout the legislative history of the AIA, and as cemented in the enacted legislation, Congress made clear that inventors should not have to endure repeated attacks on their patent claims 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. Similarly, our court system generally does not allow a plaintiff to file multiple lawsuits on the same matter once it has been adjudicated. However, to date, the PTAB has applied its rules permissively to allow serial petitions to take root as the ordinary course of business.
“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.”
The USIJ recommends the following actions that are all within USPTO’s statutory authority:
- The PTAB should prohibit a petitioner from filing multiple petitions on overlapping claims.
- The petitioner should disclose entities that have a financial interest in their filing and contributed to the petitioner’s claims.
- All entities identified in (B) should also be prohibited from filing separate petitions.
- Once a patent claim has survived an IPR challenge, further IPR petitions filed by other parties should be subject to high skepticism and scrutiny, and before instituting such petitions, the petition should be reviewed and approved by the USPTO Director.
USIJ’s full analysis and recommendations to address this serial IPR problem can be found at: www.usij.org.
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About the USIJ:
The Alliance of U.S. Startups & Inventors for Jobs (USIJ) is a group of nearly 50 startups, inventors, investors and entrepreneurs. Collectively, we have launched dozens of companies in areas including biotechnology, clean energy, medical devices and wireless technology. We invent real things and create real companies. We also rely on the strength of the U.S. patent system to create these companies, breakthroughs and jobs.