Oct. 26, 2018

USIJ Report: How “One Bite at the Apple” Became Serial Attacks on High Quality Patents at the PTAB

Executive Summary

“One bite at the apple” is a basic premise of the Patent Trial and Appeal Board (PTAB) established under the Leahy-Smith America Invents Act. Congress intended inter partes review (IPR) as an alternative to district court litigation that saves time and money for challenging the validity of the minority of patents that are questionable. It was not intended to become a tool for well-heeled corporations to delay and repeatedly attempt to kill a valid patent in ways not tolerated in district court. Congress recognized the potential for abuse of PTAB litigation by serial petitions that repeatedly attack an inventor’s patent. 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, precisely because the most valuable inventions draw the most repeated and concerted attacks by so many challengers. Our court system generally doesn’t allow a plaintiff to file multiple lawsuits on the same matter once it has been adjudicated. In the case of IPRs, the petitioner is the equivalent of the plaintiff in our courts and if a single petitioner or a group of petitioners is allowed to file multiple petitions in an attempt to kill a patent claim, then it becomes virtually certain that any patent, including the very best patents, can be killed by IPR. And the data bear out that these repeated and overlapping petitions are routinely filed, both by a single challenger as well as in collaboration with other parties who are “privies” of the other filers in reality but mask their relationships to the other filers to conceal that point. To date, the PTAB has applied its rules permissively to allow serial petitions to take root as the ordinary course of business. To protect inventors and the jobs they create, these rules must be tightened.