By David Hricik, Mercer Law School
The USPTO is seeking comments on amending certain PTAB Rules of Practice. While it proposes many amendments, two seem key: one for instituting on all challenged claims and grounds (to conform with SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018)) and the other to eliminate the presumption at institution favoring the petition as to testimonial evidence. Comments will be accepted through June 26, and the notice is available here.
As to the first major proposal, as amended the PTAB will institute an IPR, PGR, or CBM proceeding on all claims and all grounds if preponderant evidence in the petition shows at least one claim is unpatentable. The Office explained in part:
In light of SAS, the Office provided guidance that, if the Board institutes a trial under 35 U.S.C. 314 or 324, the Board will institute on all claims and all grounds included in a petition of an IPR, PGR, or CBM. To implement this practice in the regulation, the first proposed change would amend the rules of practice for instituting an IPR, PGR, or CBM to require institution on all challenged claims (and all of the grounds) presented in a petition or on none. Under the amended rule, in all pending IPR, PGR, and CBM proceedings before the Office, the Board would either institute review on all of the challenged claims and grounds of unpatentability presented in the petition or deny the petition.
As to the second, the USPTO spent a lot more ink explaining it, writing in part:
In April 2016, after receiving comments from the public and carefully reviewing them, the Office promulgated a rule to allow new testimonial evidence to be submitted with a patent owner’s preliminary response. Amendments to Rules of Practice for Trials Before the Patent Trial and Appeal Board, 81 FR 18750 (April 1, 2016). The Office also amended the rules to provide a presumption in favor of the petitioner for a genuine issue of material fact created by such testimonial evidence solely for purposes of deciding whether to institute an IPR, PGR, or CBM review. Id. at 18755–57.
Stakeholder feedback received in party and amicus briefing as part of the Precedential Opinion Panel (POP) review in Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018–01039, Paper 15 (PTAB Apr. 3, 2019) (granting POP review), indicated that the rule has caused some confusion at the institution stage for AIA proceedings. For example, certain stakeholders have indicated that the presumption in favor of the petitioner for genuine issues of material fact created by patent owner testimonial evidence also creates a presumption in favor of the petitioner for questions relating to whether a document is a printed publication. Additionally, the Office has concerns that the presumption in favor of the petitioner may be viewed as discouraging patent owners from filing testimonial evidence with their preliminary responses, as some patent owners believe that such testimony will not be given any weight at the time of institution.
Section 314(a) of 35 U.S.C. provides that ‘‘[t]he Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition. . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.’’ 35 U.S.C. 314(a). Thus, the statute provides that a petitioner is required to present evidence and arguments sufficient to show that it is reasonably likely that it will prevail in showing the unpatentability of the challenged claims. Hulu, LLC v. Sound View Innovations LLC, Case IPR2018– 01039, Paper 29 at 12–13 (PTAB Dec. 20, 2019) (citing 35 U.S.C. 312(a)(3), 314(a)). For a post-grant review proceeding, the standard for institution is whether it is ‘‘more likely than not’’ that the petitioner would prevail at trial. See 35 U.S.C. 324(a). In determining whether the information presented in the petition meets the standard for institution, the PTAB considers the totality of the evidence currently in the record. See Hulu, Paper 29 at 3, 19.
In this notice of proposed rulemaking, the Office proposes to amend the rules of practice to eliminate the presumption in favor of the petitioner for a genuine issue of material fact created by testimonial evidence submitted with a patent owner’s preliminary response when deciding whether to institute an IPR, PGR, or CBM review. Thus, consistent with the statutory framework, any testimonial evidence submitted with a patent owner’s preliminary response will be taken into account as part of the totality of the evidence.
Interestingly, the Office specifically asked for input as to implementation, stating “the Office may apply any rule changes, if adopted, to all pending IPR, PGR, and CBM proceedings in which a patent owner’s preliminary response is filed on or after the effective date.”
So I’ve been intentionally absent from this website for a while. Can I ask what happened to the Moon Man?
In a ‘dialogue’ with a Malcolm wanna-be (my pal with the propensity for shifting historical pseudonyms), I had commissioned a crawl of active threads back on April 7, 2020. At that point the last post by Malcolm was on March 26. The last day of more than one post was March 15. He has been completely absent since March 26.
Rumors are that he morphed into Ben.
I heard he got bored with his “MM” persona because the “NWPA” persona was so much more entertaining to play at.
Ben is clearly not the same as Malcolm.
But Ben does tip his hat as to being the same Ben that upvoted nearly everything posted by Malcolm in the days of the DISQUS commenting system here with the remembrance of NWPA.
Anon has never denied, on this blog, that he is the Green River Killer.
Because they do not get irony where you are, We’ll let you in on the joke that this responds to your “But Ben does tip his hat as to being the same Ben . . . .” ssshhhh!!!
(Not unexpected from you, Shifty)
And yet, STILL no denial !!
And the (stale) games begin!
Gee golly!
“And yet, STILL no denial !!”
My shifting historical pseudonym’ed friend, ‘STILL no answer !!’ from you for my question to you of, “Are you still beating your wife twice a day?”…
As to 5.3, you have never actually ASKED that question, now have you…? (and even asking that question has nothing to do with Ben being the same person that upvoted nearly everything that Malcolm posted in the DISQUS days of this blog — even (or especially) as he may NOW deny such).
You employ false premises AND false conclusions in your 0bsess10n over me.
Again.
(and again, to the same effect for you: Beep beep)
5.3 is not a question, just a statement of fact.
Nobody is fooled, Snowflake. Everybody knows that your stock-in-trade is to pound the table and make stuff up when you’re cornered, and then repeat the made-up stuff (over and over) as if it’s uncontroverted fact.
So, how is that Ben is Ben but also used to be Ben but used some other name to hide his Ben-ness?
[sigh]
You never before provided that “statement of fact”
Not sure why you think this as anything to do with anyone being f00led or not…
As to “everyone knows, meh, what YOU postulate as to “what everyone knows” is — as usual — rather meaningless.
And further, for another anvil falling on your head, Ben’s ‘Ben-ness’ is not, nor ever has been, something that was hidden or put another a different name.
For the amount that you 0bsee over me, you sure do not read what I write too well….
Beep beep.
And there it is. Your other stock-in-trade acting (being?) totally clueless so that people feel the need to explain the simplest things to you that you miss and, thus, “engage” with your nonsense.
Nobody is fooled, Snowflake.
Now pound the table and make some more stuff up.
Mr. W. E. Coyote, I am not the one here that is clueless.
That would be you.
Again.
This projection of traits that fit you is a meme that has NEVER worked on these boards.
But just like the cartoon, no amount of anvils falling on your head stops your employment of these memes that never work.
It’s actually kind of fun to watch you continue to try though.
In a trainwreck sort of way.
“boards.” ?
…the blog, its comments across its various sections.
Are you really that thick?
What is your current line or work? What was your past that so dulled your senses?
United States dictionary Merriam Webster: “board” a piece of sawed lumber of little thickness and a length greatly exceeding its width.
[yawn]
… because everyone knows that the group of people that meet and discuss management of a corporation — the board of directors — are nothing more than a “piece of sawed lumber of little thickness and a length greatly exceeding its width.”
. . . because everybody knows when you said “boards” you meant a “board of directors.”
Now pound the table and make some more stuff up.
No, it was NOT that when I said “board” I meant “board of directors.”
It WAS that YOU are wrong in that “board” must mean “a piece of sawed lumber of little thickness and a length greatly exceeding its width.”
Another anvil lands on your noggin.
Beep beep.
“It WAS that YOU are wrong in that ‘board’ must mean “a piece of sawed lumber of little thickness and a length greatly exceeding its width.”
We have a written record. Point out, precisely, where I said that.
In the alternative, pound the table and make some more stuff up.
Since we have expended the numbering system in this line of comments, I suggest that you pause prior to your next invitation of anvil-drop-to-your-noggin and READ your own post at 5.3.1.1.1.2.2.
You just are not that good at this blog exchange thing. What was your line of work before you retired?
Citation to the written record, comment 5.3.1.1.1.2.2, in full, follows:
“United States dictionary Merriam Webster: ‘board’ a piece of sawed lumber of little thickness and a length greatly exceeding its width.”
That is the comment, in full.
Now, point out where I said, according to you, in your troubled mind, that “‘board’ must mean ‘a piece of sawed lumber of little thickness and a length greatly exceeding its width.’”
Point out, precisely.
Or, do not surprise us, do not pound the table, do not make some more stuff up.
Your “comment in full” provided NO other choice of meaning for the word.
HAD you wanted to provide some other choice, YOU could have included more of the definition.
YOU chose not to.
You are not very good at this blogging thing.
What was your line of work before you retired? It apparently zapped you of ANY ability to apply critical reasoning.
“Your ‘comment in full’ provided NO other choice of meaning for the word,” in your troubled mind.
Understood.
See? That wasn’t as hard to explain as you thought, in your troubled mind.
How odd that you think that MY explaining of YOUR fault is some type of MY “troubled mind.”
This is clearly not a problem for mind no matter what state you may want to attempt to spin.
That I have to explain this AT ALL to you is a sign of YOUR troubled mind, seeing as it was YOUR ‘gotcha’ attempt that — yet again — ended up with YOU having an anvil fall on your noggin.
Beep beep.
Ding Ding Ding!! “Beep beep.” !!!
And there it is! A new tell!! He just can’t help it !!!!
There it is – the bottom of the barrel for pal Shifty: the Ding Dance with the purposeful miss of “tell” instead of meme.
What is it that you think is being told here, Mr. W. E. Coyote?
After all, pet your own ‘logic,’ your Ding Dance and tell miss would itself be considered to be a tell.
“After all, pet your own logic,’ your Ding Dance and tell miss would itself be considered to be a tell.”
Well said. Well spoken.
[sigh]
Do we really need to go through all your tells, yet again, and include your new one, Snowflake?
“Do we really need to go through all your tells, yet again, and include your new one, Snowflake?
First, do we need to go through the difference between a tell and a meme (again)?
Second, if YOU insist on getting this difference wrong, then let’s hear what YOU are ‘telling’ with your ‘tell’ of the Ding Dance and the misapplication of ‘tell’ for meme (as asked — again).
You botched another, Mr. W. E. Coyote.
Shifty,
I had a moment so I checked out the Urban Dictionary to see the meaning of the word “snowflake” (which I have always thought odd in your use).
Here is what I found:
“Top definition
Snowflake
A term for someone that thinks they are unique and special, but really are not. It gained popularity after the movie “Fight Club” from the quote “You are not special. You’re not a beautiful and unique snowflake. You’re the same decaying organic matter as everything else.”
Began being used extensively as a putdown for someone, usually on the political left, who is easily offended or felt they needed a “safe space” away from the harsh realities of the world, but now has morphed into a general putdown for anyone that complains about any subject.
Comedians have a hard time performing on college campuses anymore because of all the little snowflakes running around that get offended by just about anything they say.
by dan828 May 03, 2017”
It is odd, and yet another ‘tell’ from you in that the definition fits you far more than it fits me. It is you that has this absolute 0bsess10n with me and it is you that thinks yourself to be some special Holden Caulfield character with all of your “oh, anon did something bad’ gotcha attempts (which NEVER pan out for you).
The parallel to W. E. Coyote continues…
I am definitely NOT one that has ever needed a safe space – the type (it appears) that you think that you have somehow been ‘especially appointed’ to provide with your 0bsess10n of me.
You are ‘special’ – in a train wreck sort of way.
Other than that, I do not know of a more INconsequential person than you.
3 (THREE) long replies to a sigh.
Why are you so obsessed with me, Snowflake?
Did you bother reading any of the replies?
If so, you might have noticed the content.
But as for 0bsess10ns, one of us has an over 95% SINGULAR focus on the other.
Guess which one of us is that one.
(You are really bad at this blogging thing — what was your line of work before you retired?)
BlutoBlutarsky,
As you can see, Malcolm may be gone, but my pal Shifty is here: typo free and content free.
(but he is hogging all the anvils)
It is bizarre that they’re proposing to eliminate the practice of resolving genuinely disputed factual disputes in favor of the Petitioner for purposes of IPR institution. The rationale behind that rule is pretty simple; before institution of trial, there is no discovery and no opportunity to subject documentary or testimonial evidence to rebuttal, cross-examination, etc. IPR petitioners are also generally not permitted to submit reply evidence at the pre-institution phrase (and most requests to submit replies w/o evidence are denied). So a patent owner could attempt to defeat IPR institution by submitting expert declarations chock full of false or misleading statements, or expert declarations espousing positions that the experts proffering them would have abandoned if subjected to even the most gentle cross-examination. (And there’s no downside for a patent owner, either; if the Board does institute IPR, it’s pretty standard for patent owners to simply jettison pre-institution experts and start over with brand new experts and new arguments that are more defensible.)
The concept of resolving disputes in favor of the petitioner for a threshold institution determination did not originate with IPR practice or the PTO; it’s consistent with longstanding rules of civil procedure (including summary judgment procedures) that prohibit tribunals from resolving disputed factual issues based on an incomplete record, and before any kind of formal hearing or trial. The idea is that a tribunal shouldn’t resolve any complex or “close call” factual issues without the benefit of a full record.
The obvious purpose of Iancu’s proposed change here is to benefit patent holders, but I suspect in the long run, it may end up hurting them. If the PTAB can now resolve disputed factual questions at the pre-institution phase, an order instituting trial in an IPR will be seen much more as a death-knell for the patent. This will give defendants in litigation a stronger argument to urge the district court to stay proceedings pending completion of IPRs, as they’ll argue that a decision instituting trial in an IPR is a much more reliable predictor of the ultimate outcome than it is under the current practice.
Intersting LR, but I do not think that a thumb on the scale provides a bona fide replacement for lacking a complete record.
Additionally, Congress could have — but did not change the fact that a granted patent has a presence and level of a presumption of validity.
Even through the AIA, that stick in the bundle of property rights remained in place.
Seeing as an aspect of property – once granted – earns OTHER Constitutional protections, Congress is NOT free to do ‘whatever’ (even as they did NOT change the aspect of property that I present to you).
Maybe but that on your anti-patent scale…
Effective IPR petitions also contain un-cross-examined and unrebutted hired “expert” declarations, and APJs should be treating those from both sides with that appreciation for initiation purposes. Inconsistencies in later declarations [and their cross-examination] from the same party can be used against that party in both the IPR and D.C. litigation.
A comparison to D.C. practice is not equivalent since D.C.s rarely enforce any threshold requirement for initiation [other than 101 for some claims in recent years], whereas IPRs do so extensively.
As to 3, yes APJs are already supposed to take D.C. decisions on the same issues into consideration in IPRs. But in almost all IPRs [due to their deadlines] the IPR initiation decision is made Before the D.C. has made any such decisions, even a Markman decision on claim construction, and a decision which is relevant to the IPR validity issues, not just infringement.
If the PTAB can now resolve disputed factual questions at the pre-institution phase, an order instituting trial in an IPR will be seen much more as a death-knell for the patent.
More of a death knell? How is that even possible? At present, only ~4% of patents emerge from a final IPR decision with all challenged claims intact. It is well recognized in the industry that if you hope to save your claims, the real fight comes at the institution decision. Once the IPR is instituted, the patentee needs to be thinking about which claims will be lost (all, or only some).
Cite for my 4% figure above:
link to ipwatchdog.com
Greg, yes avoiding institution of an IPR is important for a patent owner. But only 4% of patents surviving IPR trials with all contested claims intact is a ridiculous number completely inconsistent with PTO and major IP law firm statistics. That 4% number was incomprehensibly generated by the non-lawyer reporter in that post on Gene’s blog which you cited for authority.
E.g, it apparently assumes claims are removed from patents in the many IPRs with settlement agreements?
“ is a ridiculous number completely inconsistent with PTO and major IP law firm statistics. ”
I would enjoy seeing these sources of yours.
“generated by the non-lawyer reporter”
Are you suggesting that to have any veracity, all reporters also need be lawyers?
There are some that being a lawyer diminishes veracity…
[“O]nly4% of patents surviving IPR trials with all contested claims intact[”] is a ridiculous number… [that] apparently assumes claims are removed from patents in the many IPRs with settlement agreements.
Fair point, although that characterization of the data is more my fault than Mr. Quinn’s. What I should have said is that only 4% of IPRs end with all challenged claims intact to be enforced.
One way or the other, however, my broader point seems uncontested as yet—it is difficult to see how an IPR institution could come to be regarded as more of a death knell for the enforcement suit than it already is. Based on present data, it seems already clear that if the PTAB institutes (a big IF], then the patentee’s hope of ultimate success is de minimis.
The pre-institution is the real contest. Once an IPR is instituted, the remaining questions become “when?” rather than “if.”
Greg, its not a “Death Knell” to not have Every claim survive an IPR unless none of the many claims that do survive IPRs are no longer infringed in any of the patent owner lawsuits that triggered the IPRs by any remaining or amended claims, since that is what count$. Smart IPR petition recipients drop claims that are indefensibly invalid ab initio themselves to reduce initiations or strengthen arguments for the others, and this also accounts for many of those IPR decisions in which not all original claims survive.
But we both agree on the great importance of fighting the IPR institution, not just letting the Petitioners art and arguments go uncontested to the assigned APJs. Likewise, in adverse reexaminations.
[Of course it does not help that too many applicants seem to think that a patent only needs one independent claim.]
I am going to disagree Paul.
I think that perhaps somewhere in the middle between what Greg is saying and what you are saying is most likely accurate.
Having ‘some’ claims survive – either remaining or amended (still rare), may have zero to do with any enforceable action, and thus would be an entirely pyrrhic victory that cannot be counted for the purposes under discussion.
Also, one must keep in mind that there is a (growing**) probability that your ‘trigger’ of patent owner lawsuit will be absent.
There is a presence of such GIVEN that the AIA provided a multi-for a path and the beginning of that path does NOT have the Article III standing requirement. The “**” stems from the fact that the CAFC is increasing its ‘too bad, beyond our power to review’ stance ON institution RELATED collateral matters.
EACH of these things tends to shift more towards Greg’s end of the spectrum and away from your end of the spectrum.
This is an excellent opportunity to revive the doctrine of “administrative estoppel” by putting it into a rule for what, where and when it should be applied. And the pre-institution phase is one place it should apply. For example, patent was fully litigated to a final judgment of a district court (note this is not the CAFC’s “final determination” reach around) under 103 based on references A+B+C on combinations thereof, in addition to keep it interesting, evidence of copying was introduced via testimony. Ex parte request is now made while appeal is pending at CAFC. A patent owner should be able make the case that administrative estoppel (in other words a policy of comity and PTAB “acting in harmony” with the Art III branch) under the new rule. For example: 1) markman order not in clear error; or 2) patent owner statement to be bound by markman order nothing to loose here anyways); and 3) factual and legal dispute as to A+B+C under 102,103 etc has been litigated and is necessary for the judgment. PTAB should refuse the ex parte or IPR request by applying administrative estoppel or some ‘law of the case’ rule based on statement 2. In the best world, it would an objective test for when the rule would apply.
Hmmm, “the pre-institution phase“…
Otherwise known as the realm that the patent property still has all the sticks in the bundle or property rights BEFORE the institution decision point which engages in a takings of some of those sticks from the bundle of property rights…
But meh, why bother with a fundamental weakness of the post grant review mechanism?
(as proxy for holding up the “S” sign)
Since issued Patents are no longer presumed valid and since independent inventors have not been able to enforce their patent rights since eBay v. MercExchange, STOP ISSUING PATENTS.
Let’s go back to the old days.
If someone stole something of yours, you got your friends together and went over to his place and took it back. And maybe took something of his to compensate you for your trouble.
And beat him up.
And since he was likely to get his friends together and go to your place and beat you up, instead of just beating him you killed him.
Or we can go back to the earlier law, where “a man is entitled to whatever he can take but only what he can keep.”
In the chaos that is coming that will be the only Law.
Mosshoff and I have suggested going back to the old registration system (no examination, no TPAB) and just fight it out in the Courts. That’s a better alternative to what we have now. And everyone would save a lot of time and money. Think the PTO would go for that? LOL
As you know, Anon, my strong views on the “dual jurisdiction” (Art III and Admin “court”) makes the whole hot mess unworkable, and improperly injects the political Executive division into Art III case and controversies rendering it advisory. If. Big if. If PTO wants to at least try, there should be some doctrine/rule making/PTAB ruling that at least tries to give comity and some respect to the Art III division. If SCOTUS were not such a hostile and patent hating bunch – the Gorsuch opinion in Oil States would have won the day. But since we are living with this dog’s breakfast of law, the very least the PTO could do is at least try to act in harmony with the Courts.
“improperly injects the political Executive division into Art III case and controversies rendering it advisory”
Not sure that I understand your angle on the “advisory” position. Can you explicate a little?
The second proposed rule change here will make it easier for patent owners to stop an IPR against their patent from even being initiated. But only IF they take advance of this effectiveness-enhanced opportunity to do so with the already-available Preliminary Response to the IPR Petition. Scott’s PostGrant Blog today has a good writeup on some apparent reasons why patent owners do not do so. One I have also seen is that many patent attorneys don’t fully appreciate what they should be arguing, and when, in a PTO reexamination, IPR or interference,because they’ve never been in a PTO contested case forum in which obviousness is a more serious threat. Also there is relatively little time available for a corporate management decision to act on this opportunity before the assigned APJs have already make up their minds. Also, old “save it for the jury” advice is not applicable.
Exactly. Inventors have had absolutely terrible representation for the past 8 years. IPR was intended to help small businesses, not ruin them. There are many policy reasons to deny institution, which have rarely or never been argued.
IPR is putting inventors out of business and shielding big corporations from competition.
PTAB is overturning examiner allowances after years and millions of dollars have been invested to commercialize an invention in reliance on the granted patent.
This is a fundamental policy argument against institution. It is time for attorneys to step up and help their small business clients instead of rolling over.
Innovative practicing entities should not be living in fear of the USPTO.
“There are many policy reasons to deny institution, which have rarely or never been argued.”
Policy reasons? Like what?
What are other reasons?
“Inventors have had absolutely terrible representation for the past 8 years.”
Whose fault is that?
Maybe some of the lawyers who represent PAE’s that have patents on printing form letters and envelopes from an address database can be drafted to help small inventors.
Just a suggestion.
It is the fault of big corporations, lobbyists, bar associations, cronies at the USPTO, and Congress. Inventors, about 30% of patent owners at PTAB, do not have half a million dollars and access to the insider firms that hang out with the PTAB APJs.
As I said over at the other place I’m not going to deny your allegations of bias in the APJ ranks. Your “insider” allegations are somewhat new. I don’t put much credence in them.
I’m sure money is a factor in who inventors get to represent them. That’s unfortunate, but not a situation unique to the PTAB. Those with more money tend to get more “justice” in our country. Civil and criminal.
You didn’t answer any of my other questions. But I didn’t expect you would.
I think I explained some of the policy reasons. Jeopardizing small businesses that have reduced an invention to practice or are building a business or otherwise commercializing a new techomnology were not the target of the AIA. In fact the AIA purported to be helping small businesses. A series of IPRs filed by trillion dollar corporations against a small would-be competitor should be denied as contrary to legislative intent, the Constitution, 316(b), and sound policy.
“I think I explained some of the policy reasons. Jeopardizing small businesses that have reduced an invention to practice or are building a business or otherwise commercializing a new techomnology were not the target of the AIA.”
I wasn’t aware that any individual, or group, or company, or business was a “target” of the AIA.
“In fact the AIA purported to be helping small businesses.”
A lot of small businesses got shaked down by PAE’s. Had a friend who ran a small mortgage brokerage. He got a letter from an attorney representing the owner of a patent for printing out form letters and envelopes from an address database. Invalidating that patent would’ve cost some serious coin in an infringement litigation. Much less now in an IPR. Still a choice whether to pay the requested “license fee” but at least now the decision to fight is more affordable.
“A series of IPRs filed by trillion dollar corporations against a small would-be competitor should be denied as contrary to legislative intent, the Constitution, 316(b), and sound policy.”
316(b) was, and is, considered during rule making. The rest of your policy reasons are non-starters.
Patent trolls harassing small businesses were the target. No small business can afford to effectively utilize IPRs. Trillion dollar corporations and their mercenaries are the majority of petitioners. It hasn’t helped any small businesses, whether innovators or implementers. We have plenty of constituents at US Inventor who have been on both sides. They do not benefit from the PTAB. Your broker friend has not and could not benefit from PTAB either.
Patent trolls didn’t just harass small businesses. I worked at a Fortune 5 company and we received “licensing offers” from PAE’s all the time. Requested “license fees” varied. $25k. $50k. $75K. Carefully calculated to make paying up more attractive than fighting. AIA made telling them to fck off easier as if they were stupid enough to file an infringement suit we knew we could challenge their patent in an IPR.
“worked at a Fortune 5 company”
Ah, I wondered where the embrace of the “Oh N0es, scary Tr011s” mythology was coming from…
Re: “Inventors have had absolutely terrible representation for the past 8 years. IPR was intended to help small businesses, not ruin them. There are many policy reasons to deny institution, which have rarely or never been argued.”
The first point is of course an over-generalization. And it is clients who select the wrong attorneys, too often for the wrong reasons. When IPRs first started it was publicly noted by the PTO [and here] that IPR practice was going to be similar to PTO interference litigation – not like either ex parte PTO practice or D.C. litigation. Yet few interference practice experts were retained for IPRs, and so some others had to learn the hard way at client expense.
As to the second point: IPRs are statutory and have authorized Rules and have survived all legal challenges. So arguing “policy” [rather than factual support for patentability over cited art] in an attempt to avoid institution of an IPR is as effective as trying to tell a traffic cop he can’t give you a ticket because it is against your “policy.”
Wrong. Facts don’t matter at the PTAB. Most APJs will accept whatever Apples hired expert says regardless of the facts. It is 100% policy/politics.
As you seem to recognize, any patent application can be rejected for obviousness and any issued patent can be invalidated for obviousness at the PTAB.
>>PTAB is overturning examiner allowances after years and millions of dollars have been invested
I think you would get more done crusading for better examination than crusasing against IPRs.
That doesn’t work. My patent was thoroughly examined and the PTAB still invalidated it. Happens all the time. Even patents that have been through reexamination frequently are invalidated by the PTAB. Your suggestion won’t work.
Let’s assume that is true (not that we should, as Papa Inventor is not an impartial judge of Patent Junior’s merit).
Unless you think every small inventor is getting a thorough examination at the PTO, consider this: there is no counter lobbyists for better patent examination quality. When you fight against IPRs, you’re fighting against big bucks. When you fight for better examination, you’re at worst up against a few patent prosecuters who enjoy lax examination. With better examination, perhaps some small inventors will simply not get a patent and will thus never have the opportunity to be dragged through the coals of an IPR, eh?