Recently, there has been some public debate over research regarding the validity of patents that are upheld in federal district court and which are then invalidated through various review challenges instituted at the Patent Trial and Appeal Board (PTAB). One particular commentator trotted five examples out of a set of patents upheld in district court and invalid at the PTAB to note that an apples-to-apples comparison of the data shows that the district court and the PTAB are deciding validity on different grounds; for instance, an argument made under to 35 U.S.C. § 112 for indefiniteness may have failed at district court, but the PTAB invalidated claims over 35 U.S.C. § 102 for anticipation based on submitted prior art. The two decisions on validity happened on different grounds, and thus there’s no actual controversy, at least in the minds of some.
When going through the list of patents that have been deemed valid in district court and then invalidated through PTAB proceedings, there are 58 cases where the patent is invalidated at the PTAB on the same statutory grounds asserted at district court and which did not lead to invalidity. So, contrary to any notion that any data we’ve published fails to pass muster, there is plenty of evidence that the activities of the PTAB present an unfair playing ground for patent owners who are dragged before it, often after those patent owners have already been victorious in district court in proceedings where Article III federal judges have confirmed the validity of those patents.
There are even multiple instances in which a patent was challenged in district court and upheld as valid, and then the same entity challenges the same grounds at the PTAB and successfully gets the patent invalidated. U.S. Patent No. 7092029, entitled Strobe Lighting System for Digital Images, was asserted in a case filed by Imperium IP Holdings against Korean tech giant Samsung in the Eastern District of Texas in June 2014. This is a case in which the damages award against Samsung was enhanced because of willful infringement and demonstrably false testimony presented at trial. A jury verdict filed in the case in February 2016 determined that Samsung had not proven that asserted claims of the ‘029 were obvious, surviving a 35 U.S.C. § 103 challenge. In May 2015, Samsung petitioned the PTAB for an inter partes review trial of the ‘029 patent, again challenging the patent on Section 103 grounds. A final written decision issued by the PTAB in December 2016, after the district court jury awarded damages and the judge enhanced damages for Samsung’s egregious conduct, found the ‘029 patent as invalid for Section 103 obviousness, the same statute under which Samsung failed to win on invalidity in district court.
Twice in the Western District of Wisconsin, a collection of eight patents owned by Wisconsin-based mobile communications firm Ultratec were upheld as not invalid. The first time, in a summary judgment filed September 2014, a judge granted Ultratec’s motion that seven of the asserted patents were not anticipated by prior art submitted by defendants Sorenson Communications and CaptionCall, surviving Section 102 challenges. A jury verdict entered October 2014 in the case against Sorenson and CaptionCall further upheld the validity of claims across all eight Ultratec patents which were challenged on Section 103 grounds for obviousness.
And then, Sorenson and CaptionCall turned to the PTAB to successfully invalidate each of the eight Ultratec patents, challenging the same grounds that were challenged by them as defendants in district court. In a final written decision issued by the PTAB in May 2015, U.S. Patent No. 7555104, titled Relay for Personal Interpreter, was declared invalid for Section 103 obviousness after it survived Section 103 obviousness in district court. Another final written decision issued by the PTAB in March 2015 determined that claims of U.S. Patent No. 5909482, same title as the ‘104 patent, were invalid on Section 102 anticipation and Section 103 obviousness grounds. Very specifically, claim 1 of the ‘482 patent was invalidated at the PTAB on the same Section 102 grounds on which that claim was upheld at district court, and claim 6 was invalidated at the PTAB on the same Section 103 grounds on which that claim was upheld at district court. Similar stories could be told about the other six Ultratec patents, each of which ended up being invalidated at the PTAB through trials which were petitioned by the district court defendants.
In April 2016, the District of New Jersey entered a stipulation and an order of dismissal in a patent infringement case after a consent judgment was entered by plaintiff Jazz Pharmaceuticals and defendant Wockhardt Bio. In that consent judgment, defendant Wockhardt had admitted that an abbreviated new drug application (ANDA) it filed with the U.S. Food & Drug Administration (FDA) was a technical act of infringement of 18 patents owned by Jazz and asserted in the case. Although Wockhardt did not rebut the statutory presumption that the patents were valid and enforceable, such arguments of invalidity were made by another defendant in the case. As Jazz’s original complaint filed in January 2013 notes, defendant Amneal Pharmaceuticals filed an ANDA covering a new drug infringing the same patents but its ANDA application included a Paragraph VI certification that the patents were invalid or unenforceable. An answer filed by Amneal in April 2013 repeated the invalidity defense, challenging each claim of 10 Jazz patents on invalidity grounds under Sections 101, 102, 103 and 112. Similar invalidity arguments against Jazz’s patents-in-suit were made by Lupin Pharmaceuticals in a counterclaim that firm filed in the case as a defendant in February 2016.
Despite the fact the district court did not invalidate patents which Amneal and Lupin argued were invalid, and patents which led Wockhardt to stipulate to a permanent injunction in district court, six Jazz Pharmaceutical patents then met an untimely demise at the PTAB. In July 2016, the PTAB declared claims of U.S. Patent No. 7668730, titled Sensitive Drug Distribution System and Method, invalid under Section 103 obviousness. This was in an IPR proceeding petitioned by Amneal and Wockhardt as well as Par Pharmaceutical, another defendant in Jazz’s district court case. The ‘730 patent was one of the Jazz patents which Amneal had alleged was invalid in the district court proceedings. Wockhardt, the entity stipulating to an injunction in the district court patent case, was a petitioner in IPRs finding each of the six Jazz patents invalid; Amneal was a petitioner in eight trials.
So clearly, the slanted playing field of the PTAB is resulting in the invalidation of patents upheld in district courts, patents which are being deemed willfully infringed, patents which are being invalidated after the petitioner already stipulates to an injunction caused by the assertion of those patents. These are but a few examples.
If one final point can be made about recent criticism of data published on this website, it’s curious how someone could pick five examples “at random” and then consider those to be representative of a whole. It is even more curious how those five examples that support the criticism could have been randomly selected when there are 58 examples that specifically and unequivocally prove the exact opposite. It almost seems as if those “random” examples were specifically and intentionally cherry-picked. Whatever the case may be, the claim that district courts and the PTAB reach the same conclusions when you focus only on 102 and 103 grounds is so grossly exaggerated as to be literally false.
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11 comments so far.
staffFebruary 9, 2018 09:20 am
‘some public debate’
For inventors, there is no debating. Post issue review is fundamental flawed. It must be abolished.
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James NorthrupJanuary 9, 2018 02:34 pm
Good sleuthing. Keep at it.
Gene QuinnJanuary 9, 2018 11:32 am
You are a funny guy. Care to explain why you don’t find it interesting that Samsung was found to not only infringe but to willfully infringe? Samsung infringes with malice and you want to pick a nit with the author and patent owner?
Your comment sounds like the classic trolling scheme to me! Obviously, you have an agenda and are willing to forgive malicious and intentional wrongdoing.
Sam C.January 9, 2018 11:09 am
What I find “curious” is how the normally detail oriented author failed to note p.38 of the Imperium v. Samsung case where the PTAB noted that the PO conveniently failed to mention that “(2) no licensing revenue is specifically attributable to the ’029 [patent]; and (3) the licenses were entered to settle litigation that did not concern the ’029 [patent]”
Sounds like a classic troll scheme – threaten to sue and force the company to “license” you’re entire portfolio. Glad to see the troll got bitten in the end by this
Gene QuinnJanuary 8, 2018 03:29 pm
No apologies needed. I just wanted to let you know. It is somewhat difficult, as you know, to get to an apples-to-apples comparison as the critics demand given the reality that defendants typically settle unless they have strong cases. So to the critics those settlements somehow don’t suggest anything about the relative strength of argument the defendants have, which is interesting at best and deceptive (in my opinion) at worst.
There is absolutely real damage with an institution decision. The critics ignore that reality, and they curiously also ignore what it means when a patent owner capitulates and settles or simply disclaims all challenged claims.
AnonJanuary 8, 2018 01:37 pm
I am sure that there was some additional reasoning there, and my apologies, as I used that number as a segue into a different point (one that I though important regardless of the “58” number and one I thought should be made because that point survives any “retort” on the “58” or any other number of examples).
As Bemused echoes – there is real damage done simply with an initiation decision; damage that is real and material and that sees zero remuneration ever provided the property holder whose property (or at least sticks of thereupon) has suffered a taking at the initiation decision point.
Gene QuinnJanuary 8, 2018 12:58 pm
The number is smaller than you might think simply because here we are looking at final decisions on the merits where district courts actually reached 102 and/or 103 and confirmed validity. With respect to these 58 patents the district court confirms validity and the PTAB invalidated the patent on the same ground previously adjudicated.
The criticism of the previous numbers were that saying 168 was misleading because in many of those cases the district court never reached 102 and/or 103, instead not invalidating the patent on 101 and/or 112 and then there was a settlement by the defendant. Of course, a settlement by a defendant after a preliminary ruling like that would suggest they had little or no confidence in their 102 and/or 103 invalidity arguments. So there are still 168 patents that were confirmed as valid in district court that were later invalidated by the PTAB… with 58 of those patents representing situations where the PTAB overruled the Article III tribunal.
Vera RanieriJanuary 8, 2018 12:39 pm
In case people find it helpful, here are the three posts I referred to. The first is Josh’s preliminary review, then a letter related to Josh’s full review, followed by my full review.
Overall, our results do not appear to much differ from the revised numbers discussed in this post (although we may disagree on the margins, leading to some variation)
Vera RanieriJanuary 8, 2018 11:25 am
Not sure which commentary you’re referring to, but I know both Josh Landau at CCIA and myself have written articles about the interpretation of the Docket Navigator data you’re relying on.
I think there’s some confusion though: Josh and I looked at all the patents. There was no picking a few at random, at least not for final results.
I believe Josh Landau did write a preliminary article that only looked at a few picked at random. But based on the discrepancy between that sample and your conclusions, it was clear we needed to look at every single patent to get an accurate picture of what was going on. Both CCIA and I wrote up those findings.
I’ll reiterate my offer from before: I’m happy to share the data with you, how we coded, and provide any explanation you need that is not already included in my article. Feel free to email me.
BemusedJanuary 8, 2018 10:28 am
Anon raises a very good point: there is harm done commencing at the initiation decision stage (and not just if/when the PTAB invalidates patent claims).
First, no infringer will give a patent holder anywhere near fair value if the PTAB grants the petition (loss of licensing revenue). Second, district courts uniformly stay co-pending litigation while IPR proceedings are taking place (loss of patent life). Third, the ability of infringers to file serial petitions; the ability of infringers to file joinder motions after the statutory one-year time bar; the ability of subsequent infringers to file petitions on the same grounds that were previously rejected by prior PTAB panels means a permanent cloud over the patent (loss of licensing opportunities).
Funny how the infringer lobby and their shills (yeah, Vera – I’m talking to you) never discuss those real world problems.
AnonJanuary 8, 2018 10:16 am
My first thought on seeing the headline of the article was “only 58?”
The fact of the matter is that the two different forums: the executive branch administrative forum and the judicial branch Article III forum simply have very different rules, very different procedural safeguards, very different standards, and necessarily then one should expect very different results – even for cases with identical facts.
This too, as I have often pointed out, is an element of the “Takings” that occurs at the initiation decision point (prior to any decision on the merits in the administrative agency forum).
When a patent is granted, and an inchoate right is transformed into a full personal property right, that property right is made up of a number of property rights (from property law, the concept is well recognized as “sticks in the bundle”).
One of those sticks is the presumption of validity – and that presumption being a strong one (i.e., at a level of requiring Clear and Convincing evidence to rebut the presumption).
Can you say “quiet title?” (which is the nature of the property stick).
One of the drivers (naturally!) between the different outcomes that should be expected pivots on this presumption.
A property owner has this stick in the bundle stripped away at the moment of the initiation decision which places the “property” back into the administrative agency forum.
Another item that inures with being back in the administrative agency forum is the application of “Broadest Reasonable Interpretation,” which really augments the impact of the taking of the property stick of presence and level of the presumption of validity.
I will note (again) that this taking of a stick is – in and of itself – a possibility with government actions. We do have eminent domain. We also have other Constitutional protections in regards to any such takings. Those protections (as I have also previously provided) are lacking in the takings going on courtesy of the AIA.
The Initiation Decision point itself is not appealable (as written by Congress in the AIA).
There is zero remuneration of any kind for the taking that occurs at the Initiation Decision point.
And – as this article makes the point – that taking has real and substantial effect on the value of the property that is the subject of the taking.
Granted, my comment here is a bit “off-topic” to the focus of this article, and the “cherry-picking” aspect may indeed have been in place (from the EFF organization), but regardless of ANY cherry picking, there is a larger and systemic problem that exists. So even if anyone “form the other side” (such as the EFF) would reply with the retort that the “58” is merely a more aggressive “cherry-picking,” there remains – at core – a more fundamental LEGAL problem with the vehicle of the PTAB, IPRs, and the AIA.