Ten Years of the America Invents Act: Toward a More Objective and Accurate Patent System

“The last half century’s legislation simply extended to post-issuance review what the American system has recognized about examination since the 1836 Act: that a knowledge of the background technology (and a grounding in patent law) is a prerequisite to making informed decisions about patentability.”

https://depositphotos.com/6496641/stock-photo-looking-at-the-opinion-section.htmlWhen the America Invents Act (AIA) was before Congress a decade ago, it was heralded as the first comprehensive patent law since the 1952 Act. Ten years’ perspective on the new law, however, shows that its changes to patent policy have been more evolution rather than revolution. The AIA is simply the latest step in the long arc of moving U.S. law toward a more objective and logical patent system—and one that produces more accurate results.

Finally, First Inventor to File

When the AIA adopted the first inventor to file priority system, the United States did not simply join the majority of countries. All nations in the world had been operating under first inventor to file for 15 years by the time the AIA implemented that system. This meant that, as a practical matter, the overwhelming majority of U.S. filers who also want foreign patent rights were already obligated to be the first inventor to file an application. The AIA’s switch simply meant that U.S. applicants need only comply with one priority system rather than with two.

The first inventor to file rule also makes the patent system more transparent. Under the old system, a patent’s priority date was never certain until it was litigated. If competing patents filed close in time claimed the same invention, no one could know who had priority, and it was never certain what would qualify as prior art against a patent. By applying an objective rule based on the filing date of a government document, the AIA allows a business or investor to make its own evaluation of patent rights without the need to resort to the courts to resolve priority questions.

The Long Road to Post-Grant Review

Today, it may surprise some that when the AIA was being debated, the switch to first inventor to file was more controversial than the creation of Patent Trial and Appeal Board (PTAB) validity trials. But while the switch in priority systems was a substantial change for the United States (albeit one that has since been widely accepted), the AIA’s modifications to post-issuance review of patents were incremental and reflected broad consensus.

At the beginning of this century, the National Academies and the Federal Trade Commission each issued reports calling for a more robust system of post-grant review. Indeed, the policy decision to allow the USPTO to apply its expertise to review issued patents was actually made over 40 years ago with the creation of reexamination. And even that change followed a century of debate and discussion.

It was in 1876 in Cochrane v. Deener that the Supreme Court commented on the “desirability” of referring patent validity questions to “a commission of intelligent experts.”  Several decades later, Judge Learned Hand expressed bewilderment that the court was expected to decide a complex chemical patent case “without any knowledge of even the rudiments of chemistry,” and he commended a system of “technical judges to whom technical questions are submitted.”  In the 1950s, Congress held hearings  and considered legislation on the subject. Reexamination had been a long time coming when it was finally enacted into law in 1980.

The Troubled Life of Inter Partes Reexamination

In 1999, Congress decided that both sides needed to be allowed to participate in post-issuance proceedings. It supplemented ex parte reexamination with inter partes reexamination.

After a few years under the new system, however, it became clear that the examinational model is not suited to inter partes cases. Petitions practice and other examination rules allowed either side to delay the proceedings at will. The requester could keep the patent in limbo if a stay of litigation had been granted, while a plaintiff whose litigation was not stayed would try to postpone a final agency decision on validity.

How bad were the delays? Although the AIA repealed inter partes reexamination, it allowed existing cases to go forward. And seven years later—by the end of 2018—there were still 150 inter partes reexaminations pending at the USPTO. Indeed, earlier this year, despite the heroic efforts of the Central Reexamination Unit, three dozen inter partes reexaminations were still being litigated.

The AIA Combines an Adjudicative System with Agency Expertise

Senator Patrick Leahy (D-VT) and Former Representative Lamar Smith (R-TX) addressed the system’s delays in the AIA. Proceedings were shifted to an adjudicative model in which the petitioner bears the burden of proof, and intermediate appeals were eliminated (and once these structural changes were included in the bill, the USPTO agreed to a one-year time limit for inter partes reviews.)

The AIA thus sought to preserve the beneficial features of the prior system—the opportunity to apply the agency’s expertise to patent validity disputes and the right of both sides to participate—while wringing the delays out of the system.

The last decade’s experience shows that Leahy and Smith succeeded. Virtually all AIA proceedings have been completed within the statutory one-year deadline and the PTAB has produced carefully reasoned, high-quality decisions.

A recent academic study, which reviewed the results of all Federal Circuit patent appeals that were docketed in 2015 and 2016, found that “the PTAB is affirmed notably more often than district courts on validity issues.” It determined that “the most straightforward conclusion” is that PTAB judges’ legal and technical expertise has “aided decision-making on the thorny scientific questions endemic to patent law.”

Learned Hand was right about the benefits of having the adjudicator at least know the “rudiments of chemistry.” Indeed, it would be quite surprising if the results were otherwise—if scientific and legal knowledge were a detriment rather than a benefit to patent decision making. The last half century’s legislation simply extended to post-issuance review what the American system has recognized about examination since the 1836 Act: that a knowledge of the background technology (and a grounding in patent law) is a prerequisite to making informed decisions about patentability.

VLSI v. Intel Makes the Case for PTAB Review

As Congress has refined the system over the years, developments in the courts have only heightened the need for post-issuance review at the USPTO. Patent trials in district court have shifted from being overwhelmingly judge trials to overwhelmingly jury trials, and the rise of the plaintiffs’ magnet jurisdictions has increased the odds of outsized awards.

The USPTO’s recent practice of applying “discretion” to bar access to PTAB review has, in its own way, confirmed the importance of the availability of expert review. Consider, for example, the recent VLSI v. Intel decision. The main patent in that case disclosed the insight that, in an integrated circuit, the memory sometimes needs more voltage than the processor. The claimed invention applied this observation to require using the same “first regulated voltage” for the memory and processor if they need the same voltage, but applying a higher “second regulated voltage” to the memory if it needs more voltage.

Integrated circuits have been around since the early 1960s. They were used heavily in the space program in the build up to the moon landings. The VLSI patent’s filing date is 2006. You might think that in the intervening 40 years, electrical engineers had come to appreciate that the different parts of an integrated circuit sometimes have different voltage needs. Intel filed a PTAB petition making just that case, and it is hard to imagine that a judge with an engineering degree and a knowledge of patent law would not have agreed that the claims were obvious.

But after the USPTO refused to consider Intel’s challenge on its merits, the case went to a jury trial. The result: a $2.2 billion verdict for a patent that almost certainly never should have issued.

Particularly in light of the current nationwide chip shortage, one might think that U.S. policy would protect domestic manufacturers of microprocessors. Shielding patents such as VLSI’s from expert review is not a strategy for advancing America’s economic and security interests. It is a strategy for committing economic hara-kiri.

Nor should we rely on the Federal Circuit to “fix” cases such as VLSI on appeal. The court likely will upend that particular verdict—among other things, it relied on a dubious damages theory. But it is not the appellate court’s job to serve as the trier of fact. Its role is to correct legal errors, not reweigh the evidence. The proper operation of the patent system requires fact adjudicators who will make sound decisions in the first instance.

Patent Legislation and Hope for the Future

The America Invents Act, while “comprehensive,” left much on the table—indeed, it did not even address all the problems that were apparent at the time. In hindsight, PTAB reviews should have included Section 112(b) grounds to avoid the awkward situation in which a claim cannot be reviewed for validity because it is invalid as indefinite. The Helsinn company did not deserve to lose its patent simply because it needed to contract with a supplier to manufacture its product. And the categorical exclusion of medical diagnostics from patent eligibility is denying protection to what are clearly valuable and important inventions, for reasons that are irreconcilable with the Supreme Court’s historic treatment of patents grounded in scientific discoveries.

Nevertheless, the AIA made important improvements (does anybody miss inter partes reexamination?)  And given the history of U.S. patent policy, this is all that we should expect and hope for: that after a period of sustained deliberation and debate, Congress will enact consensus changes that continue to advance the United States toward a patent system that is more objective, logical, and accurate.

Image Source: Deposit Photos
Image ID: 6496641
Copyright: stuartmiles 


Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com.

Join the Discussion

25 comments so far.

  • [Avatar for Ryan Hand]
    Ryan Hand
    September 28, 2021 11:32 am

    Re: 6

    For those who don’t know, John Galt was an engineer for the Delorean car company who invented the use of crystal dilithium to enable cars to achieve superchronic speed. Due to his company’s incompetent management and seeing how corrupt politicians passing the America Invents Act caused the collapse of innovation in America leading to the current economic malaise, he quit and moved to Vail to be a bum. Now he skis in the winter and has water balloon fights with his friends in the summer. It is hoped that if we repeal the AIA, he will return to work on serious problems such as global warming.

    Somebody should write a book.

  • [Avatar for Anon]
    September 22, 2021 10:43 am

    I am personally irrelevant to the question of software progress

    On that, most all will agree (as are your hackneyed views, Greg).

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    September 22, 2021 10:23 am

    Please provide some examples of actual disruptive innovation that result in actual competition you are (clearly) wholeheartedly in on favor of?

    My company does not yet have any FDA approvals because we are changing the paradigm of cancer treatment so dramatically that the FDA has not figured out how to regulate a technology like ours. I am definitely in favor of these technologies, which were all invented by Americans working in American labs, in the hope of improving prognosis for American cancer patients. You can read about our story at immunitybio.com.

    I am still uncertain, however, why you want to know about me. I am personally irrelevant to the question of software progress. You can establish that I am the low-down, dirtiest scoundrel ever to haunt a patent blog, and that will still not get you one iota closer to establishing that patent law trends are cause software innovation to slow.

  • [Avatar for PTO-indentured]
    September 22, 2021 09:21 am

    Re an argument on its own merits: Your apparent endorsement of disruptive innovation and competition (or non sequitur) looks to neither make its case — or sense: “I am wholeheartedly in favor of disruptive innovation and competition, which is why I work” at a company that “does not have a single … product”.

    Please provide some examples of actual disruptive innovation that result in actual competition you are (clearly) wholeheartedly in on favor of? Preferably these examples will relate to US patents and AIA.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    September 22, 2021 12:16 am

    Greg DeLassus is a big company lawyer and… it is all he knows.

    This is not really true. My company does not have a single FDA approved product yet, so it is scarcely as if I represent the interests of established market incumbents who want to suppress innovation and competition. I am wholeheartedly in favor of disruptive innovation and competition, which is why I work where I work.

    Meanwhile, back when I was in private practice most of my clients were start-ups. I am quite familiar with small entities and their innovations.

    In other words, your argument here is baseless nonsense—and irrelevant nonsense at that. My argument above stands or falls on its own merits, quite apart from my own personal virtues or vices. You simply miss the point by responding to my argument by talking about me.

  • [Avatar for Paul Morinville]
    Paul Morinville
    September 21, 2021 08:57 am

    Jedor, You should write an article on that. It is exceptionally insightful and well stated.

    Greg DeLassus is a big company lawyer and is stating the worn and tattered false tale that big companies are our innovative saviors and small inventors contribute nothing. He may be genuine in his viewpoint because it is all he knows. But he sarcastically twists the statements of others to oh so transparently feign he is making an honest point. This is the tell of a failed false narrative that the author doesn’t believe himself. (see 18)

  • [Avatar for Jedor]
    September 20, 2021 06:09 pm

    Innovation is an empirical phenomenon. You only know that it has happened after it occurred. You will never know that an invention has not happened. (I know, it sounds like a Yogi-ism).

    You may find out that inventions have not happened on a macro-scale if you find yourself in a stagnant economy wherein all corporate innovations seem to be the same and alike.

    Unexpected innovation is a role of independent inventors, no matter if you like it or not. One only has to look at the crypto-currency market to realize that the establishment is not able to start this type of innovation. They are good at calling for regulation though, to get a grip what is escaping them.

    Patents and the patent system currently make no meaningful contribution for independent inventors, especially in computer implemented inventions. They find their future in unregulated technologies, such as crypto-currency, open-source applications, and in activities such as gaming and (sometimes or perhaps more often than we want) hacking and malware development.

    Because patents play no role in the above areas, they largely escape the undue influence of incumbent companies, who in one way got what they wished for: no interference by valid independent inventors on their ongoing operations.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    September 20, 2021 01:02 pm

    If [few] to no individual US inventors can afford the ‘magic’ $3M-$4 threshold known to eliminate them from courts… guess what? You get a magic reduction in patent-litigation costs.

    Yeah. We basically agree here. By reducing the transaction costs necessary to challenge validity, the AIA had reduced the incentive to file infringement suits with a hope of recovering a nuisance-value settlement. The result of that is less patent litigation, with a corresponding drop in litigation costs. Mission accomplished.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    September 20, 2021 12:44 pm

    Do you really think inventors will keep spending time and money to share their ideas 200 years from now if the inventors are just ripped off?

    This is a good question. Back in 2012, I was expecting that Mayo was going to make patents less valuable and correspondingly depress innovation. As Myriad and then Alice followed shortly thereafter, my certainty only grew.

    Here we are, however, years later, and no slowdown is showing up in the data. It is fine to say, “just you wait,” but really there should be some evidence of decline if we are going to make this argument without appearing ridiculous.

    The idea that inventors will “go Galt” in view of the mess of the patent system is a theory, not a demonstrated fact. It should trouble partisans of this theory (of which I was one until quite recently) that it has so little empirical backing.

  • [Avatar for concerned]
    September 20, 2021 10:59 am

    @14: No slow down in technology perhaps because inventors were blindsided by AIA and recent court decisions? The technology is living off promises of the intregity of the prior patent environment.

    Do you really think inventors will keep spending time and money to share their ideas 200 years from now if the inventors are just ripped off?

    Even the sub prime mortgage scam lasted awhile in part because of the intregity of mortgage lending beforehand. However, the scam collapsed because fundamentally it had to collaspe.

    You know patents better than me, no doubt, as I am just an inventor who got lucky (unlucky) one time. However, people do not get screwed forever. We do wake up eventually and the patent system is no place to invent under the current environment.

  • [Avatar for PTO-indentured]
    September 20, 2021 10:57 am

    Re Pew ‘research’ – ‘patentprogress’

    If little to no individual US inventors can afford the ‘magic’ $3M-$4 threshold known to eliminate them from courts — for each case one dares to enforce a US patent — guess what? You get a magic reduction in patent-litigation costs. But why stop there — you also get a magic reduction in patent litigation. ‘Case(s) closed’ — evident AIA patent system progress.

    RE Pew ‘research’ — A minority portion 40% of Americans asked if technology (wink: meant to improve life) improves life, say technology improves life. Case closed — evident AIA patent system progress.

    Conclusion: If a minority of Americans are found thus happy — ensure demise of US inventors, and tout alleged AIA successes.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    September 18, 2021 12:56 pm

    The PTO flat-out, just worked better before AIA…

    Worked better for whom? Art. I, §8, cl. 8 says that “Congress shall have Power To… promote the Progress of Science and useful Arts…,” not “To ensure full employment for Patent Attorneys,” or “To ensure job satisfaction to the USPTO examiner corps.”

    The point of the patent laws is to provide benefit to consumers, not industry insiders or patent attorneys. The founders wanted a nation of plenty, where consumers would have lots of content to enjoy because creative types would be incentivized by copyright, and lots of useful technology to enjoy because inventive types would be incentivized by patents. The measure, then, of whether the PTO is working well is not that examiners or attorneys feel content, but that consumers see technological progress.

    Consumers have seen no evident slow down in technological progress post-AIA relative to pre-AIA. Indeed, American survey respondents post-AIA name technological progress as the most satisfying aspect of their lives (URL1 below).

    The one aspect of most Americans’ lives that really has changed post-AIA relative to pre-AIA is that total spending on patent litigation has decreased (URL2 below). This means that American small businesses are spending less defending themselves from NPE suits, and can instead plough the savings into growing their businesses and better serving their customers.

    I can understand why lawyers dislike this new equilibrium (litigation expenses = lawyer income), but for the non-lawyers who comprise the overwhelming majority of the U.S. population, this is an unalloyed good.

    1. https://www.pewresearch.org/fact-tank/2017/10/12/four-in-ten-americans-credit-technology-with-improving-life-most-in-the-past-50-years/
    2. https://www.patentprogress.org/2018/10/18/ipr-and-alice-appear-responsible-for-reduced-patent-litigation-costs/

  • [Avatar for PAUL MORINVILLE]
    September 18, 2021 11:56 am

    The PTAB must be abolished. A single non-elected bureaucrat has the power to create and to destroy the single most valuable property right in the US. This violates all reason by consolidating dictatorial power in one person necessarily driven by politics. There is no way to fix that. It must be abolished.

  • [Avatar for concerned]
    September 18, 2021 07:10 am

    PTO-indentured: I also think your observations are well stated.

    I would even be satisfied if Mr. Matal and his buddies convinced Congress to codify:

    That black letter law as passed by Congress can be trumped by undefined judical exceptions.

    That usual, routine and well understood can mean nobody on Earth has ever used the process

    That regardless of what the process solved, even curing cancer, if the process uses an off the shelf computer and the process did not improve the computer hardware, no patent, forget it.

    Yes, I would be alright if Congress passed the above nonsense as it tells the world where the inventor really stands. I got suckered punch by over 200 years of a patent system that worked even though not perfect. My application was filed before Alice.

    I do not think 200 years from now, suckers like me will still be saying “USPTO take my money, my idea, my time and let me be ripped off by explanations that just make no logical sense and reasons that are not codified.

    Mr. Matal get what really is happening codified and spare the inventor. Then you will have my respect as it would no be some cheap shot anarchy with an apparent hidden agenda.

  • [Avatar for Pro Say]
    Pro Say
    September 17, 2021 06:28 pm

    +1 PTO-indentured.

    Big +1.

    If you’re not an Examiner / SPE, you should be.

    If you are, your applicants are very fortunate indeed.

    Regardless, feel free to apply for the open position of Director.

  • [Avatar for ipguy]
    September 17, 2021 03:50 pm

    Under the AIA, does it matter if the named Applicant in the non-provisional is different from the named Applicant in the provisional from which priority is claimed? As usual, the issue arises from a joint development agreement that one side decided was not so “joint” when it filed the provisional listing only one of the parties as the Applicant (all inventors were named, including the ones from the side not named as an “applicant”).

  • [Avatar for PTO-indentured]
    September 17, 2021 02:12 pm

    Such care and attention-to-detail was taken in the framing of AIA (ever void of POV perspectives of actual inventors) that it launched and ran for nearly a full decade with non-constitutional all-new ‘judges’, granted unprecedented powers — and many would come to say: a mandate to kill US inventor patents, which when put into practice by AIA’s PTAB, earned the latter the fitting title ’Patent Death Squads’.

    Within as little as a year from AIA’s inception, it was already declared “horribly clear” by one of AIA’s crafters “that patentees were not getting fair treatment”. We know now, so many years later, this then glaringly apparent awareness had no impact. To the contrary, the PTAB had only begun to hit its stride, soon to reach and maintain an invalidation rate of 84%. Well into such patent devaluation / destructions the PTO plunged to 17th-ranked worldwide. US patent unreliability was born — and efficient infringement duly enabled, thanks to AIA.

    The incendiary ‘fuel’ that whipped up an unprecedented anti-patent fervor needed to connive this ‘Act’ into existence — and got congress, the courts at all levels and the USPTO to fall for it turns out to be not less than biggest paid-for patent lie of all time (in a campaign totaling an eight-figure funding) and coincidence you-be-the-judge: on-going killing of US Patents by the 1000s.

    The lie? Still unsubstantiated, never backed by data, was that somehow, never sufficiently explained, the American inventor was to be blamed for the patent system having gone awry. He or she sought ‘royalties’ and such had been found an unnecessary evil.

    The aim of the lie was a visceral target, the intent of the lie was to get ‘reaction’ at an emotional level (absent of reflection / the benefit of intellect). It worked then, it is still working now. It created and perpetuates a caste system / double-standard US patent system sustained on a prejudice — a fruit of a lizard-brain, barest of mentalities. Game-Set-Match, America has been duly ‘conditioned’. Thinking now, about anything other than the ‘lie’, well… that’s just ‘too much work’, ‘patents are complicated’, they ‘have too many moving parts’, there’s ‘too many plates spinning in the air at one time for me to understand’… etc. It’s so much easier to just gut-react, and give US inventors (and innovation) the old sucker punch.

    Congress, the courts and the PTO have failed to see and properly calculate the enormous innovation and ‘IP giveaway’ losses to our country directly attributable to AIA, they have failed to properly contrast that harsh-reality against the enormous thriving of the US patent system — for years — pre-AIA. Such thriving was due to a set of operating principles and values quite different than AIA’s, they were more direct, transparent, simpler, predictable and defined. Even a cursory comparing, would prove the efficacy of the then PTO principles, and in contrast, reveal AIA to be the innovation-crushing, oligarch favoring, free US IP-giveaway enabling, caste / double-standard prejudiced system, that it is.


    Get rid of AIA. Do what is right and more just NOW. Reinstate the PTO system principles and values that led to its thriving for years pre-AIA. Remove AIA and PTAB from life-support. The PTO flat-out, just worked better before AIA, and it will again, for all the apparent, right reasons.

    Give the right, proven more-effective way a try — you can keep the option to always go back to the far less-effective AIA.

  • [Avatar for Concerned]
    September 17, 2021 01:30 pm

    Anon: Where is John Galt?

    If I remember correctly it was somewhere in Colorado. And by chance, my first patent attorney has moved to Denver.

    If B, my current attorney, moves to Colorado, I am out of here!

  • [Avatar for Valuationguy]
    September 17, 2021 12:17 pm

    I found this article and the coordinated one posted elsewhere by former PTO Director Lee to be about as informative and balanced as Fauci’s interviews on Covid-19 vaccines…i.e. .not at all.

    Matal’s connections with Mark Lemley (the “king of efficient infringement theory” and Google’s pocket academic of choice before its early payments were publicized) are large and obvious.

    The AIA legislation…which Matal himself wrote as part of the Senate Subcommittee staff…was deliberately vague in key aspects to lead some in Congress astray as to the far-ranging scope of the damage Matal hoped to inflict on patent owners for the benefit of technology USERS…like Google. This vague language allowed the Clinton/Obama packed CAFC (as well as the SCOTUS) to justify the MANY decisions which marched the courts and legal system to eviscerate patent values…despite true patent system experts like the CAFC’s Judge Newman pointing out the disregard for long-standing prior precedence that these decisions were having.

    The troll argument is trotted out whenever an efficient infringer wants to justify creating further damage to the patent system….despite all the empirical evidence showing that the actual damage to patent owners vastly outweighed the damages created by the troll problem.

  • [Avatar for Anon]
    September 17, 2021 12:13 pm


    Who is John Galt?

  • [Avatar for concerned]
    September 17, 2021 05:40 am

    Even an inventor with just one patent application realizes what is really going on in the patent world.

    Thankfully I am not smart enough to solve another long standing problem to even think about going down the patent path again.

    Let Mr. Metal and his friends solve all the world’s problems. It is the community left to our children, not the money.

  • [Avatar for Bart]
    September 16, 2021 07:14 pm

    Matal is trying to justify his disaster, and he just got burned by Curious in the comments with logic and facts. Hilarious.

  • [Avatar for Pro Say]
    Pro Say
    September 16, 2021 05:53 pm

    “the PTAB has produced carefully reasoned, high-quality decisions.”

    The farce is strong with this one.

  • [Avatar for Curious]
    September 16, 2021 01:23 pm

    Oh please … this “article” is little more than an advertisement for a ‘we’ll kill their patent for you’ law firm.

    Forget the “PTAB judges’ legal and technical expertise.” While their are some fine APJs, it is hardly a distinguished group of jurists. Additionally, their technical expertise is very likely to be in a technology at issue in whatever IPR they are working on.

    The AIA eviscerates the presumption of validity that is supposedly attached to patents and is a process rife for abuse. It is essentially a place where big companies (and their cohorts) can continually place patents under review — causing patent owners to spend hundreds of thousand of dollars (even millions) to defend their patents with nothing valuable in return being provided.

    If a patent owner wins at the district court, they receives damages (and if they are lucky, an injunction). However, if a patent owner wins at the PTAB, what they win is being exposed to yet another IPR. Because of the weak estoppel provisions, there is little to stop a large company from putting a smaller patent owner out of business through the use of serial IPRs.

    It is an awful system rife for abuse and heavily biased for large companies and for infringers.

    Particularly in light of the current nationwide chip shortage, one might think that U.S. policy would protect domestic manufacturers of microprocessors. Shielding patents such as VLSI’s from expert review is not a strategy for advancing America’s economic and security interests. It is a strategy for committing economic hara-kiri.
    Like straw man arguments much? The patent at issue was invented by Austin, Texas inventors and originally assigned to Freescale Semiconductor, which itself was created by a divestiture from Motorola, which is an American company. As such, this has little to do protecting domestic semiconductor manufacturers from foreign competition. Rather, this dispute had everything to do with one domestic company using intellectual property from another domestic company.

    The VLSI patent’s filing date is 2006. You might think that in the intervening 40 years, electrical engineers had come to appreciate that the different parts of an integrated circuit sometimes have different voltage needs.
    Not good with reading claims, are you? This is from claim 1 of the ‘373 Patent:
    “providing the first regulated voltage as the operating voltage of the memory when the first regulated voltage is at least the value of the minimum operating voltage; and providing the second regulated voltage as the operating voltage of the memory when the first regulated voltage is less than the value of the minimum operating voltage.” My reading is that the “operating voltage of the memory” (i.e., the same thing) can differ based upon a comparison between a first regulated voltage and a value of a minimum operating-voltage. This is quite different than “different parts of an integrated circuit sometimes have different voltage needs.”

    BTW, I checked the jury instructions, and the jury found claim 1 of the ‘373 Patent to be infringed by Intel.

  • [Avatar for Josh Malone]
    Josh Malone
    September 16, 2021 12:44 pm

    Joe, your legislation is a total failure. Patent trolls are stronger than ever, PTAB is ineffective, especially for small business petitioners. Legitimate inventors are the only ones impacted. You threw out the baby and kept the bath water

    It is not cheaper. It is not faster. It is duplicative, not an alternative.

    Your Fintiv gripe is irrelevant. NPEs like VLSI have way more patents than your kangaroo court cronies can invalidate. They scoff at your tribunal all the way to the bank.

    Go ahead and pat yourself on the back for killing the crown jewel U.S. patent system and fomenting corruption and vast expansion of the administrative state.