A Kinder, Gentler ‘Death Squad’: Ten Years in, Despite Some Reforms, the USPTO is Still Killing U.S. Patents

“On the 10th anniversary of the AIA, the story should be that today, thanks to the reforms of Director Iancu, the PTAB is not as bad as its critics say, nor as good as its defenders claim.”

https://depositphotos.com/4039403/stock-photo-cemetery-with-old-gravestones-and.htmlNow that the 10th anniversary of the America Invents Act (AIA) has passed, we can look back not only at the past decade, but also the reactions of various interested parties and how they responded to that anniversary.

There were two revolutionary amendments to U.S. patent laws enacted on September 16, 2011; one relating to the U.S. changing from first-to-invent to first-to-file, the other relating to the creation of the Patent Trial and Appeal Board (PTAB) and three new procedural mechanisms to invalidate issued patents.

While from a philosophical and practical point of view, the change from first-to-invent to first-to-file had the largest impact on patent practice, it has essentially become a footnote in patent history. Yes, the United States had a bizarre system that allowed the second filer in some instances (i.e., the first to invent) to obtain a patent over the first-to-file, but that almost never happened. And now, the United States has a strange, hybrid first-to-file system that still theoretically allows the first-to-invent to prevail in even rarer circumstances, but that change became easily baked into the system, because overwhelmingly, the first-to-invent did file first. The real story of the change to first-to-file is that much more is now prior art, including foreign filed applications as of their foreign filing date, typically, which continues the theme of the last 15+ years of making it harder to obtain and keep patent rights in the United States.

The PTAB Wars are Far from Over

Without a doubt, when thinking about and discussing the AIA, the changes that capture the attention, imagination and often the ire of many within the patent community relate to the PTAB. And while supporters of the PTAB will tell you that now that the Supreme Court has ruled the PTAB to be constitutional in Oil States and salvaged the appointment of PTAB judges in Arthrex, that the PTAB is on solid footing and no further issues or challenges relating to the PTAB are likely to arise. That, however, is an extraordinarily naïve view. Whether future challenges, or attempts to divest the PTAB from jurisdiction, will be meritorious remains to be seen, but anyone who thinks litigation surrounding the very existence and jurisdiction of the PTAB is over is wrong. I’ve never been more confident of a prediction.

In recent weeks, we have seen the United States Court of Appeals for the Ninth Circuit rule that a forum selection clause that identified a specific district court to handle all disputes, and did not mention the PTAB, worked to divest the PTAB from jurisdiction. See Nomadix, Inc. v. Guest-Tek Interactive Entertainment Ltd. Meanwhile, addressing essentially the same jurisdictional issue, but relating to an arbitration clause, the United States Court of Appeals for the Federal Circuit ruled the exact opposite, finding that despite the parties agreeing to arbitrate all disputes, the PTAB could continue to address validity. See In re: Maxpower Semiconductor Inc. The Federal Circuit is obviously wrong, which is why Judge O’Malley rightly wrote a scathing dissent. For better or worse, the AIA allows any disputed issue to be the subject of arbitration. Therefore, the arbitration clause absolutely should have divested the PTAB of jurisdiction.

Clearly, patent owners and their counsel are now scouring licensing agreements in search of forum selection and arbitration agreements to tee up these arguments. And if I were representing anyone facing an inter partes review (IPR) filed by Unified Patents I would be looking for those forum selection and arbitration agreements in any licenses entered into by any of Unified Patents’ member companies, and requesting a full accounting of their member companies to know whether one of the beneficiaries of the Unified Patents filing is required to have such a dispute settled in a particular forum, or by arbitration.

Regardless of whether you agree or disagree with the Ninth Circuit, or the Federal Circuit for that matter, the issue is one that has all the characteristics of the type of  matter the Supreme Court loves to address. A patent case that deals with contract law and the hated PTAB. It is easy to predict that these cases, or perhaps others in the pipeline raising similar issues, will be destined for consideration by the Supreme Court. In the meantime, attempts to neuter the PTAB through canned contract clauses that never envisioned and do not mention the PTAB will continue.

Both Sides Get the Blame

Meanwhile, on the 10th Anniversary of the AIA, we saw unrealistic portrayals of the PTAB from both sides. US inventor, for example, has long argued that the only acceptable solution is to abolish the PTAB, which simply will not happen and has caused those inside the beltway to view US Inventor, and those affiliated with them, with increasing skepticism. Indeed, this politically infeasible and impossible demand at the expense of other available solutions to improve the PTAB has caused US Inventor to come to be distrusted, which has immeasurably hurt their cause.

On the other hand, defenders of the AIA continue to paint a rosy picture; almost a pollyannaish view of the world. They continue to tout just how wonderful the AIA has been and what a godsend the PTAB has been to the entire industry. These defenders of the PTAB ignore the undeniable reality that, for much of the past decade, the PTAB has been slanted severely against patent owners in what can only be honestly characterized as an afront to the principle of due process, if not actual due process violations. At all times, the rush to finish within a year cut against the patent owner. Initially, the patent owner wasn’t even allowed to put evidence forth to try to defeat the petition. And the first Chief Judge of the PTAB accepted the characterization of the PTAB as a “death squad” as a badge of honor, saying that if they were not a death squad, they wouldn’t be doing their jobs. So, for much of the first decade of the PTAB, the deck was stacked against patent owners and the statistics overwhelmingly led the death of entire patents—some that were challenged repeatedly until they finally succumbed.

One case in point is Zond, a small company that had 125 inter partes reviews (IPRs) filed against their patent portfolio during the seven months from February 2014 to September 2014. And this is just one example of the type of gang tackling that occurred as a result of concerted efforts, coordination and serial petitions that innovators faced over the last decade. So, defenders of the PTAB can tout how wonderful the PTAB has been, but for patent owners, the experience has been very different.

And the statistics provided by the United States Patent and Trademark Office (USPTO) relating to PTAB endeavors are misleading, to be kind. For example, according to the PTAB statistics, the institution rate for the Zond patents was 88.6%. (1,377 claims challenged with 1,220 instituted.) An 88.6% institution rate is obviously a high number, but as of 2014 that was very close to the PTAB’s overall institution rate. Notwithstanding, if you look at the same data from Zond’s perspective, before the AIA, the company owned 371 patent claims. By the end of the 125 IPRs filed against them, they owned 0 patent claims. But how is that possible with only an 88.6% institution rate?

Because those 371 patent claims owned by Zond were challenged multiple times by different petitioners. While only 88.6% of the “challenged claims” were instituted, 100% of the owned claims were instituted and ultimately lost. The problem was with USPTO math. The number of instituted claims was more than three times the number of unique claims owned by Zond. In other words, the institution rate should not have been 88.6%, it should have been closer to 329%! An institution rate of 88.6% is meaningless (and entirely misleading) when it can result in 100% of owned claims invalidated.

Et Tu, CRU?

It is true, however, that over the last several years. the PTAB has become a different tribunal than it was at the outset. Fewer cases are being instituted, the serial petitions that plagued patent owners are a thing of the past and patent owners are faring better overall than they once did. Reforms to the PTAB initiated by Director Andrei Iancu have undoubtedly made the PTAB a fairer tribunal. Unfortunately, when those regulatory reforms could have been become legislative changes, the pro-patent forces could not agree, which killed any attempt to permanently capture the positive Iancu reforms. Now, because the pro-patent forces bickered and wouldn’t accept legislation that would make the Iancu reforms legislatively permanent, the next Director of the USPTO could, and likely will, revert back to a more patent owner hostile PTAB.

And while the PTAB has become a much fairer forum that does not resemble its former self, this is not to say that the USPTO is operating properly. Quite to the contrary, the one of the most egregious abuses of power imaginable has been occurring repeatedly in the wake of an increase in discretionary denials of IPR petitions.

It is almost unfathomable, but when a patent owner prevails at the PTAB and convinces the PTAB that it is not appropriate for an IPR to be instituted, the petitioner simply takes the same exact prior art and files a request for reexamination, which the Central Reexamination Unit (CRU) grants. Under what possible rationale does it make sense for the PTAB to refuse to accept an IPR and to exercise discretion to deny institution, only to have another office within the USPTO pick it up regardless?

It is no wonder that many within the innovator community believe the USPTO wants to kill challenged patents at all costs.

First, during the early years of the PTAB, patent owners were forced to fight with one arm tied behind their back in terms of when they could even submit evidence and page limitations, not to mention the rush to judgment to get the case done within the fictitious 12-month deadline (i.e., the statute allows for an additional six months that the Office never used and publicly never admitted even existed).

Second, as the PTAB has become a fairer tribunal with more due process for patent owners and the envisioned exercise of discretion to deny when appropriate, the CRU becomes the new villain in this Shakespearean tragedy with a plot that will ultimately culminate in the harassment of patent owners, bleeding them dry and eventually killing as many patent claims as possible.

Better, But Still Abusive

The playing field started to level as much as it politically could under Director Iancu. Had the pro-patent community been willing to accept a victory of any kind, the playing field would have leveled even more, but that was not to happen and the time is now passed, with the Biden Administration almost certainly likely to pick up with patent policy where the second Obama Administration left off.

Applying for and receiving a patent costs money—a lot of money for an applicant. But that is only half the story. Like an arms dealer, the USPTO does not only sell to one side of the patent battlefield. The USPTO sells to both sides, offering those threatened by a patent the ability to invalidate claims to patents in a variety of different procedural offerings, including even when judicial discretion requires a refusal to institute an IPR.

Not only does the USPTO handsomely charge for the acquisition and maintenance of a patent, they also handsomely charge for the right to challenge those patents after issue. And if the PTAB is not willing to accept an IPR, the CRU will handle the job, based on the same prior art the PTAB refused to consider. What a disgusting, reviling, revolting abuse of power by an agency that is charging innovators to obtain the right, while at the same time selling the disablement of those rights to challengers.

On the 10th anniversary of the AIA, the story should be that today, thanks to the reforms of Director Iancu, the PTAB is not as bad as its critics say, nor as good as its defenders claim. Legislation should, but won’t, make the IPR process consistent with invalidity proceedings in federal district court. There will be much more litigation over this controversial tribunal in the years to come. And the commercially valuable patents issued by the USPTO provide no more than an illusory right that will be challenged until lost, whether at the PTAB, the CRU or at the Federal Circuit—which itself is an entirely different story for another day.

Image Source: Deposit Photos
Author: Sandralise
Image ID: 4039403


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Join the Discussion

30 comments so far.

  • [Avatar for Josh Sloat]
    Josh Sloat
    October 28, 2021 02:53 pm

    Lots of great conversation here! For your Halloween weekend listening pleasure, we present “American Inventor Horror Story: Ten Years of AIA and the PTAB” … We took our podcast on the road and attended the “Decade of Stolen Dreams” Detroit rally. We break down the AIA and the Death Squad through a wide array of personal perspectives from inventors at the rally, patent practitioners, and even a former USPTO patent examiner.

  • [Avatar for Anon]
    September 24, 2021 06:03 pm


    The term is “Public Franchise,” rather than “Public Property,” but the gist of your question may still apply (and has been asked previously — by me) in regards to the duties invoked between FranchisOR and FranchisEE.

  • [Avatar for jacek]
    September 24, 2021 11:46 am

    Question to everybody
    If patents are, according to the ‘Supreme Court” public/government property, shouldn’t government defend them in the PTAB wars?
    Otherwise, this is squandering of public property.

    Also, shouldn’t the infringer pay license fees to the Treasury?
    Same As people who pay for the use of public lands for grazing.

  • [Avatar for Milton]
    September 23, 2021 11:40 pm

    I’ll try to agree with everybody. I like the methods of Stephen Key on simple inventions that a large corporation doesn’t see as successful enough to go ahead and steal. With the type of people that Gene is dealing with, I can understand trying to walk on egg shells. These powerful people will destroy you at the slightest offence and you end up getting nothing. I get some low dollar ideas from time to time but I always end up prioritizing the one that should be worth billions. My next step is to build the prototype, since I think I got the cost of that down to thousands and not tens of thousands. It will work in smaller applications besides Nascar and General Motors. These others should be my first target, such as, small equipment and powersports. And besides all that, I’ll keep it hid, if it is obvious that people are going to steal it. I’ll will it to my kids. They can bring it out if we ever get our country back. I’ll also look into getting patents in other countries that are not so hell bent on kissing the large corporations behind.

  • [Avatar for Stephen Key]
    Stephen Key
    September 23, 2021 04:44 pm

    @25 Night Writer Interesting. Would enjoy hearing more of your perspective…. If you are open to it please message me on LinkedIn or email me at [email protected].

  • [Avatar for Night Writer]
    Night Writer
    September 22, 2021 11:07 pm

    @22 Gene “The all or nothing abolish the PTAB or nothing approach (which is well documented) is a non-starter, as I have repeatedly explained.”

    Makes me wonder how the PTAB made it into the AIA and why others didn’t protest?

    At my law firm, which was a top 50 law firm, the head of the IP practice said that his recommendation to me was to move to a different area of law. There was business law that was willing to take me and local litigation was willing to kick my tires. As well as discovery for all litigation.

    But, anyone that read the AIA and knew anything about patent law knew the IPRs were the death knell of the patent right in the USA. I never understood why more didn’t fight it at the time. It was like everyone thought it was a joke. I did have lunch with one person that was partially responsible for writing the law and he basically said he was well paid for pushing the PTAB and IPRs. He was a patent attorney.

    But Gene is right that now that it is there and there are these huge interests that not only want it but want it to kill more patents there is little to no chance without a radical change in circumstances of it being abolished.

    What people don’t get is that this is a lot like anti-trust law. The Scotus and Congress decided that they were going to have to go with the big international corporations as that was where the money was and they pretty much do what they are told by these corporations. Anti-trust law was killed by the “rule of reason”, which Alice is basically just a copy of.

    Anyway, the Scotus and Congress are going to do what the big international corporations tell them to do unless they mess up bad. But right now they are beating the world.

    Just reality.

  • [Avatar for FactsMatter]
    September 22, 2021 05:35 pm

    Gene @ 22:
    By your own admission, you are either living in the past or cannot see the present. Read what you just wrote. The only reference you have provided in support of the claim that U.S. Inventor and Josh Malone have ALWAYS said publicly and privately that the abolition of the PTAB is the goal is not only outdated, but also misquoted.

    The referenced article is from 2017. The compromise bills and measures put forth by US Inventor (linked by Josh above @ 6) are dated well after that article was published. You also quoted Paul Morinville, not Josh Malone. Morinville may be a founder of U.S. Inventor, but he is not running U.S. Inventor. The “abolish the PTAB” ship has already sailed from U.S. Inventor and been replaced with tenable solutions. None of those bills or measures call for the abolition of the PTAB. But for some strange reason, you are still hanging onto it, which is really hurting what you say you support and only serves to create division.

    There is no game here. We are all on the same team, and you have a platform. Whether you agree with the current measures put forth by U.S. Inventor or not, I ask that you please help prevent misinformation from being propagated. It hurts our unity and what we do agree on.

  • [Avatar for Randy Landreneau]
    Randy Landreneau
    September 22, 2021 03:20 pm


    You’re mixing up what was said four years ago in our youth in the heat of battle with what we support legislatively in present time. You’re also incorrectly calculating our relevance. We’re finding more and more inventors who’s businesses, as well as their hopes and dreams, have been destroyed. Our lawmakers are becoming more aware, not less, because of our efforts. Nothing is more important to the future of American innovation than the restoration of the ability of an inventor to stop the theft of his or her patented invention, no matter how powerful the infringer. We are totally dedicated to this purpose, and we will not be stopped.

  • [Avatar for Gene Quinn]
    Gene Quinn
    September 22, 2021 01:49 pm

    Randy @19 and Facts @17…

    I don’t know what kind of game you are trying to play, but U.S. Inventor and Josh Malone have ALWAYS said publicly and privately that the abolition of the PTAB is the goal. You are acting as if that is not well document, hasn’t been said to many people, and hasn’t been published.

    I have no desire to argue what is well known, and don’t understand why you guys are lying. But here is but one example:

    “U.S. Inventor is holding this protest to highlight to the justices and to the public the vital need to abolish the PTAB in order to protect American inventors and American innovation.”


    The problem U.S. Inventor has is the positions the group has taken over many years have been so extreme the group has become irrelevant and is affirmatively hurting the cause.

    It is also interesting that you want to fight with me. Philosophically I support most (if not all) of what the group stands for. The difference is I want to actually accomplish something. The way things are done is to put issues into the victory column one by one, which is not something U.S. Inventor has wanted to do even when easy victories could be obtained. The all or nothing abolish the PTAB or nothing approach (which is well documented) is a non-starter, as I have repeatedly explained.

  • [Avatar for concerned]
    September 22, 2021 01:10 pm

    @19: My CAFC attorney asked to handle my appeal for filing costs only, no contingency or no other reimbursement.

    This appeal is to get the patent as I have been rejected for ever changing reasons that are not supported by the Official Record. The rejection reasons appear to defy logic.

    I think my cases has circumstances that make the case special to include the USPTO and PTAB both state a long sought solution occurred and I met the law as passed by Congress. Other circumstances in my record should also make for a favorable resolution.

    There is a lot if money in play on my process and, if my attorney is successful, he will obtain a well deserved recognition for establishing certain standards in the patent process.

    Here is hoping for success as it is hard to respect a current patent process where there appears to be no rule of law.

  • [Avatar for Jacek]
    September 22, 2021 11:14 am

    What makes PTAB Holy Cow?
    We have and had for the last 200 years regular courts in the US.
    Why do we need this crooked bastard of Big tech propaganda?

  • [Avatar for Randy Landreneau]
    Randy Landreneau
    September 22, 2021 09:59 am

    Gene, if our position was to abolish the PTAB, why would the bills we support not seek to abolish the PTAB? The “everyone” you speak of have been skillfully misled by those who have their own vested interests in this space. And they’ve done a good job, because we are continually having to handle that misinformation.

    If a patented inventor with a good case can’t even access justice because he or she can’t get contingency representation for the PTAB, what are we talking about? The AIPLA says a decent PTAB defense costs $400 to $800K. One of the very few cases I know of where the PTAB case was taken on contingency, the attorneys did so because they expected the eventual damages to be over a billion dollars. They got crushed.

    Is our patent system only for the rich and powerful? No, it was intended for any individual, from any walk of life, rich or poor, and that is what matters.

  • [Avatar for Night Writer]
    Night Writer
    September 22, 2021 08:45 am

    The big picture reality, which I never hear, is that the federal court system wants the PTAB and Oil States was about making sure that a lot of the patent load remains in the PTO.

    That reality has to be part of the solution. The PTAB will never be abolished because of this reality and the Scotus (which is in charge of running the federal court system) will never hold the PTAB unconstitutional.

    The only path forward is to expand the PTAB into a kind of federal court system. That is the only thing that has a chance of success.

  • [Avatar for FactsMatter]
    September 21, 2021 06:21 pm

    Gene @ 12…
    You said “If you want to be mad at me, fine”
    Show me where I have stated anything with anger in my previous commentary. On the contrary, I am bringing factual clarity to your readers to help the transparency and accuracy of your blog.

    You also said “everyone (and I do mean everyone), knowledgeable about U.S. Inventor knows that the stated position of U.S. Inventor is the abolition of the PTAB, period.”

    I am very knowledgeable about U.S. Inventor, and the stated position is not the abolition of the PTAB. You must be living in the past or living in some alternate reality. Your statement here reminds me of Anakin Skywalker using absolute language — “If you’re not with me, you’re my enemy.” — to which Obi-wan pointed out as coming from a closed-minded Sith Lord.

    PTAB abolition is the stated position of Massie, Kaptur, and Rohrabacher from H.R. 6264, which was over 3 years ago. Perhaps Paul Morinville can speak to that.

    Today’s U.S. Inventor is keenly aware that such a position is not politically viable. I don’t believe they or American inventors would oppose such a measure, but “not opposing” something and “supporting” something are two different things. Hence, please direct me to where these publicly supported compromise positions by U.S. Inventor provide for the abolition of the PTAB, as the abolition that you mention is nowhere to be found in the text:
    Inventor Protection ActInventor Rights ActVoluntary PTAB Arbitration proposal

    You also said: “The bill U.S. Inventor supported has 2 sections, both of which are fantasy provisions that are politically impossible.”

    I find it difficult to follow your claim that this is politically impossible and these are fantasy provisions, as you have not provided any reasons to support your claim. On the contrary, I have knowledge on the inside that the director may deny IPR institution for small business concerns pursuant to his authority, a notion that is reflected in the above cited measures. So, it is NOT “politically impossible”, as you claim.

    We all want to improve the patent system. If the STRONGER bill didn’t move, or if US Inventor’s measures don’t move, then let’s figure out what will move and stop killing allies out of personal vendetta. This only proves Tillis right when he says there is lack of consensus. We are bigger than this, and the problem is bigger than us.

    Personally, I support what Judge Paul Michel recently stated:

    The ill effects arise from three unintended design defects in the statutory scheme:

    1. the lowered standard of Preponderant Evidence, contrary to the court standard of Clear and Convincing Evidence;

    2. the lack of a clear presumption of validity as in court;

    3. the lack of a requirement of Standing, as in court, allowing for anyone including associations that enroll the defendant to challenge the patent without Estoppel arising.

    Congress must make the necessary adjustments if the United States is to remain the world leader in technology, rather than China replacing it.

    I see this conversation as healthy. This is what debate is all about. We must forget the past, forget our feelings, and focus on facts and working solutions.

    The best idea needs to win. Period. (And I think we are getting closer.)

  • [Avatar for PAUL MORINVILLE]
    September 21, 2021 04:55 pm

    I have repeatedly said that the PTAB should be eliminated.
    I make no apologies.
    The PTAB is a corrupt kangaroo court headed by the same political appointee who issues the patents that the PTAB invalidates.
    Property right or government franchise, the same person having the power to both issue and destroy a patent only leads to corruption, which is the case now. Because patents are subjected to the political whims of whoever runs the patent office, patents have virtually no value in the hands of a small Inventor or startup. They are a liability. That is just a fact. And that fact greases the skids of big Corp theft.

    The PTAB violates due process and separation of powers, the under pinning of our system of justice.
    I can’t believe any America remotely familiar with fairness would even question getting rid of it.

    I am no longer with US Inventor, so do not confuse my comments with them.

    Stephen Key, you have become active politically since we first met and I introduced you to many Washington people.

    Since you believe US Inventor is going in the wrong direction, please share what the right direction is.

  • [Avatar for Josh Malone]
    Josh Malone
    September 21, 2021 04:31 pm

    Stephen, these are patented inventors. It is closer to 3,000 now. It is a healthy number. Over 10,000 patents, several thousand jobs, millions of dollars invested, and some incredible technologies. It is such a privilege to know these inventors and have their support.

    Will you and Gene help circulate the resolution so we can reach more of the 300,000 small business inventors? The attorneys that read this blog – please share with your clients.

    There is no need to squabble over tactics here. Let’s unite on principles:

    1. The USPTO should not take back patents from inventor without their consent.

    2. Inventors should get to decide who uses their patented inventions and how they are used.

    3. Willful infringers should not be allowed to profit from using patented inventions without permission.


  • [Avatar for jacek]
    September 21, 2021 02:59 pm

    US-Inventor 2500 signatures?

    The reason behind the low number of signatures is obvious.
    Inventing is not a prevalent occupation.

    2) If you start, you learn about the pitfalls of the US system when it is too late. You invested your time, labor, and money already.

    3) There are plenty of Trojan horses trying to take our attention from the real issue and bury the message in a noise like EFF.
    4) Confusing the public with fairy tales about “Patent TROLLS.”
    5) Scheduling competing events (like at the time of the Inventors rally in 6 cities last Thursday.)
    6) Not many inventors I know myself, know what awaits them, but it is changing.

    US inventors are acting based on moral principles.
    It gives them the mileage you never will achieve when a lie propels you.
    The theft is real.
    The rage of inventors is absolute.
    Their quest finds more and more volunteers.

    I have seen it already in other places light-years from US reality that CONSISTENT MESSAGE based on truth, in the end, have a profound effect. It can change history.

  • [Avatar for Stephen Key]
    Stephen Key
    September 21, 2021 01:31 pm

    US Inventor has been actively trying to change our patent system to increase the rights of independent inventors.

    Unfortunately, after many years of hard work, they’ve only managed to get 2,500 signatures supporting their efforts.

    Given how large our innovation ecosystem is, this number is remarkably low.

    At this point, a change in strategy is needed.

    Josh, we have all seen your posts on social media calling for the PTAB to be abolished.

  • [Avatar for Gene Quinn]
    Gene Quinn
    September 21, 2021 01:20 pm

    You can shoot the messenger if you want, or you can actually believe what I’ve written is true. U.S. Inventor and Josh Malone have supported politically impossible positions and refused to accept easy wins that would have improved the position of all innovators.

    FactsMatter @11…

    You can believe what you want, but everyone (and I do mean everyone), knowledgeable about U.S. Inventor knows that the stated position of U.S. Inventor is the abolition of the PTAB, period. Those statements have been said publicly and privately. It is why U.S. Inventor has become a reviled on Capitol Hill.

    Josh’s positions are extreme and are politically impossible. If you want to be mad at me fine, but it doesn’t change the fact that no one on Capitol Hill likes Josh, trusts Josh or wants anything to do with U.S. Inventor. Publicly and privately pushing politically impossible positions while saying no to what is achievable has made U.S. Inventor worse than irrelevant. The disgust used when speaking of U.S. Inventor is palpable.

    Josh @8…

    The STRONGER Patent act has many sections. The bill U.S. Inventor supported has 2 sections, both of which are fantasy provisions that are politically impossible. You have been told, and everyone working on these matters knows, that a repeal of eBay is impossible presently. Any attempt to move the STRONGER bill forward has been discussed are requiring the eBay provision to be removed. You either know this or you are so on the outside have alienated everyone that you no longer have any information about what is being discussed.

  • [Avatar for FactsMatter]
    September 20, 2021 09:23 pm

    Gene said: “Everything in the article is 100% factually correct”

    Josh then provides evidence in the public record that shows at least this statement by Gene in the article is false: “US inventor, for example, has long argued that the only acceptable solution is to abolish the PTAB.” You can read the bills and measures Josh linked above for yourself. There is no PTAB abolition there.

    Gene, your opinion on the facts is fine. This is your blog. You can say whatever you want. But telling Josh in the comments that he “takes extreme positions and then blame[s] everyone else who takes a reasonable position”, while you yourself state incorrect facts and then use those incorrect facts to blame US Inventor – in a section entitled “Both Sides Get the Blame” at that – is intellectually dishonest and a disservice to your readership.

    You should either rescind this article or correct the record and comment above for your audience.

  • [Avatar for jacek]
    September 20, 2021 07:00 pm

    The “Friendly” dragon is stuff from fairy tales.
    Denying patent rights for individual inventors is denying economic opportunities for the average US citizen in extreme form.
    We are actually persecuted.
    Try to invent, and you are going to be persecuted by incumbents.

    In all of this noise constantly here and there, I hear repeatedly message voiced by more and more inventors. “Do not apply for a patent in the US.
    Do not create an expensive problem for yourself.”
    The most surprising is the frequency and unexpected places the same message is emerging from.
    But Who cares.
    We are extremal!!

  • [Avatar for Tell It like it is]
    Tell It like it is
    September 20, 2021 04:23 pm

    The biggest issue was the running of the PTO by Ms. Lee, and the damage that she did to patent owners. She really was and is a patent hater.

  • [Avatar for Josh Malone]
    Josh Malone
    September 20, 2021 01:56 pm

    This statement is false: “US inventor, for example, has long argued that the only acceptable solution is to abolish the PTAB”. I linked to the record evidence above that shows this is not our position.

    This is also incorrect: “The bill you cite would overrule eBay, which everyone knows does not have political support… Josh, you take extreme positions and then blame everyone else who takes a reasonable position.”

    Here is the relevant text from the H.R. 5478 the Inventor Rights Act:

    Upon a finding by a court of infringement of an inventor-owned patent not proven invalid or unenforceable, the court shall presume, respectively, that—
    “(A) further infringement of the patent would cause irreparable injury; and
    “(B) remedies available at law are inadequate to compensate for that injury.
    “(2) OVERCOMING THE PRESUMPTION.—A presumption described under subparagraphs (A) or (B) of paragraph (1) may be overcome if the infringing party shows clear and convincing evidence that the patentee would not be irreparably harmed by further infringement of the patent, including evidence of unreasonable delay by the patentee from the date on which the infringement was known or reasonably could have been known to the patentee.

    Here is the relevant text from H.R. 3666 The Stronger Patents Act:

    Upon a finding by a court of infringement of a patent not proven invalid or unenforceable, the court shall presume that—
    “(1) further infringement of the patent would cause irreparable injury; and
    “(2) remedies available at law are inadequate to compensate for that injury.

    You have it backwards. According to your criteria, the Inventor Rights Act is reasonable, while the Stronger Patents Act is extreme. I prefer the Stronger Patents Act provision with respect to injunctions, but I agree with your sentiment that overturning eBay is not politically viable at this time.

    Let’s agree on the facts. Then we can evaluate the analysis as to which approach is obtainable and which is impossible.

  • [Avatar for Gene Quinn]
    Gene Quinn
    September 20, 2021 12:06 pm

    Josh @6…

    Everything in the article is 100% factually correct, as you well know and we have discussed.

    Backing a bill that has 0% chance is not actually participating in legislative efforts in good faith. The bill you cite would overrule eBay, which everyone knows does not have political support, and would create a presumption of willful infringement.

    That is your problem, Josh, you take extreme positions and then blame everyone else who takes a reasonable position. For whatever reason, you do not want to achieve the obtainable. You instead want to fight for what is impossible. It is sad that inventors are listening to you and not putting their support behind real reforms that would have made the system better and which could have been obtained.

  • [Avatar for Josh Malone]
    Josh Malone
    September 20, 2021 11:06 am

    This article is factually incorrect. In the 115th Congress we backed the Inventor Protection Act. In the 116th Congress we backed the Inventor Rights Act. This Congress we are supporting a measure to make PTAB voluntary. None of these measures would abolish the PTAB.

    With respect to the regulations, we vigorously supported Director Iancu last fall. We organized several meetings with the OIRA officers in an effort to help Iancu overcome the resistance by Vishal Amin at IPEC. We also worked behind the scenes to express support for Iancu to high level officials in the Trump Administration.

    Over 2,500 inventors have signed the Inventor Rights Resolution. They would be entirely justified in seeking to abolish the PTAB, which serves no legitimate purpose. It only helps large corporations, it only hurts small businesses, and it does nothing to stop patent trolls. It is not faster, cheaper, nor an alternative to district court. But these inventors are not advocating for abolishing the PTAB as this article wrongly alleges.

    Even if they were, I would urge the editor and other lawyers and lobbyists, staff and lawmakers, to not presume that you know what’s best for inventors and how to accomplish it. Listen to us, respect us, collaborate with us to make the system fair for everyone, even inventors.

  • [Avatar for Pro Say]
    Pro Say
    September 20, 2021 10:23 am

    Our Founding Fathers would be aghast at what has been done to American inventors.


  • [Avatar for IKnowRandy]
    September 19, 2021 10:10 pm

    Gene said: US Inventor [] has long argued that the only acceptable solution is to abolish the PTAB, which simply will not happen and has caused those inside the beltway to view US Inventor, and those affiliated with them, with increasing skepticism.

    Interesting, because on the very front page of usinventor.org, you will find support for the Inventor Rights Act. US Inventor is pleased to support the introduction of the bipartisan Inventor Rights Act, H. R. 5478 by Representatives Danny K. Davis (D-IL) and Paul A. Gosar, D.D.S. (R-AZ). One can trace this bill back to the Rohrabacher version of 115th Congress with the Inventor Protection Act, and find similar intent. These bills do not seek to abolish the PTAB, but are compromise solutions.

    Thus, the statement that US Inventor “has long argued that the only acceptable solution is to abolish the PTAB” is a mischaracterization. There is no “politically infeasible and impossible demand at the expense of other available solutions to improve the PTAB” here, but the opposite is the case.

    Try again.

  • [Avatar for John K]
    John K
    September 19, 2021 04:23 pm

    Great article Gene. Appreciate the guts to tell it like it is.

  • [Avatar for MaxDrei]
    September 19, 2021 03:55 pm

    I have a degree of sympathy for the USPTO. If it refuses a claim passage to issue it is criticised but if it lets claims through to issue, and it then turns out to have been a mistake, it gets doubly criticised. Given the potency of the exclusive right given by grant, it must be right that there is an opportunity for those under threat from those rights to explain to the PTO that it was in error to issue the claim.

    I wonder if there is a problem with running the PTO as a business. The dividend to its owners is maximised by letting all sorts of c53p through to issue, and then making a killing on the resulting surge of business to get all those wrongly issued claims cancelled. I wonder, do the USPTO Quality Managers monitor how many of the duly issued claims that are later extinguished by the PTO ought to have been flagged up and weeded out during pre-issue examination on the merits?

    Oh and by the way, it will take another 20 years or so before the consequences of of the unique-to-the-USA AIA all-encompassing definition of the prior art are grasped. The USA now has its very own uniquely turbo-charged First to File system (Winner takes all, runners up get nowt) and I look forward to observing how long it takes for the full horror to be revealed.

  • [Avatar for concerned]
    September 19, 2021 01:09 pm

    USPTO and PTAB: Step back. Your examiners and jurists wrote a long sought solution occurred and the process met the law as passed by Congress and still all both of you can do is reject at all costs.

    A final rejection just has not been determined as it keeps changing. And offering proof of your contentions? Still waiting.