“What happened to me is happening to others like me. Each week I get to hear from other inventors and their experience with PTAB. This system is broken and is ruining small businesses and the morale of U.S. innovators.”
On Wednesday, May 25, United States Patent and Trademark Office (USPTO) Director Kathi Vidal and a panel of academics from Silicon Valley participated in a 90-minute, live Q&A webinar regarding the state of the USPTO. I attended virtually.
I am a five-time world jump rope champion and the only jump roper to design and patent a jump rope handle technology. I was granted my two patents (US 7,789,809 B2 and US 8,136.208 B2) in 2010/2012. I started my jump rope manufacturing business, JumpNrope, in 2010 here in Louisville, Colorado. I am proud to also say that I source all my jump rope parts and pieces from U.S. vendors. We make all our jump ropes by hand in Colorado.
My technology not only changed the sport of jump rope by offering a precision speed jump rope handle, but it also changed the fitness industry. To date, hundreds of companies have infringed on my patent, including Rogue Fitness, the largest fitness distributor for CrossFit and Strongman. As detailed in my case, I believe that Rogue has willfully infringed on my patent since 2012 by selling tens of millions of dollars’ worth of infringing jump ropes per year.
A Fruitless Fight
I served Rogue with a notice of infringement in 2018 and lost both my patents in November of 2021. Rogue filed a petition for inter partes review (IPR) with the Patent Trial and Appeal Board (PTAB) and the case was fast tracked through the PTAB, where my patents were ultimately found invalid. My lawyers felt that the PTAB got my case wrong, so we appealed to the Federal Circuit. In November of 2021, just three days after attending my hearing in Washington, DC, we received an email from the Federal Circuit with a one-word decision indicating that my case was “affirmed”. The ruling is called a ”Rule 36” judgment.
I was told that was the end of the road for my fight. However, I decided to take it upon myself to research what had happened to me. I found a group, US Inventor, and soon learned I was not alone. They, like I, believed what had happened to me was terribly wrong. This inspired me to continue to understand more about the system and what was happening to other inventors like me.
I attended the webinar on May 25 to understand how Director Vidal is going to make changes to the PTAB. She had some optimistic statements, such as that she wants to encourage innovation, to resolve abuse in the PTAB, and to use the first principles of the America Invents Act (AIA) when resolving an issue. One panelist said that the PTAB is more favorable for inventors because the judges are technically trained – much more technically trained then district judges – making it a better option for inventors. The PTAB is also cost-effective for inventors and takes less time than the district court, this panelist said.
Inventors Don’t Always Want a ‘Fast-Track’
When I served Rogue in 2018 my case was stayed in Ohio pending the IPR. This is not what I or my lawyers wanted. I wanted my case to be tried in court, with a jury. This case was the biggest moment of my life. I was “all in” and not looking for a “fast” track, a deal on time or a more economical route. My patents are my livelihood. I have been busting my butt since 2008 and changing the idea of jump rope both through technology and content. I have been to over 600 CrossFit Gyms around the world and have conducted nearly 900 jump rope seminars to athletes and coaches. I was the head coach to the largest jump rope team in the nation and have worked with thousands of kids. I am a creator and an innovator.
My case took four years. I don’t think this is fast. I spent hundreds of thousands of dollars on this case—any savings I have is gone. To me this is A TON of money. I lost all my license agreements, and every day I get to watch my infringer sell my technology. I humbly rent an 800-square foot apartment with my husband in Colorado. Each day I pick up the pieces, wondering what happened.
What if I had “won” at the PTAB? My case would be brought back to Ohio. This equates to more time and more money.
I believe the “technical judges” of the PTAB used the wrong standards in my case. I don’t practice law, but when my lawyers and US Inventor explained what happened to me, it seemed to me that ANY invention that is held to the PTAB’s standard may be deemed obvious and seen as an invalid patent. I understand now why 84% of patents are invalidated at the PTAB.
I wanted a jury; I wanted a fair trial where we could use evidence. I wasn’t allowed that.
Rogue also received a “fast track”—straight out of court. They got to dodge a bullet! I believe I have credible evidence of Rogue’s infringement that would have held up in district court. An IPR for Rogue is a huge cost savings and less burden for them. As an example for this article, if Rogue was past due $20 million in royalties to me, they see that an IPR will cost $2 million and they can spend less time and money, and their burden of proof is lower. It is a great deal for Rogue.
A Broken System
What happened to me is happening to others like me. Each week I get to hear from other inventors and their experience with PTAB. This system is broken and is ruining small businesses and the morale of U.S. innovators.
I spent my money on securing my two patents. I received a red ribbon certificate. It reads:
“Grants to the person(s) having title to this patent the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States of America or importing the invention into the United States of America for the term set forth below, subject to the payment of the maintenance fees as provided by the law.”
I served Rogue for infringement. I did not ask for my valid patents to be re-examined. I asked for a trial, a jury and for my RIGHT to exclude others from making, using, offering for sale or selling my technology.
The system is faulted. My case, along with others, should be re-opened and reviewed. This is the only way to learn what went wrong, how to fix it and to create change for the future.
There is one thing I have learned being a team athlete my entire life. I don’t see a loss as a loss. I see it as a time to get back up and get stronger. When my patents were invalidated by the PTAB, I certainly felt a loss. However, finding other inventors like me, with similar stories, we are starting to rally together and we are getting stronger. We are asking to be heard and not just told that change will happen, but to see actions that prove it.
After attending the USPTO webinar, I took some time to reflect. I asked myself, “what am I doing?” As I listened to the panelists and thought about my experience with the PTAB, it made me feel that all along my patents have been invalid. Did I pay a large sum of money to the UPSTO and receive a faulty sense of security for my invention? Why did the USPTO give me my patents? Did I falsely advocate for my patent when I set up licensing deals in the past? Is it just my imagination that hundreds of companies, Amazon retailers and overseas manufactures sold and continue to sell my idea? Was it ok that Rogue profited off my idea?
If the problem with the PTAB is a problem that dates back to the beginning, with the examiners that gave me my patent, then I want to know that. I deserve to know that, and so do the future inventors who are also spending their time and money on receiving “faulty” patents.
If, however, all along my invention/patents have been valid, which I believe they have been, then I want to focus on Ms. Vidal’s words during the webinar. She stated that she wants to encourage innovation and resolve abuse in the PTAB. I challenge her and the rest of the UPSTO to look deeper into the abuse by listening and asking inventors what they have experienced at the PTAB. They will find that the PTAB is giving false hope to inventors. Their false hope sounds good out loud, but it is just words and not workable solutions for us. I was forced down this road and I lost my patents.
I want Ms. Vidal to work with me, and other inventors. To take a walk in our shoes. To open our cases, review them, and see the struggles we have experienced.
If I could go back in time and make one request, it would be to have had a choice. My patents are my everything, my livelihood. I wanted a jury and the right to defend my invention. I wanted to spend as much time/resources as I had on this. I think my request to have a choice is fair, and should be considered as a future change to the PTAB.
Join the Discussion
11 comments so far.
MortJune 8, 2022 12:39 pm
To All, be advised that the Kangaroo Judges at the PTAB Kangaroo Court are mostly young Big Tech Ex Employees that are awarded bonuses on their ability to allow the further promotion of patent technologies from start-up companies to bigger commerce that want to claim the invention. This Said they will either go to an immediate section 103 rejection or even if it Successfully passes 103 they will effectively go to Alice as per the American Axle Case. I believe this is in their Training Manuals or it is just naturally occurring in Impetuous Youth! They just don’t care!
BJune 8, 2022 10:29 am
@ F22strike “For the past five years, I represented a start-up company that was effectively destroyed by the USPTO before it ever had a chance to succeed.”
Dude, we gotta do lunch
“Adding insult to injury, in a second appeal, the PTAB revered nearly all of the examiner’s rejections but then made its own new obviousness rejections.”
The PTAB is full of knuckleheads. I’m not sure if they’re all just stupid, or forced to do stupid things by management.
” Nevertheless, I doubt that any fair-minded experienced US patent practitioner would doubt the veracity of the facts and opinions set forth above.”
None who I know of
concernedJune 8, 2022 07:11 am
Thank you for posting. I thought you were writing about my story at first (changing rejections, MPEP not followed, PTAB added a new rejection, etc.)
However, I did appeal to the CAFC and I did not receive a Rule 36 affirmance. CAFC decision still pending.
Even if I lose my CAFC appeal, I want the court to write for my satisfaction and to show the world: The patent system does not care if a patent application has all the possible evidence supporting the application (which I do from every Medicaid authority in the nation and is on record), the patent system does not care if the rejection theories are contrary to that evidence and fact, the patent system does not care if both parties agree the law was met as expressly written by Congress (PTAB said I met the law as written), you are not getting your patent (period).
The Assistant Solicitor’s oral CAFC argument: “The courts have ruled this way in the past, so the courts have to rule the same again.” There have been many wrong things in society that have been stopped and have not continued because of bad past practice. One CAFC judge threw up both arms into the air and stated on the record during oral arguments that our arguments should be in front of SCOTUS.
Maybe my case will make it to SCOTUS. I feel it has merit. I had all the possible evidence and both sides agreed I met the law as written. The rejection of the application to date is a complete forsaking in a legal setting of evidence, truth and the law as passed by Congress. The prosecution of my application has been a complete mockery of the foundation of our legal system. There is no due process if there is no equally weighted process fair to both parties. The USPTO, PTAB and Solicitor submitted zero, zippo, nil, naught, null evidence.
In a perverted way, you may be correct that the system did your clients (not society) a favor under the current scheme of things.
F22strikeJune 7, 2022 03:58 pm
For the past five years, I represented a start-up company that was effectively destroyed by the USPTO before it ever had a chance to succeed. The US inventors who formed the company conceived of a novel, inexpensive standalone electronic device for household use. It provided significant advantages to consumers which were confirmed with lengthy beta testing of prototypes. Extensive prior art searches for US and International prior art were conducted that confirmed the patentability of the device. A provisional patent application disclosing the invention was filed in the USPTO in 2017 and a non-provisional application claiming priority from the same was filed in 2018.
Four years of tedious and time-consuming prosecution ensued involving a series of implausible obviousness rejections. Each time these rejections were overcome, the examiner made new obviousness rejections based on combinations of newly cited references – no less than three different times. None of the newly cited references was more material to the patentability of the pending claims than the closest references uncovered in the privately conducted prior art searches, all of which were made of record via IDS documents filed before the first Office Action was mailed. Moving target rejections are discouraged in the MPEP but tolerated by SPEs, enabling examiners to game the USPTO’s quota system and substantially increase the USPTO’s collection of RCE filing fees. Adding insult to injury, in a second appeal, the PTAB revered nearly all of the examiner’s rejections but then made its own new obviousness rejections.
An appeal to the CAFC, after another inevitably unsuccessful round with the examiner and a third appeal to the PTAB, would have likely have resulted in a Rule 36 affirmance. Therefore, in 2022, after a five-year odyssey at the USPTO, the inventors finally succumbed and settled for a vanity patent with narrow claims. The USPTO essentially threw the inventors a bone banking on receiving ridiculously high maintenance fees which will never be paid in regard to this vanity patent. As its final act of incompetence during the examination process, after receiving over $3,000 in government fees, the USPTO issued the inventors’ patent for their novel electronic device with informal patent drawings (sketches) instead of the formal patent drawings that were timely filed and are in the electronic file history.
Lacking adequate US patent protection, the start-up company had little chance of obtaining additional funding sufficient to commercialize the invention on a mass production basis. Therefore, the company was liquidated. In the bigger scheme of things, all of the potential benefits to US society of the growth of a new onshore business (like Fitbit) and the availability of a novel and useful consumer electronic device were effectively blocked by the USPTO. The patent that was ultimately granted is a graphic tombstone for the inventors’ modern attempt at small-tech entrepreneurship in the US.
In retrospect, perhaps the USPTO unintentionally did the inventors and their potential investors a huge favor. Assume for sake of argument that the inventors had obtained a US patent with claims having sufficiently breadth to provide a reasonable degree of protection in the marketplace. If, against formidable odds, their invention later turned out to be a commercial success after spending millions of dollars and countless hours of effort, there would be a 90% chance that its claims would subsequently be canceled in an IPR proceeding. Even more distressing, there would be a good chance that the PTAB would facilitate this cancellation in response to an IPR petition filed by an anonymous shell company having no standing, no risk of estoppel, and created for the sole purpose of eviscerating the start-up company’s patent.
The SCOTUS decisions in eBay, Mayo, Alice, and Oil States, coupled with big-tech’s successful lobbying for the inclusion of IPR proceedings in the AIA, have decimated the US patent system. Given the current sad state of US patent law and the USPTO’s draconian examination practices, query, is it even ethical for a registered US patent attorney to file and prosecute US patent applications for micro-entities and small entities? Large entities should seriously consider early defensive, non-patent publication of the bulk of the results of their R &D not deemed to be essential trade secrets, as a far less expensive alternative to filing US patent applications. It is now extremely rare for the exclusive rights supposedly afforded by a US patent to be successfully enforced, especially against big-tech. Congress, the SCOTUS, and the CAFC have sanctioned the efficient infringer model of doing business in the US. As a result, innovation and job creation in the US have been severely disincentivized. The big-tech monopoly rules in the US and much of what they don’t want to capitalize on is made by Chinese companies.
I cannot reveal the identities of the inventors, their company, or the patent number, nor my own identity, for fear of blowback by the USPTO. Nevertheless, I doubt that any fair-minded experienced US patent practitioner would doubt the veracity of the facts and opinions set forth above.
erich spangenbergJune 6, 2022 05:20 am
IF Congress/USPTO really cared, why not refund the innovator when the PTAB invalidates an issued patent? The refund would hardly make up for the innovator’s loss–but it would help: could be just the fees paid or could be fees paid plus some amount ($25,000–maybe some proxy for legal fees)? This refund could be paid by the USPTO either in full or shared with the entity challenging the patent. Want to go further, since it is presumed valid, make the challenger pay if they lose (must prevail on majority of claims challanges type of thing. I am sure better minds on fee shifting could refine the idea further
Pro SayJune 5, 2022 06:21 pm
Thank you for being willing to share your unfortunate, heart-felt, facts-and-law-be-damned story Molly. You — like so many others — were done in by one of the Four Horsemen of the Innovation Apocalypse:
The Death Squad PTAB
The other three being:
Why does the Patent Office not honor the patent issuance decisions of their very own Examiners? You know; the folks who are actually in the trenches . . . day in and day out . . . year after year?
Why does PTO leadership continuously laud their Examiners’ efforts . . . yet anytime thereafter . . . trash their hard work?
Worse than shameful.
BJune 5, 2022 04:16 pm
“ What happened to me is happening to others like me. Each week I get to hear from other inventors and their experience with PTAB. This system is broken and is ruining small businesses and the morale of U.S. innovators.”
You are not alone. Ask the poster who goes by the moniker “concerned.”
Half the problem is a CORRUPT CAFC; half the problem is a CLUELESS and CORRUPT PTAB.
Let us see if Vidal is a crusader for fair innovation, or another Michelle Lee.
concernedJune 5, 2022 08:54 am
I am an inventor also. I also feel the patent system is not fair, not even close.
I did not get Ruled 36 on my CAFC case, which is still pending. The USPTO, PTAB and Solicitor have refused to acknowledge my overwhelming evidence that proofs their rejection theories are not true.
The first rejection theory from the examiners was routine, well understood and conventional, yet my evidence from every Medicaid authority in the nation proves otherwise.
The second rejection theory, mental steps inserted from PTAB, cannot possibly be done in everyone’s mind. Even the two examiners did not go down that ridiculous path.
I have laid down a $500,000 challenge to anyone who thinks they can do my process in their mind. The disconnect is people read my claims, have no idea what was read, and think they are experts in my field without reading my specs or evidence. The challenge: We go to 10 random Social Security Offices in New Hampshire, a random name is picked from a phonebook at each location, and the challenger would need to get consent waived by the Social Security Administration to release confidential personal information by a mental process from the challenger’s mind. No takers from the “so called experts” wanting to take my $500,000 after reading the challenge, which said challenge could be covered by IPWatchdog for all to see.
Of course you may be getting a bad deal. The USPTO and PTAB can make statements that are not true and that cannot be challenged by fact, truth or evidence. The USPTO own regulations said both parties have the right to establish a prima facia case. That regulation is baloney and only serves some kind of official capacity of having to be in the regulations for appearance sake of fairness.
Want proof of a broken system: It takes a United States Supreme Court case to determine if the patent process is a matter of law or a question of fact (American Axle looks to be accepted).
The patent process should be a process of both law and fact, even a common person knows that observation. The law said Dr. Richard Kimble was guilty of murder, both the fact and the truth of the matter were that the one arm man was the guilty party. Good thing for Dr. Richard Kimble there was no PTAB. I am sure PTAB would have given him a fair trial before the court hung Dr. Kimble even if the one armed man was screaming a confession in open court. Who needs facts and evidence, just hang him as fast as possible?
I am truly sorry that you are experiencing this situation. I really know how you feel. Really know.
mikeJune 4, 2022 11:21 pm
Did I pay a large sum of money to the UPSTO and receive a faulty sense of security for my invention?
Yes. Even if you survived the PTAB. Still Yes. This is because Congress, with the America Invents Act, unconstitutionally gave the USPTO the power to take from you the title to your government-issued patent, and at any time because there is no estoppel and by anyone not having standing, giving them no time bar restrictions. As such, the law as written and executed does not secure to inventors any exclusive right their discoveries. There is no “securing”. And because of the financial and invalidation burden this “second look” post grant PTAB tribunal puts on inventors—the lifeblood of American innovation—it does not promote the progress of science and useful arts. Any inventor will tell you this.
So, per the Constitution—”The Congress shall have Power To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” (US Constitution, Article I, Clause 8, Section 8)—the America Invents Act was unconstitutional. Judge Gorsuch’s dissent in Oil States was 100% correct. Congress chose expediency over our constitutional protections.
Citizens agree that the US government is controlled by wealthy corporations silencing their voices with corporate money and power. As such, all three branches should make every effort and go out of their way to hear from citizens and give their voice significant weight. If you want change, go to usinventor.org/resolution and join the growing movement.
AlanJune 4, 2022 07:00 pm
“One panelist said that the PTAB is more favorable for inventors because the judges are technically trained – much more technically trained then district judges – making it a better option for inventors.” What a crock. Was this panelist from one of the FAANG companies? Most APJs are not PHOSITAs in the art area for the patents they (more often than not) invalidate. In district court you get to present all your evidence and cross-examine the opposing expert(s). You can’t do that with IPRs. Juries are nominally impartial. Historical evidence shows at least some APJs are not. The APJs do not address commercial success fairly nor adequately. Molly should have won on that alone. Commercial success is not limited to her success, but success of products practicing her invention.
Martin LeonJune 4, 2022 02:46 pm
Yes Molly, it clearly has become Govt. “Over-Reach” at the USPTO. Way back when Blackberry Phone in-fighting technology was all the rage, the “Patent Troll” narrative had evolved from the ability for the small entity(NPE) to stall innovation by simply asking for reparations for their ideas that they procured through patents. In 2011 AIA was created to favor the patent narrative toward Big Tech to reduce hinderance of Tech Innovation. It really wasn’t intended for mechanical patents but like everything else today it can be leveraged toward any patent. The sad part is that you perfected the handle operation with a corrected aperture angle but they see it as anticipation throughout previous patents and publications yet of course you took all the time and work to successfully commercialize your idea which nobody else would care to undertake which is the conundrum with patents and your idea was opened into other markets. I certainly hope you get your justice back!