RALIA Is Economic Suicide: A Reply to the Critics

“America’s leading chipmaker is being sued by undisclosed foreign interests based on demonstrably weak patents, and yet we are preventing that chipmaker from defending itself in USPTO proceedings.”

https://depositphotos.com/159215852/stock-photo-time-to-respond-clock.htmlPaul Morinville, Founder of US Inventor, recently published a response to my column criticizing the Restoring America’s Leadership in Innovation Act of 2021 (RALIA), a bill in Congress that would abolish the Patent Trial and Appeal Board (PTAB). I offer a few observations in reply.

I argued in “The Made in China Act,” November 16, 2022, that juries are not an effective or reliable check on patent validity and that eliminating contested validity reviews at the United States Patent and Trademark Office (USPTO) would be a disaster for U.S. manufacturing.

The Assault on U.S. Chipmakers

As if determined to prove my point, the VLSI patent-assertion group recently obtained yet another monster infringement verdict against Intel based on a patent that probably shouldn’t have issued.

The patent in question, no. 7,606,983, claims a system of assigning the order in which multiple processors request access to computer memory.

Bear with me; even if you never obtained a Ph.D in electrical engineering, you should be able to understand this case.

The patent’s claimed advance is that the rules defining an order of access to memory are identified in the access request itself. In the words of the ’983 patent, “each access request includes an indication of whether [and how]” it “is to be performed in a sequential order among other occurrences of the access request.”

After it was sued, Intel conducted its own prior art search and identified the Khare reference. Khare is a published patent application that also describes a system of regulating order of access to computer memory, and it was filed three years before the ’983 patent.

Khare’s system also discloses (see paragraph 40) that “each transaction request” includes “ordering semantics [that] may define, for example, rules by which a transaction or request is allowed to be processed or completed before another transaction.”

The wording of Khare isn’t identical to that of the ’983 patent, but the concept is the same: when requesting access to memory, include in the request either an indication whether it “is to be performed in a sequential order” (’983 patent); or the “rules by which a request is allowed to be processed.” (Khare)

Intel developed a strong case that the claims of the ’983 patent would have been obvious. But when it tried to present this challenge to the USPTO, Intel was denied a hearing on the merits because of the Fintiv policy.

Two years later, the case went to trial in the Western District of Texas. The result: the jury rejected all validity challenges, found the patent infringed, and awarded damages of nearly $1 billion.

Why did the jury reject Intel’s prior-art challenges to the ’983 patent?  Here is the jury’s explanation of its decision. Your guess as to its reasoning is as good as mine.

We do know that juries often will not understand or engage with a patents-and-printed-publications obviousness analysis of advanced technologies. We also know that the courts in the patent magnet jurisdictions will exclude evidence of the plaintiff’s identity, allowing even a foreign patent-assertion fund to pass itself off as a domestic start-up company. We also know that in another recent VLSI case that resulted in a multi-billion dollar verdict, jurors posted “funny” memes comparing Intel to a supervillain in a comic-book series.

RALIA: A Strategy for Undermining America

This is an absurd way to run an intellectual property system, particularly when critical technologies are at stake. If our system allows patents as weak as the ’983 patent to command billion-dollar damages awards, we eventually won’t have much of a semiconductor industry left in the United States.

Intel’s founders were among the original inventors of the integrated circuit. The company remains America’s leading-edge chip manufacturer. It is the only U.S. company, for example, that is on track to build next-generation “5-nanometer” chips.

But past performance is no guarantee of future success. Semiconductor design and manufacturing is a fiercely competitive industry. Several foreign companies are working hard to displace Intel, some of which have the active support of their own governments. And there are many examples throughout U.S. history of technologies that were originally invented in this country, and which were once primarily manufactured here, but which have since been ceded to foreign countries.

Nor is chip design and manufacturing merely an economic concern—it is a national-security issue as well. Weapons systems such as fighter aircraft and strategic bombers, radars and communications systems, missiles, and naval platforms all rely on advanced microprocessors. Maintaining a lead in this technology is critical to modern warfare. Just ask the Russian Federation how its reliance on Soviet-era systems is working out in its war against Ukraine. And if the United States finds itself in another military conflict with China, we won’t be able to rely on a supply chain that runs through Shenzhen.

Nor can we count on VLSI to fill the gap. Don’t be fooled by its appropriation of the name of a former U.S. chipmaker: the current “VLSI” is unrelated to the VLSI of the 1980s and 90s, nor does it make or design chips (or anything else). It is simply the patent-assertion arm of Fortress Investment’s litigation fund. VLSI acquired its semiconductor patents from a foreign company that apparently decided to unload the weaker parts of its portfolio.

Fortress itself is owned by a foreign conglomerate, and no one knows who is funding the litigation campaign against Intel. VLSI refuses to disclose who its owners and investors are, other than unspecified “high net worth individuals” and “sovereign wealth funds.”  For all we know, China’s government itself may be among the investors that are on track to extract billions of dollars from Intel.

It is incredible that we are allowing this to happen. America’s leading chipmaker is being sued by undisclosed foreign interests based on demonstrably weak patents, and yet we are preventing that chipmaker from defending itself in USPTO proceedings. It would be hard to think of a policy more clearly designed to undermine the United States.

And RALIA would expand and institutionalize this disaster. VLSI’s litigation campaign so far has relied on a dozen Fintiv denials to obtain $3.2 billion in damages awards against Intel. But under RALIA, every patent would be immune from validity review at the PTAB. It would effectively become open season on U.S. technology manufacturers.

The PTAB is Doing High-Quality Work

I promised you a reply to Paul Morinville, but when it comes down to it, he and I don’t disagree on many specifics. He does not contest my conclusion that VLSI’s other asserted patents—which resulted in a $2.2 billion award against Intel in March 2021—are also probably invalid(we should have a final decision from the USPTO on those patents early next year).

Nor does he challenge my conclusion that the Leak Surveys patent, which US Inventor cites on its website, clearly was obvious in view of prior art.

Mr. Morinville does disagree with me about the Coulter Ventures jump-rope patent, asserting that it was “unjustly invalidated.”  You be the judge. The ’809 patent claims a jump rope whose cable is attached to a “ball element pivotally coupled” to a shaft that is “rotatably journaled” inside the jump-rope handle, allowing the cable to swivel and pivot with respect to the handle.

Prior-art patent applications from the 1970s, however, already disclosed jump ropes with rotating handles (a “jump rope” with “a shaft that is supported in the handle in rotary fashion”) and the use of a “swivel joint” that allows the rope to “externally oscillate.”

The ’809 patent claimed these same features for the same functions. The Patent Trial and Appeal Board (PTAB) considered the arguments from both sides and, in a carefully reasoned decision, concluded that all the claims’ limitation were met by the prior art.

It is hard to see how the Board could have found otherwise. Indeed, had it ignored the evidence before it, the Board would have been reversed by the Federal Circuit.

Unlike a jury, the PTAB is subject to the Administrative Procedure Act. Thus, unlike a jury, the Board cannot hand in a verdict form that looks like an a la carte menu. It is required to analyze the evidence before it and explain its reasoning (I should know—as an agency lawyer, I lost cases on appeal when the Board was less than clear in explaining its findings).

Yet despite the Board’s being subject to this more exacting review standard, the PTAB’s patentability findings are more likely to be upheld when they are reviewed on appeal. A recent academic study found that “the PTAB is affirmed notably more often than district courts on [patent] validity issues”—and that “the most straightforward conclusion” is that the Board judges’ technical expertise has “aided decision-making on the thorny scientific questions endemic to patent law.”

Interestingly, the same study also found that when the Board is reversed on appeal, it is more frequently overturned for failing to find that a claim is unpatentable than for holding that a claim is unpatentable. So much for the infamous “death squad” slander.

The Path to Reliable Patent Rights

Mr. Morinville concludes by arguing that RALIA would take us back in time to a patent system that existed earlier in U.S. history. This is not accurate.

For most of our nation’s history, patent cases were tried before a judge—as recently as 1978, over 90% of patent trials were bench trials.

The current chaos is the product of two factors. First, a pair of Warren-era decisions allowed plaintiffs to demand jury trials in complex civil cases, including patent infringement actions. The other factor is the rise of the patent magnet jurisdictions, in which judges advertise for patent cases and recruit plaintiffs to file before them. This combination, along with a routine disregard for Rule 702, has made it possible to seek outsized awards for invalid patents.

What has kept the system in balance in recent years is the development of post-issuance review at the USPTO. In many cases, this alone provides a meaningful check on assertions of invalid patents. By proposing to abolish such review, RALIA would create a legal nightmare that has no precedent in U.S. history.

If US Inventor wants to go back to a time of a better patent system, it should support the USPTO’s current initiative to develop more rigorous examination procedures. We also need to reform the culture of patent prosecution. During the last two decades, the fees for preparing patent applications have gone down in real terms.

We need to return to a system in which experienced attorneys have adequate time to review an application, and in which a prior-art search is a routine part of prosecution. Under the USPTO’s policies, if the relevant art was considered during examination, the patent is largely insulated against that art in later PTAB proceedings. This is the proper path to creating gold-plated patents.

Of all the patents with invalidated claims that U.S. Inventor cites on its website, how many had the relevant prior art presented to the examiner during prosecution?  I would bet few if any.

What US Inventor is advocating in RALIA would not create strong patents—it would simply insulate invalid patents from scrutiny. In doing so, it would hobble U.S. chipmakers and other manufacturers and make the United States technologically dependent on China and other foreign countries.

RALIA is not a path to restoring past glory. It is a prescription for economic suicide.


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

15 comments so far.

  • [Avatar for David Lewis]
    David Lewis
    January 8, 2023 12:32 am

    You seem to essentially be taking the position that making it harder to get a patent makes a patent system stronger. Following that logic to its absurd conclusion, just invalidate all patents and then you’ll really have a strong patent system.

    Making it harder to get a patent makes it harder to protect inventions and weaker patent system.

  • [Avatar for Steve Riley]
    Steve Riley
    January 6, 2023 05:59 pm

    I no longer file patents in the US. This is not good for the US.

    Why is this not good for the U.S.? Do you still file patents outside the U.S.?

    If you are disclosing inventions to the world (by filing in foreign jurisdictions) but not in the U.S., all that means is that U.S. consumers get the benefit of your invention without having to pay the price associated with patents. That would actually be a benefit to the U.S.

    If you mean that you no longer file U.S. patents because you no longer invent–well, that is a detriment. That would mean, however, that you no longer file patents anywhere. It would also mean that you could just have said “not good”–full stop–instead of “not good for the US.”

  • [Avatar for Robert Grantham]
    Robert Grantham
    January 6, 2023 11:28 am


    Look at your own words.

    Molly’s patents actually reduce the range of movement of the Wolf patent

    “”…reduce the range of movement” of the Wolf patent”, is by definition an improvement over Wolf. Your words describe the improvement.

    Your thoughtful analysis does not bear on anything I said. Had the examiner found the Wolf reference it would not have been available to apply against Molly; plain fact. The secondary references in Molly’s case are irrelevant absent the Wolf reference. Hindsight sight bias has nothing to do with my comments or the Wolf reference standing alone.

    Hindsight bias requires a combination of references which I do not address. It does no one any good especially independent inventors to insult allies. Are you seeing a boogy-man where there isn ‘t one?

    The US patent system has an intractable evidence problem, not reflected in any other branch of law, and IPRs prove that.

  • [Avatar for D.T.]
    January 5, 2023 03:34 pm

    @ Robert Grantham, you are completely wrong about Molly’s patents. They actually are not an improvement over Wolf. Molly’s patents actually reduce the range of movement of the Wolf patent because it is created with one specific goal in mind. Speed.

    I beg you to read my previous comment in this thread and then go though the patents and read the facts.

    Oh, I forgot your mind is also biased by hindsight by now.

  • [Avatar for David Breed]
    David Breed
    January 5, 2023 01:18 pm

    I have ~500 US patents. 11 have been reviewed by the PTAB. All 11 were invalidated. My patent portfolio value went from hundreds of millions of dollars to ~0 because of the PTAB. I no longer file patents in the US. This is not good for the US.


  • [Avatar for Robert Grantham]
    Robert Grantham
    January 5, 2023 01:04 pm

    Joe says “…how many (USI inventors) had the relevant prior art presented to the examiner during prosecution? I would bet few if any.

    On this point Joe is correct. However Joe doesn’t address the fact that it is the PTOs legal responsibility to identify the evidence. The very existence of PTAB is itself overwhelming evidence that the PTO issues invalid patents en masse.

    Joe is also correct about the Jump Rope patent. The primary reference against Molly is the Wolf reference DE2641383. When comparing the drawings, this reference is superior to all nine cited during prosecution. Molly’s patent was an improvement over Wolf. Without knowledge of Wolf, patent claims were written and allowed. Without knowledge of Wolf, Molly’s claims was vulnerable. Had Wolf been present during examination, the claims would have been worded differently and she would still have a patent.

    Sadly, Molly and her attorney did everything right. She was unjustly punished because she believed the PTO would do a high quality through search to support her application. She is a victim of PTO standard operating procedure.

    Joe comments suggests that the applicant do more prior art wise. Since Joe was around during the AIA debates I am sure he is aware of Applicant Incentives and the legislation in which that idea was included. The quality of patents issued under the Accelerated Exam program where private sector searchers produced the art used during prosecution demonstrates the efficacy of incentivizing applicants to hire non-government experts to perform this critical function.

    Further Joe mentions Gold Plated Patents. That might be a good idea but not if the public has to depend on the PTO to find the evidence.

  • [Avatar for Lab Jedor]
    Lab Jedor
    January 4, 2023 10:45 pm

    As if large incumbents will be the saviors of our economy, despite our recorded history on the role of independent inventors in American ingenuity. Kodak, Lucent,…? (plus dozens and dozens more).

    As to the role of “foreign companies.” The original patent in this case was owned by Philips, a Dutch company and was transferred to NXP a Dutch Philips spin-off, which acquired Freescale, an American company. Ultimately NXP sold the patent, it seems. I cannot see the difference between an American chip company or a Dutch company owning and asserting a patent, v. VLSI doing the same. Would Mr. Matal more approve of NXP or Freescale suing Intel? I don’t think so.

    The article seems to be driven by a wish to advocate for Intel. Because $1 Billion in damages is a lot of money. As Curious noted, Intel seems to have dropped the ball in this. Probably hoping/expecting that the Bureaucracy would favor the Incumbent over a patent owner as it usually does. Not this time it appears.

    Ideological arguments (“protect us from China”) now have to be put forward as in the above article to salvage this case for Intel or to prepare in a next round of patent legislation for making infringement even easier.

    The day is not far that allegations will be made that the American independent inventor is a threat to innovation.

  • [Avatar for Realist]
    January 4, 2023 07:32 pm

    That bill has a better chance of being elected House Speaker than ever seeing the light of day.

    Give it a rest.

  • [Avatar for Jacek]
    January 4, 2023 06:49 pm

    One inventor’s recent experience with USPTO. The application was denied and denied again because somehow as the previous art examiner used excerpts from the VERY SAME application.

    The examiner was processing and not reading subsequent responses.
    After finally pointing to the examiner this fact, the application was allowed with all claims.
    How many applications are processed and denied without anybody reading them?

  • [Avatar for Jacek]
    January 4, 2023 06:33 pm

    Everything is obvious AFTER is Disclosed.

    If it is obvious before it is disclosed we would not need
    Patent System so appreciated lately around the World especially in CHINA.

    All this lawyers talking about technology they have no clue about.
    Their discussion is about semantics not the real working stuff.. Otherwise why we have so often clear the way your lawyer is thinking about our technology when he/she is writing patent application.
    He/she simply is trying to translate your work in to another Reality.
    Interesting would be to task “specialist” performing so graciously up front of PTAB with solving a technological problem and see the outcome.
    Obviously it would be a disaster, Obviously.

  • [Avatar for Molly Metz]
    Molly Metz
    January 4, 2023 06:03 pm

    Hi Joe. Molly Metz here, I am the Jump Rope Inventor you mentioned in your article.

    Can you please answer and explain to your readers:

    Why didn’t anyone else make my jump rope invention before me?


    Why did my jump rope invention turn the industry on?

  • [Avatar for Curious]
    January 4, 2023 06:01 pm

    We also need to reform the culture of patent prosecution. During the last two decades, the fees for preparing patent applications have gone down in real terms.
    So you are saying making patent protection more available to the masses is a bad thing?

    The wording of Khare isn’t identical to that of the ’983 patent, but the concept is the same: when requesting access to memory, include in the request either an indication whether it “is to be performed in a sequential order” (’983 patent); or the “rules by which a request is allowed to be processed.” (Khare)
    Not the same. Then again, I have an engineering degree and have prosecuted well over a 1000 patent applications (probably close to 2K now), which should put me in a better position to understand the technology (and terminology) than someone with a degree in public policy and English and who is unqualified to sit for the patent bar.

    We need to return to a system in which experienced attorneys have adequate time to review an application, and in which a prior-art search is a routine part of prosecution.
    Attorneys review an application? Who/what are you talking about? Examiners are not necessarily attorneys. Patent Agents aren’t necessarily attorneys.

    As for a prior art search prior to filing, that is typical by many large clients, but it is not required. The entity best equipped to perform prior art searches is the USPTO — not applicants. As far as I know, the USPTO performs a prior art search on all applications. Consequently, prior art searches have always been a routine part of examination.

    Regardless, if Intel thought they had a great argument, they could have filed an ex parte reexamination based upon the prior art they found. They didn’t. My guess is that their attorneys wanted more say into the process than what is available during ex parte reexamination. That’s a strategic decision on their part.

    The PTAB is Doing High-Quality Work
    When invalidating patents is your quality measure, then yes, they are doing quality work. However, the APJs at the PTAB are hardly the cream of the crop when it comes to patent attorneys. They get the law wrong very frequently, and they have inherent (institutional) biases towards invalidating patents.

    We also know that the courts in the patent magnet jurisdictions will exclude evidence of the plaintiff’s identity, allowing even a foreign patent-assertion fund to pass itself off as a domestic start-up company.
    Who the owner of the patent is doesn’t matter. It shouldn’t matter. Owners of U.S. Patents have just as much rights in those patents regardless of whether they are a sole inventor from Houston Texas or a conglomerate from China.

    I could go on and on about the drivel written here, but I’ve got things to do.

  • [Avatar for Anonymous]
    January 4, 2023 01:12 pm

    Denying inventors access to a jury trial is economic suicide, Mr. Matal.

    Matal is now on record as a jury denier. He is telling you that he and his big government bureaucrats are smarter than you lowly, common jurors and better able to pick winners and losers as a matter of policy.

    I disagree. Juries are the foundation of the American legal system. Actual testimony and cross examination works. Juries work, and they administer justice better than your patent death squads. Choosing bureaucracies over juries is a losing proposition, it is un-American, and it runs against constitutional principles.

    Regarding preferring domestic companies to foreign companies, that is something worth debating and creating legislation to address, but the solution is not to deny jury trials when a big company is the infringer. The goal of the patent system is not to consolidate power in the largest companies. Apple and Amazon as infringers are just as bad, or worse, than Chinese companies as infringers.

    The right to invent cannot require that one waive a right to trial by jury. It is time to return to constitutional principles.

    Mr. Matal, please stop being a jury denier.

  • [Avatar for D. T.]
    D. T.
    January 4, 2023 12:33 pm

    Mr. Matal,

    First of all the ‘809 patent is not the Coulter Ventures jump rope patent. The patent owner of 7789809 is Molly Metz. 

    I would urge you to actually read the patents in this case. You would then understand that te whole purpose of the primary reference Wolf is to prevent the exact same “problems” that Petitioner Coulter Ventures uses as motivation to combine. PTAB did not see this, in my opinion and based on the multiple errors and mistakes they made, I have to believe PTAB, just like you, did not take the time to read the actual references in this case.

    If you would go further and actually read the ‘809 Patent, you would in the description and also in Fig.10 find that an “aperture” without a swivel joint allows for the exact same functions, swiveling and pivoting of the cable. The use of a swivel joint is not a requirement to fix the fabricated “problem” Coulter Ventures claims that Wolf has.

    So in your opinion, not reading the references, and “copy/pasting” from a paid expert into a Final Written Decision is “The PTAB doing high-quality work? 

    The only things obvious in the ‘809 case is that Petitioner’s theory, claiming one needs a swivel joint to prevent winding of the cord, is a hindsight based, retro-engineered theory, and the PTAB did indeed a great job getting biased by hindsight.

    I do not have a Ph.D. in any kind of engineering, nor am I a patent attorney, but have read the patents and the case, and I’m able to understand that it seems J.D.’s, B.A.’s and Ph.D.’s don’t really matter, as the above mentioned has been completely missed, or ignored.

  • [Avatar for Randy Landreneau]
    Randy Landreneau
    January 4, 2023 10:49 am

    Joe, I think even you would have a hard time claiming that the vast majority of those “skilled in the art” are not seeking to make a profit. There is a constant desire among the “skilled” to come up with a product that will sell in a big way. What about the situation, then, where one individual discovers a combination of previously known elements, a combination never utilized before, that then becomes the standard for the industry. I’m talking about a combination of previously known elements that never existed together in a product, but that now discovered, make up the product of choice. Let’s add that the “previously known elements” were known to those “skilled in the art” for decades or more before the present inventor discovered the winning combination.

    I’m describing Molly Metz’s jump rope technology that you refer to. Prior to her inventing it, it didn’t exist on the market. Now, approximately 80% of the jump ropes used for training worldwide use what she discovered. I’m describing David Furry’s Leak Survey patent that you refer to. His was a vast improvement for toxic gas leak detection. The Texas EPA awarded him and stated that his discovery lowered the level of ethylene in the air in Houston by 60 percent. David’s discovery is the industry standard now. Another is Dr. Troy Norred’s patent on what is now the standard procedure for heart valve replacement, a discovery that has now saved millions of lives and is a multi-billion dollar industry. In all cases, a large entity pretended to want to licence the technologies and then invalidated the patents using the PTAB.

    Joe, you indicate that these inventions are obvious. Then why didn’t anyone else discover them much, much sooner. It is because they weren’t obvious. It is breath-taking that, in America, inventors with such valuable discoveries have been so harmed. It is truly un-American that any inventor who discovers and patents something truly valuable today will almost undoubtedly face an administrative attack on the validity of the patent and lose any rights to the discovery.