Posts Tagged: "Patent Trial and Appeal Board"

What is a bad patent? Congress has established the requirements for obtaining a patent. The patent office grants a patent to applicants when they meet those requirements. It is simple. No trolls involved. If there are bad patents, then either the law is bad, or the patent office is not following the law when they grant the patents. Is the patent office issuing patents that do not meet the requirements set forth by Congress in the Patent Act? Or is the Patent Act too generous in setting forth the conditions for granting a patent?

On Wednesday, October 25th, the Cambridge, MA-based medical research center The Broad Institute filed a brief with the Court of Appeals for the Federal Circuit in response to an appeal filed by the University of California stemming from patent interference proceedings playing out at the Patent Trial and Appeal Board (PTAB). The Broad Institute’s filing is the latest salvo in a patent battle which has played out between developers of a gene editing technology, which could prove to be very important to the future of fighting disease in humans.

Of the 1,582 patents with a final written decision, 1,343 were found to have defects by the PTAB. That is an 85% defect rate. Only 239 patents were affirmed to be fully compliant with the statutes by the PTAB. Yet the Office of Patent Quality Assurance (OPQA) claims a 6-8% defect rate… 263 patents were found valid in full and fair trials in a court of law and also tried in the shortcut infringer-biased PTAB. Only 63 of them got the same results in both venues. The other 200 the PTAB came to a different conclusion. If the courts are correct then the PTAB is wrong 76% of the time.

The TC Heartland decision follows the trend of eroding patent holder rights due to the potential for infringers to more easily move the lawsuit to a more favorable forum and in some cases have the issues of infringement and discovery for same stayed for a year or more.  As patents and mechanisms to enforce patents become weaker, the high-tech economy of Northern California will begin to diminish as foreign companies encounter fewer obstacles in their way to compete against companies with weaker IP rights… Because so much hinges on a stay motion in modern patent litigation cases, this predominant statistic influences where plaintiffs should consider filing their patent complaint.

U.S. Inventor, the nationwide inventor advocacy organization representing over 13,000 members, including, individual inventors, university research institutions, patent holders and intellectual property dependent start-up businesses, today announced that its members will stage a protest in front of the U.S. Supreme Court on November 27th during oral arguments in the case of Oil States Energy Services, LLC v Greene’s Energy Group, LLC.

Only Article III courts can provide a fair, neutral and unbiased forum for assessment of patent validity. For over two hundred years, patent validity, patent infringement and patent damages have been consolidated to be heard in federal district courts. Federal courts supply impartial judges that are immune from influence by the executive or legislative branches. Furthermore, federal courts supply jury trials that enable a fair application of due process rights in the hearing of a patent dispute. Patent validity review is only a single component of patent infringement cases and it is efficient to have this component of the matter reviewed in a single matter.

Many district courts have interpreted Alice as authorizing invalidation of issued patents as “abstract” based solely on the pleadings. They have done so even where the invalidation rests on resolution of a disputed issue of fact or of claim construction or scope. In short, since Alice, the Federal Circuit has done nothing to clear up the district courts’ confusion, but instead has affirmed pleading invalidations more than 90 percent of the time. Nothing in Alice, or Mayo for that matter, authorized these “pleadings invalidations.” Whether you agree with the decisions or not, both Alice and Mayo, were decided on summary judgment.

The industry reaction to Aqua Products v. Matal has been swift. In IPWatchdog’s Industry Roundup blog post, there was broad acclaim. However, for those involved with post-grant proceedings before the AIA, however, Aqua Products at most means a return to the amending regime allowed under the previous inter partes post-grant procedure, inter partes reexaminations. Given that IPRs were explicitly designed to extend and amend the previous inter partes reexamination procedures, a comparison of amendment practice under the two procedures makes a number of lessons clear.

The PTO systematically administers a collection of procedures in IPRs to unduly harm patent holders and benefit big tech company infringers. The data show that the plain result of PTAB procedures appears to benefit infringers with a clear bias against patent holders. PTAB cancels challenged claims in 76% of instituted patent reviews, a rate that is 2 ½ times greater than in the federal district courts. The reason is that PTAB employs a set of procedures that stacks the deck against patent holders. There is clear bias at every step of the process of reviewing patent validity. However, there are several components of PTAB procedures that are particularly onerous and problematic and that go to the heart of the due process issues that infect IPRs.

The PTAB invalidation procedure violates due process because it drags patent owners into endless assaults by patent infringers and patent thieves. Due process requires compliance with standard notions of fair play and justice, which is lacking at the PTAB. The PTAB invalidation process does not afford due process because it allows an unlimited number of infringers and patent thieves to shoot down a patent in a never ending series of challenges. If one challenge misses the target, the second and the third challenge will hit it, or ultimately it will be hit by the Nth challenger. When patents can be attacked repeatedly in such a bizarre way, the patent reward of an exclusive right is a meaningless promise.

In Owens Corning v. Fast Felt Corp, Fast Felt sued Owens Corning for infringement, and Owens Corning filed a petition with the PTO seeking inter partes review of claims 1, 2, 4, 6, and 7. All of the challenged claims contain the term “roofing or building cover material.” Owens Corning argued that the claims are obvious over Lassiter, Hefele, and Eaton. The Board concluded that Owens Corning failed to show obviousness of any of the challenged claims… While the preferred embodiment of a claim might focus on a particular element of the claim, this is not enough to narrow the claim scope of the IPR. The Board must still give the claim its broadest reasonable interpretation in light of the specification. Where the record and a correct claim construction support only one result, reversal is warranted, without need for remand.

In Organik Kimya AS v. Rohm & Haas Co., Organik Kimya AS (“Organik”) appealed the decisions of the Patent Trial and Appeal Board (“Board”) in two related inter partes review (“IPR”) proceedings for which Organik is the Petitioner. The Patent Owner is Rohm & Haas Co. The Board sustained the patentability of the challenged claims, Organik appeals… When confronted with expert experiments and testimony, practitioners must provide sufficient evidence and argument to negate and outweigh the testimony – unsupported critiques of the expert’s methodology and challenges of relevance are insufficient.

Due process is an essential condition for a fair proceeding involving a matter in which property rights are in dispute. Unfortunately, there is no interpretation of PTAB procedures under which due process applies. PTAB omits due process and is fundamentally unfair. As a consequence, the PTAB conclusions, and the structure and process of PTAB determinations, are unconstitutional.

The argument that patents are private rights is supported by over two centuries of jurisprudence. Patent rights derive from Article I, section 8, clause 8 of the U.S. Constitution, which empowers Congress to promote progress by creating laws involving patents and copyrights. The patent bargain exchanges disclosure of new and useful inventions for a limited term exclusive right. The public benefits from the patent bargain in two ways. First, the disclosure enables others to build on the invention. Second, after a twenty year period, the public receives the benefits of the invention for free as the rights flow to the public domain. The patent bargain stimulates incentives to invent, to invest in innovation and to take ex ante risks.