PTAB Reform: An Urgent Request on Behalf of Independent Inventors

By Josh Malone

Published by IPWatchdog

What follows is a letter on the topic of PTAB reform that will be sent to USPTO Director Andrei Iancu on Monday, May 14, 2018. The letter seeks urgent action on the Patent Trial and Appeal Board in order to bring balance to a process that has tormented inventors for the last 6 years. We already have over 100 signatures from patent owners, patent attorneys, investors and inventors. If you would like to sign onto this letter please visit http://100patentowners.org.

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The undersigned represent tens of thousands of independent inventors in a variety of capacities. We include inventors of patented products worth billions of dollars, inventors commercializing their inventions and others licensing their inventions, leaders of local and national inventor organizations with thousands of hours of public service encouraging and teaching inventors, widely published analysts, early stage investors, and attorneys who advocate for independent inventors. We are connected as inventors, patent owners, or counsel to ______ PTAB petitions, our harrowing direct observations and experience informing our recommendations herein. We are the startup economy that relies heavily on stable and predictable patent rights.

The implementation of the PTAB under the America Invents Act has severely destabilized our patent rights and that is now paralyzing our innovation culture and businesses. We hope that your increasing attention to this situation will go a long way toward restoring confidence in patent rights – the promised exclusivity in exchange for publicly disclosing our inventions so others can build upon them.  Stable and predictable patent rights provide often the only collateral we have to back investment to commercialize our inventions.

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LIVE UPDATE – the following comments have been received from signatories.

ITC higher bar is only available avenue including for > 50 US patents, many in production in the US and abroad.

Started application in my forties. I’m 65 this month. Our patent application is a meaningful contribution to healthcare budgeting.

The PTAB has seriously weakened the value of patents, and that has affected the willingness of inventors to file for patents.

Director Iancu; As an independent inventor, I hope you don’t let big companies who have billion of dollars to fight for the only assets that we have and we hope for in the beginning in order to start our businesses.

I have 8 utility patents all in reference to [a consumer product] representing an investment of 300k.  My business is a micro business, less than 100k per year, this given the 67 infringements in the market place and constant litigation since 2015, resulting now in two instituted petitions.  Had I known in 2010 through 2012 that there was going to be a court such as the PTAB, I would not have invested a single penny in a single patent, this having even successfully licensed the IPs while patent pending.  Instead, I have been litigating agains multiple billion dollar companies with yet other billion dollar companies having also infringed that I may never be able to pursue.  The PTAB is a killing field for patent and should be stopped.

Six of my own patents have been challenged at the PTAB over the last eight years.  In order to keep litigation expenses in check and licensing matters on track, I’ve had to disclaim and abandon hundreds of valid issued claims.  Most recently, I’ve been forced to defend against a petitioner entity that isn’t even a real party in interest.  Please address these issues, so that independent inventors can continue to invest in innovation in this country and know that they will be respected and justly treated with regards to their inventive contributions to our economy.

19 years of effort and vision erased when our patent rights were disabled. Small business has no chance these days.

In spite of the overwhelming evidence we presented, PTAB denied my petition and simply stamped NO to something which is a law of physics! WHAT TRIAL???

The extra cost and uncertainty associated with PTAB has decreased incentive to file patent applications.

The process cost a million dollars – we won overall … but there was no recourse against the source of these frivolous ex parte petitions. Attorneys fees should be at risk for those filing these with a sole intent to delay justice and to impair the inventor by burdening the inventor with these enormous additional costs.

I am a individual inventor and have just obtained my first patent. This matter concerns me a lot. Thank you for your consideration.

I am an individual inventor, and also work with start-up,and much larger corporate IP portfolios here in the San Francisco area. I fear the diminishing value of US patents may literally lead to our country’s downfall. I do not feel this is an exaggeration. Please help in any way you can within your powers.

I’m very worried about the current state and future of innovation in the USA.

CAFC Appeal … by Rule 36, despite legal errors committed by PTAB, which should have resulted in reversal  of PTAB’s obviousness rulings.

Entrepreneur and small business owner with three patents, with a fourth pending.

Personal letter submitted  in support of the proposed changes.

We must reverse the impact of the fictional character know as the “patent troll.”

Mr. Iancu, I can’t tell you how thrilled I was to have you come into the Inventor’s Groups of America (IGA) /UIA a few weeks ago. As a small inventor and holder of 4 patents, our worst nightmares have become real the last 5 or 6 years. While you spoke, I felt like our voices are finally being heard. Hoping and honestly praying that you can relieve some of the burdens on small inventor/patent holders until the laws can get changed. Living in [the Midwest] knowing that if someone infringes me from New York City, that I would have to leave my family and fight in NYC is just one of the many nightmares that are real. Thank you for being open to helping.

Can we eliminate the PTAB and IPR? No other country has these.

It boils down to this: since no rational large company will pay more than $200k (the cost of an IPR) to license an invention of a small inventor, why would the small inventor invest years of time and all out-of-pocket costs into an invention where license fees were more than $200K?  So, the IPRs have capped return on invention at $200K (until IPRs resolve). This also gives any bigger inventions to the large companies, to copy as fast as they can. In hindsight, this would have devastated licensed inventions from Edison’s (See http://edison.rutgers.edu/list.htm) to the thousands of small inventors since then who only had a single hit, but to them, a career-enabling one.

The IPRs were set up by the big Cos using lobbying, and their market caps have swelled since. They don’t need help.

It does not make any sense to take away property that does not belong to you scum bags in DC or Google, Facebook, etc. Our country and the entire world has benefited by our framers given our intellectual property to those deserving, the inventor! I’ve been busting my butt for over 30yrs on inventions. I’ve spent millions of dollars getting patents, developing products raising capital, suffering, sacrificing my life for you idiots to take this away! You all should be ashamed! Boo on you! You all must be Communist! Get out of our country and you all can go to hell!

[An infringer] filed 5 ipr’s against my 2 patents.  They were consolidated into the 2 ipr’s above.  There is no way a small inventor can afford this type of  litigation.

Needs to use Phillips standards, not BRI.  Patents should not be revoked by anything less than an Article III  court.

Viewing the VHC vs Apple mess is a nightmare.  I am certain you are aware of it.  This procedure is a disincentive to people working hard to create and see to fruition new ideas only to be stolen in broad daylight by much larger, predatory companies with larger amounts of capital.

We have patents that have experienced serial IPR attacks that have greatly diminished our ability and time to market our products hinged around those patents.  We feel that consideration should be given to the patent life for the time that has been robbed from them due to the abusive IPR process. We believe the patent life clock should be restarted from the day of the first IPR review. This would also act as a deterrent to frivolous reviews.

PTAB directly contradicts constitutional powers of Article III courts.  It’s killing small business and jobs creation in favor of  corporate BigCo.

My pending patents include software to save lives. Please change the “Abstract idea” ruling!

Also, in cases where trial institution is denied, rather than refunding the petitioner a portion of the petition fee, please consider awarding those funds to the patent owner who was damaged by having to defend its patent against a meritless petition.

28 IPR Petitions have been filed against [our patents] including two by Unified Patents on behalf of unidentified parties.

I have been involved with VHC … as an investor. After winning 4 court cases against Apple over those years, and their patents being found valid against Cisco during that time, one wonders when do you ever actually win ? This system is broken. it uses a different standard (Phillips vs. BRI), to evaluate validity. This kind of common sense could only happen in a government body looking to side politically to force an outcome and make it appear to be within the scope of the law. I could go on and on . I am … years young and have watched our government institutions become corrupt and it saddens me. The PTAB needs to be abolished.

As the manager of a fund that can go long or short, I am stunned that the PTO accepts institutions of IPRs brought by financial organizations like myself.  I believe that such attempts are a clear abuse of process.

Counsel for accused infringers are openly engaging in improper tactics to the detriment of patent owners.

15 minute hearing on a patent that took 3 years to get, just to be before ex google employees that knew nothing about fluid dynamics.   RIGGED PROCESS!!!  DESIGNED TO TERMINATE GOOD PATENTS AND KEEP THOSE FOR THE CONNECTED!  A SHAM!!!

Please stop the PTAB insanity with the ipr’s.  Unrelated parties or parties with hidden ownership/agendas should not be able to file ipr’s for companies to which they have no connection.

An administrative body should not have authority to overrule a court decision, particularly where the issue was tried to verdict and the validity of the patent was upheld.

The stacking of panels with a predicted outcome was/is unconscionable.  The patent system is a major player in the economic engine of the United States. Congratulations to Director Iancu who fully recognizes the system needs a revision, to protect this economic engine.

It is very disturbing to know that what the individual inventor has worked hard and paid much for can be stolen by thieves who lack any morals by robbing this country of the right for individuals to own intellectual property. Least we become a third world nation, this must stop. As article 1, section 8 states: The United States 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.”

Independent inventor holding 3 patents on my idea. Infringer using the threat of IPR’ing me on my own patented product. The threat to IPR me and my company feels like extortion. This company and my patents are all I have and now I have this to contend with. I need my patents to protect MY Intellectual Property not to be dragged into PTAB IPR review. I am not a patent troll- I cant afford to spend money doing the right thing by applying for utility patents and also going out and manufacturing my patented product idea. I have faced years of infringers abusing me and my IP. Now this? It is NOT FAIR!!

It is not right that a hedge funds can short a company stock and then easily attack its patents under PTAB provisions that the company must defend spending millions in legal fees.

Nuisance challenges are costly and distracting and have no place in businesses driven by scientific innovation and breakthroughs.  Hedge funds and generic drug company challenges to strong patent estates are particularly onerous and will slow medical breakthroughs.

The USPTO needs to recognize a more stringent standard during re-exams and IPR’s, ie. that of the CAFC.  Also, disallowing firms without “standing”, i.e. Hedge Funds.

Oh. I see. Better that the law offers no protection for a independent idea. That way, the individual can keep it a secret and if never funded take the revolutionary idea to the grave with them.

I am inventor of  about 100 patents. My patents are used in numerous  cellular phones, tablets and wireless products-and a significant number of licensees.  The PTAB  current procedures are devastating my  inventor spirit and have tremendous negative impact on my business. Unless there is a change in PTAB  (as stated in above letter) I will probably  have to abandon the business I have had for many years.

Please reset the balance to the American judicial system with regards to patents.  How can there be two simultaneous sets of judicial authority? Inventors need to be treated more honestly with fair, equitable and clearly delineated guidelines to achieving success.

The PTAB should consider a different standard of review for PGR  as compared to IPR. An IPR should be Phillips, and PGR should be BRI. A PGR is within one year of issuance, which means the patented has not relied much on the issuance.  More importantly, patent owners can reasonably prepare for invalidity in a PGR by filing a continuation application when the patent issues. Distinguishing between IPR and PGR gives patent owners and defendants each an opportunity to have the advantage in claim construction. Giving defendants this opportunity should strengthen the presumption of validity for patents that are unchallenged or survive a challenge.  In contrast, it is extremely unfair to invalidate a patent under a low standard 10 years after issuance when there is little the patentee can do about it and after relying on its validity and paying to maintain it.

My experience has been that the PTAB judges are not competent to handle these matters. I’ve been shocked by the poor quality and complete lack of rational thought in their work.

Simply put, high quality attorneys would never settle for a job as a PTAB judge. Therefore, you’re left with less qualified individuals who likely couldn’t make it work anywhere else. Do we really want such individuals to determine the fate of any patent?

The numbers don’t lie, the PTAB is in desperate need of adult supervision.

Please fix the Patent system before it is ruined. The PTAB is invalidating Patents at an alarming rate with calculated broadening techniques. Large Mega companies are using this created entity to crush the inventor.

BRI needs to be changed to m match the standards set forth by district court, as well as the uspto, when granting or defending patents.

PTAB enables patent thieves who have the massive resources to exploit this mockery of “court”. A “court” that lacks the fundamental protections that Americans have a right to expect from an Article III court, a real court of law.

PTAB’s use of BRI instead of common and ordinary claim construction as used in the courts is tantamount to a presumption of invalidity by the PTAB.  BRI only makes sense during examination when claims can be modified, the tendency to improperly apply  hindsight is minimized, and there is a presumption of invalidity.  Once granted a patent should be presumed valid.

[Our organization] represents small inventors in licensing their patents. Our clients have been the subjects of countless IPR abuses. Some of the most egregious once include allowing petitioners the second bite at the apple–filing petitions seriatim on the same patents using the same art essentially rearguing the same arguments they lost in the previous round.  No court would allow relitigating matters that the court has ruled on. PTAB should not allow petitioners to relitigate lost arguments in repetitive petitions.

PTAB judges should require consultation with patent examiners who are expert in the field of a challenged patent to make up for lack of experience of judges in each specific area. Challenged claims should be allowed to be amended by the inventor, consistent with the disclosure, to answer petitioner’s challenges.

We are now developing 5 products in China due to their better patent system.

Director Iancu, the very economic future of this great nation is at stake here. Please reform the  PTAB now; our innovation system cannot continue to be laid to waste by being subjected to the abuses of the current system.