10.08.18

Gemini version available ♊︎

In Spite of Campaigns Against It, the Patent Trial and Appeal Board (PTAB) Squashes Software Patents by the Hundreds Per Month, Patent Maximalists Still Try to Stop It

Posted in America, Courtroom, Law, Patents at 12:36 am by Dr. Roy Schestowitz

A reject bin

Summary: Patent Trial and Appeal Board (PTAB) inter partes reviews (IPRs) achieve exactly what they were set out to do; those who view patent quality as a foe, however, aren’t happy and they still try to undermine PTAB IPRs by any means possible (or at least slow them down considerably)

PTAB IPRs have greatly contributed to much-needed decline/demise of patent litigation in the US. The USPTO can grant all the patents it wants, but without legal certainty (associated with such newly-granted patents) there will be no lawsuits.

PTAB does not invalidate every patent it’s petitioned to look into. Days ago there was a press release [1, 2] about an IPR from famed maker of ‘torture devices’, Axon (better — or worse — known as “TASER”). To quote:

In this latest instance, Axon asked the Patent Office to invalidate Digital’s U.S. Patent No. 9,712,730 (“the ‘730 Patent”), which is not currently involved in any active litigation. Axon targeted the ‘730 Patent for unknown reasons. On October 1, 2018, the Patent Office rejected Axon’s latest challenge finding that “[u]pon consideration of [Axon’s] Petition and [Digital’s] Preliminary Response, we conclude that the information presented in the Petition does not demonstrate that it is more likely than not at least one of the challenged claims is unpatentable. Accordingly, we do not institute a post-grant review.”

To date, Axon has filed an ex parte reexamination challenge, four different inter partes review (IPR) challenges, and one post-grant review challenge against various Digital Ally law enforcement patents. None were successful.

So PTAB isn’t quite the “death squad” patent extremists have called it. As IAM put it some days ago: [via]

Further data has emerged showing that the Patent Trial and Appeal Board (PTAB) is far from the “death squad” that many in the US life sciences industries fear that it may be becoming.

A recent study by Harvard University’s Jonathan J Darrow and Aaron Kesselheim, and the University of Calgary’s Reed F. Beall – The Generic Drug Industry Embraces a Faster, Cheaper Pathway for Challenging Patents – analyses data on inter partes review proceedings since their inception, as well as information from the FDA’s Orange Book about the drugs whose patents have been the subject to administrative challenges.

Taking note of the Hatch-Waxman process (yes, Orrin Hatch), the CCIA’s Josh Landau wrote the following:

The first study was conducted by a pair of Harvard Medical School professors, as well as a professor at the University of Calgary. The Harvard study examined all pharmaceutical IPRs through April 2017.

The second study, by a recent Northwestern J.D., extended its dataset to all pharmaceutical IPRs over a 6 year period from March 2012 to March 2018.

Both drew similar conclusions regarding the success rate of pharmaceutical IPRs. Pharmaceutical IPRs are relatively rare, around 5% of all IPRs, and similarly to non-pharmaceutical patents, pharmaceutical IPRs usually relate to patents that are also being litigated in district court.

Looking beyond their frequency, pharmaceutical IPRs are quite different from the average IPR. While pharmaceutical IPRs are instituted at roughly similar rates to other IPRs, they are significantly less likely to find some or all claims invalid if they are instituted. Of the 134 distinct drugs (covered by 198 distinct patents) challenged in the Harvard study, only 44 drugs received at least one final written decision. And of those 44 drugs, only 18 (13%) had all of their claims invalidated—and even then, all but 2 of those drugs still had other patents protecting the drug.

[...]

Given that pharmaceutical IPRs are rare and generally less successful than other IPRs, the notion that the IPR system represents a serious threat to the Hatch-Waxman balance between new and generic drugs does not appear to be correct.

Instead, the IPR system appears to be mostly used to trim back the scope of follow-on patents that attempt to extend the original drug monopoly in order to make sure generics can enter once that original patent expires. This would appear to be completely consistent with the goals of Hatch-Waxman—ensuring that the original innovation is protected, but allowing for generics to efficiently provide that innovation after the original period of protection ends.

Given these recent studies, as well as others (such as the PTO’s Orange Book study), it does not appear to be necessary to modify the IPR process to accommodate the Hatch-Waxman process.

So, taking Hatch-Waxman (a process) into account, IPRs aren’t a reason for panic. Far from it. Even Watchtroll wrote about it. An article by Tulip Mahaseth was outlined by: “Out of the 230 Orange Book patents challenged in IPR proceedings, 90.4% (208) of these patents were also challenged in Hatch-Waxman litigation…”

We’re supposed to think, based on patent extremists, that PTAB just blindly squashes patents, but that’s far from true. It’s just that weak/weaker/weakest patents are being subjected to IPRs/challenges. That includes a lot of software patents.

“Number of abstract idea rejections decided at PTAB for August 2018 higher than ever,” Anticipat acknowledged some days ago, but this anti-PTAB site then looks for some spin on these facts. Just because software patents are being crushed in the US, partly owing to PTAB, doesn’t mean PTAB fails to do its job. Anticipat is then boosting talking points from Iancu's notorious speech, which was targeted at patent extremists (IPO). The bottom line is this however: “The PTAB decided 209 abstract idea rejections.” (in August alone)

Janal Kalis, a PTAB-hostile patent attorney (apparently retired), took note of the exception when he wrote: “The PTAB Reversed an Examiner’s 101 Rejection of Claims in an Oracle Patent Application: https://anticipat.com/pdf/2018-09-14_13315665_181761.pdf …”

Those are rare. PTAB usually agrees with examiners on rejections or disagrees with them on intent to grant.

“Capella Photonics Challenges Federal Circuit Practice of Judgments Without Opinions,” Watchtroll said last week. Well, PTAB slowdown by this method or in this fashion is an old trick. Rob Sterne, Jason D. Eisenberg, William H. Milliken and Tyler J. Dutton said: “The underlying Federal Circuit appeal arose from multiple Inter Partes Reviews of two Capella patents on fiber-optic communications systems.”

This slowdown was attempted by Dennis Crouch last year and the year before that. We occasionally mention that. He too resumes with this tactic, having published the following a few days ago:

LG v. Iancu, stems from an obviousness determination by the PTAB in its IPR of LG’s U.S. Patent No. 7,664,971. On appeal, LG argued that the PTAB had failed to explain its decision as required by the Administrative Procedures Act. In a silent commentary on the current state of patent law, the Federal Circuit has affirmed the PTAB decision without issuing any opinion or explanation for judgment.

The ’971 patent claims both an apparatus and method for controlling power to the cores of a multi-core processor. In its decision, the board gave an explanation for rejecting claim 1 (the apparatus), but not for the method claim 9.

Like the SAS (versus Iancu) case in SCOTUS, the goal is to complicate the rejection process and thus slow it down. The truth of the matter is, it takes a lot of time to prepare written rejections (or acceptance of challenges). They just need to be practical. Lawyers get to bill (charge) more when the process is further complicated, so it’s not hard to see their motivation as well. Yesterday they advertised this:

LexisNexis will be offering a CLE event on “How to Analyze Federal Circuit Opinions on Patent Law” on October 24, 2018 from 3:30 to 4:30 pm (ET) at The National Press Club in Washington, DC. Donald Chisum, the author of Chisum on Patents, will discuss how to analyze the opinions of the Court of Appeals for the Federal Circuit to assess their impact on patent law and practice, and will illustrate how to “deconstruct” sometimes opaque opinions using recent cases from 2018 as examples.

Even just to analyse written decisions they’d charge their clients. So decisions without opinion/text is to them (law firms) a threat. They’re trying to defang PTAB by all means possible, even still latching onto the RPX case that by extension impacts Unified Patents. “RPX (CVSG mentioned above) is the only case from the initial September conference that was not denied on the first round,” wrote Crouch the other day. Well, sadly for him, the Supreme Court won’t change patent scope any time soon and it probably won’t look into PTAB matters, either, having already decided on Oil States and SAS this past summer. Based on the list of upcoming patent cases, Section 101 is safe. Also mind the fact that PTAB too is safe, bar Smartflash LLC v Samsung Electronics America (although it doesn’t put IPRs themselves at risk/peril).

Crouch, still desperate to change things, brings up Berkheimer v HP (not much has changed since the case was decided at the Federal Circuit except Iancu’s empty rhetoric that lacks implications/ramifications for actual courts). Crouch’s promotion for briefs and public support (magnifying the impact of the case, irrespective of the outcome) is quite revealing, bearing his motivations in mind. Dennis Crouch is still trying to water down Section 101 so as to promote software patents for his beloved trolls and bullies:

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) is in my list of top-ten patent cases for 2018. In the decision, Judge Moore vacated a lower court summary judgment ruling on eligibility — holding that a “genuine issue of material fact” as to whether the claims are directed toward a transformative inventive concept rather than merely a “well-understood, routine, and conventional” application of an abstract idea. Thus, the decision gave some amount of respect to the traditional procedures associated with providing facts. Practically, this means that is should be more difficult to challenge patent eligibility on the pleadings or on summary judgment. Likewise, it means that examiners must do a bit more work to ‘prove’ the lack of eligibility.

Charles R. Macedo, Brian Comack, Christopher Lisiewski and James Howard (Watchtroll) have meanwhile complained about PTAB again; it’s about limiting IPR ‘access’ or ‘scope’ or “Appeal by a Non-defendant Petitioner in an IPR” (related to the RPX case above). To quote:

On Tuesday, September 18, 2018, Askeladden L.L.C. (“Askeladden”) filed an amicus brief supporting Appellant’s Petition for Rehearing and Rehearing En Banc in JTEKT Corp. v. GKN Automotive Ltd., No. 2017-1828 (Fed. Cir. 2018). See Patent Quality Initiative’s website for the full brief. This case raises the important question of whether the Court of Appeals for the Federal Circuit (“Federal Circuit”) can refuse to hear an appeal by a non-defendant petitioner from an adverse final written decision in an inter partes review (“IPR”) proceeding, on the basis of a lack of a patent-inflicted injury-in-fact, when Congress has statutorily created the right for “dissatisfied” parties to appeal to the Federal Circuit.

So to summarise, PTAB squashes software patents without negatively impacting other domains (contrary to mythology). Attempts to slow PTAB down include demonisation to that effect, claims that IPRs cannot be brought forth by the most prolific petitioners, attempts to force every decision to be accompanied with lots of texts and exhaustive check of all claims. And if that’s not enough, the challenges against Section 101 itself have not stopped. Those who profit from patent litigation are scrambling to secure software patents.

Share in other sites/networks: These icons link to social bookmarking sites where readers can share and discover new web pages.
  • Reddit
  • email

Decor ᶃ Gemini Space

Below is a Web proxy. We recommend getting a Gemini client/browser.

Black/white/grey bullet button This post is also available in Gemini over at this address (requires a Gemini client/browser to open).

Decor ✐ Cross-references

Black/white/grey bullet button Pages that cross-reference this one, if any exist, are listed below or will be listed below over time.

Decor ▢ Respond and Discuss

Black/white/grey bullet button If you liked this post, consider subscribing to the RSS feed or join us now at the IRC channels.

DecorWhat Else is New


  1. IRC Proceedings: Wednesday, February 08, 2023

    IRC logs for Wednesday, February 08, 2023



  2. Microsoft Thought Police

    Reprinted with permission from Ryan



  3. Links 08/02/2023: GNOME Smoother Scrolling of Text Views

    Links for the day



  4. Links 08/02/2023: Transmission 4.0.0 Released and Mass Layoffs at Zoom

    Links for the day



  5. IRC Proceedings: Tuesday, February 07, 2023

    IRC logs for Tuesday, February 07, 2023



  6. When the Pension Vanishes

    Today we commenced a multi-part mini-series about pensions and what happens when they suddenly vanish and nobody is willing to explain where all the money went



  7. Sirius 'Open Source' Pensiongate: An Introduction

    The Sirius ‘Open Source’ series continues in the form of a mini-series about pensions; it’s part of an ongoing investigation of a deep mystery that impacts people who left the company quite a long time ago and some of the lessons herein are applicable to any worker with a pension (at times of financial uncertainties)



  8. Links 07/02/2023: Endless OS 5.0 and Voice.AI GPL Violations

    Links for the day



  9. No Doubt Microsoft Unleashed Another 'Tay', Spreading Bigotry Under the Guise of Hey Hi (AI)

    Reprinted with permission from Ryan



  10. Links 07/02/2023: Fedora 39 Development Plans Outlines

    Links for the day



  11. IRC Proceedings: Monday, February 06, 2023

    IRC logs for Monday, February 06, 2023



  12. Links 06/02/2023: Escuelas Linux 8.0 and Many Political Issues

    Links for the day



  13. Links 06/02/2023: Sparky 6.6 and IPFire 2.27 – Core Update 173

    Links for the day



  14. Taking Back Control or Seizing Autonomy Over the News Cycle (Informing People, Culling the Marketing)





  15. Reality Versus Fiction: EPO Insiders Versus EPO Web Site and UPC 'Churnalists'

    The "official" sources of the European Patent Office (EPO), as well as the sedated "media" that the EPO is bribing for further bias, cannot tell the truth about this very large institution; for proper examination of Europe's largest patent office one must pursue the interpretation by longtime veterans and insiders, who are increasingly upset and abused (they're being pressured to grant patents in violation of the charter of the EPO)



  16. Links 06/02/2023: Linux 6.2 RC7 and Fatal Earthquake

    Links for the day



  17. IRC Proceedings: Sunday, February 05, 2023

    IRC logs for Sunday, February 05, 2023



  18. Links 05/02/2023: Wayland in Bookworm and xvidtune 1.0.4

    Links for the day



  19. Links 05/02/2023: Pakistan Blocks Wikipedia, Musharraf Dies

    Links for the day



  20. IRC Proceedings: Saturday, February 04, 2023

    IRC logs for Saturday, February 04, 2023



  21. Links 04/02/2023: FOSDEM Happening and Ken Thompson in SoCal Linux Expo

    Links for the day



  22. 2023 is the Year Taxpayers' Money Goes to War and Energy Subsidies, Not Tech

    Now that a lot of powerful and omnipresent ‘tech’ (spying and policing) companies are rotting away we have golden opportunities to bring about positive change and maybe even recruit technical people for good causes



  23. Getting Back to Productive Computer Systems Would Benefit Public Health and Not Just Boost Productivity

    “Smartphoneshame” (shaming an unhealthy culture of obsession with “apps”) would potentially bring about a better, more sociable society with fewer mental health crises and higher productivity levels



  24. Links 04/02/2023: This Week in KDE and Many More Tech Layoffs

    Links for the day



  25. Dotcom Boom and Bust, Round 2

    The age of technology giants/monopolies devouring everything or military-funded (i.e. taxpayers-subsidised) surveillance/censorship tentacles, in effect privatised eyes of the state, may be ending; the United States can barely sustain that anymore and raising the debt ceiling won't solve that (buying time isn't the solution)



  26. Society Would Benefit From a Smartphoneshame Movement

    In a society plagued by blackmail, surveillance and frivolous lawsuits it is important to reconsider the notion of “smart” phone ownership; these devices give potentially authoritarian companies and governments far too much power over people (in the EU they want to introduce new legislation that would, in effect, ban Free software if it enables true privacy)



  27. IRC Proceedings: Friday, February 03, 2023

    IRC logs for Friday, February 03, 2023



  28. IRC Proceedings: Thursday, February 02, 2023

    IRC logs for Thursday, February 02, 2023



  29. Links 03/02/2023: Proton 7.0-6 Released, ScummVM 2.7 Testing

    Links for the day



  30. Links 03/02/2023: OpenSSH 9.2 and OBS Studio 29.0.1

    Links for the day


RSS 64x64RSS Feed: subscribe to the RSS feed for regular updates

Home iconSite Wiki: You can improve this site by helping the extension of the site's content

Home iconSite Home: Background about the site and some key features in the front page

Chat iconIRC Channel: Come and chat with us in real time

Recent Posts