The return of large patent infringement verdicts
Over the last several years we have seen the return of large patent infringement verdicts, and verdicts that have also enhanced damages for willful infringement. These cases have not yet made their way to a final resolution at the Federal Circuit, but in at least one high-profile matter the patents that were the subject of a $2 billion verdict are now being challenged at the PTAB. Since its inception, the PTAB has always been viewed by patent owners as a first hurdle to monetization, and now in the wake of the OpenSky saga – where Director Vidal allowed the IPR to continue despite being started for the purpose of extorting the patent owner – the PTAB is becoming a final blockade to monetization.
So: How is this landscape changing the way patent owners are evaluating and formulating assertion and monetization strategies?
How are patent litigation funders evaluating risks?
Is it better from a funders perspective to already have an IPR instituted?
When does an IPR look like too much of a risk? What size patent portfolio is necessary to begin to minimize the risk profile?
How do you pick which companies to target first with an assertion campaign?
In other words, how is the PTAB affecting assertion and monetization strategies circa 2022 and into 2023 One of the first tasks for counsel for the petitioner is to consider the grounds for invalidity, the number of references, and which references to use.
Like, would you ever consider including a reference disclosed in an IDS?
How many grounds for invalidity is too many grounds? How many references is too many?
How does estoppel factor into selection of grounds and/or references?
Should you use printed publications, or doesn’t it matter anymore?
With the death of Fintiv litigation teams feel more comfortable waiting longer to file inter partes review (IPR) challenges, which allows for more careful consideration and preparation of the petition, but not everything is easy for challengers after the demise of discretionary denials.
While it is early, and the sample size is small, one new issue facing petitioners since the death of discretionary denials seems to be an increase in denials as the result of insufficient motivation to combine. Notwithstanding, the problems facing petitioners, and the non-appealability of institution decisions, Director Vidal has recently suggested the possibility of an error review panel to review denials of institution.
So: What is the proper use and content for the expert declaration?
What should you include in the petition versus the expert declaration?
How much colour should you add to the expert declaration?
Is it appropriate to incorporate by reference from the declaration into the petition, and if so, what is the right balance?
Is there a downside to staking out a position on indefiniteness that may come back to bite you later during litigation, particularly when dealing with means plus function limitations?
These questions are facing petitioners now, both for the short-term and long-term.
My email to the “Patent Public Advisory Committee quarterly meeting” November 18 2021.
To all Concerned Interests:
I ask that you share this email with caring principals at this Patent Public Advisory Committee quarterly meeting so that we can revisit the positive evolution of the USAPTO in hopes of stopping its erosion in the eyes of the Global Inventors’ Communities.
I am asking for your attention to needed modernization innovation of the USAPTO itself — so to live up to its original mandate as National and International economic development tool to attract and serve the original creators of innovations and not itself, it changing politics and its major clients.
In the past, I had submitted my positive input to the USAPTO, and saw it was implemented and is part of the existing system, but because only some was recognized and more was implemented without my additional needed input (The Trade Secrets of my original proposal) so I had stopped my lobbying and placed a general information website on the “PrePatent-PrePartnering” option and the futuristic “Global Taxation Treaty” option which is also a missing solution in the Global Patents’ System.
There are many struggling forces inside and outside the USA as the original market for inventors to secure IP rights at the USAPTO, as well as the WIPO and now China; and my original proposal had foreseen this problem and offered the solution needed as is posted as the wisdom offered at more than two of my general information websites — and this is why the innovative solution is arrogantly ignored by the political directorship which is not informed of the best positive solution I had offered.
“PrePatent-PrePartnering” option is of interest all Concerned Interests in key topics of, FY 2022 outlook and Innovation Expansion, Outreach – international, and Patent quality and pendency, and the very basic sample model of the original Trading-Post is just crude sample of the original IPR (International PrePatent Registry) concept to be added to the USAPTO system so to serve the key economic objectives of the Department of Commerce for the USA.
I hope that by reading this email and following its www links, the Advisory Committee will try to address the points I bring for the yet better future and new windows of opportunity Inventors will like to see from the USAPTO ability to innovate itself so to live up to its original mandate of existence.
*-—It is important to note, that the Pre-Patent Registration option is proposed as initial part of the Patent Issuing Process and is not limited to the Provisional Patent Application and the 1st to Invent and File (As well as 1st not to publish) as well as the lower fees structure and its added automated services (Including the registered silent-trading option for Major and Minor corporations/inventors) that resolve the PTAB negative/damaging effect on the industry, serving monopolies’ choice to risk paying legal fees instead of royalties or collaboration costs for intended infringements.
Amnon M Cohen
PTAB = Is the Enemy of Inventors and Patent System —> See this video
American Inventors, See This Video
They claim that the Inventor Protection Act restores patent protection for inventors by reversing a generation of laws, regulations, and court decisions that have discouraged innovation by failing to secure to inventors the exclusive rights to their discoveries.
A very positive graceful initiative for Startups in Israel, is offering some protection funding from sources which see the value of protecting smaller Israeli companies from USA giant corporations within USA markets. The new fund “is designed to allow Israeli companies to compete on equal footing, even when facing off against the largest international companies in what would be otherwise be prohibitively expensive litigation” “When Israelis have legal disputes in the US, including problems involving intellectual property, this is when we come in,” said Michael Rosen, a Tel Aviv-based attorney with Kobre & Kim, in an interview with The Times of Israel.
Beyond Patent Insurance, option:
Getting & Keeping a U.S. Patent
Just so you know:
In order to have a realistic chance to obtain a patent from the USPTO, and keep the patent if and when challenged, more is required of patent drafters than was even a few years ago. This is compounded by the inescapable reality that nearly two-thirds of all patent applications filed at the USPTO in one way relate to a software innovation, where there is much disagreement among even Federal Circuit Judges with respect to what is and what is not a patent eligible innovation – and what is and what is not required to support the innovation in the specification.
Our recommended “Commercial Protection” first, is more and more the only option a wise inventor has, unless one just want to pay fees without expected benefits.
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Inventors’ CALL TO ACTION 2020:
U.S. Senate Threatens to Extend Patent Invalidation Program
More calls needed – Call Capitol directly at 202-224-3121
The 2011 American Invents Act caused great harm to the rights of inventors in the U.S. The worst part was the creation of the Patent Trial and Appeal Board (PTAB).
- The PTAB is a division of the USPTO that invalidates patents.
- The PTAB has invalidated 84% of the patents they have reviewed (2,421 out of 2,872).
- There is no right to a jury trial at the PTAB.
- Compared to a regular court, the PTAB limits evidence, testimony, due process, and procedural safeguards.
- Compared to a regular court, the PTAB has a lower burden of proof for invalidation (preponderance rather than clear and convincing).
- Most PTAB administrative patent judges have no technical experience and minimal legal experience.
- PTAB administrative judges often overrule examiners and federal judges who previously held a patent to be valid.
- The PTAB is benefits mostly large corporations – top patent challengers include Apple (650 petitions), Samsung (540 petitions), Google (337 petitions), and Microsoft (224 petitions).
- It costs an average of $450,000 to defend a patent at the PTAB.
- PTAB typically adds 2 to 5 years to the duration of a lawsuit.
The bottom line is that the PTAB has been set up to benefit the largest corporations in the world by preventing small companies from enforcing our patents. This has the effect of stifling competition and development of new technologies, causing the U.S. to lose its place as world leader in innovation.
The U.S. Senate is Planning Harmful Legislation to Extend the PTAB
Despite the devastation wrought by the PTAB, the Senate is deliberating on an extension. The PTAB has 3 components:
- Inter Partes Review (IPR) – allows challenges for the life of the patent, but only on §102 (novelty) and §103 (non-obviousness)
- Post Grant Review (PGR) – allows challenges in the first 9 months of a patent on any ground – §101 (eligibility), §102 (novelty), §103 (non-obviousness), or §112 (written description & enablement)
- Covered Business Method (CBM) – allows challenges for the life of the patent on any ground, but only for patents that cover “business methods”
The CBM proceeding is set to expire this month. That would be some progress for our movement to restore justice for inventors. Perplexingly CONGRESS IS PLANNING TO RENEW THE PTAB CBM PROGRAM. This makes no sense at all. The PTAB has virtually ruined our patent system which once was the envy of the world. At US Inventor we have been educating lawmakers to reform, limit, or abolish the PTAB in order to get our nation back on track. The expiration of CBM is a step forward. It must not be extended.
USA PTO actually Permits Infringement
The creation of PTAB (2011) was when the shift from protecting innovations had worsened because of the self-interests of the legal art profession had made a PTAB TOOL pass for Infringement on original Inventors.
It is sad, that the USA PTO had become a revenue generator from charging inventors and not living up to its original and only mandate of A TOOL FOR NEW ORIGINAL ECONOMIC INDUSTRIAL DEVELOPMENT for The Nation and The World.
For few years already, the USA PTO actually Permits Infringement by its major clients
Here is a sad VIDEO example of Infringement: https://www.youtube.com/watch?v=thaqlchX0mE&feature=youtu.be&rel=0
Here is what Inventors are saying about PTAB In 2017 this was first call for attention. PTAB is a real risk to the industry.
There is little input inventors can add, and already only 80 have done so which is a little disappointing because most inventors did not see this video call for attention SUBMIT YOUR INPUT and here is more information and if you like to join.
“US Inventors” and The 2022 Elections
“US Inventors” has made slow and steady progress over the past years to restore the rights of inventors to enable entrepreneurs to compete. Unfortunately, many lawmakers continue to refuse to correct the mistakes of the past. Like the PTAB that was created in 2011 ostensibly to help small businesses defend against frivolous lawsuits. Instead, the USPTO patent invalidation program has been weaponized by large multinational and foreign corporations to steal technology from smaller competitors. Contrary to the stated purpose, the PTAB has turned out to increase the time and expense of patent litigation and dramatically increase the likelihood of invalidation as compared to a regular court.
In addition to the PTAB, the Supreme Court has issued a number of rulings weakening patent rights. Ebay (2006), KSR (2007), Alice (2014), TC Heartland (2017), Oil States (2018), Arthrex (2021) – all made it harder for inventors to and undermined the Constitutional requirement of securing to inventors the exclusive right to their discoveries.
Some lawmakers are listening, and will soon introduce legislation to level the playing field. Stay tuned for that.
“US Inventors” are launching a 2022 campaign to make innovation a top priority for every contested House and Senate seat. “US Inventors” are expanding our staff, adding resources, and hitting the campaign trail.
If you like, helping and being informed, search for the “US Inventors” website.
Your attention is needed for proper modernization-innovation of the USAPTO itself.