Intel, Apple, Cisco, Google sue US Patent Office – Tech police, open up!
(2020/09/02)
- Reference: 1599009514
- News link: https://www.theregister.co.uk/2020/09/02/intel_us_patents/
- Source link:
Intel is leading an effort to force the US Patent and Trademark Office to axe a new rule said to favor litigious patent trolls.
The USPTO manages Inter Partes Review (IPR) panels that can be asked to assess granted patents and decide whether to throw them out on the grounds they should never have been approved in the first place. The review boards were introduced with the [1]2011 America Innovates Act , and their decisions can bring legal fights to fairly swift conclusions.
For example, if a patent troll was suing you for infringement, you could ask a panel – typically made up of a few patent trial and appeals judges – to review the troll's patents in hope of having them invalidated. If that were to happen, the troll's case against you would fall apart. This discourages trolls – holding companies that hoard intellectual property – from filing infringement claims to extract fees from victims.
However, Chipzilla, together with fellow tech heavies Cisco, Apple, and Google, are this week [2]suing [PDF] USPTO Director Andrei Iancu in a San Jose federal district court to prevent him from enforcing a newly created rule limiting the use of IPR panels.
Under that rule, these IPR requests cannot be made just before or during a trial, with the reasoning that the panel system was designed to be an alternative to court battles over infringement and not something to happen alongside it. This clampdown has led to more IPR requests being denied, and more cases having to go to trial or settled out of court. And the tech goliaths, not liking this situation, want the restrictions scrapped.
"Over the past twelve months, the number of discretionary denials under the new rule, denying access to inter parties review without regard to a petition’s likelihood of success on the merits, has more than doubled," Benjamin Ostapuk, Intel veep and director of its intellectual property legal group, [3]explained .
"Recently, the denial of access to the IPR process is becoming customary as the PTAB leaves suspect patent claims in force by declining to review them based on vague discretionary factors and asserting that those denials are not even subject to judicial review."
IBM, Microsoft and Linux Foundation link arms to fight patent trolls with 'multimillion' scheme [4]READ MORE
The USPTO told The Register it has no comment on the matter.
With fewer IPR challenges being accepted, Intel argued, the patent trolls are emboldened to once again lob dubious infringement claims at the processor designer and other big biz in hope of a quick settlement payout.
Ostapuk said the loss of access to the IPR process and the resurgence in infringement claims are not a coincidence.
"An almost immediate result of this behavior by the PTAB is patent litigation rising to levels not seen in nearly a decade," the Intel VP argued.
"Additionally, the number of those lawsuits being filed by patent licensing entities, meaning entities that do not manufacture products but purchase patents only to sue and tax successful operating companies like Intel, is exploding."
The four companies are now pushing to have the rule thrown out by the court in hopes that it will lead to more IPR claims being granted and fewer patent troll suits. ®
Get our [5]Tech Resources
[1] https://www.congress.gov/bill/112th-congress/house-bill/1249
[2] https://regmedia.co.uk/2020/09/01/intel.pdf
[3] https://blogs.intel.com/policy/2020/08/31/innovators-call-for-the-uspto-to-reinstate-access-to-the-patent-review-process/
[4] https://www.theregister.com/2019/11/20/microsoft_linux_patent_trolls/
[5] https://whitepapers.theregister.com/
The USPTO manages Inter Partes Review (IPR) panels that can be asked to assess granted patents and decide whether to throw them out on the grounds they should never have been approved in the first place. The review boards were introduced with the [1]2011 America Innovates Act , and their decisions can bring legal fights to fairly swift conclusions.
For example, if a patent troll was suing you for infringement, you could ask a panel – typically made up of a few patent trial and appeals judges – to review the troll's patents in hope of having them invalidated. If that were to happen, the troll's case against you would fall apart. This discourages trolls – holding companies that hoard intellectual property – from filing infringement claims to extract fees from victims.
However, Chipzilla, together with fellow tech heavies Cisco, Apple, and Google, are this week [2]suing [PDF] USPTO Director Andrei Iancu in a San Jose federal district court to prevent him from enforcing a newly created rule limiting the use of IPR panels.
Under that rule, these IPR requests cannot be made just before or during a trial, with the reasoning that the panel system was designed to be an alternative to court battles over infringement and not something to happen alongside it. This clampdown has led to more IPR requests being denied, and more cases having to go to trial or settled out of court. And the tech goliaths, not liking this situation, want the restrictions scrapped.
"Over the past twelve months, the number of discretionary denials under the new rule, denying access to inter parties review without regard to a petition’s likelihood of success on the merits, has more than doubled," Benjamin Ostapuk, Intel veep and director of its intellectual property legal group, [3]explained .
"Recently, the denial of access to the IPR process is becoming customary as the PTAB leaves suspect patent claims in force by declining to review them based on vague discretionary factors and asserting that those denials are not even subject to judicial review."
IBM, Microsoft and Linux Foundation link arms to fight patent trolls with 'multimillion' scheme [4]READ MORE
The USPTO told The Register it has no comment on the matter.
With fewer IPR challenges being accepted, Intel argued, the patent trolls are emboldened to once again lob dubious infringement claims at the processor designer and other big biz in hope of a quick settlement payout.
Ostapuk said the loss of access to the IPR process and the resurgence in infringement claims are not a coincidence.
"An almost immediate result of this behavior by the PTAB is patent litigation rising to levels not seen in nearly a decade," the Intel VP argued.
"Additionally, the number of those lawsuits being filed by patent licensing entities, meaning entities that do not manufacture products but purchase patents only to sue and tax successful operating companies like Intel, is exploding."
The four companies are now pushing to have the rule thrown out by the court in hopes that it will lead to more IPR claims being granted and fewer patent troll suits. ®
Get our [5]Tech Resources
[1] https://www.congress.gov/bill/112th-congress/house-bill/1249
[2] https://regmedia.co.uk/2020/09/01/intel.pdf
[3] https://blogs.intel.com/policy/2020/08/31/innovators-call-for-the-uspto-to-reinstate-access-to-the-patent-review-process/
[4] https://www.theregister.com/2019/11/20/microsoft_linux_patent_trolls/
[5] https://whitepapers.theregister.com/
How else is the IPR process supposed to happen?
You need financial incentive to challenge someone else's patent, because it isn't like you can just say "hey check out patent number 12345678 and see if it is legit" without any cost or any work on your part. If you could, someone would set up a bot that automatically files a challenge to every patent that gets issued and the process would be overwhelmed and meaningless.
Not only do you need financial incentive to challenge a patent, it would cost a lot of money to trawl through 20 years worth of existing valid patents looking for ones that you might violate in order to challenge them. Most of the time companies have no idea they might be violating a troll's patent, because the way patent law is written they have every incentive NOT to look and see if they might be violating the patents of others.
Even worse, challenging such a patent would be a red flag to the company that owns that the challenger believes they might be violating it. Even if you do it through a third party shell, it would still draw attention to the patent so its owner devotes more resources to seeing if they can muster up a lawsuit against one or more parties.
I don't see what's wrong with the idea of challenging the validity of a patent as part of the claim. If you say they can't do that, then if a junk patent isn't challenged before, and can't be challenged after a lawsuit is filed then justice won't be done if a company is made to pay up a lot of money based on a patent that should never have been granted.
If they ban just the company being sued from challenging it, but not others you'll just see the big tech companies named here set up a joint venture foundation they each contribute money towards that has as its only job challenging the validity of a patent whenever a lawsuit is brought against one of the companies in the consortium. It won't reduce the PTO workload, it'll just make more work for everyone by adding an extra layer to the process.