Multiple Petitions?  More Like Multiplicative Claiming And Assertion

One of the criticisms frequently leveled against inter partes reviews (IPRs) is that people file multiple IPRs; they file two, three, four IPR petitions in order to harass a patent owner.  Complaints notwithstanding, the data shows just how infrequent a practice this is.  The data also shows that the blame for the occasions when this does occur lies squarely with the patent owner’s own choices.

The truth is that multiple petitions are rare.  And when they are filed, it’s typically because patent owners have filed patents with so many claims that you need multiple petitions just to fit your arguments into the word limit.

Most Patents See Zero Petitions

Let’s start off with a reminder—most patents never have an IPR petition filed against them at all.  As of the start of the year, a total of 3,482 patents have had at least one IPR petition filed against them.  There are approximately 3,000,000 patents currently in force.1  

In other words, around 0.1% of patents in force have actually had any petitions filed against them.

It’s not true that most patents that are asserted in litigation have IPRs filed against them.  On the contrary—about 85% of patents asserted in litigation are not challenged in an IPR!

In other words, only 0.1% of all patents and only 15% of patents that have been asserted in litigation have seen any IPRs filed against them.  Most patents never see a petition at all, much less multiple petitions.

Most Patents That Are IPRed Only See One Or Two Petitions

Of those 3,482 patents, the majority only see one petition and the vast majority only see two petitions.  2,408 (69%) only had one petition filed; 3,074 (88%) had 1 or 2 petitions.  Only 69 patents (2%) have seen more than 5 petitions filed against them.  

In other words, of the extremely small number of patents that actually have an IPR filed, almost all of them only have one or two petitions filed.  Multiple filings just aren’t a significant problem.

Patents That See More Petitions See Them For A Reason

Even when there are multiple petitions involved, there’s usually a reason—and it’s usually because of the patent owner’s actions.

Eating Biscotti

One example of a case with multiple petitions was the Biscotti IPRs.  Biscotti owns U.S. Pat. No. 8,144,182.  The ‘182 patent has 86 claims.  Here’s the first one:

1. A system for real-time, high-definition video communication, the system comprising:

a first video communication device; and

a second video communication device in communication with the first video communication device over the Internet;

wherein the first video communication device comprises:

a high-definition multimedia (“HDMI”) input interface configured to receive high-definition audiovisual input from a set-top box;

an HDMI output interface configured to provide high-definition audiovisual output for display on a high-definition television;

a speaker to provide audible output;

a wireless network interface in communication with a wireless local area network to provide communication with the second video communication device over the Internet;

one or more microphones to capture audio input from a user of the first video communication device;

a high-definition video camera to capture a video stream of the user;

at least one processor; and

a storage medium in communication with the at least one processor, the storage medium having encoded thereon a set of instructions executable by the at least one processor to control operation of the first video communication device, the set of instructions comprising:

instructions for receiving, via the wireless network interface, a connection request from a communication server on the Internet, the connection request originating from the second video communication device;

instructions for notifying the user of the communication request;

instructions for receiving user input accepting the connection request;

instructions for receiving a video call over a peer-to-peer Internet communication session with the second video communication device, via the wireless network interface;

instructions for transmitting an audio watermark signal through the HDMI output interface;

instructions for determining whether a speaker of the high-definition television is powered on and enabled to play audio output from the first video communication device, based on reception of the audio watermark signal through at least one of the one or more microphones;

instructions for receiving a high-definition set-top box audiovisual stream from the set-top box, wherein set-top box audiovisual stream comprises a set-top box video stream and a set-top box audio stream, the set-top box video stream having a display area comprising a plurality of pixels, the plurality of pixels defining a display resolution of the set-top box video stream;

instructions for receiving a remote audiovisual stream from the second video communication device over the wireless network interface, wherein the remote audiovisual stream comprises a remote video stream and a remote audio stream;

instructions for detecting the display resolution of set-top box video stream;

instructions for setting a display resolution of the remote video stream, based at least in part on one or more factors selected from the group consisting of the detected display resolution of the set-top box video stream, a bandwidth of a connection between the first video communication device and the second video communication device, and a user-specified setting;

instructions for modifying the set-top box video stream, in response to receiving the video call;

instructions for allocating at least a portion of the display area of the set-top box video stream, comprising at least some of the plurality of pixels, for displaying at least a portion of the remote video stream, to produce a consolidated high-definition output video stream comprising at least a portion of the remote video stream;

instructions for transmitting the consolidated high-definition output video stream on the HDMI output interface, for display on the high-definition television;

instructions for producing a consolidated audio output stream comprising at least the remote audio stream;

instructions for transmitting the consolidated audio output stream on the HDMI output interface, based on a determination that the speaker of the high-definition television is powered on and enabled to play audio output from the first video communication device;

instructions for controlling the camera to capture a captured video stream;

instructions for controlling the one or more microphones to capture a captured audio stream;

instructions for canceling echo in the captured audio stream;

instructions for encoding the captured video stream and the captured audio stream as a series of packets for transmission over the Internet; and

instructions for transmitting the series of packets over the peer-to-peer communication session.

Yes, that entire block is one single claim.  It is 674 words long.  Microsoft had to show that each and every limitation was known in the prior art as part of their petition, and petitions have a 14,000 word limit.  You can understand why, in order to try to invalidate multiple claims of the 86 claims in the Biscotti patent, Microsoft had to use multiple petitions.

And at the end of the day, Biscotti succeeded in defending their patents in IPR.  Some “death squad” the PTAB turned out to be, allowing a patent that claims overlaying a videophone call onto an existing video program.  (I thought picture-in-picture was something we’d figured out in the 1980s.)  The case goes to trial this fall, and Microsoft will not be allowed to bring the invalidity defenses they brought in IPR.  

In other words, IPR worked the way it was supposed to—validity was determined relatively inexpensively, and now the trial on infringement will proceed.  The multiple petitions were simply because Biscotti had filed a patent containing a number of claims, including several extremely long claims, and Microsoft needed multiple petitions to have enough space to address them.

To Infinity and Be-Zond

Another example, frequently pointed out, is the group of patents owned by Zond.  125 petitions have been filed against 10 Zond patents.2  Of course, Zond has sued quite a few different people.  At a quick count, Zond has filed suits asserting 14 different patents against at least 8 semiconductor companies.  And also Gillette.  (Yes, that Gillette, the company that sells razor blades.)  

So it probably shouldn’t have surprised Zond when a large number of IPRs were filed by the companies it’d sued, challenging the validity of the patents it had asserted.  

Unlike Biscotti, Zond’s patents didn’t fare so well.  As it turned out, nothing Zond claimed to have invented was actually new.  The Zond lawsuits, at this point, are over—the asserted patents are no longer valid.3

Again, IPR worked the way it was supposed to.  Instead of nine lawsuits, each of which might have cost millions or tens of millions of dollars in legal fees, the validity of the Zond patents was determined relatively inexpensively by the PTAB.  And while a number of petitions were filed, this was due to Zond’s choice to assert numerous patents against numerous defendants, each of whom wished to be able to defend itself from Zond’s invalid patents.  Multiple petitions were required, but again, due to Zond’s own choices.

Setting the Paice

Lastly, there have been a few outliers where a truly large number of petitions were filed against only a single patent.  For example, Ford, Hyundai, and Volkswagen filed a total of 26 petitions against a single patent, U.S. Pat. No. 7,237,634, owned by Paice LLC.  

Of course, all three automakers had been sued by Paice, and the ‘634 patent has 306 claims.  The patent owner chose to claim 306 different claims, and they chose to sue multiple people.  Again, it was Paice’s own choices that resulted in 26 petitions being filed; suing multiple defendants will increase the number of petitions filed, and filing patents with hundreds of claims will do the same.

Multiple Petitions, But Only One Real Reason

The lesson drawn from looking at these instances of multiple petitions holds across the other cases where multiple petitions have been filed.  No one is filing multiple petitions to harass a patent owner; they’re filed because of space limits, necessitated by patent owners who file patents with numerous or long claims, and they’re filed by multiple parties all of whom have been sued, necessitated by patent owners who initiate litigation campaigns against multiple defendants.

The “multiple petition” complaint is, quite frankly, baseless.

  1.  Director Lee’s remarks listed 3,998 patents having been challenged – the difference in numbers is because I am only looking at IPR challenges, and her number includes covered business method (CBM) and post-grant review (PGR) challenges.
  2.  A number of these petitions were filed by my colleagues at my prior firm, some of whom also represent parties in the Zond litigations.  I was not involved in the preparation or filing of any of the Zond IPRs or any Zond litigations, and all information in this post is based on publicly available information.
  3.  All of the lawsuits have been terminated except the Gillette lawsuit, which remains open in order to determine if Zond will be required to pay Gillette back for Gillette’s attorneys’ fees.

Joshua Landau

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

Follow @PatentJosh on Twitter.