Earlier today, the USPTOUnited States Patent and Trademark Office. See also PTO. issued its final written decision in IPR2021-01064. The final written decision found that all challenged claims in VLSI’s patent were in fact invalid.
So what makes this IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. special? Well, the challenged patent was one of the patents underlying VLSI’s $2 billion verdict against Intel. And what’s more, the petition filed by OpenSky was a cut-and-paste of an earlier petition filed by Intel. But the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA., under Director Iancu, decided that it was fine with leaving in force a patent we now know is invalid just because a judge claimed he’d get to trial before the PTOPatent and Trademark Office, informally used interchangeably with USPTO. could rule. It denied Intel’s petition under the Fintiv rule.
(Spoiler alert: that didn’t happen – the trial occurred months after the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. would have ruled.)
So Intel’s petition was denied, but not on the merits. And of course a denial on a discretionary basis is effectively an admission that the patent is likely invalid. After all, if the patent wasn’t likely to be proven invalid, then the PTOPatent and Trademark Office, informally used interchangeably with USPTO. could simply deny on the merits—there’s no need for discretionary denial on a valid patent.
So, with Intel’s IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. petition denied, the case eventually went to trial, and VLSI—a subsidiary of the hedge fund Fortress, backed by SoftBank and likely to soon be sold to an Emirati sovereign wealth fund—obtained a $2 billion verdict. That’s a big number, and people took notice.
Some of those people formed an entity called OpenSky. After all, there was a perfectly good IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. petition, publicly available, and denied in a way that made it quite likely that absent a discretionary denial, the patent wouldn’t survive IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.. So OpenSky took that petition, hired the same expert, and effectively re-filed the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.. But because OpenSky wasn’t involved in litigation with VLSI, their petition couldn’t be discretionarily denied based on a court date.
Lo and behold, the patent actually was invalid. But because of the Fintiv denial—a denial based on a rule that both violates the AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding. and was put into place improperly—that determination came years later than it otherwise would have.
In the interim, Director Iancu left the PTOPatent and Trademark Office, informally used interchangeably with USPTO. and went back to his old firm—the same firm that was litigating on behalf of VLSI and stood to benefit from the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. denial. And people began to complain that OpenSky was abusing the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. system.
But here’s the thing: if not for the Fintiv rule, OpenSky never would have had a petition to copy. The ultimate source of any abuses that occurred wasn’t the AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding. or Intel or even OpenSky. The abuse that led to all this was the abuse of discretionary denials. If not for Fintiv, Intel and VLSI wouldn’t have had to spend tens of millions of dollars in legal fees. There wouldn’t have been a judgment that now has to be reversed. The system would have worked more efficiently and in the way Congress intended.
Given all the negatives of Fintiv, it’s very confusing why the current PTOPatent and Trademark Office, informally used interchangeably with USPTO. Director, Director VIdal, seems to want to keep Fintiv around. Her recent ANPRM proposes making Fintiv a formal rule. But even she doesn’t seem to know why she would want to keep it, telling a Congressional committee that the PTOPatent and Trademark Office, informally used interchangeably with USPTO. might not even have the authority to do so and that the rules weren’t even the PTO’s proposal.
I have a simpler suggestion. Get rid of Fintiv entirely. Go back to the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. system that worked efficiently and saved American industry billions of dollars. If a patent actually contains a new and innovative invention, it has nothing to fear from IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected..
And if it isn’t new and innovative? The Constitution tells us it shouldn’t have existed in the first place.
