Unified Patents Launches IETF OPEN

Unified Patents is pleased to announce OPEN’s IETF Standard Submission Portal. The Internet Engineering Task Force (IETF) is largely responsible for how the internet operates and is vitally important to how various devices use the internet. Common areas of focus for the IETF include Internet Protocols, APIs, and Routing, (i.e. architecture and backbone of how the internet works). Users can now search all the submissions related to IETF via full-text or by author and source. The submission portal includes over 86,000 documents that are full-text searchable.

The internet standards process includes proposing specifications, developing standards based on agreed-upon specifications, coordinating independent testing and revising proposals based on testing results.

In addition to the ability to search, Portal provides high-level analytics to provide transparency and clarity on submissions to better improve the Internet. Users have the availability to understand the landscape clearly based on the search criteria.

Expansion of AIA would have added $1.5 billion to GDP

In a new economic study, the Perryman Group has determined that enhancements to the America Invents Act’s post-grant review proceedings and increased use of district court stays would have saved the U.S. economy almost $1.5 billion dollars in gross domestic product (GDP), $712.7 million in personal income, and would have generated upwards of +6,792 job-years of employment between 2014 and 2019. That would have been in addition to the substantial savings realized of almost $3 billion already reported based on the current AIA regime. In other words, it could have been upwards of $4.5 billion of GDP savings, combined. This demonstrates that while the AIA has had a strong positive impact on the U.S. economy, it has fallen short of the benefits it could have accomplished with broader use of stays and a more comprehensive mandate. 

The study found that U.S. manufacturing would have experienced the greatest gains. It analyzed three scenarios: 1) If all court proceedings on a patent were automatically stayed after IPR was instituted, 2) if all invalidity defenses could be asserted in IPR proceedings, and 3) if both expansions had been in place. 

For 1), automatic district court stays, the Report estimates those changes would have led to an increase in U.S. business activity of an additional $543.1 million in GDP, $259.6 million in personal income, and +2,474 job-years of employment.

For 2), adding all defenses to the process, it estimates that adding those defenses would have led to an estimated $731.3 million additional increase in gross product, $349.5 million in personal income, and +3,331 job-years of employment.

And for 3) both, including multiplier effects, it estimates additional savings of $1.49 billion in gross product, $712.7 million in personal income, and +6,792 job-years of employment, noting that the benefits associated with Scenario Three are greater than the sum of the prior two if implemented separately, as the additional proceedings allowed if all invalidity defenses could be asserted would also benefit from being universally stayed while the IPR process is ongoing. 

Unified Patent’s Patent Quality Initiative (PQI) previously commissioned a study that demonstrated the substantial financial impact passage of the America Invents Act, and in particular, challenges like inter partes review (IPR), have had on the U.S. economy. That study demonstrated that U.S. businesses and the economy as a whole saved upwards of $2.95 billion dollars in gross domestic product, $1.41 billion in personal income, and generated upwards of +13,500 job-years of employment between 2014 and 2019.  

That study relied on the current AIA regime of post-grant review, where district court stays are inconsistently applied, limited grounds of challenge are available, and in practice—given recalcitrance to stay, confusion in caselaw and regulatory requirements like discretionary denials, and some resulting duplication of efforts between fora—the Congressional goals of providing a true cost-effective alternative to inefficient district court litigation have fallen short. Further study was needed to determine how much could have been saved over the same time period had district courts automatically stayed cases or had more grounds of invalidity been available in IPR.

Indeed, innovation has long been recognized as the key factor supporting U.S. economic growth and competitiveness. A critical element of the infrastructure facilitating product development and commercialization is the system that protects intellectual property and encourages its widespread adoption and implementation. The current framework that facilitates this process includes the Leahy-Smith America Invents Act (AIA) and the Patent Trial and Appeal Board (PTAB). The AIA and PTAB reduce the need for patent litigation, reducing costs and generating substantial economic benefits. Potential expansions of the AIA would lead to additional gains in business activity.

Economic performance in the United States over the long term is tied to innovation. The AIA and PTAB not only support innovation, but also generate substantial economic benefits. These benefits could be even greater with expansion of the AIA. 

The report is part of Unified Patents’ ongoing Patent Quality Initiative (PQI), an effort to gather and provide objective data and research demonstrating how lowering patent quality will inevitably lead to even higher cost and risk for U.S. SMEs, inventors, and manufacturers, and can lead to less innovation, fewer U.S. jobs, and a drain on the U.S. economy. Our PQI aims to provide data, studies, and testimonials to give policymakers and practitioners a clear picture of the state of the patent system. More information about our PQI efforts can be found here.

For far greater detail, read the entire report HERE.

World's First Search Engine for Ex Parte Reexaminations

New Portal Product and Features:

Ex Parte Reexaminations

Unified Patents’ Portal launches the world’s first search engine for Ex Parte Reexaminations. Users now can find up-to-date information on any given case, and search by case by number, patent number, or by party. Ex Parte Reexaminations are another way to challenge patents at the USPTO and traditionally have required users to know the patent involved and search through the prosecution history to see the filings. Until the introduction of the PTAB they were the most popular way to challenge bad patents.

Now, all challenges going back 15+ years are available and searchable. In addition, users can see outcomes (when possible) and find out who challenged which patent. Combined with Unified’s PTAB Tool, Unified is the only provider to enable users to comprehensively view every patent challenge in the US.

View All Ex Parte Reexmainations

Portal displays all Ex Parte Reexaminations for users to understand the significance and how this type of filing is being utilized. This would include searching by case number, patent number, patent owner, and requester.

View High-Level Analytics

Users are also able to view high-level analytics, including outcome, top parties, and filings by year.

View Complete Ex Part Docket

Portal also allows users to view the docket of any given case and retrieve up-to-date information at any given time.

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Copyright © 2021, Unified Patents, LLC. All rights reserved.

PTAB/District Court Trial Date Denials Spiraling Upward: PTAB Discretionary Denials Third-Quarter Report

Key Takeaways: After returning to the data, breaking down all discretionary denials by category, and updating the data for the past three months, it is clear that the PTAB now prefers denying more petitions under their recent NHK Spring/Fintiv “parallel district court” practice than any other means; discretionary denials as a percentage of overall denials have risen and will almost certainly exceed last year’s denials, both in terms of raw numbers (in a down year) and by overall percentage (by a substantial margin). 

Following Unified’s Quarter 1 and Quarter 2 reports on PTAB procedural denials, we went back to further analyze and categorize all Board decisions to date to understand the impact of new decisions, including the NHK Spring/Fintiv and General Plastic/NVIDIA line of decisions. This year, the number of non-merits or “procedural” denials by the Board has dramatically increased overall; for example, through the first nine months of 2020, 151 denials (16% of all decisions) have been issued, nearly tying 2019’s 162 denials for the entire year. 

With total number of institution decisions by the Board somewhat depressed overall this year, we now see that the amount of discretionary denials as a percentage of total denials has risen dramatically, representing more than a third of all institution denials in 2020–or put another way, 38% of all denials in 2020 to date are cases where the Board did not consider the merits of the petition.

In the 151 denials to date in 2020, 314(a) has been the predominant means of procedural denial, used by the PTAB 73% of time (110 total decisions). Meanwhile, 325(d) denials are at their lowest since 2017, with only 27 denials this year. This year has also not seen any “combination” denials under both 314(a) and 325(d).

The reduction in 325(d) denials makes sense on some level, given the overlap between the various 314 analyses (which include analyses of other petitions or forums and the grounds they raised), and with the overlap of the “same or substantially same” grounds already raised by the parties in other IPR proceedings. In those overlapping instances, 314 may be an easier form of denial, whereas application of 325 may be less straightforward, requiring a more prior art-heavy analysis to justify denial. 

Looking at the last five years, 314(a) denials are now used by the Board 9.5% of time, up 2.5% from the last quarter.

On the other hand, while § 325(d) denials are at their lowest overall number since 2017 (so far),  they have decreased just .3% from the last quarter, to 5.4% total over the past five years as a percentage of all denials.

In 2020 to date, 83% of all procedural denials are denied due to either a parallel petition, the NHK Spring/Fintiv framework, or the General Plastic/NVIDIA framework. Parallel petitions accounted for 40% of (or 44) denials of the 110. NHK Spring/Fintiv framework was used 43% of the time to deny petitions (or 47 denials of the 110 total). Interestingly given that it was the genesis of “discretionary denials” under 314, the General Plastic/NVIDIA framework was used just 13% of the time (or in 14 denials of the 110).

One of the more interesting developments in the analysis used in NHK Spring/Fintiv denials has been the denial of institution based on the Board “estimating” when a trial will be held, even when a trial date has not been scheduled in the District Court. In two recent cases, the Board refused to consider the merits of challenges based on their own estimates of when a trial date was likely to occur, and rejected arguments and speculations to the contrary. 

There has also been a notable reliance on the “cost” and “investment” of the PTAB, the parties, and the Court in their respective proceedings, or the cost or benefit of such respective proceedings, without any substantive economic analysis of actual economic cost to any party or institution, or a reliance on any data whatsoever to support a cost (or benefit) to the parties or decision makers. The lack of any economic support for economic assumptions made by the agency is notable, given that economic efficiency is one of the primary grounds advanced by the agency on which such denials are based.  

For questions, comments, or inquiries, please contact info@unifiedpatents.com

Click to download the full report.

Footnotes

1. PTAB/District Court Trial Date Denials Spiraling Upward: Discretionary PTAB Denials Third-Quarter Report by Unified Patents, LLC is licensed under a Creative Commons Attribution 4.0 International License.  Sharing, reproduction, and adaptation are permitted in commercial contexts with proper attribution.

2. Unified Patents, PTAB Procedural Denials and the Rise of § 314 (May 13, 2020), https://www.unifiedpatents.com/insights/2020/5/13/ptab-procedural-denial-and-the-rise-of-314.

3. Unified Patents, PTAB Discretionary Denials: In the First Half of 2020, Denials Already Exceed All of 2019 (July 27, 2020), https://www.unifiedpatents.com/insights/2020/7/27/ptab-discretionary-denials-in-the-first-half-of-2020-denials-already-exceed-all-of-2019.

4. We refer to “procedural denials” as any denial of institution where the substantive merits of the petition were not considered in light of policy-based decision making or “discretion.” Some discretion is directly spelled out in the statute–for instance, 35 U.S.C. 325(d) tightly circumscribes and explicitly grants the Director the ability to “determine the manner in which the post-grant review or other proceeding or matter may proceed, including providing for the stay, transfer, consolidation, or termination of any such matter or proceeding.”  Joinder discretion is made explicit under 35 U.S.C. 315(c): “the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition ... that the Director ... determines warrants the institution of an inter partes review under section 314.”  Meanwhile, 35 U.S.C. 314(a) contains no such express grant or outline.

5. NHK Spring Co. v. Intri-Plex Technologies, Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential).

6. General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential); NVIDIA Corp. v. Samsung Elec. Co., IPR2016-00134, Paper 9 (PTAB May 4, 2016).

7. For the sake of simplicity and because it was more difficult to code for and not explicitly tied to a particular precedential decision, we placed the July 2019 Trial Practice Guide Update line of cases (i.e., the “parallel petition” denials based on ranking of petitions) with the General Plastics/NVIDIA line of cases.  We will continue to refine the data to provide the most accurate picture possible as we produce future reports.  If you have inquiries about methodology or the data or reports themselves, please contact PatentQualityInitative@unifiedpatents.com.

8. The remaining 5 denials amounted to another 4.5% of all denials, for various reasons.

9. Intel Corp. v. VLSI Technology, LLC, IPR2020-00583, Paper 22 (PTAB Oct. 5, 2020); Supercell Oy v. GREE, Inc., PGR2020-00053, Paper 12 (PTAB Oct. 9, 2020).

Copyright © 2020, Unified Patents, LLC. All rights reserved.

Unified Consulting 5G study finds significant submarine patents

Unified Consulting (UC), a sister company to Unified Patents, recently completed a study on 5G and identified using the 5G OPAL (Objective PAtent Landscape) tool which evaluated over 1,000,000 patents for essentiality based on participation and almost 100,000 self-declared patents. It is based on the OPEN 3GPP (Standard Submission Repository) with over 200,000 3GPP / 5G contributions and a methodology using an AI based semantic similarity algorithm.

The study found a significant number of UNDECLARED patents are likely essential for 5G. They include well known companies such as Comcast, China Mobile, Coolpad, Acer, and many others. UC calls these submarine patents since FRAND may not apply to them based on some current court decisions. A table of some of these can be found in the chart below. The full article can be found here:

5G Submarine Patents