The Economic Impact of Codifying Fintiv

As part of the efforts of Unified Edge, Korok Ray, an Associate Professor at the Mays Business School of Texas A&M University and Research Director of the Mays Innovation Research Center, published a paper on the economic impact of codifying “Fintiv”. Read the abstract below and follow the link to download the paper.

Abstract

The term “Fintiv” refers to a threshold, procedural set of factors the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) currently uses to decide which patents will be reviewed by the PTAB. Based on the Apple v. Fintiv case, the Fintiv factors refer to the PTAB’s ability to launch a review of a patent that is also at issue in a parallel infringement case in a different forum (e.g., federal court or the U.S. International Trade Commission). Under Fintiv, the PTAB can elect not to conduct an inter partes review (IPR) or post-grant review (PGR) of the patent, thereby deferring to the district courts to handle validity of the patent(s)-at-issue instead. Currently, the PTAB is considering whether to make Fintiv permanent. This paper argues and shows that making Fintiv permanent could generate a direct economic cost of at least $283 million. Based on the data used, as explained further below, and because it is difficult to quantify the indirect costs, this estimate is likely an underestimate of the rule’s true economic cost.

Find the complete report HERE.

USPTO’s new Catch-22 targets Unified Patents in standing requirement reforms

In a recent op-ed in IAM, Unified’s General Counsel, Jonathan Stroud, explains the issues with the USPTO’s reform proposal, including how it singles out Unified and proposes restrictions that contradict the AIA and that have been rejected in subsequent failed legislative proposals. In the link below, Mr. Stroud argues that if the agency seeks to single out Unified Patents and bar it from filing IPRs, it must also scrutinize the lack of transparency and conduct of prolific NPEs.

Click HERE to read more on IAM’s website.

USPTO Proposed Rules Flawed - The Hill Op-Ed

In an op-ed published on "The Hill" website, Jonathan Stroud summarizes the House Judiciary oversight hearing where USPTO Director Kathi Vidal testified regarding the Office’s proposed rulemaking. 

Policy changes at administrative agencies like the U.S. Patent and Trademark Office (USPTO) are unlikely to lead the nightly news or appear above the fold in national newspapers. But, the USPTO might be the most important agency your average American hasn’t heard of. How it works, or doesn’t, has billion-dollar consequences for the U.S. innovation economy, and for consumers.

Published on May 10, 2023, continue reading the article by clicking HERE.

Wi-Fi 6 improvements resulting in more litigation

In the first article of a two-part series posted on IPWatchdog, Samuel Baird, Director of Analytics at Unified Patents, and Craig Thompson, GM/COO for Unified Consulting, recently used OPEN’s IEEE and OPAL’s Wi-Fi 6 landscape to understand how 3GPP technologies have migrated in Wi-Fi 6. With these core technologies now embedded with Wi-Fi 6, this creates an SEP monetization target, which ultimately leads to more litigation. In addition, the recent changes to the IEEE’s IPR rules introduce more uncertainty about what is permitted to be used in assessing a RAND rate and remove some of the restrictions on licensors seeking injunctions. With more companies invested into Wi-Fi 6 and the rule change that has created uncertainty, this will only lead to more litigation.

In Part II, the research will look at how the IEEE’s recent IPR rule changes will affect the trends and technologies detailed in the first post.

Click HERE to read the entire article.

GE patent dropped from Access Advance HEVC pool after successful Unified challenge

Some patent holders and pools designate their patents as relevant or essential to a standard without proper scrutiny or analysis. As part of an ongoing series examining this dubious practice, we highlight U.S. Patent 10,057,603. The ’603 patent is owned by GE Video Compression. Access Advance LLC had identified this patent as purportedly essential to the H.265 (HEVC) standard as part of the Access Advance Patent Pool. But after an ex parte reexamination initiated by Unified Patents led to a significant narrowing of the claim, Access Advance no longer lists this patent as essential. 

Access Advance had identified claim 1 of the ’603 Patent as allegedly essential. That claim recites:

1. A decoder for decoding a data stream including encoded data of a video, the decoder comprising:

an entropy decoding engine configured to decode data from the data stream based on an arithmetic decoding scheme to obtain a sequence of symbols, 

wherein, with respect to at least one symbol of the sequence of symbols, the entropy decoding engine is configured to:

select a context corresponding to the at least one symbol, and 

entropy decode the at least one symbol using the selected context based on the arithmetic decoding scheme, which includes updating a probability model associated with the selected context at one of a first update rate under a high-efficiency mode of entropy decoding and a second update rate, that is lower than the first update rate, under a low-complexity mode of entropy decoding; and

a reconstructor configured to reconstruct at least a portion of the video based on the sequence of symbols.

Unified filed its reexamination request on December 21, 2020, based on prior art that clearly disclosed claim 1. Given the strength of the prior art, the USPTO quickly determined that a substantial new question of patentability had been raised. A formal rejection issued on June 25, 2021, detailing how the prior art rendered the claim invalid. Of importance here, the claims were found to only cover the specific, corresponding disclosures in the specification rather than the broad, functional language that was clearly taught by the prior art. In the following months, the patent owner attempted to dissuade the examiners of this interpretation, but those attempts failed, and the reexamination concluded on January 26, 2022. 

Under U.S. law, a patentee is only allowed to use the broad, functional language at issue here if it is willing to be limited to the specific disclosures in the patent that correspond to the functional language. Patent asserters like Access Advance have tried to shirk this requirement when asserting their patents, taking advantage of claim language that looks broad on its face. Worse, Access Advance kept this patent in its May 2022 list of allegedly-essential patents only to finally remove it from its October 2022 list, nearly 10 months after the reexamination concluded.

Hence, the importance of formal scrutiny is demonstrable. Overbroad assertions of hundreds of patents that allegedly cover critical technical standards can, and should, be meaningfully analyzed. In the end, the public benefits when it is clear which are the truly valid and essential patents. Challenges to such assertions have a proven track record of sifting the wheat from the chaff.