Back in 2017 I did some analysis for an inter-partes review ( IPR2017-00886) at the U.S. Patent Office. The patent in question, 7,480,694, covers a way to make a slide show of web pages. The decision was recently issued and I thought that readers might be interested to see it. (All of the documents in any IPR are public, incidentally, and available for free download via the Web.)
9 thoughts on “Patent Office IPR proceeding is resolved”
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Congratulations on helping kill the patent. There is no question that bad patents should be weeded out of the system.
“SUMMARY. Petitioner has proved by a preponderance of the evidence that claims 1–33 are unpatentable. We deny Patent Owner’s Contingent Motion to Amend to replace claims 1–33 with substitute claims 34–51.”
I really wish they would end these IPR written decision summaries with “You didn’t build that. –Obama July 13, 2012.”
President Obama signed the AIA into law on Sept. 16, 2011. He also put a former Google lawyer (now that Google is so powerful, they don’t necessarily need strong patents like they once may have) in charge of the PTO to implement the IPR provisions of the AIA. The first IPR was filed shortly after that quote on Sept. 16, 2012.
In the IPR system, it is very rare for a patent owner to win. “Only 4 percent of all PTAB petitions for review proceedings end with a final written decision in which all claims are upheld as patentable.” See http://www.ipwatchdog.com/2017/06/14/90-percent-patents-challenged-ptab-defective/id=84343/
As noted above, bad patents should be killed. However, when over 90% of the challenged patents are later found to be incorrectly issued (by the same organization that issued them after a third party pays them more money for the challenge than the original inventor did to get and maintain the patent), it just makes the system look like a broken sham. It is no wonder that the US patent system has fallen from #1 to #12 in raking. https://www.reuters.com/article/ip-patent-system/u-s-patent-system-now-only-worlds-12th-best-business-group-idUSL2N1PY2T5 .
Hopefully over time, the US patent system will right itself and become great again. Otherwise, another country will “build that” (like they do with everything else we buy).
Why did you want to squash this patent in particular?
Townie: As an independent expert witness, I don’t have a dog in the fight. I just answer the questions that attorneys ask me to analyze (see https://philip.greenspun.com/software/expert-witness ). The attorneys also are gracious enough to pay for my time and effort!
Anonymous: I think a better passage from the article you cite is “Overall, across nearly 7,000 PTAB petitions, the overwhelming majority of which are IPRs, only half reach the institution stage.” The PTAB institutes only if they think it is likely that claims are invalid. Think of it as analogous to a regular court in which half of cases are dismissed after the Complaint and a bit of supporting documentation are filed. So of course it will be the case that most of the IPRs that are instituted result in the invalidating of at least one claim. There wouldn’t have been an institution if the PTAB didn’t think that there was a error. You also have to look at selection bias. Nobody is going to invest hundreds of thousands of dollars in lawyers, an expert (like me!), and filing fees to challenge patent claims that seem solid. So the petitions are almost exclusively against patents that have at least some apparent weakness.
It is a little strange that the Patent Office collects fees for issuing patents and then collects more fees for hearing a challenge to that work. There is a perverse financial incentive for the Patent Office to issue invalid claims and then harvest fees at the PTAB to officially invalidate those claims. I don’t know of any evidence that they are doing this intentionally, but the structure is set up this way.
Obvious and/or trivial patents (ie: 99% of them) should never be granted in the first place. Hopefully emperor Trump brings some common sense to the USPTO.
Patent examiners (typically with undergrad degrees) usually are given ~7 hours to read a patent application, do a literature search, and “write” a ~15-page Office Action. So the first line of defense is weak or better said, total failure, leading to most of the patents being meritless (now do they add “diversity”??). I advocate for an open source peer-review system where patent examiners function as editors rather than judges.
Gotta love it when you get a high hourly rate for redrawing the http request-response flow.
Much better than the $20/hr flying for Delta Connect… and it’s no easy feat, especially when the oral hearing and final written decision so heavily depended upon your expert declaration, so Congratulations!
Here’s my quick fix for the patent system:
Limit the number of patents that are issued every year. Only allow the “best” ideas to be patented, perhaps allocating a certain number to certain categories. Allow an idea to be submitted once.
Shoot anybody that uses the lawyerly neologism “intellectual property” seriously. Ideas cannot be owned. Patents snd copyrights are state-issued monopolies and must be re-recognized as such.