Despite promises to the contrary, Iancu hasn’t reined in PTAB abuses

Under the current system, the patent owner has to win every time, and the fight is not over until the patent owner loses.


About 19 months ago, Andrei Iancu became director of the United States Patent and Trademark Office. He took swift action in an attempt to change the perception that the USPTO had become aggressively anti-patent and anti-innovator.

The speeches, policies and inaction of Director Michelle Lee led innovators and observers to fear an environment that championed the viewpoints of infringers, not technology innovators. She abruptly resigned in June 2017 without giving a reason.

Almost immediately after being confirmed as director by the U.S. Senate, Iancu began speaking of the important role patents play for innovators. He backed his words with action, sometimes even drawing criticism for actions that are not within the province of the director of the USPTO.

For example, is it the prerogative of the USPTO to issue guidance on what the proper test is for patent eligibility, or should the USPTO merely follow the Article III courts? Well, when the Article III courts have made a mockery of the law to the point where the cases are entirely inconsistent and irreconcilable, someone needs to step in and figure out how to make sense of the mess so that 8,000-plus patent examiners, most of whom are not attorneys, can apply a repeatable and fair test that fits within the jurisprudence of the Article III courts.

Iancu did this by pointing out the obvious: Recent landmark cases Alice and Mayo are very narrow decisions and, if you strictly follow what the Supreme Court said, that does not render software or biotech innovations patent ineligible—regardless of what is ruled by the random, inconsistent panels of the United States Court of Appeals for the Federal Circuit. And since the Supreme Court is supposed to be the final word, the USPTO following the Supreme Court very strictly makes sense.

Misleading stats

Where Director Iancu has failed, however, is with respect to the Patent Trial and Appeal Board.

With great fanfare, Iancu created a Precedential Opinion Panel  that purportedly would result in more decisions of the PTAB being declared precedential on the entire PTAB. There was hope that the POP would address the most important issues—such as serial challenges to the same patent over and over again, the use of the same prior art over and over again, and finally require the PTAB to apply the federal circuit view of what it means to be a real party and interest.

But real reform of the PTAB has not happened, despite tinkering with the Trial Guide. In important ways the PTAB is worse, and the efforts that have been undertaken incorrectly form the appearance of reform.

It is true that the PTAB institution rate has decreased, but that statistic is misleading. For example, Apple recently filed six challenges on the same patent. The PTAB denied five and instituted one.

As far as the PTAB is concerned, that corresponds to an institution rate of 1 for 6. As far as the patent owner is concerned, the institution rate is worse than 1 for 1. The patent owner had to respond to six separate petitions on the same patent, which was ultimately instituted anyway.

Under the current system, the patent owner has to win every time, and the fight is not over until the patent owner loses. Worse yet, those claims not instituted can and no doubt will be challenged again and again until they ultimately are instituted.

Finjan follies

Look at Finjan. It has a portfolio of approximately 30 patents and has already fought and won 80-plus times at the PTAB—not including the petitions it has fought off that were not instituted—because its portfolio is so strong and it has the funds to fight. All total it has lost just a few claims, with every other claim either never instituted or withstanding challenge.

Yet its patents—about eight of the most important ones, to be exact—are challenged repeatedly. Where is Director Iancu? He has the power to stop this from happening.

Director Iancu has done much good in many aspects, but enough time has passed to conclude that his efforts relative to the PTAB have been too few and extremely disappointing.