Let’s make the Patent Trial and Appeal Board fair for everyone in wake of recent ruling

If the PTAB is necessary to rid the world of bad patents, it should not matter whether they were acquired by small and mid-size entities or acquired by large entities.


The United States Supreme Court has ruled that the director of the United States Patent and Trademark Office, by and through his designees the Patent Trial and Appeal Board, has the unchallengeable authority to institute inter partes review proceedings even when they are brought outside the statute of limitations.

It is difficult to believe the above characterization of the Supreme Court’s April 20 decision could be accurate, but it is—and it is no longer open for debate or discussion.

The above description is a fair and accurate summary of the Supreme Court’s decision in Thryv, Inv. v Click-to-Call Technologies, LP. The stupefying nature of the decision comes about because of an extraordinary interpretation of one statute that has consistently been read to trump all logic and accountability: that in Section 314(d) of U.S. patent code, Congress said decisions to institute an IPR (a procedure for challenging the validity of a U.S. patent before the USPTO) are not judicially reviewable.

What the Supreme Court has now said is that Section 314(d) is the sovereign statute, even to the point that it trumps a statute of limitations. This was made clear by the decision in Thryv because Section 315(b) requires IPR petitions to be brought within one year of the petitioner being sued for patent infringement.

So, what if the PTAB were to institute an IPR proceeding on a petition filed more than one year after the petitioner was sued for patent infringement? According to 315(b), the petition cannot be granted.

The language of 315(b) is mandatory and leaves no room for interpretation. Well, at least until recently.

Definitive confirmation

According to the Supreme Court, because Congress has prevented judicial review of institution decisions, that means there is no ability for an Article III court to enforce the statute of limitations in 315(b)—not even the United States Supreme Court.

Thus, we now have definitive confirmation of what opponents of the PTAB have said all along: The PTAB reigns supreme without any checks or balances on its power. Even the Supreme Court says it is helpless to stop a rogue PTAB panel that might openly disregard something as fundamental and basic as a statute of limitations.

Clearly, with the Supreme Court having ruled in Cuozzo that post-grant challenges are constitutional, and then in Thryv ruling that even the high court cannot provide even a modicum of oversight, the PTAB is the most important patent court in the United States.

The PTAB’s decisions on the most fundamental process issues are not subject to any judicial review, and as we have seen over and over again on a substantive level, the United States Court of Appeals for the Federal Circuit refuses to provide any meaningful judicial review.

It is hard to fault the federal circuit, though. The Senate-confirmed Article III judges on the circuit make up an inferior tribunal to those administrative patent judges on the PTAB who are not Senate confirmed, are unconstitutionally appointed officers, and often have only several years of legal experience before becoming judges.

Clearly, the federal circuit wouldn’t want to run afoul of the real judicial power in the patent system.

Make PTAB accessible

This begs an important question that Congress must soon wrestle with regarding access to the PTAB.

We have been told over and over again how essential the PTAB is to the patent system, how necessary the board is with respect to rooting out bad patents that never should have issued. And the PTAB has been very good at killing patent claims and patents.

But there is a fundamental unfairness at the PTAB. If it is so important, why are the fees so high? If the PTAB plays such a vital role in correcting the egregious mistakes of patent examiners (of which there are apparently many, given the number of valuable patents that die upon review), why should only those patents that are owned by independent inventors, universities, start-ups and research and development companies be the targets? What about the truly ridiculous patents that are issued to large entities?

Congress likes patents being challenged because those with large patent portfolios control marketing challenges and manufacturing, and they want to implement the inventions of others. The PTAB makes their lives easy. They run no risk of losing anything.

The PTAB continues to grow with power. So, it seems time to use it instead of constantly trying to topple it.

Fees fiasco

The USPTO is denying access to the PTAB with exorbitant fees. Such high fees to institute IPR proceedings guarantees that those with money can bring these challenges against upstart innovators, while those upstart innovators who have little funding have no ability to challenge the often clearly unpatentable claims and patents issued to tech giants and pharmaceutical companies. Because unless you believe patent examiners only make mistakes when examining valuable innovations invented by small entities, you must believe patent examiners make mistakes when examining patent applications filed by large entities.

Now, at a time when the world is fighting to stay alive as we collectively fight COVID-19, it seems practically immoral, irresponsible and unconscionable for the USPTO to charge any fee for the institution of an IPR.

Now is the time to be busting patents of those with tens of thousands of patents in search for cures, treatments and solutions for safely reopening the economy.

Now is not the time to have $15,500 fees for the filing of an IPR to challenge bad patent claims that never should have issued in the first place.

Size should not matter

If the PTAB is necessary to rid the world of bad patents, let’s rid the world of bad patents—regardless of whether they were acquired by small and mid-size entities or whether they were acquired by large entities. Let’s rid the world of bad patents, regardless of whether the petitioner with knowledge of patent examiner error possesses the $15,500 filing fee or not.

Charging exorbitant fees to file IPR petitions does nothing less than pick winners and losers. It prevents those without money, but with knowledge of egregious patent office mistakes, from helping to liberate non-inventions from the clutches of evil monopolists.

If the PTAB is supreme, let it be supreme. And let everyone have access, regardless of ability to pay.