A Way to Defeat a Troll – Inter Partes Review

written by James Klobucar, Esq., Patent Attorney at Gearhart Law
www.gearhartlaw.com

Review This….

            Inter partes review may be a term many are not familiar with but it can be used as an instrumental tool in protecting one’s self and business. 

            Inter partes review was given life by the America Invents Act (AIA) signed into law back in 2012. This procedural maneuver enables a third party to challenge the validity of an issued patent. It was designed to be a quick and efficient mechanism for challenging an issued patent as opposed to the overtly costly litigation route. Inter partesreview proceedings are administrated by the Patent Trial and Appeal Board (PTAB). The proceedings are presided over by a panel of administrative law judges who ultimately issue a decision on patentability of the contested patent at the conclusion of the inter partesreview. Any party dissatisfied with the final decision may appeal directly to the Federal Circuit Court.

            One such proceeding instituted recently (August 25, 2014) involves Space Exploration Technologies Corporation (SpaceX) headed up by former PayPal founder Elon Musk, and Blue Origin, LLC led by Amazon founder Jeff Bezos. The focus of the proceeding is patent 8,678,321 granted to Blue Origin, which interestingly enough is entitled “Sea Landing of Space Launch Vehicles and Associated Systems and Methods.” The patent focuses on reusable rocket technology, which many, including Musk, believe is the key to affordable space travel for the mass populous. Generally speaking, the focus of the patent is a rocket booster that once jettisoned can return in a controlled landing and subsequently be reused thus saving a vast amount of resources and money.

            SpaceX contends that Blue Origin’s patent should be invalid given the prior art, or patents and patent applications, available at the time of issuance and that it gives nothing new to the world of rocketry. The patent, itself, is broad and contains very little detail on how Blue Origin hopes to achieve a reusable rocket. SpaceX contends the patent is essentially, “it goes up, and then it comes down.” Thus, sparking this proceeding. 

            Now, in order to institute an inter partes review, one must put forth a reasonable likelihood that the petitioner (challenger to the validity of the patent) would prevail with respect to at least one of the arguments put forth. The standard necessary to invalidate a patent is by a “preponderance of the evidence.” Legally, this is a relatively low threshold and essentially means “more likely than not” or a 51% chance of success. SpaceX’s argument is that this patent teaches nothing new and therefore should have never been issued. They cite numerous patents and patent applications which they claim show and describe all of Blue Origin’s claims in the issued patent. There are many in the community who feel the same way and an oft expressed opinion is that the patent should have never issued in the first place.    

With this seemingly low threshold, there is a moderately good chance of success in invalidating this patent. Thus, if you are concerned about a competitor enforcing a “flimsy” patent against you, one can move to have it invalidated via inter partes review rather than ending up in a costly court proceeding. However, it is important to note that inter partes review is only available during the first year after one has been served with an infringement complaint. 

            Further, inter partes review should be a useful mechanism for those battling so called “patent trolls” as this avenue can help prevent litigation and the overall lower threshold for invalidation noted above should make for a quick decision or settlement. Even yet, the claims, or the metes and bounds, of the patent are construed with a broader interpretation standard in an inter partes review than what one may find in a litigious courtroom. This again further bolsters the challenger’s position as opposed to a monetary driven litigation proceeding. A charge of infringement for a patent troll can now potentially quickly become a case of an invalid and unenforceable patent.

            Thus, one may use an inter partes review to seek an invalidation of an issued patent. The rules set forth by this review process are generally favorable to the challenger and can result in substantially less money spent than in litigation. This may be the right choice for the small business or sole proprietor looking to preserve their business and technology while limiting costs. 

Further Reading:

http://www.uspto.gov/aia_implementation/bpai.jsp#heading-1

http://www.uspto.gov/aia_implementation/faqs_inter_partes_review.jsp

Gearhart Law LLC
Innovation Plaza, Suite 1A 41 River Road, Summit, NJ , 07901, USA 5 Penn Plaza, New York, Ny , 10001, USA 3401 Market Street, Philadelphia, PA , 19104, USA
Phone: 908.273.0700,
Phone: 212.896.3933 ,
Phone: 267.225.4066, $$$