PTAB DECISIONS RAISE LEGAL AND ETHICAL QUESTIONS

There are numerous cases involving an independent inventor or small business startup with the next “best mousetrap” whose invention was stolen by a Big Tech firm or a multi-national corporation, including those controlled by the Chinese Communist Party (CCP). What the larger company could not develop in their highly funded Research & Development labs, they simply took from the small inventor because it was valuable and because the Patent Trial and Appeal Board (PTAB), created by the America Invents Act of 2011 (AIA), allows them to do so.

Following are just a few tragic stories of the thousands of independent inventors and startups that have been virtually destroyed by the PTAB Inter Partes Review (IPR) procedure, compliments of the America Invents Act of 2011 AIA, along with a pertinent ethical and/or legal question or two.

Emmy award-winning inventors Glenn Sanders and Howard Stark are pioneers of digital wireless microphones and built their company Zaxcom in reliance on their U.S. patents. Their competitors have infringed their technology and the PTAB is helping the patent thieves by declaring the Zaxcom invention obvious 14 years after the fact. The evidence presented to the Administrative Patent Judges (APJs) at the PTAB to accomplish this was comparing the combining of a backpack with thousands of pounds of equipment and batteries to a small device the size of a Zippo lighter, hidden on an actor’s person, and then claiming it as obvious under Section 103 (obviousness), and therefore unpatentable.

How does someone who is legally and scientifically trained and educated look at a backpack, with thousands of pounds of batteries and equipment, view all of that and come to the conclusion that a Zippo lighter-sized device is something obvious?

Gene Dolgoff was a pioneer in the development of digital projection and created the world’s first Liquid Crystal Display (LCD) projector. Epson attacked claims of one of his patents, with the intent to invalidate at least six of his claims. At the PTAB, Epson twisted the meaning of technological words used in the patent to the non-expert administrative tribunal. Despite the fact that Gene created technological things that never existed before, and also created the terminology for those items, the PTAB APJs allowed these other definitions to make the claims Gene stated in his patent mean something they did not mean, thus transferring Gene’s invention to Epson.

How do legally educated and trained APJs allow plaintiffs to enter into the record definitions of words that did not exist before the defendant actually created the words and then make a decision based upon other made-up, after-the-fact definitions?

Trae Smith is the inventor of the patented internally illuminated Firebugs shoe line, the first real creative innovation in lighted shoes in three decades. The Firebugs line of shoes was immediately successful, with several major shoe companies entering licensing agreements. Unfortunately, a Berkshire Hathaway-owned company and competitor stole the technology. Trae sued for patent infringement, and the infringer petitioned the PTAB to invalidate the patent. The PTAB incorporated definitions not even similar to what is claimed in the patent, finding the invention obvious and therefore unpatentable under Section 103. This, of course, was after the same prior inventions were examined by a Patent Examiner who is an expert in the technology of the invention and had already found that Trae’s invention was not obvious in light of these prior inventions, and therefore granted the patent.

How are plaintiff’s definitions that are not used by the defendant in his patent application even considered as evidence against him?

David Furry invented a leak detection system providing a highly effective way to detect and view otherwise invisible toxic gas emissions. A large corporation stole his idea and petitioned the PTAB to invalidate his patent. The APJs did just that. Even though David’s invention detects near invisible gas leaks that produce a near zero temperature signal, the PTAB stated that his technology was equivalent to a thermal imaging device that detects jet engine exhaust at over 1,000 degrees, thus the PATB found David’s leak detection technology obvious under Section 103.

How could any logical person conclude that a near zero, almost invisible temperature leak is anywhere near the same as highly visible 1,000 degree jet exhaust?

Apple refused to pay inventor Mark Kilbourne for his remote control deadbolt, and then petitioned the PTAB to revoke his patent. The APJs invalidated Mark’s patent ruling that it “would have been obvious” under Section 103 to combine an old-style deadbolt with a Swiss army knife to create the remote control deadbolt.

How does anyone, anywhere think a knife, or even any function of a knife, could be utilized in an electronically controlled remote, thus making the invention something obvious?

In 2014, Aaron Greenspan’s small software company, Think Computer Corporation, sued Square, Inc. for violating Aaron’s patent claims. Square went to the PTAB where it relied on expert testimony from a Carnegie Mellon University professor who received an enormous retainer for his expert testimony. Under oath this expert, who had last ventured into the payments space more than a decade prior, admitted that he had not written 90% of his declaration, despite previously claiming under penalty of perjury that he had written it all. Square’s lawyers were the actual authors of the professor’s expert testimony and they deliberately glossed over key technical distinctions that made all the difference in the case. Due to Square’s false expert testimony — as well as the fact that the chief PTAB APJ on the panel was formerly a lawyer in the same law firm representing Square – the PTAB invalidated Aaron’s patent for a lack of novelty under Section 102.

How does the perjured testimony of a plaintiff-paid expert witness and the blatant conflict of interest of an APJ (a violation of the PTAB Standard Operating Procedures – III.B.2) not invalidate the PTAB and their decision?

Dr. Steve LeBeouf is a prolific inventor with over 200 issued and pending patents. His firm, Valencell, attempted to work with Apple to incorporate their patent protected biometric sensors into the Apple Watch. They even provided a prototype of the proprietary watch, including a back-facing heart-rate sensor, upon receiving requests from Apple to license the technology. Instead, Apple, joined by Fitbit, filed a hailstorm of petitions with the PTAB to invalidate Steve’s patents. Although highly trained USPTO Patent Examiners could find no invalidating prior art to Steve’s inventions prior to issuing patents, the PTAB allowed numerous invalidation attacks on not only the patent in question but also on a number of patents unrelated to the case. Few inventors could have withstood such an attack. Steve settled with Apple, and while the details are confidential, it is very unlikely that he got anywhere near the value of his technology. The fight with Fitbit continues.

How is not patent infringement or trade secret theft when evidence is provided proving a company had received a working prototype they were considering licensing and then produce their own near exact product just a short time later? And, how does the PTAB allow plaintiffs to include other patents that have nothing at all to do with the case?

David Chadwick is the inventor of a patented automated creel for supplying yarn to a carpet loom, making it safer and more efficient. His company, Automated Creel, designed and built the prototype which he then shared with a customer in the carpet manufacturing business. The customer implemented the design and filed two IPR petitions challenging the patent to avoid paying for a license to practice the patent. The PTAB dispute ran almost four years during which the infringement case was stayed, concluding with 13 claims invalidated and eight claims upheld. Automated Creel laid off employees and closed down business due to the uncertainty, delays, and expense introduced by the PTAB.

Similar question to one earlier…how can it not be infringement when a prototype is shared with a potential licensee and the infringing company opens an IPR and is able to invalidate claims in the patents?

The list goes on which would, undoubtedly, bring up more queries.

For now, there is one last, huge question requiring an answer:

Is it possible, according to Ron D. Katznelson’s report (The Pecuniary Interests of PTAB Judges – Empirical Analysis Relating Bonus Awards to Decisions in AIA Trials), that APJ decisions have been, to some degree, based upon earned bonuses for invalidating patents at a rate of $314 per decision? (This, compared to an average of $2 for decisions where APJs uphold all patent claims.)

Inquiring minds want to know.

The PTAB administrative tribunal, created under the AIA, has caused the financial ruin of numerous independent inventors and small business startups, similar to most of the above stories. Their constitutionally protected property right(s) have been taken from them through perjury, conflict of interest, misleading and uniformed definitions, allowing unrelated definitions into the case, lack of due process, etc., etc.

Unfortunately, the most recent patent legislation submitted in Congress is the Restoring the America Invents Act, which is an attempt to gather more power in favor of Big Tech and multi-national conglomerates.

That is NOT what is needed.

Rather, H.R. 5478, the “Inventor Rights Act,” bi-partisan legislation introduced by Mr. Danny K. Davis of Illinois and Mr. Paul A. Gosar of Arizona during the 116th Congress, is the legislation needed to correct the horrific results of the AIA and the PTAB.