Bizarrely Short Patent Key to G+ Clasping to Victory in Patent Row with Samsung

Also: risk for patent owners relying on Amazon's enforcement program, why is PTAB the way it is, and Judge Alan Albright makes non-patent news.

Programming Note: after taking a very unscientific poll of America’s busiest in-house counsel and public policy advocates, Voice of IP has decided to move its weekly update release from Monday to Tuesday morning.

This Week In Patents

Tale of 2 Patents: last week, Voice of IP shared the news of G+ Communications receiving an increased award of $142 million verdict for Samsung’s infringement of 2 standard essential patents (SEPs) that G+ acquired from China’s ZTE. But there turned out to be more interesting news to come about both patents.

• One of VIP’s favorite tipsters quickly texted (pictured above) to note that one of those 2 patents - US Patent 8,761,776 (Verdict: $61 million) - had a very short specification and only 3 claims. Not the type of patent one would imagine investors would be buying & successfully enforcing.

• Shortly after the verdict, the PTAB decided that the other patent - US Patent 10,736,130 (Verdict $81 million) - was invalid. So, Judge Gilstrap wiped away the verdict for infringement of that patent.

  • In response, G+’s Jeremy Pitcock noted that “[i]t is also interesting that Samsung did not even file an IPR against the '776 patent.” Likely thanks to that decision by Samsung, it was the only one that survived the patent litigation gauntlet (so far…before the Federal Circuit has had a chance to weigh in).

• PRIP’s Editor in Chief Michael Ma pointed out that both of the corresponding Chinese patent applications were never issued as patents after rejections by China’s Patent Office and ZTE’s decision to withdraw the Chinese application corresponding to the ‘130 patent.

Amazon’s patent enforcement process (APEX) creates personal jurisdiction. Patent owners beware.

PTAB - why are you the way that you are? There’s lots of competing explanations and theories regarding the PTAB’s high invalidation rates in post grant proceedings. Proponents of the PTAB argue that the PTAB is just doing its job by invalidating claims that should have never been issued in the first place. However, that alone doesn’t explain why the PTAB invalidation statistics are so different from how district courts operate (see G+ above).

Others argue that the PTAB is incentivized to invalidate patents by warped incentives to increase petition fees from those initiating post-grant proceedings. However, that doesn’t explain what individual PTAB judges would gain by ruling in this way in individual cases. Most PTAB judges are clearly driven by doing what they think is right.

Evan Zimmerman, in an interesting write-up about the PREVAIL Act, offers a compelling explanation:

The PTAB was created in a particular place and time. Fundamentally, the PTAB was created at a time that people were concerned about patent trolls… The U.S. Senate and House were more concerned with patent trolls stifling innovation than inventors being able to protect their patents. As a result, they needed a cheap way for small businesses and startups to quickly challenge, for lack of a better term, bad patents. The IPR was a way to do that quickly.

In other words, the PTAB is just doing what it was meant to be doing when it was created by Congress. This reminds Voice of IP of another related - but often overlooked - factor that explains the PTAB’s readiness to invalidate patents.

Many of the initial PTAB hires for the post-grant proceedings came from practices that primarily focused on helping defendants in patent litigations. So, they spent their (often short) preceding legal careers primarily in the trenches of helping companies deal with “bad patents.” Their whole view of how the patent system works was shaped by that before they stepped into their new roles as PTAB judges. They were now reviewing the same type of invalidity arguments that they were used to putting together. It’s no wonder that these PTAB judges shaped the PTAB’s broad acceptance of such arguments and willingness to invalidate.

Judge Alan Albright - America’s go-to patent judge - signs letter stating that “absent extraordinary change, [he] will not hire anyone who joins the Columbia University community—whether as undergraduates or law students— beginning with the entering class of 2024” due to Columbia University becoming “ground zero for the explosion of student disruptions, anti-semitism, and hatred for diverse viewpoints” since the October 7 terrorist attacks by Hamas.

• If history is any guide, precocious, aspiring patent litigators should attend Baylor or University of Texas to increase their chances of clerking with America’s top patent judge.

Do you know why Samsung did not file an IPR against the '776 patent? Do you know of an important, developing IP story?

Please email eli@VoiceOfIP.com or send message eli.92 on Signal.