Who files inter partes review actions at the USPTO?
Kenyon & Kenyon re-published work on users of The IPR procedure:
Although inter partes review proceedings are designed to provide those accused (or at risk of being accused) of patent infringement with a faster and less costly proceeding to challenge the validity of a patent, they have also drawn the attention of outsiders. There are several types of Patent Trial and Appeal Board (PTAB) 'crasher', each with its own motivation for challenging the validity of one or more patents. What they have in common is that each has filed one or more inter partes review petitions despite having no risk of being charged with infringement of the subject patent(s). To date, PTAB crashers have accounted for 47 inter partes review petitions.
One type of PTAB crasher is patent defence firms. These firms usually make revenue from eliciting fees from practising companies and then file inter partes reviews targeting patents that potentially pose risks to their clients (however, Iron Dome is a patent defence firm that has (or at least had) a different business model). Patent defence firms are often subject to the accusation that they are in privy with their clients and, in some cases, their inter partes review petitions have been denied for failing to list all real parties in interest.
Financiers are another type of PTAB crasher. The number of inter partes review petition filings by financiers has been increasing rapidly. These PTAB crashers challenge patents owned by publicly traded companies and appear to be gambling on shifts in stock prices. Inter partes review petition filings of this kind are on the upswing. Of the nine inter partes review petitions filed by financiers, five were filed in the past several months and two were filed very recently by the Coalition for Affordable Drugs.
Patent monetisation firm Intellectual Ventures has also jumped into the inter partes review arena by filing inter partes reviews against patents owned by district court litigation foes, presumably to put additional settlement pressure on them.
Finally, there are activists that challenge patents because they believe it is in the public interest. The US Patent and Trademark Office fees of $23,000-plus per petition may be a significant deterrent for these types of filer, but by our count two such petitions have been filed to date.
**To elaborate on Intellectual Ventures, in one situation, Xilinx challenged the validity of IV patents in a district court action and IV retaliated by challenging the validity of four Xilinx patents in IPR actions.
The background of this case is complicated, because Xilinx was an investor in IV. As Reuters
reported on May 2, 2014
Chipmaker Xilinx invested in two Intellectual Ventures funds and licensed a portion of IV's patents, but resisted IV's entreaties to license more patents in 2010, court filings show. Xilinx eventually asked a California federal judge to declare those IV patents invalid, while IV countersued in Delaware, accusing Xilinx of infringement.
May 2 (Reuters) - Patent owner Intellectual Ventures has settled a lawsuit against one of its own investors, chipmaker Xilinx, a case that had been closely followed by advocates seeking to change the U.S. patent system.
A court filing on Thursday disclosing the settlement did not discuss terms. Intellectual Ventures and Xilinx Inc had been scheduled for trial this month.
**at this point! Kyle Bass is involved in at least five IPRs against drug patents.
It is suspected his interests are shorting the stock of the target companies prior to filing
the IPR, in anticipation of a stock price drop. The stock of Acorda did drop about 10%
after the IPR filing. The active ingredient of that drug was 4-amino pyridine.
**Activists used the previous inter partes re-examination procedure to challenge patents
prior to IPR. So nothing new here. An example, well-covered in IPBiz, was Consumer Watchdog
challenging WARF in the stem cell area.
**In passing, Kenyon & Kenyon was the law firm representing AGIS against Life360:
A piece in Ars Technica begins:
In May 2014, Life360 CEO Chris Hulls received an aggressive patent demand letter. The letter, from lawyers representing a company called Advanced Ground Information Systems (AGIS), told him he needed to pay for a "royalty-bearing license" to its four patents, or Life360 and its customers would have to "cease and desist" from infringement.
In other words: pay up, or shut down your company. The letter demanded a response within three days. Hulls wrote back: (...)