3 Questions For Unified Patents CEO Post-Oil States (Part I)

Unified’s CEO has graciously agreed to a written interview -- one that’s timely in the immediate aftermath of the Supreme Court’s recent rulings on the constitutionality and implementation of IPRs.

The passage and implementation of the post-grant (e.g., Inter Partes Review or IPR) proceedings created by the America Invents Act has led to the development of numerous new patent-focused business models. One of the leading IPR-focused companies is Unified Patents, which touts itself as “the only third-party solution that effectively deters and never incentivizes non-practicing entity (NPE) litigation.” Beloved by their members and the nonmember beneficiaries of their frequent IPR filings against oft-asserted NPE-owned patents, Unified has also found itself the subject of criticism by the self-styled “inventor’s rights” movement, as well as from the NPEs whose patents are being challenged.  Unified’s CEO, Kevin Jakel, has graciously agreed to a written interview — one that’s timely in the immediate aftermath of the Supreme Court’s recent rulings on the constitutionality and implementation of IPRs. (Caveat: Our firm has represented clients who were adverse to Unified in the past. That prior experience does not alter my belief that Unified is an important player in today’s patent landscape, and that my readership will benefit from hearing from their CEO.) As usual, I have added some brief commentary to Kevin’s answers below, but have otherwise presented his answers as he provided them.

  1.      The patent community is collectively digesting the recent Supreme Court decisions regarding IPRs. At the same time, scrutiny of the PTAB continues apace, with recent criticisms targeting the legal experience of the APJs, on top of the usual complaints about how the PTAB handles procedural and legal issues as it continues issuing institution and final decisions on challenged patents. In your view, what are the most salient questions we should be asking about the PTAB right now, or should we be cutting the PTAB slack as it attempts to implement the AIA’s new adversarial proceedings as best as it can?

KJ: Now that Oil States has passed and it appears inter partes reviews are indeed constitutional and here to stay, the Patent Office can confidently push forward with carrying out Congress’s goals in implementing, refining, and perfecting all parts of the AIA. The Supreme Court’s decision in SAS Institute Inc. v. Iancu will be at the forefront of any reforms in the short-term, in addition to general concerns about transparency in the review process, fairness, efficiency, and effectiveness.

Issued the same day as Oil States, the Court in SAS Institute held that when the PTAB institutes an inter partes review, it must decide the patentability of all claims the petitioner challenged. The 5-4 majority opinion, authored by Judge Gorsuch (who wrote the dissenting opinion in Oil States), removed the Board’s ability to issue a “partial institution” and required that the Board make a “yes-or-no” choice in the decision whether to institute a trial. While acknowledging that this binary interpretation of the Director’s authority to institute review may be inefficient, the Court stated that such concerns were better addressed by Congress.

From the perspective of in-house counsel, one consequence of SAS is that parties may be more selective when drafting IPR petitions now that estoppel may apply to all challenged claims — and not merely those that went to trial before the Board. For the PTAB, this may decrease the workload for APJs at the institution stage, but increase it overall, as each instituted case may include more issues to be addressed before the Board may reach a final written decision. Time will tell.

You note PTAB critics have recently alleged the Board lacks clear and predictable rules governing the appointment and selection of panel judges. One such concern is the practice of “panel stacking,” a pejorative term referring expanded panels of more than three judges that are allegedly added to achieve a desired outcome.  But to be fair, the agency must maintain policy consistency across panels comprising over 270 judges, and as a quasi-judicial, quasi-administrative body should not be issuing inconsistent judgments. And there is little evidence to support the salacious allegations that the PTAB is acting with some hidden agenda. To what end?  Nonetheless, critics’ transparency concerns are worth addressing, and the new Director seems prepared to do so.

Much to the credit of the USPTO, the PTAB is actively working to better educate practitioners about the administrative processes behind expanded panels. In a study released earlier this year, the PTAB analyzed these panel decisions, and found that (1) such panels are exceedingly rare and (2) except for two cases dealing with the narrow (and divisive) issue of same-party joinder, all expanded panels reached the same result as the underlying three-judge panel. (PTAB Expanded Panel Study (March 2018)). In other words, the allegation that these panel represent intentional bias is contradicted by the data.

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But even if there is little evidence to support bias allegations at the Board, providing greater transparency in the procedure behind selecting a panel benefits the PTAB and the public, and would help to alleviate any such concerns.

GK: In my view, Kevin’s response does a good job of addressing some of the important questions raised by prior PTAB procedures, as well as some of the uncertainty that follows the recent Supreme Court decisions. At the same time, it seems clear that Kevin is in the camp of cutting the PTAB, and in particular Director Iancu, some slack in terms of implementing changes both necessary and aimed at creating a more transparent process for litigants. It will be interesting to see how much public input will be taken into consideration regarding the implementation of any new rules, and we can be sure that Unified — as a repeat PTAB customer — will be watching any changes very closely. As will all patent stakeholders, from patent owners, to accused infringers, to counsel representing either side.

We will continue with Kevin’s answers to questions 2 and 3 next week.

Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.


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Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.