An inventor’s story

As relayed to us…

A tiny, innovative developer of video security technology was targeted by a larger competitor using six concurrent IPR’s in 2013-14. The PTAB initiated six (6) Inter Partes Reviews at the same time. More importantly, the PTAB imposed an unfair procedural burden, in all of these proceedings, that prevented the tiny patent owner from amending his claims in the IPR’s. When questioned about how the patent owner should amend his claims as contemplated by the IPR statute, the panel of judges coldly explained that the IPR rules set by the USPTO to enact the IPR law established an extremely high procedural burden for the patent owner to amend claims in an IPR, and that no other patent owners had succeeded in amending claims in any IPR proceeding. This stopped the patent owner from preserving his rights and pulled back the curtains on procedural unfairness in all IPR proceedings. The USPTO rulemaking and conduct of IPR proceedings simply ignored Congressional intent and the letter of the IPR statute, which provided opportunity for patent owners to amend their claims attacked in IPR proceedings. This enabled the agency to quickly kill the patents and deprive the patent owner of recourse to an Article III judicial proceeding. Over just a few months the tiny patent owner was forced to bear great expense defending the six doomed, procedurally unfair IPR’s and, ultimately, endured loss of six previously valuable U.S. patents, and lost their investment in prosecution of the patent applications.

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