Serial IPRS: USIJ Rebuttal to IP Law360 Article

This responds to a recent article by Michael Berta and Patrick Reidy published in IP Law 360 on November 16, 2018, challenging the conclusions of a USIJ White Paper that directs attention to the widespread, abusive and unlawful practices engaged in by a number of large companies when accused of patent infringement (www.usij.org.research/2018/serial-attacks). The Berta and Reidy article, entitled “Multiple IPRs for Same Claim Are Often Not Repetitive,” misstates the language of Section 315(e)(1) of the patent statute and from that misstatement argues essentially that if one IPR is a good way to lower the cost of litigation, multiple IPRs are needed to do a more thorough job. This argument carefully skirts the full language of the statute and therefore distorts its meaning, which makes clear that once a written decision is rendered by the PTAB with respect to a given patent claim, no further IPR challenges are permitted by the same petitioner or its privies. If the PTO would apply that statutory provision the way it is written and in a manner consistent with what Congress intended in creating IPRs in the first instance, there would never be a reason to implement a second petition by the same petitioner because the written decision on the first petition would terminate access to the entire IPR procedure.

A further flaw in the manner in which the PTO handles IPRs is evident from the Berta and Reidy article, which suggests that it is more efficient to have several companies collaborate to challenge the same claim in coordinated IPR proceedings. This is a reference to the practice of gang-tackling, for lack of a better term, by splitting up the grounds for attack in hopes that one of them will score a hit. A proper application of the real party in interest requirement, however, should bar all collaborators from pursuing further IPR petitions upon the rendering of the first written opinion by the PTAB.

The Berta and Reidy article also suggests that multiple IPRs are required because the page limit does not allow an infringer to assert all of its arguments in just one. Nothing in the scheme of the IPR system allows a party to override the page limits and other restrictions of the proceedings by simply filing more petitions. This is precisely the type of abuse that the statutory structure was designed to prohibit.