Sep 3, 2020 - Technology

Why Big Tech is suing the Patent Office

Illustration of a small hand and gavel next to giant binary code
Illustration: Sarah Grillo/Axios

Apple, Google, Cisco and Intel this week sued the U.S. Patent and Trademark Office, challenging the agency's recent rule that it can refuse to adjudicate patent claims while litigation about them is pending in court.

Why it matters: The companies say the rule hurts innovation and their legal rights, letting invalid patents stay on the books while lawsuits slowly wend their way through court.

Context: The rule, which was introduced by the USPTO in March and became final in May, deals with the agency's obligations around inter partes review (IPR) — a sort of expert-court process for assessing whether patent claims are valid.

  • USPTO says deferring to an ongoing court case is more efficient than setting up a parallel review internally.

Yes, but: District courts are costly and have less expertise in patent law, Cisco general counsel Mark Chandler told Axios. Cisco owns 16,000 U.S. patents, but the agency is undermining its ability to invalidate unworthy ones, he said.

  • "I don't know why [USPTO director Andrei Iancu] would do something that would weaken the patent system and allow invalid patents to remain on the books," Chandler said.

What they're saying: Chandler told Axios that tech companies had been chatting about their various experiences of being denied IPR review and found similar things were happening across the tech industry. They "got together and decided it was more efficient to bring one lawsuit instead of four," he said.

  • Tech companies see the suit as "a challenge to a sum" of ongoing changes at USPTO, said Josh Landau, patent counsel at tech trade group the Communications and Computer Industry Association.
  • "Google is joining others to ensure that this process remains an effective tool for maintaining an efficient, streamlined and strong patent system, as Congress intended,” Jose Castaneda, a Google spokesperson, told Axios.
  • The USPTO declined to comment.

Meanwhile: On Tuesday, the same day the firms filed suit, the USPTO's Patent Trial and Appeal Board, which conducts the IPR process, rejected five of Google's appeals seeking review of another company's patent claims. The board cited an upcoming court case in the Eastern District of Texas, which is known to be especially friendly to patent holders, Law360 reports.

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