Patent Risk Management
Unified Patents (“Unified”) appreciates the opportunity to provide comments to the United States patent and Trademark Office (“USPTO”) in response to the Request for Comments on Trial Proceedings Under the America Invents Act (“AIA”) Before the Patent Trial and Appeal Board (“the Request”). Unified was founded over concerns with the increasing risk of non-practicing entities (“NPEs”) asserting poor quality patents against strategic technologies and industries. Unified was created with the sole purpose of deterring NPE litigation by protecting technology sectors. Companies in a technology sector subscribe to Unified’s technology specific deterrence, and in turn, Unified performs many NPE-deterrent activities, such as analyzing the technology sector, monitoring patent activity (including patent ownership and sales, NPE demand letters and litigation, and industry companies), conducting prior art research and invalidity analysis, providing a range of NPE advisory services to its subscribers, sometimes acquiring patents, and sometimes challenging patents at the USPTO. Over the past year, Unified has challenged six patents at the USPTO in inter partes review proceedings. Unified supports the USPTO’s commitment to revisit the rules and practice guide after initial experience with the new AIA trials. The following comments are submitted in response to the Office in response to the Request.
The current page limit restrictions are overly restrictive and prevent the petitioner from presenting its argument in an effective and easy to read format. Unified believes that implementing a word limit is more appropriate than the current page count requirement. By switching to a word limit approach and requiring the parties to submit a certification of the word count with the petition, both the Board and parties will be saved time and effort in complying with these page limits. Unified leaves the appropriate word limit to the discretion of the Board. Unified notes that the Federal Circuit has a word count requirement that limits the principal brief to 14,000 words. For reference, Unified’s petitions contain, on average, 15,100 words with the largest petition having a word count of approximately15,800 words. Unified suggests that a word limit of 16,000 words would be appropriate. Unified also suggests that the table of contents and mandatory notices pursuant to 37 C.F.R. § 42.8 should not be included in the word limit. Further, Unified suggests that to make the word limit easier to calculate, the mandatory notices should be submitted as an addendum to the petition instead of being part of the petition itself
Should a patent owner be able to raise a challenge regarding a real party in interest at any time during a trial?
Unified suggests that the Board could provide additional guidance regarding issues of real party in interest, including the possibility of identifying specific questions and factors that petitioners should consider when assessing real party in interest. Such guidance would allow all petitioners and patent owners to evaluate issues related to real party in interest early and in a more efficient manner. Unified suggests that petitions could include a verified statement from the Petitioner addressing the Board’s list of questions and factors related to real party in interest. The Board’s guidance would allow for early resolution of issues involving real party in interest and would prevent needless discovery. Many different parties would benefit from additional guidance on how to appropriately determine real party in interest and include companies with complex corporate structures and joint defense groups. Additionally, Patent Benefits and Cost an increasing number of third party petitioners and public interest groups would also benefit from additional guidance. A non-exclusive list of third-party petitioners already dealing with this issue includes: the Electronic Frontier Foundation, Unified, Patent Quality Initiative, RPX Corp., Printing Industries of America, as well as other trade associations and industry groups.