ex-USPTO head and APJs accused of 'stacking the deck' against inventors
A civil rights suit has been filed against ex- US Patent and Trademark Office (USPTO) director Michelle Lee and several current and former Patent Trial and Appeal Board (PTAB) judges, accusing the former officers of unconstitutional “rigging” of the inter partes review system.
Martin Hoyle, inventor and chief executive officer of BE Technology, filed the complaint with the US District Court for the Western District of Tennessee on Monday, claiming that the board’s “tortious and unconstitutional conduct” deprived the company of its IP rights.
He claims that “quasi-judicial administrative proceedings” at the PTAB deprived him of two “foundational” computer patents in order to allow big tech companies, including Google and Facebook, to utilise infringing technologies without legal recourse.
The patents in question are US Patent 6,628,314 and US Patent 6,771,290, which were both assigned to BE Technologies
The complaint cites several patent office practices as a possible reason for the patent invalidations in inter partes reviews including panel judge compensations and “panel stacking”
He argued that these practices “arguably constitute an independent due process violation that would seriously undermine the constitutionality of BE Technology’s IPR proceedings if presented alone”.
As a result, Hoyle has accused the court of violating the Fifth Amendment of the US Constitution, which states “[n]o person shall be … deprived of life, liberty, or property without due process, of law” and seeks compensatory and punitive damages at an undetermined amount to be proven at trial.
The complaint says: “While it appears that the USPTO is undertaking certain necessary steps towards implementing a more just and equitable system… these corrective measures offer nothing in the way of relief or remedies to the plaintiffs—who were deprived of valuable property rights after being forced to adjudicate the validity of their patents in a forum where the deck was improperly stacked against them, without their knowledge.”
Background
Both the ‘314 and ‘290 patents were issued between September 2003 and August 2004 and directed towards the “technical implementation of certain user-centric personalisation features for internet-based web browsers” and the gathering of “data that was used to deliver targeted advertising products via various web-based applications”.
The USPTO ended up rejecting several patent applications filed by Google between 2006 and 2007 on the grounds that they targetted subject matter covered by Hoyle’s patents, leading the tech giant to abandon the applications. At the time, the head of patents at the firm was defendant Michelle Lee.
In January 2007, Hoyle was made aware that Google, along with several other tech companies, had begun implementing targeted advertising technologies that he claims “directly infringed” on his patents.
Therefore, BE Technology filed a patent infringement suit against Google, Facebook, Microsoft and Samsung in September 2012—the same year that Lee joined the USPTO and the PTAB board and IPR proceedings were introduced.
The tech companies decided to file for an inter partes review of the ‘314 and ‘290 patents. The PTAB conducted seven IPR proceedings for the validity patents and ruled against BE Technologies in each case.
The case was appealed to the Court of Appeals for the Federal Circuit, which upheld the PTAB’s ruling in two unpublished decisions.
In 2017, Hoyle became aware of “scandalous revelations” about the USPTO’s inner machinations, including reports that the agency’s leadership would allegedly “stack” PTAB panels with specific judges in order to “indirectly influence” proceedings.
He also cited the “improper compensation structure” for the PTAB Administrative Panel Judges, which promoted unanimous decision making rather than dissenting opinions.
Hoyle also accuses the USPTO of “big tech” bias with the Sensitive Application Warning System (SAWS) programme, which he says operated in secret from 1994 to 2014 to flag applications by independent inventors that were perceived as “potentially threatening” to the existence of powerful firms and industries”, according to the complaint.
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