That’s Not What They’re For

On July 28, 2015, the patent owner in Coalition for Affordable Drugs VI LLC v Celgene Corporation, IPR2015-01103, filed a motion for sanctions pursuant to 35 USC §316(a)(6) and 37 CFR §42.12, arguing that petitioner was misusing inter partes review to manipulate patent owners share prices, and that their petitions “represent an ongoing abuse of the IPR process.”

The Motion complains that the petitions are driven entirely by an admitted “profit motive” unrelated to the purpose of the American Invents Act (“AIA”), as set forth in the bill itself and its legislative history, and unrelated to any competitive interest in the validity of the challenged patents.  But when a competitor is challenges a patent, it too is motivated by profit — the profit from making and selling a product. The pursuit of profit, then, would not seem to be an altogether improper motive.

The patent owner argues that the true purpose of AIA was to combat trolls, and reign in abusive law suits.  Does this mean that any IPR that is brought against a non-troll is likewise contrary to the purpose of the AIA and sanctionable?  The patent owner asks the Board to dismiss the Petition, but what if the Petitioner, despite its nefarious purpose, is correct about the invalidity of the patent?

The patent owner is “confident in the strength of its patents, and argues it “should not be required to expend extensive resources defending them in the face of . . abuse of process.”  While one can sympathize with patent owner’s plight, if, despite its confidence, the patents are invalid, doesn’t society benefit from the removal of  the patent’s improper restraint on competition, even if it is motivated by filthy lucre?

Congress could have imposed some threshold requirements for PGR’s and IPR’s, as it did for CBMR’s, but didn’t.  When is it wrong to try to profit from the unintended consequences of the actions of Congress?  The Board may answer that question when it decides the patent owners’ motion.




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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.