Another Director Review Request Demonstrates the Extent of PTAB Hubris
In Innoscience Technology Co. LTD., v. Efficient Power Conversion Corp. (IPR2023-01381), not only did the PTAB institute a challenge brought by a China-based infringer (Innoscience) against a U.S.-based patent owner (Efficient Power Conversion), but the challenge was instituted
after
completion of a week-long trial at the International Trade Commission (ITC) and during the process of post In Innoscience Technology Co. LTD., v. Efficient Power Conversion Corp. (IPR2023-01381), not only did the PTAB institute a challenge brought by a China-based infringer (Innoscience) against a U.S.-based patent owner (Efficient Power Conversion), but the challenge was instituted after completion of a week-long trial at the International Trade Commission (ITC) and during the process of post-trial briefing.
While the PTAB was still just a concept, during the debates over the America Invents Act (AIA) we were repeatedly told that the tribunal would be a faster, cheaper alternative to expensive patent litigation. The PTAB is not only slow and expensive but also adds unnecessary cost and process to already completed cases. The PTAB is now the center of the battle for patent owners who must defend the same patents, same claims and same prior art over and over again. This PTAB procedure goes beyond being arbitrary or capricious because that would suggest a recklessness at play. The mischief at the PTAB, however, is deliberate and intentional. The Administrative Patent Judges believe they are better than other judges and decision-makers, and don’t give a damn if another judge or decision maker has already made a final ruling. It’s as if the PTAB collectively channeled Judge Dredd, played by Sylvester Stallone who confidently declared “I am the law!” The PTAB is now a near-impassable toll, which acts more like a speed bump than a brick wall. What irony it is that patent owners are portrayed by the PTAB as trolls. The real trolls are the PTAB, jumping out to practically mug patent owners even after they have successfully defended their patent in a proceeding and at a tribunal that by all rights should receive at least a modicum of comity.
Discretionary Denial Flip-Flops
Of course, those familiar with the on-again-off-again nature of the policy behind PTAB institution know how this type of lunacy has been allowed to happen. In June 2022 the then U.S. Patent and Trademark Office Director Kathi Vidal issued a memo instructing the PTAB not to deny institution of a inter partes review or post grant review under Fintiv if the request for denial is based on a concurrent ITC proceeding. In February 2025, Acting USPTO director Coke Stewart rescinded the June 2022 Vidal memorandum, which meant that under current policy, the IPR filed By Innoscience would be denied to respect the work already done by the ITC. The obvious answer is that the PTAB thinks they know better. In fact, the 2022 Vidal memorandum specifically states that the PTAB knows better than Administrative Law Judges from the ITC, and ITC Commissioners who are appointed by President and confirmed by Senate. This is the height of arrogance. It is because of this conceit that almost everyone in the industry now accepts as a truism the PTAB’s overreach. It is not appropriate for the APJs to take any action when a federal district judge or the ITC have already affirmed the validity of patent claims. It is a complete waste of time and resources to allow identical parties and patents to be litigated to different conclusions. It is impossible to imagine a more absurd outcome than two administrative agencies reaching completely different conclusions on the same issue, even if they were drunk. This IPR wasn’t a cheaper alternative to litigation. It was an unnecessary and expensive process for both parties. There is now a direct clash between the final determinations from two agencies as to whether the patent is valid. Why would any rational system give the final say to inferior officers of PTAB instead of constitutionally nominated and confirmed officials? This whole strange episode of PTAB supremacy is a lot like giving the employee final word over the boss.
Not Too Late
Thankfully, it is not too late for the USPTO to do the right thing. Acting Director Stewart recently issued a Show Cause Order, demanding that the challenger explain why the IPR should be terminated after the patent survived five revisions and a federal court proceeding which was affirmed by Federal Circuit. A similar Show Cause Order would be appropriate. You can win in other tribunals, but you will still have to face a PTAB who knows better. This needs to change. Terminating this IPR, as it was granted in an unwarranted manner, would help restore balance to a PTAB that has become increasingly insane.
Gene Quinn is an expert on patent law, innovation policy and patent law. Mr. Quinn was twice named as one of the 50 most influential people in the world
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