The importance of the US Patent Office’s “inter partes review” (IPR) process was highlighted in dramatic fashion yesterday. Patent appeals judges threw out a patent [PDF] that was used to sue more than 80 companies in the fitness, wearables, and health industries.
US Patent No. 7,454,002 was owned by Sportbrain Holdings, a company that advertised a kind of ‘smart pedometer’ as recently as 2011. But the product apparently didn’t take off, and in 2016, Sportbrain turned to patent lawsuits to make a buck.
A company called Unified Patents challenged the ’002 patent by filing an IPR petition, and last year, the Patent Office agreed that the patent should be reviewed. Yesterday, the patent judges published their decision, canceling every claim of the patent.
The ’002 patent describes capturing a user’s “personal data,” and then sharing that information with a wireless computing device and over a network. It then analyzes the data and provides feedback.
After reviewing the relevant technology, a panel of patent office judges found there wasn’t much new to the ’002 patent. Earlier patents had already described collecting and sharing various types of sports data, including computer-assisted pedometers and a system that measured a skier’s “air time.” Given those earlier advances, the steps of the Sportbrain patent would have been obvious to someone working in the field. The office cancelled all the claims.
That means the dozens of different companies sued by Sportbrain won’t have to each spend hundreds of thousands of dollars—potentially millions—to defend against a patent that, the government now acknowledges, never should have been granted in the first place.
A Critical Tool for Innovators
Bad patents like the one asserted by Sportbrain are a drain on the innovation economy, especially for small businesses. But the damage that could be caused by such patents was much worse before the advent of IPRs.
The IPR process has proven to be the most effective part of the 2012 America Invents Act. In most cases, the IPR process is far more efficient than federal courts when it comes to evaluating a patent to figure out if it’s truly new and non-obvious.
IPRs have other advantages for small companies. Often, companies that get sued or threatened by patent trolls will end up paying a licensing fee, even though they don’t think the patents are legitimate. Through the IPR process, defendants can band together to file IPRs. That’s enabled the success of membership-based for-profit companies like RPX and Unified Patents—in fact, it was member-funded Unified that filed the petition which shut down the Sportbrain Holdings patent.
The IPR process also enables non-profits like EFF to fight bad patents. That’s how EFF was able to knock out the Personal Audio “podcasting” patent. The petition was paid for by the more than 1,000 donors who gave to our “Save Podcasting” campaign. Last year, EFF’s victory in that case was upheld by a federal appeals court.
But the IPR process could be in danger. Senator Chris Coons has twice proposed legislation (the STRONG Patents Act and the STRONGER Patents Act) that would gut the IPR system. EFF has opposed these bills. Other opponents of IPRs have taken their complaints to the courts. One company has asked the Supreme Court to declare the process unconstitutional. This case, Oil States, will decide the future of IPRs. We’ve submitted a brief explaining why we think the process of reviewing patents at the Patent Office is not only constitutional, it’s good public policy. We hope both Congress and the high court see their way to upholding this critical tool that saved 80 companies from damaging litigation—and that was just yesterday.