Harper Bates & Champion Prevails Against DOJ at Institution Stage of IPR Proceedings

Harper Bates & Champion LLP achieved a rare victory this week when the Patent Trial and Appeal Board denied institution on five of six petitions for Inter Partes Review (IPR) filed by the U.S. Department of Justice against its client. In a unique effort by a government agency to leverage the America Invents Act, the DOJ petitioned the PTAB to review and invalidate three patents owned by GBCH client, Discovery Patents, LLC.

The DOJ filed the petitions in response to a lawsuit filed by 3rd Eye Surveillance (which licenses the patents from Discovery Patents) for alleged infringement by the FBI, National Security Agency and other government agencies. 3rd Eye is seeking $1 billion in damages. The patented technology involves security systems and methods for providing realtime imagery of a secured location to emergency response agencies.

After considering the petitions for IPR filed by the DOJ and the patent owner responses filed by Harper Bates & Champion, the PTAB panel denied five of the petitions on both substantive and procedural grounds. Although the sixth petition was not denied in its entirety, the PTAB granted institution on only two of the five asserted grounds. Under current law, PTAB institution decisions cannot be appealed.

Based on data available through mid-2016, the PTAB grants institution on AIA proceedings over 77% of the time, so it is notable that five of the six petitions were dismissed. In fact, this is the first time a patent owner has prevailed against the United States government in an attempt to invalidate a patent using an AIA proceeding.

The patent owner responses filed by the firm also raised constitutional arguments about whether the DOJ, a U.S. government agency, can seek to invalidate patents issued by the U.S. Patent Office, another U.S. government agency. The PTAB panel evaluating the six petitions declined to make a determination on the constitutional issues.