2020 Post AIA Lawsuit...when can IPR be invoked-SCA implications

Why does the current lawsuit by Intel, Apple Cisco and Google to enable the use of IPR during a pre-trial licensing hearing, or during the trial itself make the case even greater for getting utility patents with SCA?

First, consider the defendant and plaintiffs goals. The USPTO as defendant has a rule under AIA that allows IPR's to be invoked after a patent is published. The purpose of this was to assist an overloaded patent office in weeding out invalid patents, augmenting the prior means for this which was called an interference proceeding. In principle, the idea of an IPR was painful to patent holders, independent inventors, and licensors in so far as their right to what might have otherwise been a claim in a published patent could be terminated by forces outside of the patent office after publishing...tantamount to having the "rug pulled out from under them". 

The USPTO did propose a refinement on IPR's that would prevent them from being used if a case was going to trial, had a pre-trial hearing, or was in an actual trial, reasoning that the purpose was an opportunity to invalidate on publication and the window for such an "appeal" of a Patent Office issuance should be time constrained as is the case for appeals generally. Typically appeals by precedence are limited to 30 days from a decision, much like in a wedding ceremony, "anyone who has a reason that the couple to be married shouldn't be, speak now or forever hold your peace" where the limit is the moment of "publishing". Why? clearly, the purpose of the court and its decision-making role is to enable the beneficiary to have life, liberty, and the pursuit of happiness without fear of retroactive reprisal.

So, what's the implication of this lawsuit and the impact on anyone seeking a utility patent? 

The USPTO remains overloaded so IPR is important to their objective of only having valid patents of merit published and granted monopoly rights. At the same time, like the wedding ceremony, they intended to allow "others" to invoke an IPR in a situation where the USPTO didn't do its job correctly, but not to allow big companies to weaponize it. So, they sought to refine its application, seeing the situation where an alleged licensing claim was being litigated, had not been settled by the parties, and had reached a court for determination, and prevent it from being invoked in a pre-trial hearing or during a court proceeding.

Take the context of this as an aside for a moment: (1) that the focus of this IP is software and firmware in the licensed UNIX derivatives sphere of subject matter (2) that TROLL companies who bought patents in this UNIX domain to aggregate them and force licenses on billions of dollars of alleged royalty bearing sales, against the computer industry manufacturers were "bad" and acting as a negative force to constrain a critical powerhouse of our economy, it's important to look at the broader implications.

If the plaintiffs win, this could be a much more serious blow to non-troll innovators with legitimately issued patent claims (i.e. taking the basis for their goals of making using and selling as a grant from the USPTO because the filer did their job and the USPTO did their job ie. the good old days). 

It would allow the "TROLL BUSTERS", anyone that seeks to use IPR to invalidate a patent from a practicing licensee (the ones with the IP here that aren't making something but rather choosing to use their monopoly rights to license),  to wait until pre-trial or trial to pull the rug out from under the innovator. During Pre-Trial this might seem fair, in so far as the Defendant in this case a licensor, would have to focus their claim and the argument for infringement, very specifically which would allow a Plaintiff seeking to avoid a licensing obligation from rifle shooting at the one claim that was being applied and unhook just that piece, allowing them to get the case tossed. During a trial, a jury might find in favor of the defendant for fair and reasonable cause, holding the patent valid, and levying triple damages and legal fees against the plaintiffs. This risk might make plaintiffs more wary of filing frivolous IPR's or going to trial without settling first.

At the end of the day, if the innovation is in the "blue ocean", and it's legitimately issued a patent, that's a perfect world for the owner of the rights. Nonetheless, if they do seek to license or use their rights exclusively in such a way as to prevent "others" from practicing, then their patents WILL come under fire.

Sometimes, in a real discontinuity, the true market value of IP is not known until commercial results are established. If the plaintiffs in the above case win, the application of the IPR without time limit wrt/ pretrial and or trial will survive, and any great patents will also be subject to the IPR process if they are wielded by their owners downstream. So...if you have a great claim on a really viable commercial opportunity, BUT your patent has flaws, chinks in its armor, that the Patent Office missed or identified but allowed, you could find yourself with NO RIGHTS to monopoly downstream, with no recourse on an IPR finding of invalidity...something that the resisting licensee can do for a "dime" like in the old days of forcing an interference internally at the USPTO making the USPTO spend its money vs the company in a law suit. 

Bottom line-make sure your patents have SCA by using The Schwartz Method and filing an airtight utility patent that is right the first time.