The U.S. Department of Justice (DOJ) filed six petitions for inter partes review (IPR) of three patents assigned to Discovery Patents, LLC. The patents cover security alarm systems and methods for providing secure real-time video and imaging to emergency response agencies over a high speed communication link. The challenged patents are USPs 6,798,344, 6,778,085 and 7,323,980.

The DOJ’s attack on private sector patents is unusual, but not unprecedented.

DOJ Has Used IPR Before In Response To Litigation Asserting Patents Against the US Government

This is the DOJ’s second time filing IPRs – in January 2016, the DOJ petitioned for review of Iris Corp.’s U.S. Patent No. 6,111,506 for passport identification technology (IPR2016-00497). Iris Corp. had previously sued the government in the U.S. Court of Federal Claims for infringement prior to the DOJ’s IPR petition against its patent.

Likewise, Discovery Patents, together with licensee 3rd Eye Surveillance, LLC, filed suit last year in the U.S. Court of Federal Claims, alleging that the U.S. government infringed its patents (Case 1:15-cv-00501-CFL, filed 5-15-2015). Specifically, Discovery Patents and 3rd Eye contended that the U.S. government maintained infringing security systems in airports, government buildings, and national border areas.

The DOJ’s petitions against Discovery Patents (and Iris Corp. earlier in the year) illustrate one of the risks a patent owner faces when asserting its patent — namely, that the accused infringer may react by filing an IPR and potentially invaliding the patent. Here, the patent owner faces the DOJ, which has more than two dozen registered patent practitioners, according to a search of the Patent Office’s records, and which submitted a lengthy declaration from a digital video expert whose standard consulting rate is $500 / hour.

A Prelude to Settlement?

The DOJ is not the first to challenge Discovery Patents. One of the patents was the subject of IPR proceedings which ended last year — Stealth Monitoring, Inc. had petitioned for review of the ‘980 patent, and the parties settled and terminated proceedings prior to institution of the IPR. Here, the DOJ petitions include at least some of the same prior art used by Stealth Monitoring to challenge the claims of the ‘980 patent. Thus, filing the IPRs may provide leverage for a potential settlement.

With these IPR petitions, the DOJ can counter private sector patent owners accusing the government of infringement. The government is sometimes on the other side, though, as the patent owner. For example, the government owned the patent that was the subject of the first-ever motion to amend granted in an IPR, where the Secretary of Agriculture represented the government rather than the DOJ.

Further, other agencies of the US government have previously played a different role in inter partes proceedings — that of an active competitor. For example, the NIH has filed inter partes reexaminations against biotechnology patents in the past (see e.g., Reexam Control No. 95/000,062). The NIH has obtained many life sciences related patents and is actively involved in transferring technology to the private sector.

DOJ Has Been Active In Patent Reform Hearings

In 2002, the DOJ sponsored hearings on competition and innovation (see https://www.ftc.gov/news-events/events-calendar/2002/02/competition-ip-law-policy-knowledge-based-economy-hearings), which led to a number of recommendations taken up in Congress and a first set of patent reforms under the American Inventor’s Protection Act (AIPA), which created inter partes reexams. This was a precursor to the newer inter partes review procedures available since September 16, 2012 under the America Invents Act (AIA) and a further set of patent reforms enacted by Congress.

More than 4,100 IPR petitions have been filed since September 16, 2012. The DOJ has filed just a handful, and these petitions mark its first forays as petitioners in AIA proceedings. (The IPR petition numbers are IPR2016-01035; IPR2016-01037; IPR2016-01038; IPR2016-01039; IPR2016-01040 and IPR2016-01041.)