The PTAB’s Persistent Efficiency Paradox: Samsung vs. Headwater Research

As a patent litigation lawyer with 25 years of experience advocating for patent owners, I’ve witnessed the evolution of the U.S. patent system through countless courtroom battles and policy shifts. One of the most significant changes came with the establishment of the Patent Trial and Appeal Board (PTAB) under the 2011 America Invents Act (AIA). Designed to offer a faster, more cost-effective alternative to federal court litigation for challenging patent validity, the PTAB was heralded as a game-changer—a streamlined solution to reduce the burden on courts and litigants alike.

Even over the last week, we have seen moves to make the PTAB more reasonable, fair, and efficient. See here and here. Yet, a recent IPR institution decision involving Samsung and Headwater Research reveals a troubling reality: despite commendable strides in transparency and consistency, the PTAB’s rulings still frequently stray from their foundational goals of efficiency and cost savings.

In this post, I’ll dissect the Samsung-Headwater case, where the PTAB opted to review a patent’s validity despite a federal trial scheduled just six months prior to its decision deadline. Drawing on my experience defending patent owners, I’ll explore the case’s details, its broader implications for the patent system, and why the PTAB must refocus on its original mission. At over 3000 words, this analysis aims to spark a robust discussion among my LinkedIn network—your insights are welcome in the comments.

The PTAB’s Origins: A Promise of Efficiency

To understand the stakes, let’s revisit why the PTAB exists. Enacted through the AIA, the PTAB introduced mechanisms like Inter Partes Review (IPR) to expedite patent validity challenges. The intent was clear:

• Speed: IPRs must conclude within 12 months of institution (extendable by six months for good cause), far quicker than the multi-year slog of federal litigation.

• Cost Savings: By limiting discovery and avoiding jury trials, PTAB proceedings were meant to be less resource-intensive than district court battles.

• Specialization: Administrative patent judges, armed with technical and legal expertise, would handle disputes in a forum tailored for patent issues.

  
  

For patent owners like many of my clients—often innovators or small entities relying on their intellectual property—the PTAB promised a balanced alternative to costly courtroom defenses against deep-pocketed challengers. However, as the Samsung-Headwater case illustrates, this promise isn’t always fulfilled.

The Samsung-Headwater Case: A Snapshot

On April 1 (ironic??), the PTAB issued its opinion instituting an IPR. Samsung persuaded a PTAB panel, in a 2-1 decision, to review the validity of U.S. Patent No. 9,647,918, owned by Headwater Research. This patent, covering a wireless modem device invented by Greg Raleigh (co-founder of Airgo Networks, sold to Qualcomm in 2006), is one of several Headwater patents asserted against Samsung’s mobile phones, tablets, wearables, and televisions in multiple lawsuits.

Here’s is the relevant timeline:

• Federal Trial: Scheduled for October 6, 2025, in the Eastern District of Texas, a patent litigation hub.

• PTAB Decision: Due by April 2026, six months after the trial.

  
  

Despite this overlap, the PTAB instituted the IPR. Administrative Patent Judge Garth Baer, writing for the majority, acknowledged factors favoring denial—namely, the imminent trial and identical parties—but overruled them, citing:

• Samsung’s Diligence: The petition was filed promptly within statutory deadlines.

• Sand Revolution Stipulation: Samsung pledged not to raise PTAB invalidity arguments in Texas, reducing overlap.

• Modest District Court Investment: Litigation was in early stages, with limited resources spent.

• Strong Merits: Samsung presented a compelling case for invalidity.

  
  

Yet, Judge Scott Howard dissented, arguing that the trial’s proximity—resolvable well before the PTAB’s deadline—should outweigh other factors, highlighting a rift in how efficiency is prioritized.

The Legal Framework: Decoding the Fintiv Factors

The decision hinges on the PTAB’s Fintiv precedent, established in 2020 (Apple Inc. v. Fintiv Inc.), which guides discretion in instituting reviews amid parallel litigation. The six factors are:

1. Stay Status: Has the court stayed the case pending PTAB review? (Here, no stay was granted.)

2. Trial Proximity: How close is the trial to the PTAB’s decision deadline? (Six months prior here.)

3. Investment: How much have the court and parties invested in the litigation? (Modest so far.)

4. Issue Overlap: Do PTAB and court arguments align? (Mitigated by Samsung’s stipulation.)

5. Party Identity: Are the litigants the same? (Yes, weighing toward denial.)

6. Other Circumstances: Including the petition’s merits (Samsung’s strength tipped the scale).

   
   

Judge Baer balanced these, favoring institution. Judge Howard, however, saw the trial’s timing as decisive, reflecting a patent owner’s frustration: why proceed when the district court will act first?

A Patent Owner’s Lament: Efficiency Undermined

For patent owners, this decision epitomizes the PTAB’s drift from its efficiency mandate.

Consider the consequences:

• Duplicative Efforts: If the Texas trial upholds the patent, the PTAB’s later invalidation could nullify that effort, wasting judicial and party resources. If the PTAB upholds it, the trial proceeds anyway—after extra PTAB costs.

• Cost Escalation: Headwater, likely a smaller entity, must now fund parallel defenses, diluting the AIA’s cost-saving intent.

• Uncertainty: Patent owners face prolonged limbo, deterring investment in innovation.

  
  

In my 25 years, I’ve seen clients— inventors, startups, and SMEs—buckle under such pressures. The PTAB’s choice to forge ahead, despite a looming trial, risks turning it into a tool for well-resourced challengers like Samsung to overburden patent holders, not streamline disputes.

Recent PTAB Progress: A Silver Lining Dimmed

To its credit, the PTAB has made strides recently:

• Transparency: Precedential decisions clarify standards.

• Consistency: Efforts to align rulings across panels.

These are wins I’ve applauded in advising clients. Yet, as the Samsung-Headwater ruling shows, these improvements don’t guarantee efficiency. The Fintiv factors, meant to harmonize PTAB and court proceedings, are applied inconsistently—here, prioritizing Samsung’s merits over timing, to Headwater’s detriment.

Broader Implications: A System at Risk

This case isn’t isolated—it’s a symptom of systemic tension:

• Challenger Advantage: Samsung’s success may embolden others to file PTAB petitions alongside litigation, multiplying proceedings.

• Patent Owner Burden: Smaller entities like Headwater face stretched resources, potentially chilling innovation.

• Judicial Inefficiency: Courts and the PTAB risk redundant work, clogging the patent ecosystem.

• 
  

In my practice, I’ve seen patent owners forced to settle or abandon valid claims under such duress—a far cry from the AIA’s vision.

Pathways Forward: Refocusing the PTAB

How can the PTAB realign with its roots? Here are proposals from a patent owner’s lens:

• Elevate Trial Proximity: Deny reviews when trials precede PTAB decisions by a set margin (e.g., six months), absent extraordinary merits.

• Mandatory Stays: Pause PTAB proceedings if courts are poised to rule first, preserving resources.

• Legislative Clarity: Amend the AIA to codify efficiency as paramount in parallel cases.

• Stipulation Standards: Require robust commitments (beyond Sand Revolution) to eliminate overlap.

• 
  

These steps could restore balance, ensuring the PTAB aids—rather than hinders—patent owners and the system.

The APJs are NOT the Problem

Yes, that heading is in red because this is important! The APJs I know are intelligent and knowledgeable people. Even more, they work like dogs. What they do is difficult and requires long, arduous hours. None of the arguments above are an attack on the APJs as a class, and certainly not individually. I have great respect for them.

My problem is with a system that is set up to defeat the very goals it was supposed to achieve -- all so that more patents can be killed. If you stare at any word long enough, it looks misspelled (go ahead, try it!) We either need to grant fewer patents because according to PTAB statistics most examiners are letting through bad patents (and these are the best of the crop generally because they are in litigation) or we should at least give patents awarded by one side of the USPTO an assumption of validity before the PTAB is used to kill them. But in any case, its the system -- not the APJs. The APJs, like patent owners, are caught in a bad system.

Conclusion: A Call to Reflect and Discuss

The Samsung-Headwater decision underscores a persistent flaw: despite positive changes, the PTAB doesn’t always value efficiency or cost savings -- notwithstanding its original purpose.

I believe patent owners must push for a PTAB that honors its AIA roots—swift, affordable, and fair. What’s your take? Should the PTAB weigh trial timing more heavily? How can we better align its mission with today’s realities? Share your thoughts with me here or via email at erobinson@brownrudnick.com —I’m eager to hear from fellow practitioners, innovators, and policymakers. And if you disagree, even better!