USPTO on trial: patent office sued for patent infringement

Published June 4, 2024

The US Patent and Trademark Office (USPTO) has been sued for allegedly infringing on six patents it previously granted. The patents involved are two-factor authentication systems belonging to two individual inventors and are now being contested by Factor2 Multimedia.

The patents

8,281,129	Direct Authentication System and Method Via Trusted Authenticators
9,703,938	Direct Authentication System and Method Via Trusted Authenticators
9,870,453	Direct Authentication System and Method Via Trusted Authenticators
9,727,864	Centralized Identification and Authentication System and Method
10,083,285	Direct Authentication System and Method Via Trusted Authenticators
10,769,297	Centralized Identification and Authentication System and Method

The technology

US ‘129 discloses a method for secure online logins. A user requests a temporary code from a trusted authenticator during login. The trusted authenticator generates and sends this unique code to the user, who then includes it along with their login information when authenticating with a website or app. Finally, the trusted authenticator verifies the user’s identity based on both the code and login information and informs the website/app of the authentication result.

Priority date

This application is a continuation-in-part of a US patent filed on August 29, 2001, and claims priority to the US Provisional Application filed on February 7, 2005.

USPTO on trial patent office sued for patent infringement

(Fig. 2 of US 8,281,129)

Infringing products

The accused products, as per the compliant document, are USPTO.gov; MyUSPTO; MyUSPTO account; Patent Electronic System; EFS-Web; PAIR; and Patent Center, including the “2stable” app.

Further, below feature(s) of the USPTO website are allegedly reading upon the claimed inventions:

USPTO on trial patent office sued for patent infringement

(Source: As per the complaint document)

Other defendants

Factor2 Multimedia has also sued TikTok, Amazon, and Snap for the same patents.

Challenges for the inventors

Sovereign immunity: Sovereign immunity is a legal principle that protects the government from certain lawsuits. Will patent infringement cases come under that umbrella?
Burden of proof: This can be difficult, especially if the alleged infringement involves internal government processes that are not readily accessible.
Stronger defense: Suing the USPTO for patent infringement and winning damages is an uphill task. There will be a lot of legacy expertise coming from the USPTO into the defense.
PTAB survival: Will these patents survive the PTAB scrutiny? Or will the USPTO award damages to Factor2 Multimedia?

USPTO on receiving end of lawsuits

In March 2024, Apple filed a lawsuit against the USPTO over its refusal to grant trademarks for its AR software ‘Reality Composer’ and ‘Reality Converter.’ Notably, this comes after settling a separate trademark lawsuit with the USPTO in September 2023 regarding the ‘Smart Keyboard’ name.

The road ahead

A close examination of the case and its outcome will be crucial for both the inventors and the patent office. It will be interesting to see how the court balances the interest of the inventor and also emphasizes the thorough examination process and patent grants. Will the outcome of this case have any significant implications for patent law and the future operations of the USPTO?

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