volume x iv - IPR-PGR.com
VOLUME XIV
HARNESSING PATENT OFFICE LITIGATION
A Look at Forty-Five Months of Inter Partes Review Proceedings Before the United States Patent and Trademark Office
9 I 16 I 2012 to 6 I 16 I 2016
Welcome to Harness Dickey’s Report on Litigation Practice before the United States Patent Office. Created by the America Invents Act, Inter Partes Review proceedings have already changed the face of patent litigation. Lower cost, lower burden of proof to invalidate, broader claim scope, among other advantages to patent challengers,
WELCOME PRELIMINARY STAGE
Preliminary Stage of the Proceedings (Petition Filing through PTAB Trial Initiation Decision)
80%
120
Petitions Filed
100%
150
60% 40%
IPR 1 Yr. Anniv.
20% 0
3.16
2013
9.16
2013
IPR 2 Yr. Anniv.
3.16
2014
9.16
2014
IPR 3 Yr. Anniv.
3.16
2015
9.16
2015
3.16
2016
6.16
2016
83%
IPR 1 Yr. Anniv.
3.16
2013
PERCENT OF PETITIONS PUT INTO TRIAL
9.16
2013
IPR 2 Yr. Anniv.
3.16
2014
9.16
2014
88
IPR 3 Yr. Anniv.
3.16
2015
9.16
2015
3.16
2016
6.16
2016
PETITIONS FILED PER MONTH
PETITIONS SUPPORTED BY EXPERT DECLARATIONS1
Trial Stage of the Proceedings TRIAL STAGE (PTAB Trial Initiation Decision through Final Written Decision) Cases Settled
Claims Included in Trial vs. Total Challenged Claims from Petition
1041
64%
Average Number of Claims Challenged
TECHNOLOGY OF CHALLENGED PATENTS CHART
86
703 Chemical and Biotech 21 Design 1021 Mechanical and Transportation 2725 Electrical and Computer
81
80%
10000
CLAIM SURVIVAL RATE AT FINAL WRITTEN DECISION
60% 8000
9445
40%
CLAIM SURVIVAL RATE AT INSTITUTION DECISION
20%
16
6000
0
9.16
2014
3.16
2015
9.16
2015
1
55% Claim Survival Rate2
2018 0
CLAIMS CANCELED AT FINAL WRITTEN DECISION CLAIMS CONFIRMED AS PATENTABLE
Over time, Petitioners have come to recognize that their Petitions must be supported by hard evidence in the form of expert testimony. Percent of claims that were confirmed as patentable in a Decision to Institute or Final Written Decision.
2
3.16
2016
6.16
2016
4000
PETITION FILING
Amended Claims Allowed3
58
100%
DECISION TO INSTITUTE
2000
31
127
82%*
90
0
208
*
30
CLAIMS CANCELED IN FINAL WRITTEN DECISION
TOP 6 IPR FILERS
80%*
60
82%
means that there may be no greater opportunity and true reform to come from the America Invents Act than these post-grant proceedings. Our periodic Report will provide insight based on the over 100 characteristics of these proceedings that we are tracking. Our analysis can also be followed at IPR-PGR.com.
Average Time for Board to Decide Whether to Institute Trial
5.6
months
Time from Decision to Institute to Final Written Decision
Time from Petition Filing to Final Written Decision
3
FINAL WRITTEN DECISION
A total of six motions to amend have been granted through June 16, 2016. * Claims Canceled in Final Written Decision
11.1 months
16.7 months
While the initial Final Written Decisions were decidedly in favor of Petitioners (a 96.4% cancelation rate as of March 16, 2014), more recent decisions have increasingly sided with Patent Owners, bringing down the total number of canceled claims to 82%. Critics of IPR proceedings try to argue the various ways in which the proceedings are skewed toward Petitioners. It is becoming increasingly clear, however, that the Inter Partes Review process has added an efficient and cost-effective avenue to test the patentability of patent claims outside of expensive District Court litigation.
CONCURRENT PROCEEDINGS Litigation and other Administrative Proceedings Involving the Patent-At-Issue Patent Owner vs. Patent Challenger Concurrent Litigation
Contested Motions to Stay Granted
79%
10%
36%
61%
Multiple IPRs for Same Patent
IPR Patent Involved in Prior Reexamination Proceeding
Increasingly, and to get around the PTAB’s onerous Motion to Amend requirements, Patent Owners are filing concurrent reissue or reexamination proceedings to offer a more robust substitute claim set.
43%
COURTS WITH HIGHEST WIN RATE FOR MOTIONS TO STAY 4
41%
76% 88%
94% 77%
47% 30% 75%
86% 50% 4
Eastern District of Virginia District of Utah Northern District of Georgia Western District of Tennessee Southern District of Texas
94% 88% 86% 77% 75%
COURTS WITH LOWEST WIN RATE FOR MOTIONS TO STAY 4 Eastern District of Texas Eastern District of Michigan Eastern District of Wisconsin Northern District of Texas Middle District of Florida
30% 41% 43% 47% 50%
For district courts with eight or more decisions on motions to stay
MONEYBALL FOR IPRS We offer an Unmatched and Unique Statistical Advantage. Harness Dickey clients benefit from the Firm’s expansive and ongoing statistical analysis of IPR decisions. We have analyzed the reasons why a Petition has not succeeded (either at the Decision to Institute or Final Written Decision stage). In this way, as a Petitioner, we can “pressure test” a draft Petition against this data to ensure the highest possible level of success. As a Patent Owner, we evaluate a Petition against this data to determine the best avenues for attacking the Petition, including the identification of key cases that support our argument. In an advanced analysis, we can learn by judge or by subject matter what are the most common mistakes made in Petitions. In short, Harness Dickey clients take advantage of enhanced metrics to give them the highest chance of success in Inter Partes review proceedings. Please contact us for more details. – [email protected].
We have traveled the world to provide seminars regarding Inter Partes Review proceedings to companies, law firms, and other organizations. Interested in having us visit for a presentation? Please email us at [email protected].
IPR-PGR.com
HARNESSING PATENT OFFICE LITIGATION
A Look at Forty-Five Months of Inter Partes Review Proceedings Before the United States Patent and Trademark Office
9 I 16 I 2012 to 6 I 16 I 2016
Welcome to Harness Dickey’s Report on Litigation Practice before the United States Patent Office. Created by the America Invents Act, Inter Partes Review proceedings have already changed the face of patent litigation. Lower cost, lower burden of proof to invalidate, broader claim scope, among other advantages to patent challengers,
WELCOME PRELIMINARY STAGE
Preliminary Stage of the Proceedings (Petition Filing through PTAB Trial Initiation Decision)
80%
120
Petitions Filed
100%
150
60% 40%
IPR 1 Yr. Anniv.
20% 0
3.16
2013
9.16
2013
IPR 2 Yr. Anniv.
3.16
2014
9.16
2014
IPR 3 Yr. Anniv.
3.16
2015
9.16
2015
3.16
2016
6.16
2016
83%
IPR 1 Yr. Anniv.
3.16
2013
PERCENT OF PETITIONS PUT INTO TRIAL
9.16
2013
IPR 2 Yr. Anniv.
3.16
2014
9.16
2014
88
IPR 3 Yr. Anniv.
3.16
2015
9.16
2015
3.16
2016
6.16
2016
PETITIONS FILED PER MONTH
PETITIONS SUPPORTED BY EXPERT DECLARATIONS1
Trial Stage of the Proceedings TRIAL STAGE (PTAB Trial Initiation Decision through Final Written Decision) Cases Settled
Claims Included in Trial vs. Total Challenged Claims from Petition
1041
64%
Average Number of Claims Challenged
TECHNOLOGY OF CHALLENGED PATENTS CHART
86
703 Chemical and Biotech 21 Design 1021 Mechanical and Transportation 2725 Electrical and Computer
81
80%
10000
CLAIM SURVIVAL RATE AT FINAL WRITTEN DECISION
60% 8000
9445
40%
CLAIM SURVIVAL RATE AT INSTITUTION DECISION
20%
16
6000
0
9.16
2014
3.16
2015
9.16
2015
1
55% Claim Survival Rate2
2018 0
CLAIMS CANCELED AT FINAL WRITTEN DECISION CLAIMS CONFIRMED AS PATENTABLE
Over time, Petitioners have come to recognize that their Petitions must be supported by hard evidence in the form of expert testimony. Percent of claims that were confirmed as patentable in a Decision to Institute or Final Written Decision.
2
3.16
2016
6.16
2016
4000
PETITION FILING
Amended Claims Allowed3
58
100%
DECISION TO INSTITUTE
2000
31
127
82%*
90
0
208
*
30
CLAIMS CANCELED IN FINAL WRITTEN DECISION
TOP 6 IPR FILERS
80%*
60
82%
means that there may be no greater opportunity and true reform to come from the America Invents Act than these post-grant proceedings. Our periodic Report will provide insight based on the over 100 characteristics of these proceedings that we are tracking. Our analysis can also be followed at IPR-PGR.com.
Average Time for Board to Decide Whether to Institute Trial
5.6
months
Time from Decision to Institute to Final Written Decision
Time from Petition Filing to Final Written Decision
3
FINAL WRITTEN DECISION
A total of six motions to amend have been granted through June 16, 2016. * Claims Canceled in Final Written Decision
11.1 months
16.7 months
While the initial Final Written Decisions were decidedly in favor of Petitioners (a 96.4% cancelation rate as of March 16, 2014), more recent decisions have increasingly sided with Patent Owners, bringing down the total number of canceled claims to 82%. Critics of IPR proceedings try to argue the various ways in which the proceedings are skewed toward Petitioners. It is becoming increasingly clear, however, that the Inter Partes Review process has added an efficient and cost-effective avenue to test the patentability of patent claims outside of expensive District Court litigation.
CONCURRENT PROCEEDINGS Litigation and other Administrative Proceedings Involving the Patent-At-Issue Patent Owner vs. Patent Challenger Concurrent Litigation
Contested Motions to Stay Granted
79%
10%
36%
61%
Multiple IPRs for Same Patent
IPR Patent Involved in Prior Reexamination Proceeding
Increasingly, and to get around the PTAB’s onerous Motion to Amend requirements, Patent Owners are filing concurrent reissue or reexamination proceedings to offer a more robust substitute claim set.
43%
COURTS WITH HIGHEST WIN RATE FOR MOTIONS TO STAY 4
41%
76% 88%
94% 77%
47% 30% 75%
86% 50% 4
Eastern District of Virginia District of Utah Northern District of Georgia Western District of Tennessee Southern District of Texas
94% 88% 86% 77% 75%
COURTS WITH LOWEST WIN RATE FOR MOTIONS TO STAY 4 Eastern District of Texas Eastern District of Michigan Eastern District of Wisconsin Northern District of Texas Middle District of Florida
30% 41% 43% 47% 50%
For district courts with eight or more decisions on motions to stay
MONEYBALL FOR IPRS We offer an Unmatched and Unique Statistical Advantage. Harness Dickey clients benefit from the Firm’s expansive and ongoing statistical analysis of IPR decisions. We have analyzed the reasons why a Petition has not succeeded (either at the Decision to Institute or Final Written Decision stage). In this way, as a Petitioner, we can “pressure test” a draft Petition against this data to ensure the highest possible level of success. As a Patent Owner, we evaluate a Petition against this data to determine the best avenues for attacking the Petition, including the identification of key cases that support our argument. In an advanced analysis, we can learn by judge or by subject matter what are the most common mistakes made in Petitions. In short, Harness Dickey clients take advantage of enhanced metrics to give them the highest chance of success in Inter Partes review proceedings. Please contact us for more details. – [email protected].
We have traveled the world to provide seminars regarding Inter Partes Review proceedings to companies, law firms, and other organizations. Interested in having us visit for a presentation? Please email us at [email protected].
IPR-PGR.com
