Welcome to the 14th Volume of our quarterly IPR-PGR Report.
Our apologies for our slightly delayed public dissemination of our Quarterly IPR Report. Please click HERE for the report or email us for a hard copy.
It’s hard to believe IPR has grown up so quickly. We look forward to celebrating its 3-year-old birthday next month.
Let us know if you have any questions or comments about the report in the comment section.
The Federal Circuit reversed the Patent Trial and Appeal Board for the first time today in an appeal from an inter partes review proceeding. Specifically, the Board’s decision that 8 claims were unpatentable was reversed and the case was remanded to the Board. Harness Dickey was lead counsel for Patent Owner in this successful appeal, so we will not comment on the merits, but attach the decision for your review.
Welcome to Volume 9 of our IPR-PGR Report. Please send us an email if you would like a hard copy. After 30 months of IPR practice, some trends are taking shape. Overall, the percentage of petitions put into trial has gradually decreased, down to 76% this quarter, from a high of 96% at the early stages of IPR practice. Despite that decrease, we are finding that the claims that are put into an IPR trial, after a decision to institute, are increasingly not surviving. About 85% of those claims are canceled in a Final Written Decision. Motions to Amend continue to be difficult to obtain, with only a total of 3 such motions having been granted to date. This trend has led many Petitioners to abandon any effort to obtain new claims at all, turning instead to reissue or ex parte reexamination to present fuller claim sets to the Patent Office. The always-interesting stay data from the district courts indicates that the Eastern District of Texas remains an outlier for denying motions to stay. Although motions to stay are granted, on average, 62% of the time, the EDTX has only granted about 15% of the motions brought in that district. We also note that some of these trends have triggered the Patent Office to make certain tweaks to IPR practice, with other major changes on the horizon. You can read about those changes HERE.
Lastly, by way of a practice tip, we note the increasing frequency with which IPR petitions are being filed by companies before they enter the marketplace, to eliminate blocking patents. This technique was used recently, and with great success, by one of our clients, as discussed in this IP Law360 article. Additionally, this technique was recently discussed in a Wall Street Journal article, in which we were quoted, discussing the pharmaceutical industry. Please let us know if you have any questions about this growing strategy.
Welcome to the 8th Volume of our IPR-PGR Report. Please let us know if you have any questions about the information contained therein, or would otherwise like to discuss Patent Office litigation. We note a few interesting stats from this latest quarter. First, we took a look at success rates for IPR proceedings by broad subject matter class. Of interest is the fact that it is more likely that an IPR petition directed to a chem/bio invention (86%) will be cancelled versus an electrical (82%) or mechanical patent (74%). Second, the claim cancellation rate has crept up a bit again, with only about 19% of claims that are put into an IPR trial surviving the Final Written Decision. Relatedly, the overall claim survival rate has dropped from 41% to 37%. Lastly, we have provided some information regarding the district courts with the highest and lowest win rates for contested motions to stay. Not surprisingly, the Eastern District of Texas is one of the districts that is least likely to stay litigation in view of an IPR.
With special thanks to my co-author, Laura Sheridan of Google, the linked article takes a detailed look at the first two years of inter partes review practice before the Patent Trial and Appeal Board and seeks to provide insights into some of the most critical areas of the proceedings. Like all change, the implementation of IPR has caused considerable commentary from both supporters and critics. There can be no denying, however, the overwhelming popularity of the proceedings as an alternative to litigation. As the article points out, while the proceedings are not perfect, the statistics and facts underlying IPRs makes clear that they are, at least, fair.
The article is re-published with permission from the Association of Corporate Counsel (http://www.acc.com).
Welcome to Volume 7 of our IPR-PGR Quarterly Report. Please contact us with any questions about these Patent Office procedures.
We take special note of three interesting statistics this quarter. First, obtaining amended patent claims in these proceedings remains difficult. After 1 motion to amend was granted last quarter, this quarter saw a complete shutout. No additional motions to amend granted. Further, it seems that many new decisions, denying a motion to amend, add additional requirements and hurdles. It will be interesting to see if the argument currently before the Federal Circuit, that the broadest reasonable interpretation standard is inappropriate when a Patent Owner cannot effectively amend claims, is accepted.
Second, district courts continue to demonstrate an increased comfort with the ability of IPR proceedings to simplify issues at trial, including as compared to reexamination proceedings, in an increasing grant rate on motions to stay. While this is still very much a judge and court-specific decision, defendants will succeed on a contested motion to stay almost 2 out 3 times.
Third, we took a broader look at claim survival this quarter, not just looking to the rate at which claims from an IPR “trial” were shown to be unpatentable in Final Written Decisions. We added in claims that were not put into a “trial” at all – raising the claim survival rate to 41%. If only claims that are put into trial are considered, the survival rate is 27.8%.
The Federal Circuit has a mounting pile of appeal briefs relating to IPR practice – will we soon see another tidal wave of change as the patent appeals court weighs in?
Welcome to Volume 6 of our IPR-PGR Quarterly Report. This Report brings news of a large spike in Petition filings and some interesting trends that come from a more significant data set derived from Final Written Decisions. Also, we are still waiting on our first PGR filing.
First, after a brief respite last quarter, Petition filings rose to an all time high of about 30/week. This is higher than expected, but a portion of the spike is attributable to an interesting battle playing out between Patent Owner Zond, LLC, and a number of defendants in co-pending litigation. In the last two months, over 60 IPR petitions have been filed against Zond patents!
Second, as more Final Written Decisions have been rendered, the landscape does not look as bad for Patent Owners. The cancelation rate dropped from 96% to about 69%. Also, the last quarter brought our first granted Motions to Amend. It seems the Board has stopped adding requirements to what it takes to succeed in such motions, and Patent Owners have adjusted enough to see some success. These Patent Owner successes are helping change the narrative and establish that IPR proceedings are not only efficient and cost-effective, but also fair.
Thank you for your continued interest in Harness Dickey’s Post Grant Practice. Please email us at IPR-PGR@hdp.com if you have any questions about our Report or any other aspect of IPR proceedings.
Welcome to Volume 5 of our IPR-PGR Quarterly Report. As you can see in this issue, we have compared IPR data from the 18 month anniversary with data from the 9 month anniversary so you can glean trends in the data.
This Report also brings data from the first Final Written Decisions. Of interest is the fact that only 10 of 274 challenged claims have survived IPR scrutiny (for a robust 96.4% cancelation rate). Also of interest is the fact that not a single Motion to Amend has been granted.
We also took note of the dip in filings this quarter. After ramping up to about 20 filings per week, we only saw about 15 filings per week in the most recent quarter. This lower number is more in line with estimates from the Patent Office and we anticipate the filings to level out near this lower rate.
Lastly, we want to take the opportunity to note the success Harness Dickey is having in these proceedings. From the Petitioner side, we have had all of our petitions granted, with all claims being put into trial (though no Final Written Decisions have come from those cases yet). From the Patent Owner side, of the first 3 cases in which at least one challenged claim survived, we were counsel on two of those cases.