Sacrificing Patent Term to Salvage Past Damages: Using Terminal Disclaimers to Change Claim Construction Standard During Inter Partes Review

Authored by Michelle Carniaux and Michael E. Sander

One of the more significant differences between litigating patent validity in an inter partes review proceedings over a district court, is that a different claim construction standard applies. In an inter partes review proceeding, claims are given the “broadest reasonable construction” (“BRC”). 37 C.F.R. § 42.100(b). The patent office uses the BRC standard because in patent office proceedings, patent owners may amend their claims to read on to existing technology and, the BRC standard “reduce[s] the possibility that, after the patent is granted, the claims may be interpreted as giving broader coverage than is justified.” In re Reuter, 670 F.2d 1015, 1019 (C.C.P.A. 1981).

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Statistics for Stays In View of IPR and CBM Proceedings

Authored by Michelle Carniaux and Julia Tanase

When a motion for a stay in view of an inter partes review (“IPR”) or covered business method review (“CBM”) is filed in a related district court litigation, the district court will grant the motion more often than it will deny it. Our study1 indicates that orders for disputed motions to stay litigation in view of IPR or CBM are granted 73.4%2 of the time.

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Patent Challengers Succeed With New Covered Business Method Program

Authored by Brian S. Mudge

As part of the America Invents Act, Congress created the Covered Business Method (“CBM”) transitional review program to provide a quick and cost effective way to challenge business method patents. The CBM review program was launched about 18 months ago. Since then, the Patent Trial and Appeal Board (“PTAB”) has issued eleven final decisions in CBM proceedings after conducting trial. In all eleven cases, the patent challengers prevailed, winning complete (or nearly complete) victories over patent owners. As a result of these decisions, the Board has ordered cancellation (subject to any appeal) of over 200 patent claims in nine challenged patents. By any metric, patent challengers have achieved overwhelming success in the trials conducted under the CBM patent review program.

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Claims Can Survive Inter Partes and Covered Business Method Review (But Few Do)

Authored by Michelle Carniaux, Michael E. Sander

The Patent Trial and Appeal Board (“PTAB”) is beginning to get the reputation as the place where patent claims go to die. There have been fifty final written decisions from the PTAB. Thus far, no challenged claims have survived Covered Business Method review. The survival rate in Inter Partes Review proceedings is only slightly better; claims survived in only five proceedings, representing approximately a 13% Patent Owner success rate:

In Microsoft v. Proxyconn, only one of twelve challenged claims survived. See IPR2013-00109, No. 16 Final Decision (P.T.A.B. Feb. 19, 2014) (joined with IPR2013-00026).  The surviving claim (a dependent claim) was challenged on one anticipation ground and one obviousness ground, but survived based on a claim element of the independent claim (from which the surviving claim depended). The dependent claim survived despite the fact that its independent claim was found to be anticipated by a reference that the petitioner did not apply to the surviving dependent claim.

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IPR and CBM Statistics

Authored by Michelle Carniaux and Julia Tanase

Statistical data regarding inter partes review (“IPR”) and covered business method review (“CBM”) in which a final decision has issued (excluding settlements) does not paint a pretty picture for patent owners at the Patent Trial and Appeal Board (PTAB).

As of April 2, 2014, thirty-nine final decisions1 have issued in IPR proceedings. Challenged claims upon which trial was instituted survived in only five final written decisions.2 The petitioners of these thirty-nine IPRs had petitioned for review of a total of 668 claims. IPR trials were instituted for 80.5% of these claims (538 out of 668 claims). It should also be noted that only 36% of the grounds petitioned were actually instituted (137 out of 384 grounds). The most sobering number for patent owners is the percentage of claims found unpatentable in final written decisions: 95% (5103 out of 538 claims).

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