Authored by Michelle Carniaux and Michael E. Sander
It has been a little more than one year since the Patent Trial and Appeal Board (“PTAB”) issued their first final written decision in an inter partes review and accordingly. Since then, by our calculation, the PTAB has issued 91 Final Written Decisions in IPR proceedings.1
Accordingly, a look on the past year’s decisions may be in order.
In approximately one third of all final written decisions, at least one claim for which inter partes review was instituted survived. Conversely, in about two thirds of all IPRs, every claim for which IPR was instituted was eventually invalidated. These results are summarized in the table below.
In the past three months, only five IPRs resulted in a PTAB final written decision in which all claims survived. In four of these five IPRs, ZTE was the petitioner and ContentGuard Holdings, Inc. was the patent owner; the technology relating to digital rights management. See IPR2013-00133; -00137; -00138; -00139. The PTAB heard oral argument on all four in one consolidated hearing. IPR2013-00133, No. 53, (P.T.A.B. Feb. 26, 2014). In relatively technical decisions, the PTAB ultimately found that ZTE had not demonstrated by a preponderance of evidence that the claims under review were invalid. See, e.g., IPR2013-00133, 00138 (“ZTE has not persuaded us that the decryption key AK disclosed in EP ’139 constitutes a digital certificate”). In its decisions, the PTAB apparently adopted claim constructions with which the patent owner did not agree. See, e.g., IPR2013-00133, No. 61, at 15 Decision (P.T.A.B. Jul. 1, 2014) (“According to ContentGuard, our claim interpretation of “repository” is incorrect because it is too broad in one respect and too narrow in another.”). Thus, it is not clear which party will ultimately benefit more from the PTAB decision.
The one other inter partes review decision in the past three months where all of the instituted claims survived was similarly steeped in the technical merits of the case. See IPR2013-00106, No. 66 (P.T.A.B. Jun. 30, 2014) (“we are not persuaded … that a person of ordinary skill would have had reason to substitute Stoyle’s use of inert gas … in place of the air used in Gilliam’s temperature-regulated, spark arrestor-governed system to generate smoke in a closed smoke-producing chamber”). In its decision, the PTAB relied at least in part on unrebutted testimony of the Patent Owner’s expert, and appears to have discounted at least some of the Petitioner’s arguments as “not supported by declaration testimony.” Id. at 23. Thus, the PTAB has once again shown the importance of expert declarations.
Overall, the statistics show that being a patent owner in an instituted inter partes review will often lead to at least some claims being invalidated. However, they also show that the PTAB does allow some claims to survive if the patent owner is persuasive on a technical level.
1 For the purposes of this article, we consider a final written decision to be one where the PTAB made a patentability determination on the merits. Decisions where the PTAB granted a Patent Owner’s request for adverse judgment canceling all instituted claims were not included in the analysis.