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).
The statistics for CBM are even more unfavorable for patent owners. Every single claim addressed in a CBM final written opinion has been found unpatentable. However, only about 43% of the grounds petitioned have been instituted (38 out of 89 grounds).
A detailed list of the IPR and CBM final decisions and their underlying statistics can be found here.
1 This total includes IPRs in which an adverse decision was entered upon the patent owner’s request or the patent owner failed to properly respond to a requisite PTAB notice.
2 IPR2012-42: 9 claims, IPR2013-57: 2 claims, IPR2013-109: 1 claim; IPR2013-20: 12 claims; IPR2013-34: 4 claims.
3 Including final decisions that did not proceed to an oral hearing, such as IPRs in which an adverse decision was entered upon the patent owner’s request or the patent owner failed to properly respond to a requisite PTAB notice.