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).