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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