February 29, 2016 PTAB Trial Statistics

By Eugene T. Perez

As of February 29, 2016 (leap year!), the Patent Trial and Appeal Board (“PTAB”) has updated the monthly statistics of the number of inter partes reviews (“IPR”), post-grant reviews of covered business method patents (“CBM”), regular post-grant reviews (“PGR”), and derivation proceedings (“DER”) that have been filed. These stats on progress are shown below, and can be found at:

http://www.uspto.gov/ip/boards/bpai/stats/aia_trial_statistics.jsp

The graph/chart form of these statistics with some explanations can be found here, which includes proceedings and progress statistics:

http://www.uspto.gov/sites/default/files/documents/2016-2-29%20PTAB.pdf

           

IPRs Are the Most Filed Petitions

The first regular PGR (not for a CBM) was filed on August 5, 2014. As shown below, there are now 21 PGR petitions that have been filed. This should ramp up when more and more patents qualify (must be a first-inventor-to-file patent), and especially if Congress reduces the scope of estoppel (eliminating the “reasonably could have raised” language).  Here’s the breakdown of the 4,625 AIA petitions (4,181 are IPR) filed as of Feb. 29, 2016:

chart

Here is a bar graph version:

chart

To break down the filing trends for IPR, CBM, and PGR separately on a monthly basis since November of 2012, here are the graphs provided by the PTAB (note that the new fiscal year for the USPTO starts every October 1st). The IPR filings have been steady and relatively high since about April 2014, though slightly lower since January of this year:

chart

chart

chart

To break down the filing trends for a combined total of all IPR, CBM, and PGR petition filings on a monthly basis since November of 2012, here is the graph provided by the PTAB:

chart

Institution, Disposal, Etc.

For the first phase of an AIA trial, the PTAB determines whether or not an IPR, PGR or CBM will be granted.  The PTAB may not authorize the IPR unless the petition and response shows there is a “reasonable likelihood” that the petitioner would prevail with at least one of the challenged claimed.[1] The granting of a PGR/CBM trial requires an initial threshold requirement of “more likely than not”, which may be the same or slightly higher than the IPR threshold standard. However, the latest statistics clearly show that the initial threshold has been met the majority of the time (see the AIA Trials Instituted/Disposals chart below).

Below are charts the filings for IPR, CBM and PGR, respectively, clearly indicating that the majority of filings lead to institution in IPR, but the trend seems to be reversing for CBM (again as of 02/29/2016):

chart

chart

Regarding settlement, that more settlements in IPR pre-institution, whereas in CBM there are more post-institution:

chart

Below is another PTAB chart showing that out of the 2,731 IPR petitions that have been filed, 1,359 trials are instituted.  Of the 1,372 that are not instituted, there is either denial, settlement or dismissal (not clear how many are settled, etc., out of the 1,372; these numbers also do not correspond to the graphs above) (again as of 02/29/2016). The real question is what happens to those claims once there is institution.  Of the 1,359 trials instituted, 828 proceeded to final written decisions, and 600/828 had all claims unpatentable, or 72.4% (in red below).

chart

The chart below is for CBM filings (155 out of 306 instituted):

chart

Filings by Technology

The petitions by technology breakdown are shown below, where the majority is still in the electrical/computer/software arts (but bio/pharma has increased, partially due to the hedge fund filings attacking pharmaceutical patents) (again as of 02/29/2016). Fiscal year filings for 2014 and 2015 are also shown below:

chart

PO Preliminary Responses

During an IPR, PGR or PGR for CBM, the Patent Owner (“PO”) can optionally file a Preliminary Response.[2] Clearly, according to these statistics, the PO is choosing to file a Preliminary Response most of the time (overall 84.5% for IPRs in FY 2016).  The number of filed PO Preliminary Responses is in the next chart (again as of 02/29/2016):

chart

Termination

Below is a graph showing how these trials eventually end (again, as of 02/29/2016):

chart

Left, red bar: total number of claims available that could be challenged in the IPR petitions filed.

Second most-left, blue and red bar:  Blue indicates those claims not challenged; red are those claims challenged (41,602 claims).

Second most-right, yellow and red bar: Red are those claims going to trial (out of those in the second most-left, blue and red bar; corresponds to the 18,204 claims); yellow are claims challenged but no institution.

Right, multi-colored bar:  See description above. A completed petition includes a final written decision, denial of institution, settlement, request for adverse judgment or dismissal.  Here, the purple likely indicates termination due to settlement, adverse judgment or dismissal, where there was no final written decision (FWD). Green are those claims found patentable in a FWD (1,828 claims out of 18,204 claims instituted).

Here is the CBM version (in the right bar, the green part looks relatively smaller, the purple part bigger, and the red part bigger compared to IPR):

chart

 


  1. 77 Fed. Reg. 48764 (Aug. 14, 2012).
  2. Id. at 48756.