Patent Owners Faring Better in PTAB Proceedings

A new study of proceedings before the Patent Trial and Appeal Board (PTAB) shows that patent owners are prevailing with respect to the survival of claims at a higher rate than previously seen. The study, conducted by law firm Fitzpatrick, Cella, Harper & Scinto, shows that the rate at which patent claims were found unpatentable in PTAB proceedings fell significantly in 2016. At the same time the volume of claims in dispute rose dramatically.

The study found that in every quarter of 2016, the reviewed final written decisions resulted in more than half of the claims originally challenged in IPR proceedings surviving. By contrast, in the previous two years, the survival rate of such claims exceeded 50 percent only once. In the first quarter of 2014, in fact, less than 20 percent of such claims survived challenge.

While this is good news for patent owners, it should not be interpreted as suggesting that the problems that have plagued the PTAB have been or are about to be resolved. Thanks to the way the PTAB has interpreted the statute a final written decision only addresses those claims that were actually instituted, not all challenged claims. What this means is those claims that are challenged and not instituted technically survive, but there is no estoppel with respect to those claims. Indeed, those claims can be challenged again and again, and sometimes are subjected to repeated challenges until ultimately they are instituted.

Whether the PTAB’s interpretation of the statute — that a final written decision does not need to address claims challenged but not instituted — is currently pending appeal before the United States Supreme Court in SAS Institute v. Matal. See our SAS Archive for more information on the case.

The United States Supreme Court heard oral arguments in SAS Institute v. Matal on Monday, November 27, 2017. This case should give the Supreme Court the opportunity to declare whether the PTAB must issue a written decision covering all claims challenged in an inter partes review proceeding, and based on the oral argument transcript the Court may also decide whether partial IPR institutions are permissible under the statute.

The issue specifically taken by the Supreme Court is as follows:

Does 35 U.S.C. § 318(a), which provides that the Patent Trial and Appeal Board in an inter partes review “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner,” require that Board to issue a final written decision as to every claim challenged by the petitioner, or does it allow that Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner, as the Federal Circuit held?

If the Federal Circuit decision is left to stand, petitioner SAS has argued that the USPTO’s ability to ignore challenged claims in final written decisions “destroys the efficiencies that Congress designed into the AIA through the application of estoppel from a final decision.” Indeed, if there is no final written decision on claims challenged but not instituted that necessarily means those claims are susceptible to further challenge.

Notwithstanding, it is still good to see that the PTAB is changing, to at least some extent, and more claims are surviving.

According to the Fitzpatrick report, the number of claims at issue in cases decided by the PTAB last year—12,732—is almost equivalent to the number of claims they had adjudicated in all previous years combined. The total rate at which patent claims have survived IPR challenges since the PTAB was first established rose to 45 percent due to patent owners’ success in IPR proceedings last year. That number was only 40 percent through 2015.

“While PTAB judges were busier than ever last year on a claim-by-claim basis, that increase in activity hasn’t created any negative trends for patent owners,” noted Justin Oliver, partner at Fitzpatrick and head of the firm’s PTO Contested Proceedings practice. “In fact, this year’s report shows just the opposite. It’s evident that 2016 was the best year ever for patent holders in IPRs.”

Of course, this would be extremely significant if those claims that survive challenge would all become the type of gold-plated claim that we were promised they would become as a result of the estoppel provisions. The IPR estoppel provisions found in 35 U.S.C. § 315, as written prohibits a petitioner, and a party in privy with the petitioner, from challenging an estopped claim “on any ground that the petitioner raised or reasonably could have raised.” If the Supreme Court decides that all challenged claims must be subject to a final written decision those claims that survive challenge presently in the final written decision, as well as those claims not instituted because there is no likelihood that they will be found invalid, would become gold-plated and almost certainly not susceptible to challenge in a patent infringement proceeding in federal district court.

Other findings in the Fitzpatrick report include:

• The percentage of IPRs that involve concurrent litigation is 85.6 percent.
• From 2013 to 2016, the average number of grounds asserted per petition dropped from 9.8 to 4.58, while the number of grounds instituted has continued to hover around three.
• The technologies most frequently at issue in PTAB proceedings are electrical/computer (30 percent of proceedings) and data processing (22 percent).

The report also includes a number of significant findings regarding disputes involving pharmaceutical patents:

• Patent owners in pharmaceutical matters fared significantly better than patent owners as a whole; nearly 75 percent of pharmaceutical claims challenged in IPR proceedings survived challenge.
• Pharmaceutical matters accounted for five percent of the PTAB decisions in 2016—a 25 percent increase over the previous year, when they accounted for four percent of decisions.
• Among different types of pharmaceutical claims, compound claims enjoyed the lowest rate of unpatentability per pre-institution challenge (only 19.7 percent), but suffered the highest rate of unpatentability post-institution (66 percent).

The full report, which provides insights regarding both the usefulness of PTAB proceedings to challengers and effective lines of defense for patent owners, is available here. A specialized report of pharmaceutical patent disputes is available here.