“In 2020, [IPR] cases edged higher, with a total of 1,443, 13.5% more than 2019, and the early data for 2021 suggests the same positive growth trend has continued.”
The annual IPR Intelligence Report evaluates all stakeholders in Inter Partes Review (IPR) proceedings each year. Here, we will reveal some of the best law firms involved in the 7,582 IPR challenges filed during the period of the study.
In order to have a meaningful comparison, as well as compensating for the time required for each case from filing to completion (e.g. 6 to 18 months), we covered a period of five years, from July 1, 2016 through June 30, 2021, using the latest updates for the cases as of August 20, 2021. During this period, a total of 7,582 IPRs were filed to challenge 5,087 unique patents and 80,831 unique claims. Nine-hundred and thirty law firms and a total of 5,341 attorneys represented 2,658 companies involved in one or more IPRs as patent owners or petitioners.
In our year-over-year analysis, as shown below, we noticed that filing activity has fluctuated between 1,271 and 1,725 cases per year. IPR activity peaked at 1,725 cases in 2017. In 2018, a total of 1,607 IPR petitions were filed, which was 7% lower than 2017. But in 2019, the number of cases dropped to 1,271, which represented a 21% decline compared to 2018. In 2020, cases edged higher, with a total of 1,443, 13.5% more than 2019, and the early data for 2021 suggests the same positive growth trend has continued. IPR follows the district court trends with a lag of about 12 months. Because district court activity has been gaining momentum in the last 12 months, this kind of increase in IPR filing was expected.
Below are some of the top IPR firms that were ranked in the top 50 by activity or performance, in no particular order. Being among the top 50 is a significant achievement for these firms, as it means they are in fact in the top 5% out of almost 1,000 law firms:
- Perkins Coie with a total of 304 IPR cases is one of the top 10 most active firms. In terms of performance, the firm jumped from the 7th in 2020 to the 4th place overall. Perkins Coie is one of the best performers in the IPR space as well as in other areas of IP. Imperial Brands and Intel are two of their key IPR clients.
- Wilson Sonsini with a total of 181 IPR cases including 79 cases for patent owners, is pretty active on both sides. The firm was ranked the 4th best performing and 23rd most active for the patent owners. Viatris Inc. is the firm’s top IPR client.
- Polsinelli with a total of 77 IPR cases was ranked the 4th best performing firm on the petitioner side. The firm jumped from the 9th position in 2020. The firm was also ranked the 19th best performing overall. Halliburton remains their top client when it comes to IPR.
- Quinn Emanuel with 351 IPR cases including 143 on the petitioner’s side and 208 on the patent owner’s side, the firm is the 4th most active overall and for patent owners. The firm is also ranked the 7th most active on the petitioner’s side. In terms of performance, the firm is among the top 25 best performing in all categories including the 14th best performing overall. Alacritech, Inc., Samsung Electronics and Blackberry are the top three IPR clients for the firm.
- Sheppard Mullin with 87 out of 105 IPR cases on the petitioner’s side, the firm is more focused on representing petitioners. The firm ranked the 9th best performing for representing petitioners. The firm’s top three IPR clients include Netflix, Snap Inc. and Hulu, all California-based tech companies.
- Alston & Bird with a total of 204 IPR cases, ranked the 15th most active and the 22nd best performing overall. The firm’s top IPR client is Nokia followed by Universal Electronics.
- Erise IP with a total of 180 IPR cases including 158 on the petitioner’s side, is a small firm with a great performance. The firm is ranked the 23rd most active and the 26th best performing firm overall. The firm is the 13th most active on the petitioner’s side and has the tech giant, Apple as its top IPR client.
- Wolf Greenfield with 139 IPR cases ranked the 30th most active firm with a performance ranking of 49th overall. The firm represents Google and Sony in a number of IPR matters.
- Greenberg Traurig with 141 IPR cases, is active mostly on the petitioner’s side. The firm has a diverse client list and is ranked the 25th most active firm on the petitioner’s side with 99 petitions filed during the period of our study.
- Knobbe Martens has represented patent owners in 161 out of 288 IPR cases in total. This has made them the 9th most active firm for patent owners and the 10th overall. The firm is ranked the 21st best performing firm for patent owners. Fisher & Paykel Healthcare and Masimo is their top two IPR clients.
- Haynes & Boone represented petitioners in 235 out of 269 IPR cases. The firm ranked the 6th most active and the 36th best performing for the petitioners. Cisco, Apple and Ericsson are the top three IPR clients for the firm.
- Norton Rose with 69 IPR cases including 32 for patent owners and 37 for petitioners, has represented the petitioners and patent owners almost equally. The firm was ranked the 20th best performing for reprenseting petitioners. Qualcomm is the firm’s top IPR client.
- Buchanan Ingersoll with 29 IPRs out 61 on the patent owner’s side, is ranked the 41st best performing for patent owners. 3Shape and Best Medical International are two of the top IPR clients for the firm.
- Desmarais is one of the fastest growing IP firms that has caught our attention in recent years. With a total of 119 IPR cases including 68 for patent owners, the firm is ranked the 15th best performing for representing the patent owners. Monterey Research, IBM and Samsung are the top 3 IPR clients for the firm.
- Klarquist Sparkman with a total of 84 IPR cases including 67 on the petitioner’s side, is ranked 37th most active for petitioners and the 20th best performing for patent owners. Microsoft and SAP are the two top IPR clients for the firm.
- Mintz Levin with 86% of its 84 IPR cases on the patent owner’s side, is ranked the 29th most active firm for representing patent owners. AMD, Netlist and Intellectual Ventures are the top 3 clients of the firm.
- Fitch Even is 100% focused on representing the patent owners. With 76 out of 76 cases in total, the firm is ranked the 27th most active for patent owners. Their top IPR clients include Lone Star Silicon Innovations LLC and the German patent licensing entity, Papst Licensing.
Here, we would like to explain the updates and improvements to our ranking methodology, which has been influenced by our community’s feedback, either through direct communication or by conducting surveys:
- Success and Performance Scores: We only considered non-pending cases (concluded) with one of the following three statuses: Terminated-Denied, Terminated-Settled and Final Written Decision. To be included in the overall Performance or Success Rankings, attorneys need to have at least 30 concluded (non-pending) cases or a minimum of 15 concluded cases to be included in the Patent Owner/Petitioner Performance or Success Rankings. Law firms need to have at least 22 concluded cases or a minimum of 11 concluded cases to be included in the Patent Owner/Petitioner Performance or Success Rankings. Lastly, companies need to have at least 18 concluded (non-pending) cases or a minimum of 9 concluded cases to be included in the Patent Owner/Petitioner Performance or Success Rankings.
- Success Score calculation: In order for us to determine the performance ranking for each of the stakeholders, we first calculate the success for everybody involved in every IPR as soon as the case is terminated or receives the Final Written Decision from the panel of the PTAB judges. The following table summarizes how the points are allocated to each party or representative:
For example, if the petition has challenged 10 claims but only 3 of them were invalidated after receiving the Final Written Decision, the attorney or law firm representing the petitioner will receive 3 out of 10 or 0.3 points, while the attorney or law firm representing the patent owner will receive 7/10 or 0.7 points for that case.
3. Activity Score: We understand that the company’s in-house counsel would prefer to hire somebody with more activity and experience in recent years over somebody who was active five years ago. As a result, the improved Activity Score gives a higher weight to more recent cases compared to older cases. Under this model, an attorney who was involved in a total of 50 cases back in 2016 is ranked lower than another attorney with the same 50 cases but distributed over a five-year period.
In the following weeks, we will also share the results of our rankings for the top Hatch-Waxman and Federal Circuit law firms, and also take a look at some of the firms that disappeared in 2020.