September 25, 2014

Happy 2nd Birthday, Inter Partes Review – By the Numbers

Welcome to Volume 7 of our IPR-PGR Quarterly Report. Please contact us with any questions about these Patent Office procedures.

We take special note of three interesting statistics this quarter.  First, obtaining amended patent claims in these proceedings remains difficult.  After 1 motion to amend was granted last quarter, this quarter saw a complete shutout.  No additional motions to amend granted. Further, it seems that many new decisions, denying a motion to amend, add additional requirements and hurdles. It will be interesting to see if the argument currently before the Federal Circuit, that the broadest reasonable interpretation standard is inappropriate when a Patent Owner cannot effectively amend claims, is accepted.

Second, district courts continue to demonstrate an increased comfort with the ability of IPR proceedings to simplify issues at trial, including as compared to reexamination proceedings, in an increasing grant rate on motions to stay.  While this is still very much a judge and court-specific decision, defendants will succeed on a contested motion to stay almost 2 out 3 times.

Third, we took a broader look at claim survival this quarter, not just looking to the rate at which claims from an IPR “trial” were shown to be unpatentable in Final Written Decisions. We added in claims that were not put into a “trial” at all – raising the claim survival rate to 41%.  If only claims that are put into trial are considered, the survival rate is 27.8%.

The Federal Circuit has a mounting pile of appeal briefs relating to IPR practice – will we soon see another tidal wave of change as the patent appeals court weighs in?