1. PTAB Litigation 2016 Part 12 – PTAB Popularity and Reasons

2. Statistics Initial Patent Office Estimates of IPR requests
FY2015 – 1743 petitions
First chart is from IPR, PGR, CBM Federal Register Rules Publication
Second is from Patent Review Processing System (PRPS) – 1743 for the year (3.75 times original estimate)

3. *Data current as of: 10/31/2015

4. AIA Technology Breakdown

5. Why? Results District Court Trial Advantages PTAB trial framework
Board procedures

6. Results

7. Petition Dispositions
Trials Instituted
Joinders
Percent Instituted
Denials
Total Institution Decisions
IPR
FY13
167 10
87% 26
203
FY14
557 15
75%
193
765
FY15
801
116
68%
426
1343
CBM 14
82% 3 17 91 1 30
122
70% 43
144

8. IPR Final Written Decisions

9. CBM Final Written Decisions

10. Why Do Results Matter?
Petitioners pick the PTAB, and Petitioners are doing well at the PTAB
Once trial instituted, all claims cancelled over 70% of time, all claims survive less than 15% of time
While institution rates are lower (~65%), no estoppel if petitioner loses at institution decision
Thus, estoppel is not as scary as it looks on paper

11. DISTRICT COURT TRIAL ADVANTAGES

12. Stays
82% of IPRs and nearly all CBMs are directed to patents involved in parallel litigation
Stays granted ~70% of the time when requested, 61% of time when motions contested
Stay requests especially effective when requested after institution
CBM – “whether a stay, or the denial thereof, will reduce the burden of litigation on the parties and on the court.”
Judges may rather not deal with validity – confident that estoppel provisions will reduce issues.
Non-technically trained judges may prefer.
18 month schedule (compared to 3 yr + avg for reexamination) reduces prejudice to patent holder

13. Bargaining Leverage - Settlement
Process (Rule 42.74)
Parties may settle at any time and request termination of the trial
May avoid final written decision, but depends mostly on posture of trial
Unlikely if Board substantially decided merits already
Settlement before oral argument recommended to avoid Board issuing a final written decision
See In Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., IPR , Paper 43, at 2-3, n.1 (P.T.A.B. Oct. 19, 2015) (final written decision issued after Board denied pre-trial and post-trial motions to terminate proceedings)

14. Many Defendants Provides a Settlement Opportunity
A successful PTAB trial can ruin a patent owner’s trial strategy
A patent owner may be willing to dismiss you from a suit in exchange for giving up your PTAB challenge
Allows patent owner to continue pursuing other defendants
Attractive to patent owners if other defendants are estopped or otherwise PTAB barred
Timing is key
Settle just before institution decision prevents other defendants from jumping on board via joinder

15. PTAB Trial Framework

16. Specialized, Technically-Trained Bench
Judges required to have 4-year degree in engineering, chemistry, or biology or the equivalent
May be preferable by both parties for complicated technology (vs. jury or bench trial)
PTAB APJs focused on patentability analysis

17. Broadest Reasonable Interpretation
District Court – Words given their plain and ordinary meaning as understood by person of ordinary skill in the art in light of the specification and prosecution history
PTAB proceedings – A claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears

18. Broadest Reasonable Interpretation
District Court Construction * A
Some of the most important fights in an IPR are on claim construction. Need to anticipate potential claim terms to construe. Board sometimes raises claim construction issues sua sponte in final written decisions. * B

19. Limited Discovery
Attractive way for Petitioners to knock out patents without major discovery costs
Depositions of experts
Sometimes limited discovery regarding secondary factors
Board strongly disfavors onerous discovery and will push back on anything not in regulations
Delay discover for infringement case and perhaps avoid it entirely

20. Fast Paced Typically 18 month timeline
One year deadline from institution, extension only for good cause

21. Board procedures

22. Amendments Board has taken a very hardline approach to amendments
Limited number of substitute claims
Significant scrutiny for specification support, no broadening, explanation of patentability over art of record in proceeding and art of which the patent owner is aware (e.g., of record in IPR or other prosecution)
Show why patentable over claims at issue
Adjudicative not examination

23. Looking forward

24. Things that could make the PTAB less popular
Less findings of unpatentability
Fewer institutions
Rulings unfriendly to petitioners
Procedural defects can be case dispositive
Panels have dismissed cases for incorrect naming of real parties in interest
Federal Circuit takes a hard line stance on estoppel
Board has been hard on