August 31, 2017 PTAB Trial Statistics

By Eugene T. Perez

As of August 31, 2017, 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:

https://www.uspto.gov/sites/default/files/documents/trial_statistics_2017_08_31.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 48 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 7,429 AIA petitions (6,831 are IPR) filed from September 16, 2012 to August 31, 2017:

Here is the breakdown by technology, the majority still being electrical/computer arts:

To break down the filing trends for IPR, CBM, and PGR separately on a monthly basis for the last year, here are the graphs provided by the PTAB. The IPR filings have been steady and relatively high the past year, with an unusually high number (237) filed in January of 2017:

However, the number of PGR petition filings is still relatively low, and the number of CBM filings are decreasing (in fact 0 in August 2017):

Institution, Disposal, Etc.

In the first phase of an AIA trial, the PTAB determines whether or not an IPR, PGR or CBM will be instituted.  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 claims. The institution 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.  Below are charts depicting the filings for IPR, CBM and PGR, respectively, clearly indicating that the majority of filings lead to institution in IPR, but the trend is going down starting from Fiscal Year 2013 (“FY13”) to this year (as of 08/31/2017):

Here's the breakdown of institution rate by technology:

 

When the IPR/CBM/PGR Petition is filed, the Patent Owner has the option of filing a Patent Owner Preliminary Response (“POPR”).  With the old reexamination proceeding, the Patent Owner typically does not file such a preliminary response.  But with these AIA trials, the Patent Owner wants to avoid institution of trial, and filing the POPR can avoid such institution. Thus, in all technologies, the POPR is usually filed (the “pre” refers to before the rule allowing testimonial evidence with the POPR; “Post” refers to the rule allowing testimonial evidence with the POPR):

Regarding settlement, there are more settlements in IPR pre-institution, whereas in CBM there are more post-institution. The graphs below show settlement currently occurs around 14% pre-institution decision; around 22% post-institution:

Below is another PTAB chart showing the break-down of outcomes for those IPRs that have been completed to date (again as of 08/31/2017). Out of the 7,429 total filed petitions, 3,774 trials were instituted.  You can see that 1,712 petitions were denied, 918 settled pre-institution, 714 settled post-institution, 37 dismissed, and 239 had the Patent Owner requesting adverse judgement.

The real question is what happens to those claims once there is institution and there is a Final Written Decision (“FWD”).  Of the 1,733 trials that proceeded to final written decisions, and 65% of them had all claims found unpatentable, and another 16% some claims found unpatentable.  19% of time had no claims found unpatentable (all claims survived).

 

  1. 77 Fed. Reg. 48764 (Aug. 14, 2012).