May 8, 2014 PTAB Trial Statistics

By Eugene T. Perez

As of May 8, 2014, the Patent Trial and Appeal Board (“PTAB”) has updated the statistics of the number of inter partes reviews (“IPR”), post-grant reviews of covered business method patents (“CBM”), and derivation proceedings (“DER”) that have been filed. These stats are shown below, and can be found at:

http://www.uspto.gov/ip/boards/bpai/stats/aia_statistics_050814.pdf

Graph/chart form of these statistics are found here:

http://www.uspto.gov/ip/boards/bpai/stats/050814_aia_stat_graph.pdf

The proceeding statistics are found here:

http://www.uspto.gov/ip/boards/bpai/stats/aia_trial_proceedings.pdf

The PTAB determines whether or not an IPR or PGR will be granted.  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 claimed.[1] The granting of a PGR trial requires an initial threshold requirement of “more likely than not”, and is 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 (see the AIA Trials Instituted/Disposals chart below).  The number of AIA Petitions, where 1,035 IPR petitions have been filed:

NUMBER OF AIA PETITIONS

 FY

Total

IPR

CBM

DER

2012

25

17

8

2013

563

514

48

1

2014

730

619

106

5

Cumulative

1,318

1,150

162

6

 

The graphic form of the AIA filings is shown below (note the decreased filing from Jan - March this year, but a surge in April):

chart

A little over 71% of the IPR and CBM petitions filed are in the electrical/computer arts (a slight drop of 0.2% over the last few weeks), and little over 5% are in the biotechnology/pharma arts (of course does not include CBM filings). The petitions by technology breakdown are:

AIA PETITION TECHNOLOGY BREAKDOWN

 Technology

Number of Petitions

Percentage

Electrical/Computer

939

71.2%

Mechanical

196

14.9%

Chemical

107

8.1%

Bio/Pharma

68

5.2%

Design

8

0.6%

 

The pie chart for these filings by technology  are:

chart

During an IPR or CBM, the Patent Owner (“PO”) can optionally file a Preliminary Response.[2]  Clearly, according to these statistics, the PO is choosing to file a Preliminary Response most of the time ( 625/820=76.2% in IPR; 94/105=89.5% in CBM; 719/925=77.7% total for both types). The number of filed PO Preliminary Responses is in the next chart:

NUMBER OF PATENT OWNER PRELIMINARY RESPONSES

 Filed

Waived

FY2013

FY2014

FY2013

FY2014

IPR

237

388

63

132

CBM

33

61

2

9

 

AIA TRIALS/INSTITUTED DISPOSALS

Trials Instituted

Joinders

Denials

Total No. of Decisions on Institution

Disposals

Settlements

Final Written Decisions*

Other**

IPR

FY13

167

10+

26

203

38

 

1

FY14

304

2+

81

387

99

47

1

CMB

FY13

14

3

17

3

1

FY14

44

12

57

13

10

 

+13 cases joined to 12 base trials for a total of 25 cases involved in joinder.

*Includes judgment on request for adverse judgment.

**Includes terminations due to dismissals.

More information on the USPTO PTAB can be found here.

 


  1. 77 Fed. Reg. 48764 (Aug. 14, 2012).
  2. Id. at 48756.