8 th Volume of our IPR-PGR Report

HARNESSING PATENT OFFICE LITIGATION
A Look at Twenty Seven
Months of Inter Partes
Review Proceedings Before
the United States Patent
and Trademark Office
9 I 16 I 2012 to 12 I 16 I 2014
WELCOME
PRELIMINARY
STAGE
Preliminary Stage of the Proceedings (Petition Filing through PTAB Trial Initiation Decision)
PETITIONS SUPPORTED BY EXPERT
DECLARATIONS1
TRIAL STAGE
25
67%
60
12
/1
6/
12
3/
16
/1
3
6/
16
/1
3
9/
16
/1
3
12
/1
6/
13
3/
16
/1
4
6/
16
/1
4
9/
16
/1
4
12
/1
6/
14
40
20
323
15
12
/1
6/
12
33/
/116
6//1
133
66/
/116
6//1
133
99/
/116
6//1
133
112
2//1
166
//11
33
33/
/116
6//1
144
66/
16
/1
4
9/
16
/1
4
12
/1
6/
14
Percentage
Percentage
80
PERCENT OF PETITIONS PUT INTO TRIAL
35
100
Percentage
3/
16
/1
3
6/
16
/1
3
9/
16
/1
3
12
/1
6/
13
3/
16
/1
4
6/
16
/1
4
9/
16
/1
4
12
/1
6/
14
60
15
Computer
487Mechanical and
Transportation
10Design
1
CLAIMS CANCELLED IN
FINAL WRITTEN DECISION BY
SUBJECT MATTER
TOP 6 IPR FILERS
69
57
57
47
40
33
Over time, Petitioners have come to recognize that their Petitions must be supported by hard evidence in the form of expert testimony.
As Patent Owners have come to realize that substantive attacks on a Petition are less successful without expert testimony, they have waived the
Preliminary Patent Owner Response in increasing numbers.
2
Claims
Confirmed as
Patentable
5
TECHNOLOGY OF CHALLENGED
PATENT CHART
344 Chemical and Biotech
1315Electrical and
37%
18
Amended
Claims
Allowed5
Claim Survival
Rate4
Final Written Decisions
10
12/16/12 - N/A
16
days3
20
12
/1
6/
12
3/
16
/1
3
6/
16
/1
3
9/
16
/1
3
12
/1
6/
13
3/
16
/1
4
6/
16
/1
4
9/
16
/1
4
12
/1
6/
14
Petitions Filed
25
Average
Number of
Challenged
Claims
74
597
Claims
Canceled
30
80
Average Time
for Board to
Decide Whether
to Institute Trial
Cases
Settled
2524
PETITIONS FILED PER WEEK
CLAIMS
CANCELED IN
FINAL WRITTEN
DECISION
Trial Stage of the Proceedings (PTAB Trial Initiation Decision through Final Written Decision)
Claims Included
in Trial vs. Total
Challenged Claims
from Petition
WAIVER OF PATENT OWNER
PRELIMINARY RESPONSE 2
100
80.9%
means that there may be no greater opportunity and true reform
to come from the America Invents Act than these post-grant
proceedings. Our periodic Report will provide insight based on the
over 100 characteristics of these proceedings that we are tracking.
Our analysis can also be followed at IPR-PGR.com.
Welcome to Harness Dickey’s Report on Litigation Practice before
the United States Patent Office. Created by the America Invents Act,
Inter Partes Review proceedings have already changed the face
of patent litigation. Lower cost, lower burden of proof to invalidate,
broader claim scope, among other advantages to patent challengers,
100%
80%
60%
40%
20%
0
3
86% Chem/Bio
82%Electrical/
Computer
74%Mechanical
Time from
Petition Filing
to Final Written
Decision
16.3
months
Time from
Decision to
Institute to Final
Written Decision
11.1
months
While the initial
Final Written
Decisions were
decidedly in favor
of Petitioners (a
96.4% cancelation
rate as of March 16,
2014), more recent
decisions have
increasingly sided
with Patent Owners,
bringing down the
total number of
canceled claims to
80.9%. Critics of
IPR proceedings try
to argue the various
ways in which the
proceedings are
skewed toward
Petitioners. It
is becoming
increasingly clear,
however, that the
Inter Partes Review
process has added
an efficient and
cost-effective
avenue to test
the patentability
of patent claims
outside expensive,
District Court
litigation.
N/ADesign
As the PTAB’s workload has steadily increased, the time to a Decision to Initiate has gradually climbed, as well. While the Board has statutorily been provided
with three months to make that decision, it is taking about three weeks less than the full statutory allotment to come to a Decision to Initiate.
4
Percent of claims that were confirmed as patentable in a Decision to Institute or Final Written Decision.
5
A total of one motion to amend has been granted through December 16, 2014.
CONCURRENT PROCEEDINGS
Litigation and other Administrative Proceedings Involving the Patent-At-Issue
Patent Owner vs.
Patent Challenger
Concurrent
Litigation
Contested
Motions to
Stay Granted
81%
32%
61%
13%
Multiple IPRs
for Same
Patent
IPR Patent
Involved In Prior
Reexamination
Proceeding
Increasingly, and to get around the PTAB’s onerous Motion to Amend requirements, Patent Owners are filing
concurrent reissue or reexamination proceedings to offer a more robust substitute claim set.
COURTS WITH HIGHEST WIN RATE
FOR MOTIONS TO STAY 6
COURTS WITH LOWEST WIN RATE
FOR MOTIONS TO STAY 6
NORTHERN DISTRICT OF GEORGIA
100%
DISTRICT OF NEW JERSEY
EASTERN DISTRICT OF PENNSYLVANIA
100%
EASTERN DISTRICT OF TEXAS
NORTHERN DISTRICT OF ILLINOIS
WESTERN DISTRICT OF TENNESSEE
NORTHERN DISTRICT OF CALIFORNIA
6
86%
83%
82%
EASTERN DISTRICT OF MICHIGAN
NORTHERN DISTRICT OF NEW YORK
MIDDLE DISTRICT OF FLORIDA
0%
18%
25%
25%
30%
For district courts with four or more decisions on motions to stay
HARNESS DICKEY
HAS DEMONSTRATED
EXPERTISE IN
PATENT OFFICE
LITIGATION
Harness Dickey has developed the expertise to handle the specialized Inter
Partes Review (and Post Grant Review) proceedings. That expertise shows
in the results we are achieving for our clients. Please contact us at ipr-pgr@
hdp.com with any questions or to discuss our expertise, including a more
complete array of statistics than presented here. Also, you can follow our
updates on important PTAB decisions and developments at IPR-PGR.com.
Microsoft Corp. v. Proxyconn, Inc. (IPR2012-00026; IPR2013-00109); LKQ Corp. v. Clearlamp, LLC (IPR2013-00020); Athena
Automation Ltd. v. Husky Injection Molding Sys., Ltd. (IPR2013-00167; IPR2013-00169, IPR2013-00290); Bomtech Elect. Co., Ltd.
v. MT. Derm GmbH (IPR2014-00137; IPR2014-00138); Heartland Tanning, Inc. v. Sunless, Inc. (IPR2014-00018); Laird Tech., Inc.
v. GrafTech Int’l Holdings, Inc. (IPR2014-00023; IPR2014-00024; IPR2014-00025); Histologics, LLC v. CDx Diag., Inc. (IPR201400779); Webasto Roof Sys., Inc. v. UUSI, LLC (IPR2014-00648; IPR2014-00649; IPR2014-00650); Brose North Am. V. UUSI, LLC
(IPR2014-00416; IPR2014-00417); Positec USA, Inc. v. Black & Decker, Inc. (IPR2013-00502); Plant Science, Inc. v. The Andersons
Agriservices, Inc. (IPR2014-00939; IPR2014-00940; IPR2014-00941); HTC Corp. v. FlashPoint Tech., Inc. (IPR2014-00902; IPR201400903; IPR2014-00934; IPR2014-01249; IPR2014-01460)
We have traveled the world to provide seminars regarding Inter Partes Review
proceedings to companies, law firms, and other organizations. Interested in
having us visit for a presentation? Please email us at [email protected]
IPR-PGR.com