Introducing PTAB Statistics: Unique Insights Into Claim Disposition and Construction in Final Written Decisions

Authors: Elliot C. Cook, Daniel F. Klodowski, Kai Rajan, Joseph M. Schaffner, Jonathan R.K. Stroud
Editor: Aaron L. Parker

With over 2,000 petitions filed since AIA trials became available, filings have exceeded even the USPTO’s ambitious projections. As of October 6, 2014, the PTAB has issued more than 130 final written decisions on the merits in inter partes reviews (IPRs) and covered business method reviews (CBMs). While basic statistics on filings, institutions, settlements, and decisions are available, little is known regarding how the PTAB analyzes instituted cases. For many important trends—such as how the PTAB has handled claim disposition and claim construction issues—following the cases or machine-tracking the data is not sufficient to understand the PTAB’s methodology. To interpret the decisions and reliably identify trends, data analytics aided by experience with PTAB proceedings is needed.

Finnegan’s AIA Blog now offers statistics and graphics based on claim disposition and claim construction data from PTAB final written decisions. These unique statistics and graphics illuminate aspects of IPR and CBM final written decisions that are relevant to parties and practitioners.

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PTAB May Flex its Discretionary Muscle to Deny Duplicative IPR Petitions

Author: James D. Stein
Editor: Michael J. McCabe II

The AIA granted the Board broad discretion to determine how a matter will (or will not) proceed if another matter involving the same patent has been brought before the USPTO, especially where “the same or substantially the same prior art or arguments were previously presented to the Office.” See 35 U.S.C. § 325(d).

The Board recently exercised this discretion in an “informative” decision denying an IPR petition in Medtronic, Inc. v. NuVasive, Inc., IPR2014-00487, Paper 8 (Sept. 11, 2014). The petitioner had previously filed two IPR petitions challenging the same patent. The Board denied one petition and instituted the other. The petition here admitted that it was “essentially a duplicate” of the denied petition, but contended that it corrected deficiencies, provided new evidence and arguments, and presented grounds that were not redundant to the grounds presented in the instituted petition. The Board rejected petitioner’s arguments based on three key points:

  1. The new petition failed to “provide any specific reasoning” to support the argument that its grounds were not redundant to the grounds in the instituted petition other than stating that “those grounds are based on different prior art references and different arguments”;
  2.  The instituted proceeding involved the same patent and claims, with oral argument already scheduled for November; and
  3. The grounds proposed in the new petition were “nearly identical” to the grounds proposed in the denied petition.

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PTAB and Discovery: An Insider’s Perspective

Author: Anthony A. Hartmann
Editor: Michael J. McCabe II

Recently, APJs Bonilla and Snedden authored a post on the USPTO AIA Blog entitled “Routine and Additional Discovery in AIA Trial Proceedings: What is the Difference?” Their post provides some meaningful insight into how the PTAB approaches routine and additional discovery and cites numerous decisions that may be useful to practitioners.

The APJs explain that “routine discovery” under Rule 42.51(b)(1)(i) has its limitations. While exhibits cited in a paper or testimony must be produced, no requirement exists for a party to create or provide materials that were not cited. Nor are parties required to produce materials that a party or witness considered in preparing the paper or the testimony.

The APJs note that “routine discovery” under Rule 42.51(b)(1)(ii) requires a party relying on a witness’s testimony by declaration or affidavit to make that witness available for cross-examination. “Normally, the burden and expense of producing a witness for cross-examination falls on the party presenting the witness.”

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