Statistics Show the Trend Continues: All Claims in CBM Review Have Been Held Unpatentable

Author: Jonathan R.K. Stroud
Editor: Aaron L. Parker

As the first appeals from AIA Trials begin to trickle into the Federal Circuit, we note that parties filed more petitions in October than any month yet. In the twenty-fifth month of their infancy, IPRs, CBMs, and now PGRs have continued to prove popular, making the PTAB the busiest single forum for patent challenges.

Our data tracking suggests no signs of the PTAB slowing down any time soon. While anecdotal evidence shows that panels may be willing to decline institution based on related petitions, see Canon Inc. v. Intellectual Ventures, IPR2014-00535, Paper 9 at 19 (Sep. 24, 2014), of those instituted and reaching the merits, the majority of claims continue to be held unpatentable.

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Appeal of First IPR to Federal Circuit – Part I: Issues Presented in Briefing

Author: Troy E. Grabow
Editor: Aaron L. Parker

On November 3, 2014, the Federal Circuit heard oral argument in In re: Cuozzo Speed Technologies LLC, No. 2014-1301, the first IPR filed under the AIA and the first IPR final written decision. Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, No. IPR2012-0001, (Paper 59, Nov. 13, 2013) (Final Written Decision). In its briefing, Cuozzo appealed the final written decision of the PTAB cancelling all of the challenged patent claims, arguing that it could also appeal the earlier institution determination.

With respect to the institution determination, Cuozzo asserted that the PTAB erred in granting institution on claims 10 and 14 on the same grounds as set forth for dependent claim 17, but not expressly set forth for claims 10 and 14. Cuozzo argued that the PTAB improperly instituted on grounds not raised in the petition. The PTO first replied that the instituted grounds are not new, because the grounds for the narrower dependent claim by definition also apply to the broader claims from which it depends. Second, the PTO replied that the Federal Circuit does not have jurisdiction to review the PTO’s decision to institute inter partes review. The PTO cited to the statute (35 U.S.C. § 314(d)) which states that the determination whether to institute is final and nonappealable, and only expressly provides for review of the PTAB’s final decision on patentability. Cuozzo disagreed that the PTO is completely shielded from review of the institution decision, arguing that the only aspect of the institution determination that cannot be appealed is the PTO’s discretionary determination whether there is a reasonable likelihood that the petitioner will prevail.

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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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