I attended the 14th annual Rocky Mountain IP & Technology Institute at the beginning of June. This panel looked at the PTAB case law and related Federal Circuit decisions over the last year. Here are the highlights:

  • Institution trends
    • 87% institution rate in fiscal 2013 trending downward and settling in fiscal 2015-16 around two-thirds of petitions being instituted.
      • This is at least partly because of more stringent application rules.
    • New PTAB rule allows declarations supporting patent owners’ preliminary responses. That could further decrease institution rates, although there is no data on this yet.
    • There are slightly lower institution rates for medical device & pharma claims, likely because of relatively higher quality of those patents generally.
    • Average invalidity rate for instituted claims is 84%.
      • Invalidity rate for instituted claims has held relatively steady since the beginning of the proceedings.
      • 73% of instituted IPRs end in invalidation of all instituted claims.
    • Common reasons that petitions fail:
      • Failure to explain how prior art applies to the claims (29%)
      • Failure to explain why it would be obvious to combine prior art references and support the explanation (21%).
        • The PTAB requires evidence-based explanations. An unsupported expert statement in a paragraph is not enough.
      • 27% fail for avoidable defects
        • 8% — failure to prove prior art was published
        • 8% — improperly incorporating by reference to avoid word counts
        • 5% — failure to file within the one-year period (this is typically a privity issue, not just missing a deadline)
        • 4% — failure to show that a claim limitation was inherently disclosed
          • Again, evidence-based explanations are necessary
        • 1% — failure to prove prior art priority date
        • 1% — failure to name real party in interest
      • Federal Circuit generally does not review institution decisions. Apple v. Achates Reference Publishing
      • Relying on provisional applications – Ariosa Diagnostics v. Illumina (PTAB)
        • The petition identified several bases that the reference was prior art, but never picked one and explained why it qualified.
        • The petition showed that some elements of the claims were in the provisional, but not that each element of the claim was taught in the provisional.
      • Patentee admissions are not prior art themselves – LG Electronics v. Core Wireless Licensing (PTAB)
      • Publication dates must be proved – TRW Automotive v. Magna Electronics
        • The PTAB rejected conclusory arguments that a copyright notice or an ISBN number on an IEEE publication proved publication. Actual evidence of publication is required.
      • The PTAB will not do the work for you – Apple v. ContentGuard Holdings (PTAB)
        • Petition denied because procedural defects with claim mapping and nested citations required PTAB “to play archeologist with the record.”
      • Address real party in interest (“RPI”) in the petition – Corning v. PPC Broadband (PTAB)
        • Failure to name RPIs is a statutory violation that can only be corrected if the petitioner’s one year bar date has not passed.
      • Petitioner always has burden of persuasion regarding RPI – com v. Appistry (PTAB)
        • If patent owner challenges RPI disclosure, petitioner must respond. This is true even at the petition stage where no reply is allowed. It will be important to request a reply on that issue.
      • PTAB can ignore experts – Ex Parte Belden (PTAB)
        • The PTAB gave no weight to conclusory expert testimony, even though it was unrebutted.
        • Experts must do more than block quote arguments and bless them. The declaration should explain and support the petitioner’s argument.
        • The Board is critical of petitions and expert declarations that mimic each other.
      • If you could have anticipated an argument, you need to address it up-front.
      • Clearly explain obviousness – Direct TV. V. Qurio (PTAB)
        • Obviousness arguments must be supported by a thorough explanation, including evidence-based proof.
        • The petition must also address each of the Graham factors.
      • Covered Business Method Review (“CBM”)
        • Every entity filing a CBM must have been sued for standing.
        • Petitioner must show that at least one claim is incidentally related to a financial product or service – ServiceNow v. BMC Software (PTAB)
          • Disclosure in the specification is not enough. You must point to the claims themselves.