The Patent Trial and Appeal Board (“PTAB”) is beginning to get the reputation as the place where patent claims go to die. There have been fifty final written decisions from the PTAB. Thus far, no challenged claims have survived Covered Business Method review. The survival rate in Inter Partes Review proceedings is only slightly better; claims survived in only five proceedings, representing approximately a 13% Patent Owner success rate:

In Microsoft v. Proxyconn, only one of twelve challenged claims survived. See IPR2013-00109, No. 16 Final Decision (P.T.A.B. Feb. 19, 2014) (joined with IPR2013-00026).  The surviving claim (a dependent claim) was challenged on one anticipation ground and one obviousness ground, but survived based on a claim element of the independent claim (from which the surviving claim depended). The dependent claim survived despite the fact that its independent claim was found to be anticipated by a reference that the petitioner did not apply to the surviving dependent claim.

In Synopsis v. Mentor Graphics, nine of twelve challenged claims survived. See IPR2012-00042, No. 60 Final Decision (P.T.A.B. Feb. 19, 2014). In its decision, the PTAB gave substantial weight to the Patent Owner’s expert declaration, which was uncontroverted by a Petitioner expert declaration. See id. at 31-32.

In Berk-Tek, LLC v. Belden Inc., two of the six challenged claims survived. See IPR2013-00057, No. 46, Final Written Decision (P.T.A.B. Mar. 18, 2014). The two surviving claims were challenged on a single obviousness ground combining two references. In its decision, the PTAB relied on the Patent Owner’s expert declaration, which stated that the references taught away from each other. The PTAB also indicated that the petitioner had not sufficiently articulated why a skilled person would have combined the teachings of the two references.

In Microstrategy, Inc. v. Zillow, Inc., four out of the twenty-nine challenged claim survived.See IPR2013-00034, No. 42, Final Written Decision (Mar. 27, 2014). The PTAB simply disagreed with Petitioner that three of the four claims were rendered obvious by the prior art. Id. at 35, 40-41. In an additional claim, the PTAB rejected petitioner’s argument that because a prior art reference “performs the same function . . . in substantially the same way to achieve the same result,” the limitation was necessarily disclosed. See id. at 38. That standard, the PTAB explained, only applies to means-plus-function limitations. Id.

Finally, in LKQ Corp. v. Clearlamp, LLC, twelve of twenty-four challenged claims survived. With respect to the surviving challenged claims, the petitioner argued that the disclosure in the challenged patent was admitted prior art, thus addressing a limitation in a surviving claims. See IPR2013-00020, No 73 Final Written Decision (Mar. 27, 2014). However, the PTAB found that the petitioner did not adequately establish that the disclosure was “admitted prior art.” Id. at 24.

This diverse, and fact intensive initial sample of five inter partes review final written decisions is hardly sufficient to make any broad generalizations regarding how claims can survive IPR and CBM review. However, it is clear that the PTAB takes a close look at the issues raised by Petitioner and Patent Owner during the trial, and is not averse to finding that a petitioner has not met its burden in showing a challenged claim is invalid.