Under the America Invents Act (“AIA”), what was once the standard used by the Patent and Trademark Office (“PTO”) to determine whether to institute inter partes reexamination changed. The pre-AIA standard required that the PTO commence reexamination of a patent if it found that any prior art patents or printed publications raised a “substantial new question of patentability.” Under the AIA, however, for the one-year period running up to the deadline for filing a petition for inter partes reexamination, the PTO was to commence reexamination if the examiner concluded that there “is a reasonable likelihood that the requester would prevail with respect to at least one of the claims challenged in the request.” The last day for filing a petition requesting inter partes reexamination was September 15, 2012, and inter partes review (“IPR”) became available the very next day. When evaluating a petition for an IPR, the Patent Trial and Appeal Board (“PTAB” or “Board”) will not institute trial unless the petitioner has shown “that there is a reasonable likelihood that [it] would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). At the time the AIA was enacted, many asked: Would the change in the threshold for having the PTO consider the patentability of a patent claim make any difference?

Looking at the statistics published by the PTO for inter partes reexamination from fiscal years 2011, 2012, and 2013, it appears that the change in standard for instituting inter partes reexamination may have had little, if  any, impact on the rate that reexamination was being granted. For example, while inter partes reexamination grant rates between Q1 2011 (October 1, 2010) to the end of Q4 2011 (September 30, 2011) ranged from a high of 97.8% to a low of 81.8% with an average of 92.2%, the grant rates for inter partes reexamination between October 1, 2011 and September 30, 2012 ranged from a high of 93.1% to a low of 85.4%, with an average of 90.7% of the petitions for inter partes reexamination being granted at least in part. The remaining petitions for inter partes reexamination, i.e., those filed in the months leading to September 15, 2012 deadline, were evaluated in the first quarter of 2013 (October 1, 2012 to December 31, 2012) and those petitions were granted about 92.8% of the time. Thus, at least at a high level, the change in legal standard for granting a petition for inter partes reexamination changed the grant rate little, if at all. (Though further research into a claim-by-claim and ground-by-ground evaluation of the petitions might show a different result.) Another possible explanation for the relative consistency is that parties seeking inter partes reexamination increased the quality and substance of the analyses being submitted to the PTO when filing. This possible explanation is difficult to quantify.

While inter partes reexaminations were evaluated by the PTO’s Central Reexamination Unit, petitions for inter partes review are evaluated by a panel of trained administrative patent judges at the PTAB. Would the difference between review by a patent examiner and PTAB judges make any difference? The statistics further suggest that this too makes little difference from the perspective of whether an IPR trial will be instituted. The statistics are shown in the table below.

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As shown here, the percentages of decisions that resulted in the institution of an inter partes review ranged between 100% in Q1 2013 (only 1 decision rendered) to a low of 80.2% in Q4 2013 (91 decisions rendered). During the period reflected in the chart above, there were 201 decisions regarding whether to institute IPR. Of those decisions, 175 resulted in the institution of trial on at least one challenged claim. This means that during this period the PTAB instituted trial in an IPR proceeding on at least one claim roughly 87% of the time; noticeably lower than the roughly 92% of inter partes reexaminations granted over the prior two years.

At first glance this data suggests a downward trend in the rate of institution of IPR—and it in fact does so suggest. It also might be read to suggest that the “reasonable likelihood” standard is being applied more rigorously by the PTAB than by the CRU examiners. There is another, perhaps more likely explanation for the data: the statutory scheme for instituting IPR includes certain statutory bars, including those found in 35 U.S.C. §§ 315(a)(1) and 315(b), which account for a fairly substantial number of overall denials. Moreover, 35 U.S.C. § 325(d) gives the Director the discretion to deny trial under certain circumstances. Adjusting for the denials based on these statutory grounds raises the percentage of IPRs instituted. Therefore, the data do not suggest that the PTAB is any more (or less) likely to institute a trial for IPR than the Central Reexamination Unit was to grant a petition for reexamination.