Since the new procedure launched in 2011, third parties have filed more than two thousand requests for Inter Partes Review.
IPR Filings
In their new University of Chicago Law Review essay, Professor Brian Love and Shawn Ambwani explore some of the results from these past two years. See Inter Partes Review: An Early Look at the Numbers, 81 U Chi L Rev Dialogue 93 (2014) [Essay].
Love, who tends to favor a strong post-issuance review regime, suggests that (based upon the initial numbers) the regime is doing its job:
Though it would be premature to make sweeping claims about IPR at this time, so far IPR appears to be a powerful shield for those accused of patent infringement (and those who anticipate that they may soon be). Compared to requests for inter partes reexamination, petitions for IPR are currently granted at a similar rate, but once instituted, they result in the elimination of every challenged claim about twice as often, reach a final decision almost twice as quickly, and make accused infringers almost twice as likely to win motions to stay co-pending litigation. In its attempt to create a formidable avenue for administratively challenging issued patents, Congress appears to have hit the mark—but only time will tell for sure.
Looking particularly at NPEs, the article reports that IPR-challenges of patents being elsewhere asserted by NPE are more likely to be instituted (as compared with the population), but less likely to result in cancellation of claims.
Over the next year, the number of results will grow tremendously and we will have a better understanding of the process and its merits. In addition, I suspect that the results will vary over time as Office hones its approach and the composition and leadership of the PTAB changes.
We can probably all agree that it ought to be somewhat easier to make claim amendments in an IPR that are proposed very early and well justified.
But note that most of the complainers about the IPR claim amendment difficulty are conveniently ignoring the fact that 82% of IPRs are in response to already filed patent suits on that same patent. That should raise a serious question: how much sympathy for such belated claim amendments does a patent owner deserve who has already started costly and court-clogging patent litigation on patents without ever even bothering to first check to see if the claims they are suing on are valid? [Much less, to file a reissue, a reexamination, or disclaimers, where needed, before suing?] Especially the numerous patent attorneys who complain about what poor quality prior art searches and examinations they now get from PTO examiners for patent applications! Yet then hypocritically argue that issued patents have such a strong presumption of validity that no pre-suit validity [or ambiguity] investigation or correction should be needed! [Claiming to be surprised by the fact that most IPRs cite far better patent or publication prior art than the examiner, which prior art they are effectively admitting, by their proposed amendments, cannot be distinguished by the claims they sued on!]
The biggest complaint about IPRs seems to be the near impossibilty of amending claims within an IPR. The rationale for this is the short statutory time period for IPRs, which is necessary for their effectiveness in reducing patent litigation and its costs. But potential rule and practice changes do seem to be in the works.
But I think we can safely assume that the PTAB is not going to allow patent owners to fight an IPR until they realize they are going to get a final judgment against them before amending their claims. [That would amount to adding a second IPR onto the original IPR, contrary to the statutory time deadline and the need to have IPR decisions before normal D.C. trial dates.]
Thus, a key question should be how late into the IPR should claim amendments even be considered? It seems to me it should be soon after the patent owner gets to see the new prior art and its claim charts. 30 days thereafter perhaps? [Note, for example, how little time defendants in patent litigation may get to respond to proposed amended complaints and many potentially dispositive motions, and the reported fact that 82% of IPRs have parallel litigation on the same patent.]
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Here are some other thoughts: Will not entering claim amendments require providing at least an additional month for the protester to conduct the needed additional prior art searches and to submit new claim charts and arguments based thereon?
Should the PTAB require filing a disclaimer of claims being amended with proposed claim amendments effective upon their entry, or could the PTAB grant an immediate judgment [based on the de facto concession of the patent owner] against the original claims that are being requested to be amended? The present rules do not seem to allow proceeding in the IPR with both the amended claim and its original unamended version.
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Should the PTAB indicate on the record that amended claims may be subject to “intervening rights”?
Multiply 2.340 total post grant PTAB proceedings times the reported 82% of them filed in response to patent suits times an estimated anticipate 80% rejection rate of the claims in suit equals an estimated 1,535 patent litigations brought on patent claims held unpatentable. These patent suits will thus be quickly ended at very much lower cost than continued D.C. litigation discovery, trial and appeal, or a large settlement to avoid those litigation costs. [As was intended by Congress in its bi-partisan vote making these post grant PTAB proceedings a major portion of the enacted AIA litigation.]
The absense of an ex parte application examiner is certainly not the explanation why litigation, inter partes reexaminations and IPRs all have much higher rates of claim rejections. First, they are inter partes, so that an opponent is there to rebut one-sided arguments and otherwise uncontested declarations. Secondly, the amount spent to find and carefully present much better prior art is vastly greater. I suspect, and hope that the study authors will show, that in almost all IPRs the presented prior art is not art that was previously considered ex parte. Thirdly, instead of single, usually non-attorney, application examiner, or a lay jury, IPRs have three patent attorney Administrative Patent Judges evaluating the claims, the claim charts, the declarations, and the cross-examination testimony.
Paul, I am sure you are aware that ex parte reexaminations are actually conducted by three very experienced examiners?
Also the study showed a doubling of the rate of claims held invalid in IPR over inter partes reexaminations. APoTU explains the problem appears to be that the lack of an examiner prevents clarifying amendments. It is almost impossible to provide amended claims in a IPR because there is no examiner.
Perhaps the idea of removing the examiner was to speed up the process. But this has caused major, major problems for patent owners as the statistics indicate.
his has caused major, major problems for patent owners as the statistics indicate.
The statistics indicate only that the claims being dragged into IPRs are nearly all invalid. And correct me if I’m wrong but most of those claims are directed to “computer-implemented” “innovations”, are they not?
The invalidity of their patents is surely a problem for patent owners. But it’s not a problem with IPR.
If anything there was a problem (and there may still be one) with the ex parte system being used by computer-implementer “innovators” to rubber stamp the rubber stamp on their invalid patent that they should never have obtained in the first place.
Computer implemented inventions drive our economy.
Ned is right that the rules that pretty much close off amendments to claims needs to be fixed. It isn’t really fair given the BRI of the claims.
Ned, as I had noted, “IPRs have three patent attorney Administrative Patent Judges.” But these days many come from law firms rather than just from the ex parte examining corps.
The lack of restriction on claim amendements in reexaminations, plus their two-stage delay [for CRU decisions and then Board decisions], are the very reasons why reexaminations were so often unsuccessful in resolving invalidity challeges in sufficient time to be of any help in reducing litigation and litigation costs, as intended by Congress.
Well drafted, clearly valid and enforceable patents are never litigated. Someone sends a letter, and the infringer stops or licenses.
Patents that are questionable are litigated. Patents that don’t take a rocket scientist to combine prior art are reviewed under IPR. It shouldn’t be a surprise that so many claims are getting canceled, at least not at this early date, and not with the estoppel provisions in play. People are attacking patents that have self selected to be particularly susceptible to IPR.
Aside from that, I’d like to know more details about the statement that NPE patents are instituted against more often, but their claims are canceled less often. That begs to be a correlation as to subject matter (probably software stuff before Alice) rather than asserting entity. Is that fairly clear in the Journal article?
“Well drafted, clearly valid and enforceable patents are never litigated”
While perhaps true, the statement on its own is too simplistic and misses a key issue that is driving divisiveness: scope and the use of the ladders of abstraction versus easily avoided (and thus near worthless) overly “objectively physically described” picture claims.
All else being equal, the more a claim is “picture,” the less value that claim has.
(that’s why we have a “vast middle ground” and why the only way that middle ground is going to disappear is if you burn down the entire system.
All else being equal, the more a claim is “picture,” the less value that claim has.
Deep stuff! Yes, folks, “all else being equal”, less is less.
the only way that middle ground is going to disappear is if you burn down the entire system
That should bring you much comfort.
“Deep stuff… less is less”
Once again Malcolm trips and misses by 180.
Here, more (as in more “objective physical structure” and more “picture”) is less, as in less value.
You must try so very hard to be this so very wrong, so often.
It’s called “less claim scope.”
It’s called more giving you that less.
Just like I said to begin with.
Lovely custom handgrips on that shovel of yours.
It’s called more giving you that less.
Translation: “all else being equal”, less claim scope is … less claim scope.
Just like I said to begin with.
Right.
Keep on ignoring just how you get to that less claim scope place…
6, Random, Apotu, do you guys have any explanation why removing an examiner from the process (Inter partes reexamination -> Inter partes review) has resulted in doubling of the rate of claim cancellation?
I wonder if there is any significant difference in the subject matter being reviewed under inter partes review than under was reviewed under inter partes reexam.
Sorry, I must have said a bad word, because my post answering your question is stuck in moderation.
@Thresh Dennis can’t or doesn’t review the rejected posts. Your response is not in moderation; it is gone. Rewrite it without mentioning the g3n words or using any kind of implied deprecation of others’ opinions or spam and repost.
The extended insults and abuse you see in some threads is not casual; the parties involved and their phalanx of unpaid office interns spend hours studying what can get past the filters.
I actually can see my post with the phrase “Your comment is awaiting moderation” above it. And this isn’t a matter of caching or anything, because I’m looking at it from home now, whereas I wasn’t earlier.
Anyway, to reiterate, I thought it might have something to do with being able to have an amendment entered as a matter of right during inter partes re-exam, while it appears to be exceedingly difficult to get one entered during IPR.
Good point there APoTU. The presence of an examiner is critical because he can negotiate the terms of the amendment. That simply is impossible in IPRs.
The study compares 65% of reviews finishing with all challenged claim invalidated (which has a clear meaning) to 31% of reexams finishing with “complete victory of the petitioner”. I did not find how complete victory was defined. Anyway, it looks difficult to compare the outcomes of reviews and reexams in a simple way.
I would say it isn’t so much “removing an examiner” and more “bringing more guns to the fight”.
It seems to me you’ve got a confounding variable–namely, the change in culture at the PTO. More specifically, I’m referring to the evolution of the political climate of our patent system.
I’m not sure why patents have become a partisan political issue, but it appears that they have. (Democrats are overtly hostile to business method patents.) I’m also not sure what difference that has made at the PTO, but 6 years under a Democratic President is liable to have made that policy preference felt.
For some reason I cannot get access the study itself, but what I am the most curious about is this question:
How many IPRs are successful because they cite much better prior art than that found in the much more limited prior art searching of the application examination? [And cannot amend claims or will not try and risk “intervening rights.”] Or, to put it the other way, were there many IPR decisions cancelling claims based on art already of record in the application prosecution?
This is also relevant to the arguments some are making that changing the BRI or BRC claim interpretation test used in IPRs would make a difference in IPR results. [APJs in final hearings of IPRs are starting to ask that very question, and I believe they are getting a “no” answer in most cases?]
Paul, I cannot get into details because I am a lead attorney, but what appears to be going on here in large measure is the Board is second-guessing the original examination.
Each of these IPRs are backed up by an expert declaration which is able to give a factual basis to interpret the prior art and fill gaps in the prior art.
I don’t think it is surprising that the same art in front of an Examiner during examination and in front of the board in an IPR could have different results depending on the presence of an expert declaration against the patentee.
Also in examination the Examiner only hears one side of the argument (why the prior art is lacking) while in an IPR two sides are heard.
q, “Also in examination the Examiner only hears one side of the argument (why the prior art is lacking) while in an IPR two sides are heard.”
Not so in inter partes reexamination.
Removing the examiner has resulted in a lot more claims being held invalid. Can you explain that?
Removing the examiner has resulted in a lot more claims being held invalid. Can you explain that?
I’m not sure it’s the removal of the examiner – as qu3s7 suggests, it might be the introduction of a party that is advocating for unpatentability.
RH, Huh?
The third party argues, presents evidence, and does all the things that IPR petitioners do. The only difference is the removal of the examiner. That has resulted in a doubling of the claims held invalid.
Please explain.
Ned,
In a USDC suit, either for infringement where invalidity is raised as a defense or in a DJ action seeking a declaration of invalidity, there is no examiner and from the studies that have been discussed on this site, IIRC, the rate of invalidity was a little bit above 50%. None of those suits include an examiner or APJ’s.
From the studies I saw on inter partes reexam, the invalidity rate was 80+%. Those reexams included an examiner. And APJ review if appealed.
It seems that the invalidity rate for inter partes reviews is not all that out of line with what could/should have been expected.
AAA JJ, but the study states that IPRs eliminate every challenged claim twice as often.
There is a disconnect here somewhere.
On exactly the same prior art?
So in an IPRx, the examiner is there to advocate for his patent. Examiners Patty Hearst themselves to protect the patent they’ve issued to patent ransomers and are pretty successful in persuading their colleagues on PTAB.
But in IPRv, the PTAB deals with the objective evidence and doesn’t face social pressure from fellow PTO comrades and the rejection rate is much, much higher.
That indicates that the employee evaluation procedures, internal culture, examining practices, and operational incentives at PTO are seriously in need of upgrading and loafing remotely is the smallest of the problems to deal with.
“So in an IPRx, the examiner is there to advocate for his patent.
Firstly, the examiner in inter partes reexam is not the same as the examiner who issued the patent.
Secondly, it’s not the examiner’s patent.
Good point.
@Thresh suggests above that it’s a side effect of how the examiner can get amendments through the process in IPRx.
“In its attempt to create a formidable avenue for administratively challenging issued patents, Congress appears to have hit the mark—”
But, is that a good thing?
is that a good thing?
Depend on how much you love sueing people (or being sued) with an invalid patent.
Silicone, the PTAB has gained a deserved reputation. Without an examiner blocking them, and they smite patent claims twice as often.
We created the Federal Circuit because certain circuits were perceived as hostile to patents creating a forum shopping battle whereby patent owners and infringers wrestled over choice of circuits.
Today, with a lower standard of proof and with broadest reasonable interpretation designed to read on prior art, we have created a forum shopping nightmare far beyond the conception of anybody practicing patent law in 1980. We have all but done away with the statutory presumption of validity.
The people who created the Federal Circuit in order to strengthen the patent system must be appalled.
As I have mentioned before Ned (and this is something that you responded in accord), there is a very real taking of one of the sticks from the bundle of property rights with these post-grant proceedings: that same (by law) designation of presumption of validity.
Regardless of any further happenstance, at the moment that the Article I executive agency body decides to take your granted patent into review there has been a taking.
Call this what it is: the Infringers’ Rights super forum.
I wonder if there is a breakdown by entity size of those seeking this forum…
Well, anon, as early as Marbury v. Madison, the supreme court held that once the requirements of the law are satisfied a commission is a legal right, and the property of the one appointed. The executive had no right to unilaterally cancel that legal right — this being a province of the court.
Calling a patent a “public right” or an administrative privilege is openly defying well established precedent to the contrary. There are differences between privileges and rights. Rights are property. They cannot be unilaterally revoked by an agency. This is the exclusive province of our court system.
Any idea that a group of administrative judges are better in any way than a District Court judge in deciding patent cases is ridiculous on its face. Moreover, the whole point of having a court system with judges having lifetime appointments is to prevent cases from being decided by political appointees under influence of politics. Everybody knows that the IPR process has been controlled from the White House. Politics has been corrupting the process big time.
Any idea that a group of administrative judges are better in any way than a District Court judge in deciding patent cases is ridiculous on its face.
Even when these administrative judges are focused solely on patents and presumably have vastly more experience with patentability issues than the typical district court judge?
Doesn’t seem “ridiculous” at all to me.
MM, there are some jurisdictions that get an awful lot of patent cases. Delaware, ND and CD California, ED Virg., ED of Texas to name a few.
There may be an argument to provide specialized district courts in every circuit to handled patent cases so that the judges getting the cases are familiar with patents and patent law. Regardless of active intervention, the cases do seem to be concentrated in very few district courts.
Moreover, MM, you do not address the political problem and the reason why we have an independent judiciary.
Well Ned, the conundrum here re: “the supreme court held that once the requirements of the law are satisfied a commission is a legal right” is the set of words “once that”
I am sure that you are aware that even if granted “in error,” (later noticed) did not remove that grant and allow the executive agency to simply take as never granted.
Here, the situation is a little compounded, as we have a voice from the judiciary saying that the Executive did not ‘follow the law’ on an entire class or art field, and thus there is a de facto lack of “once that.”
The problem of course is that such a statement violates another part of the law itself.
There appears to be a massive amount of confusion as to what the words of Congress means – the “presumption of validity.”
Note that Congress could have but did not choose the words “presumption of factual matters.”
Note as well that “validity” itself is a matter of law, so it is not compelling to say somehow that the presumption does not (or cannot) attach to eligibility because eligibility is a matter of law.
Note as well that perhaps some of the confusion naturally arises because the concept of review uses similar words and concepts.
I tend to think that while perhaps a bit clumsy and inartful, if one takes a step back and realizes that Comgress wanted the grant of a patent to be presumed to be lawful, that the exact opposite of what this panel judge (and what certain Supreme Court Justices as well) thinks cannot be correct; and that it is this anti-patent tendency of reversing what Congress intended and having a presumption of invalidity that shows the extent of the SAME unhealthy bias that prompted Congress to take action back in 1952.
anon, others though have pointed out that a pure legal issue lacks an evidentiary dispute. There is there even a burden of proof when no evidence is required? There is only a burden of persuasion.
Again, look to the words chosen by Congress – and note that Congress did not say a presumption of factual matters.
Less likely to result in cancellation?
Wow, sounds like the assertion entities are putting more effort into qualifying and validating patents than the operation entities. Unintended consequences?
Peter Zura of the late “The 271 Patent Blog” (last post June 09, 2011) had completed a study a number of years ago that indicated that the so called “Tr011s” actually aimed for higher quality patents in their acquisition efforts.
That tidbit was placed on the table for conversation and was repeatedly ignored as an “inconvenient fact.”
What metric did Zura use to determine the level of quality for NPE-owned patents?
As for the earlier statement about NPE-owned claims being less likely to be cancelled during IPR, is this because more of them are being challenged in the first place? Are they more likely to submit an amendment during the IPR proceedings that actually gets entered?
Anecdotal evidence only…
In my practice, I see assertion entities with much higher prior art search budgets when considering either a patent purchase or for vetting their own references prior to assertion than the practicing entities I work with. In fact, they seem to be the only folks that really want to vet prior to assertion.
Roughly how much $$ are we talking for these searches?
I see 40k global search budgets.
I see NPEs as a normal trend of specialization. Patentees may have an interest in having their patents enforced, but may not be in the business of asserting patents. The job is simply contracted out.
Also NPEs favor settlements. Money changes hands and indirectly funds inventors that come up with inventions that have value. I think NPEs may contribute towards progress of technology more efficiently than more traditional patentees who would seek injunctions.
I agree with you about the valuable enforcement and valuation mechanism that they provide in our economy and innovation system. I’m not sure that I’d say that they’re MORE important than patentees who seek injunctions though. The point of the injunction is that new businesses can’t start if established players just steal their innovation. I’d prefer to have those injunctions back so that we could get some more startups and small businesses going instead of just doing essentially compulsory licenses to the infringers.
That might work well in theory in some fields, where you could develop a product around a single patent.
In practice though, the established company may well have hundreds of patents, a number of which might read over your new idea.
If any one of their patents can shut your company down is that a good thing? Or would damages be better, as your risk would then be at least somewhat proportional to your reward in launching your new product.
How do you negotiate a royalty when you don’t hold any of the cards? You don’t.
The ability to shut down the big company IS the leverage for working the situation out.
You’re just against startups and small business from being able to develop IP.
I think NPEs may contribute towards progress of technology more efficiently than more traditional patentees who would seek injunctions.
Because nothing says “progress in technology” like being threatened with a lawsuit by an attorney who never created or sold a useful tangible product and couldn’t create one if his/her life depended on it.
You are doing that “totally negative attorneys are evi1” obsessive thing again.
You really don’t like this line of work, do you?
I suspect with 10 hours a day 6 days a week for 10 years of blogging that he does like his line of work.
But less likely to result in cancelation…?
Oh my.
Reminds me of the old Peter Zura study.
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