Guest Post on Conflicting Claims: The Raw Statistics of PTAB Trials

Guest Post by Richard Bone. Mr. Bone is a partner at the VLP Law Group.

The popular view of the PTO’s new AIA reviews, or “patent trials”, is that they have been disproportionately unfavorable to patentees in their outcomes, provoking characterizations such as “patent death squad” for the Patent Trial and Appeal Board (PTAB), the body that administers the trials.

Yet the PTAB’s own statistics paint a different picture: that, in fact, as few as 25% of patent claims challenged are actually held “invalid” by the PTAB, and that figure actually represents only 11% of all of the claims in all of the patents which received at least one AIA challenge. That being the case, patent owners ought to be less fearful than most commentators suggest.

To understand the discrepancy between published statistics and public perception, it’s necessary to dissect the data. Fortunately the PTAB has made various layers of data available on its website. The data is cumulative over all petitions filed from the inception of AIA trials, in September 2012. For all data, the PTAB counts proceedings that have received a final adjudication, whether that be as a result of a settlement, or a request for adverse judgment by the patent owner, or because the PTAB issued a final written decision. Between September 2014 and April 2015, the data was presented on three occasions, as a sequence of bar-graphs condensed into a single graphic. From April 2015, the PTAB has presented the data monthly in a more informative manner, with multiple graphic representations and an accompanying narrative. From both formats, it’s possible to see what is going on, though the numbers mask a number of subtleties.

Just as patents are asserted on a claim by claim basis, so invalidity is adjudicated claim by claim. The overwhelming majority of patent trials to date have been Inter Partes Reviews (IPRs), with almost all of the remainder being “Covered Business Method Reviews” (CBMs). Although the PTAB’s data through January 2015 was presented in aggregate form for the two types of proceeding, the more recent data shows that, statistically, the outcomes of the two types of proceeding are very similar. In both an IPR and a CBM, the petitioner (party challenging the patent) must identify the claims challenged, and advance a ground of invalidity of each. The fee structure for filing an IPR or a CBM includes a challenge to up to 20 claims of a patent, but exacts an additional fee of $200 per claim challenged in excess of 20. Subsequently, if the petition is accepted and trial proceeds, the PTAB levies a further fee of $400 per claim in excess of 15 on which trial is instituted. With this type of fee structure, and accepting that – beyond the filing fees – there is an effort and therefore a cost to prepare a separate argument for each claim challenged, and that there is also an overall page limit for the petition, many petitioners may have been choosy over which claims to challenge. In some cases that choice will have been based on the patent claims asserted in litigation, which need not have been all of the claims in the patent. In others, it will have been based on an assessment that, after demolishing certain well-chosen claims, what remains of the patent is essentially toothless.

So, according to the PTO, through July 2015, in patents for which AIA petitions were filed, 47% of the claims were challenged. This number is little changed from the 45% figure from September 2014. However, the July 2015 numbers, when broken down into the different types of proceedings, show that across all CBMs 58% of patent claims were challenged. This could be because of the longer page limits for CBM petitions (80 pages vs. 60 pages for IPRs) but could equally be because Section 101 challenges are permissible in CBM’s: when arguing invalidity of an independent claim under section 101, it is not significant additional effort to argue invalidity of claims depending from it.

It has to be assumed from the way that the data is characterized that trials recently instituted that have not yet received a final adjudication are not included in the data. Because of the fact that a patent trial typically takes 18 months from filing a petition to issuance of a final written decision, any large scale trend that has happened recently will take some time to be reflected in the PTAB’s cumulative averages.

In any case, just based on claims challenged to date, patent owners could see – on average – patents surviving with more than half of their claims intact, not adjudicated as patentable per se but simply not challenged. Furthermore, the PTAB’s latest charts suggest that the numbers do not include the petitions that were wholly denied, and thus did not result in a trial. Thus, the reported data is based on petitions that resulted in a trial on at least one challenged claim. The statutes governing inter partes review state that trial should only be instituted if “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition”, and this takes into account any preliminary response filed by the patent owner. If the petition was judged not to have met that standard for any claim challenged then trial does not proceed (the petition is “denied”): those claims are not included in the PTAB’s data and hence the overall numbers of surviving claims are actually slightly more favorable to patent owners because trial is not always instituted. It is difficult to calculate this effect precisely because in many instances multiple petitions are filed against a single patent and those several petitions are consolidated into a single proceeding for trial. It is not clear from the PTAB’s data how such petitions that formally do not proceed to trial on their own because they are subsumed into another proceeding are differentiated from those petitions that fall short on all challenged claims and thus lead to no trial on the challenged patent. Nevertheless, comparing fiscal years 2013, 2014, and the first 10 months of 2015, we are seeing a growing number of petitions denied: rising from 14% in 2013 to 32% in 2015, a trend that can only be welcome to patent owners.

The statistics for those claims on which trial is instituted become more complicated, however. As of September last year, the PTO reported that trial was instituted on 66% of challenged claims. By July of this year, that number had dropped slightly to 63% of all challenged claims in all types of petitions: however, CBM’s had an institution rate that was slightly above the average, at 65%.

At this point, looking at the situation from the point of view most favorable to patent owners, trial is only being instituted on 31% of the claims in the patents that have been challenged in an AIA review (and this may be a smaller proportion overall, if it is accepted that a growing number of petitions are being denied outright). It is also fair to say that any claim whose validity was challenged in an IPR or CBM petition and on which trial was not instituted has emerged from that process as a stronger claim, unless the claim escaped that evaluation because the parties entered a settlement even before the PTAB had issued a decision on whether to institute a trial.

Once trial has been instituted, however, patent owners appreciate that the claims proceeding to trial are in considerable jeopardy. For the claims that proceed to trial, the PTAB identifies 4 distinct categories of outcome: held unpatentable (in a final written decision); held patentable (in a final written decision); cancelled (e.g., by patent owner’s amendment), or disclaimed (by patent owner); and “remaining patentable”.

The last of these categories is perhaps the most controversial in the way that the numbers are presented, and one that has been least well understood. It arises from a settlement that precludes the need for a final written decision by the Board. According to the PTAB, by July 2015, 45% of all IPR’s in which trial was instituted were terminated by settlement. One has to assume that a common form of settlement permits the patent owner to retain their patent without an adjudication of invalidity of any of the challenged claims in return for dropping a contemporaneous infringement suit against the petitioner. Claims subject to a settlement in this way have been undoubtedly weakened by the fact of there being a determination of probable invalidity (an institution of a patent trial) in the public record, but they have nevertheless “survived” a formal written judgment from the PTAB.

Claims cancelled by the patent owner are a casualty of the proceeding and arise – most likely – from a desire by the patent owner to minimize the ongoing costs of defending the patent before the PTAB. In any view of the proceedings, an instituted IPR or a CBM is, to any patent owner, an expensive way to lose a patent.

The most important two categories, those claims that are found invalid, or whose patentability is upheld, by the PTAB in a final written decision are those that grab the headlines. Respectively, 42% and 9% of claims proceeding to trial are found invalid and valid. In the grand scheme of things, these are a small fraction of the total number of claims challenged (26% and 6%), and a still smaller fraction of the total number of claims in patents receiving challenges under the AIA. However, what is clear is that patent owners who have decided to fight to the very end are on the whole being severely bruised in the process. The PTO reinforces this point with a break out of 447 IPR trials to date that have “reached final written decisions”: in 2/3rds of them (295 trials), all claims on which trial had been instituted were found unpatentable; by contrast, only in 16% of final written decisions were all claims adjudicated to be patentable. In CBM’s these numbers are even further skewed in favor of petitioners: 79% of final written decisions in CBM’s involved wholesale invalidation of the claims taken to trial, whereas in only 4% were all of the claims upheld. When considered claim by claim, in CBM’s the validity of just 2% of claims are upheld in a final written decision of the Board.

There are a number of questions that the data do not answer: for instance, how many patents sustained a challenge to all of their claims and were ultimately found invalid in their entireties.

But it is clear how the gap between perception and the actual numbers can be bridged: final written decisions are on balance unfavorable to patentees, more so in CBM’s than in IPR’s. It is likely to be the most valuable claims that are contested in this way. Even though such claims represent a tiny proportion of all patent claims that came under jeopardy in an AIA review, it may be little consolation to patent owners that the claims they are left with – if any – are those they would have least interest in enforcing.

59 thoughts on “Guest Post on Conflicting Claims: The Raw Statistics of PTAB Trials

  1. 11

    More recent PTO IPR statistics were recently presented by the PTO Director and published in Gene Quinn’s blog. They appear more favorable to patent owners, especially the higher percentage of rejected IPR petitions.

  2. 10

    Finnegan report today:
    “IPR and CBM Statistics for Final Written Decisions Issued in July 2015:
    In the 33 Final Written Decisions issued by the Patent Trial and Appeal Board in July, the Board cancelled 302 (70.73%) of the instituted claims and declined to cancel 125 (29.27%) of the instituted claims. Patent owners did not concede any instituted claims through motions.”

    1. 10.1

      This at least seems like it is not an obvious attempt at obfuscation.

      So, 70% of a chance on one petition to get the claims cancelled. Get two petitions going and you have a 91% everything else being equal.

  3. 9

    Statistics are all but useless for anything other than analyzing exactly what they are statistics of, and even then, you can slice and dice statistics any way you want to spin them. There’s a reason why they call it Lyes, Dang Lyes, and Statistics.

    First of all, you really should expect a high rate of revocation with any IPR. People aren’t going to try an IPR unless they are fairly confident they have a case. That means your sample set is pre-disposed toward the selection that has a chance of being invalidated.

    What has changed recently is the yardstick that is used to determine valid vs invalid. That means things that were considered valid are no longer valid with current jurisprudence.

    Thus, your data set is pre-selected for things which are likely to fall into this group of formerly granted but shouldn’t have been/wouldn’t be today/can’t be today (take your pick on what you want to call them, based on your personal stance).

    If you wanted to know if IPRs are more likely to kill a patent than not, you can’t use a data source that’s pre-disposed toward patents that are no longer patentable. You have to take a random sampling of all patents across a large enough sample size, and run them through IPRs. Anything short of that is meaningless to argue either for or against IPRs being ‘death squads’ or ‘fair and balanced’.

    1. 9.1

      Implicit in your reasoning is that people will only attempt justified revocations of patent rights.

      The game is far more nuanced than that.

      Over on the Ethics side of the blog is a story about shorting Celgene.

      I invite you to read both that story and the linked brief.

      Then tell me where you have heard the justification for shorting before (hint: it is the exact same ‘defense’ that the accursed so-called “Tr011s” use).

      1. 9.1.1

        “anon” Implicit in your reasoning is that people will only attempt justified revocations of patent rights. The game is far more nuanced than that.

        Implicity in “anon’s” “reasoning” is the refusal to acknowledge what every reasonable patent attorney knows: pretty much every claim tanked in IPR should never have been granted in the first place.

        But he’s a very serious person! And he knows a lot about games, of course.

      2. 9.1.2

        You are incorrect. I stated that the statistics are pre-disposed toward patents that are easy to knock out given the current jurist prudence.

        Shorting works if you knock out the patent, ergo, it’s in the shorter’s interest to pick on patents that are easier to knock out. Given the recent shift in patent law on genetics patents such as those around gene testing, those are easier to knock out, and thus again, anyone going a shorting route again picks the things that are easy to knock out, pre-disposing the sample set toward a skewed result.

        Again, the only way to use statistics to argue that IPRs are ‘death squads’ or ‘fair and balanced’ would be to do a random sampling across all active patents and put those randomly selected patents through an IPR. Short of that, the statistics are only good to analyze what percentage of (pre-selected toward weakness) patents submitted to IPRs stand up to the IPR, and nothing more.

  4. 8

    There is a much simpler way of looking at these statistics. If I’m considering filing an IPR to challenge a patent, what are my ultimate chances of success before the PTAB?

    For cases that go from start to finish (i.e., don’t settle): (1) Petitioners win on all claims ~ 43% of the time; (2) Patent owners win on all claims ~ 50% of the time; and (3) and the remaining cases are split decisions with some claims upheld and other claims invalidated.

    My numbers are based on the PTAB’s published statistics through July 2015. link to

    Remember that a petitioner has to prevail at two stages at the PTAB (institution decision and trial); whereas, the patent owner can defeat the IPR at either stage.

    1. Currently, the PTAB institutes around 66% of the time.
    2. For cases that go to trial, the PTAB rejects all claims ~ 66% of the time; affirms all claims ~ 16% of the time; and the rest are split decisions.

    Putting these two stages together, if you are a petitioner, you’re chances of success are 66%(institution success rate)*66%(trial win rate), i.e., only 43% of the time.

    For patent owners, you’re chances of success are 34% (percentage of cases that are denied at institution phase) + 16% (percentage of cases PO wins at trial), i.e., ~ 50% from start to finish.

    These numbers fluctuate slightly from month to month. (The institution rate continues to drop.) But overall, the PTAB is a pretty balanced forum between petitioners and patent owners.

    I’ve omitted appeals to the Fed. Cir., but given that so few cases have gone all the way through appeal, it is too early to report on those statistics.

    1. 8.1

      Actually, a better statistic would be to say, if a petitioner wants to invalidate a claim what are the odds of getting that one claim invalidated with one or more petitions. And, note if the claim is important there is likely going to be more than one petition.

      My guess is the rate is 90%+. So, death squads. All this smoke is real clever in order to stop the reforms in Washington. I think the title of the blog post should be, “How to Muddle Statistics to Get Your Way.”

      1. 8.1.1

        “So, death squads.”

        yeah but “claim death squads” doesn’t have the same ring (or meaning) as “patent death squads”.

        Nobody hardly but the patent owner cares if someone losses one measly little claim (though of course we all know that’s many times the most valuable part, the one maybe/maybe not over-broad claim that got through).

    2. 8.2

      There is a much simpler way of looking at these statistics. If I’m considering filing an IPR to challenge a patent, what are my ultimate chances of success before the PTAB?

      The ultimate chance of success depends on what is claimed and how good your arguments are.

      Pretending otherwise is what incompetent and/or hysterical people do.

      We’ve already heard from the hysterical people about the “death squads”. They were rightly mocked in real time (and lately they’ve been mocked in person by Federal Circuit judges). I guess now we’re hearing from the people who see a statistic about patent invalidation and assume that it reflects some mysterious “patent invalidating force” that acts independently of human reason.

      Remember: during the so-called “reject reject reject” era, some of us were getting plenty of patents granted and noticed no change. That’s how we knew that we were dealing with a class of whiners that knew little about patent law but knew a lot about whining. That was doubly confirmed when Prometheus v. Mayo came to town. And triply confirmed with Alice.

      And so the world continues to turn.

      1. 8.2.1

        Remember: during the so-called “reject reject reject” era, some of us were getting plenty of patents granted and noticed no change.

        You say this “proudly” as if it were a good thing.

        It’s not.

        It only shows the level of you being an arse and living in denial that something was very wrong in the Reject-Reject-Reject “quality defined as reject, no matter what” era.

        That you obtained (probably) near worthless “picture claims” only shows that you LACK the ability to optimize protection for your clients.

        Given your “predictions” of anti-patentism, it is little surprise as to your misplaced “pride” and complete lack of understanding of the larger issues involved in the legal discussion.


          It only shows the level of you being an arse

          Get those meds adjusted, Billy. The year ain’t over and you’ve got some serious beatdowns coming up.

  5. 7

    Also, not only my post at 1, but a lot of the petitioners re-petition after the petition is not instituted. They merely correct based on the response from the PTAB. Don’t forget that patent judges are like examiners and they get lots of hours for denying a petition, so they are more than happy to deny a petition knowing that the petitioner can just try again.

    So, again, the death squads are alive and well. Nice smoke screen.

    1. 7.1

      the death squads are alive and well

      News flash: this script was recently torn up and used as t.p. by the Federal Circuit. Maybe you didn’t get the memo?

  6. 6

    Dennis – I may have overlooked this in your article, but what percentage of patents that are challenged have at least one claim invalidated?

    I think this may be the most important measure of success for the challenger. This single invalidated claim is likely the most valuable claim of the patent. This is analogous to the value driver patent in a large portfolio of patents. As noted in the article, challengers need only attack the most valuable claims in the patent, and the most valuable patents in a portfolio.

    The statistic of 25% of patent claims challenged are actually held “invalid” paints the exact opposite picture in my mind from your take away that: “patent owners ought to be less fearful than most commentators suggest”.

  7. 5


    From the fifth paragraph: “when arguing invalidity of an independent claim under section 101, it is not [a] significant additional effort to argue invalidity of claims depending from it.”

    How do you figure? Could not the dependent claims be adding the “something more” required by Alice.

    1. 5.1

      Great comment. It seems to me that the exact opposite should be the case – i.e., – that dependent claims should be much more difficult to invalidate under 101, 112, 102, 103, etc. than independent claims. However, in practice, the 101 rejections that I’m seeing reject the broadest claim as being abstract, and then all dependent claims with a swipe of the hand and without any additional analysis.

      1. 5.1.1

        I invented that,

        Maybe an Examiner can get away with it, but an IPR petitioner is required to: “(ii) provide a claim construction for each challenged claim; (iii) specifically explain the grounds for unpatentability; and (iv) specifically explain the relevance of evidence relied upon.”

        A dependent claim would require less work, but hand-waving won’t do.

        Can you provide a typical generic example of an Examiner’s swipe of the hand? Is it along the lines of: “Dependent claim 2 fail to add anything of significance?”


          Bingo! An examiner can legitimately raise a 101 rejection and sit on that rejection until you win on appeal. Within this context, I’ve also noticed that the quality of the substantive 102, 103 rejections has fallen off. I’m fairly certain that the examiner’s are instructed to throw some 102/103 rejection at the applicant in addition to their standard 101 cover.


            I invented that,

            The June 2014 Memorandum to the Examining Corps says even if the claim is ineligible under 101, continue with examining for patentability. I think this is similar to a 112 indefiniteness rejection where the Examiner says “as best understood” and continues with 102/103. The difference is that a 101 rejection is much harder to explain or amend away because it is much more subjective. Hence, your comment about appealing to the Board. Hope this is not too cynical, but quality could fall off because they assume you will abandon the application anyway.

    2. 5.2

      Troubled, the dependent claims might be valid if the independent is invalid for claiming a result and the dependent claims actually are limited to the novel means or methods.

      But if the reason for the claims violating 101 are in the subject matter being claimed, then the addition of more generic hardware is not going to save the claim. Neither will adding more detail to the unpatentable subject matter.

      1. 5.2.1

        Subject matter is claim as a whole.

        You are kicking up the b@nal “mere aggregation” cloud of dust Ned – nothing more.

        There is NO “gee, this element is the ‘right kind’ of element” in the law as written by Congress.

      2. 5.2.2

        Yeah, first determine the gist of the invention using a Ouija board and then toss some Yahtzee dice to see whether you get to keep a dependent claim. Sounds like great objective analysis.

      3. 5.2.3

        Ned – Have you reviewed the various “examples” in the USPTO’s July 2015 Update? If you are confident that you can distinguish their “patent-ineligible” claims from the “patent-eligible” claims in a real-world prosecution setting, you are a wizard.


          I invented that, MM and I discussed some of the examples here and we are not confident that the PTO truly understands the principles involved — or if they do, are not willing to adopted a principled approach.

          My take is to simply ignore the guidance and not rely on it. If one relies on it, one does so at one’s peril. You can take that to the bank.

          My best advice to the PTO is to try to find a universal definition of abstract. I have given my version many times here. The PTO could do worse.



            The Court gave NO limits to its “Gist/Abstract” sword.

            ANY definition you deign to give is thus unfounded and untethered to what the Royal Nine have actually said.

            But you keep on clenching tight your eyes as to why this is a problem.


            Ned – I would honestly like to see your proposed test for ‘abstract’. No joke. I’m admittedly skeptical. My view is that the term has no place in 101 analysis, but I’m not beyond learning something new.



              1. Subject matter that is neither
              a machine, manufacture or composition;
              a process of making a machine, manufacture or composition; nor
              a process that transforms a machine, manufacture or composition into a new state or thing.

              2. Novel subject matter that claims an idea, i.e., a result that does not include any means or method for achieving that result.


                You do realize that your definition of “process” is NOT in accord with what Congress wrote, right Ned?


                Sounds like you might be in the wrong section of 35 USC – 112 sounds like a better place to talk about: “i.e., a result that does not include any means or method for achieving that result.”

                1. “I Invented Squat”: 112 sounds like a better place to talk about: “i.e., a result that does not include any means or method for achieving that result.”

                  Not if the claimed result is the result of information processing functionality achieved by a general purpose computer. Then 101 is the perfect t00l.

                  This is really easy stuff. Why can’t these knuckle-dragging patent agents figure it out? How many years is it going to take?

                2. MM – Sounds like you belong in sect. 103 based on your argument: “Not if the claimed result is the result of information processing functionality achieved by a general purpose computer.”

                3. The inherency doctrine is the proper legal argument.

                  Note that the “b-b-but it’s already in there by magic” folks never seem to want to actually make a legally cognizant argument.


  8. 4

    The phrases “patent death squad,” “patent killing fields,” and similar phrases, are just made-up propaganda by NPE patent owners who feel robbed that the PTAB has stripped them of their ability to enforce patents that should never issued in the first place. These phrases are thrown around as a way to put political pressure on the PTAB to start rejecting petitions.

    But lets put this in perspective. Looking at 2014, for example, there were only 1,675 PTAB petitions filed, compared with more than 300,000 patents issued by the PTO during that same year, and several million earlier-issued patents still in force. Many of those PTAB petitions were targeted against the same patent, so the number of challenged patents by any metric is not that high, and in any case, an infinitesimal fraction of patents currently in force.

    So it shouldn’t surprise anyone that there would be a decent “kill rate” for these patents. These patents are, after all, singled-out for invalidity challenges. They are in many ways the problem children of the patent system, the bad apples, usually because of the breadth of the claims and the way in which they’re being enforced against third parties. (More than half of the patent owners are, after all, NPEs.) The kill rate is actually lower for IPR than the procedure it replaced, inter partes reexamination. The main difference is that IPR is faster and more efficient, and thus, more effective at removing problematic patents from the system.

    The kill rate for PTAB-challenged patents should be high, as most of these were the types of patents prosecuted by NPEs for maximum claim breadth and applicability, a choice the patent owner voluntarily made often out of its own greed, and which predictably resulted in a much broader field of prior art, greater opportunities for 101 challenges, and overall, a high invalidation rate at the PTAB. I hope the PTAB remains unconcerned about the loud and vocal complaints from these patent owners, and keeps taking out the trash.

    1. 4.1

      Lode, it is interesting that two people can look at the same statistics and come to the same conclusion but express that conclusion the different ways. You say that the statistics show that the challenged patents are junk or the equivalent (and then say bravo to the IPR system). I say that very low rate of patents being held valid is an indictment of the performance of the patent office – they are issuing junk.

      Blaming the issuance of junk patents on NPEs? Really? Really….? NO blame on the patent office?. No blame on patent attorneys who routinely draft broad functional claims?

      Trust me, I see broad functional claiming everywhere. Every law firm teaches this practice because the PTO lets them get away with it and the courts ’til now have done nothing to stop the practice.

      1. 4.1.1


        I think it’s fair to say the “blame” is on both the patent applicants who try to get more than they deserve, and the PTO that lets them.

        But I personally think that both applicants and the PTO are just doing what they’re incentivized to do, and until we fix those incentives, we’re never going to fix the problem.


          Jane, incentives?

          Octane Fitness has gone a long way to help.

          PTO: I would tie the pool of money available for examiner bonuses to the percentage of patent claims for which there is a final decision (Court or PTO) sustaining validity. Since there is a time lag between examination and final decision in years, I would gradually cut this in so that the current corps is not punished unduly by bad performances in the past.

          Lawyers: The PTO should publish statistics on lawyers/firms appearing on the face of a patent regarding the validity rates of the patent they prosecuted. I would further require that a lawyer/firm that uses a website must provide a link to these stats in any “about the firm” web page. As it stands, firms brag about issuance rates, and seem to ignore that obtaining valid patents for their clients is the ultimate objective.

          And finally, we need the Federal Circuit to step up big time and stop the claiming of results (the very pith and essence of O’Reilly v. Morse) dead in it tracks. All in all, the Feds performance on patentable subject matter has been commendable since Alice.

      2. 4.1.2

        What is interesting is that the same patent office can look at the claim two different times and reach completely different conclusions. Sure, in these events, the law has changed, but the reality is just that examination is often terrible. You and I can both agree on that. Maybe if examination was better and obvious inventions were properly rejected under 103 then judges wouldn’t resort to using 101 as a backdoor way to invalidate patents without having to find prior art.


          JCD: Maybe if … obvious inventions were properly rejected under 103

          This statement only proves that you are clueless about what subject matter eligibility is and why it is being applied more frequently now than ever before. Time to start learning, friend. Subject matter eligibility issue are not going away. On the contrary.


            You are clueless

            Bwa hahahaha

            Gee, where have we seen that? Oh yeah, Malcolm Accusing Others Of That Which He Does….


          JCD: the reality is just that examination is often terrible

          Right. And what the office has historically missed in many instances are 101 issues because it was willfully ignorant of them.

          By opening the door to the patenting of information and logic, the CAFC and the PTO inflated a patent bubble that is only just now beginning to slow its exponential expansion rate. The predictable rush of the lowest form of innovators through the wide open gates completely overtaxed the office which was not — and still isn’t and never will be — prepared to properly examine the subject matter presented to it. So what happened? Everybody loses. Specifically, the quality of examination diminishes across the board and the courts, in their struggle to address the issues created by patents that should never have been applied for much less granted, creates problems for everyone in their vain attempt to please the most entitled and self-important attorneys that ever walked the face of the earth.


            The patent “bubble” is widely recognized outside of patent law as the current Kondrietiff wave of innovation.

            But hey, go ahead and stick to the 18th century view and ignore innovation as it exists today.


              the current Kondrietiff wave of innovation.


              Keep the deep thoughts comin’, “anon”. You sooper dooper smart. Sure you are.


                That is hardly “deep thoughts” Malcolm.

                Of course, if you had studied innovation at all you would have realized that. Instead, we have that lovely ec(h)osystem fertilizer of yours instead.

                Great job Prof.

    1. 3.1

      Actually, this is a pretty harsh indictment of the PTO and their leaders like Kappos who made it his mission to increase the rate of issuance regardless that what was issuing was not valid.

      Some will say that only asserted patents are challenged in IPRs. So?

      When the patent owner files suit, he chooses to do so only when he thinks he can win. This requires that the claims be arguably valid over the known art.

      Validity statistics from court litigation suggest that greater than 50% of the claims that go to trial are held “valid.”

      But with respect to IPRs, the patent owner is not choosing which claims to assert, but only which claims to defend. And when he chooses to defend the claim it is because he believes that claim is valuable. But since he has no choice as to whether to defend, the IPR statistics are better measure of whether the claims issuing of the patent office are valid or not valid. Thus the 9% validity rate seems to be a good measure of the quality of the patent office’s work.

  9. 2

    Thank you very much for apparently being the first person to present a reasonably objective and readable review of IPR statistics, vis a vis the hundreds of prior mere rants with misleading numbers. Of course I hope for some objective criticisms of this review as well.
    One issue is with “looking at the situation from the point of view most favorable to patent owners, trial is only being instituted on 31% of the claims in the patents that have been challenged.” If one assumes that the 31% includes almost all the claims being asserted against the petitioner, that is small comfort to the patent owner. However, that may not be the case. Because, unless the pending patent legislation is enacted, or the Fed. Cir. accepts the end of FRCP Form 18, there is no current requirement for a patent suit complaint to identify which claims the defendant is being accused of infringement. Not all D.C.s have local rules that require prompt disclosure of that either, and many courts will allow amended complaints to late to add claims to an IPR petition.
    The indicated “45% of all IPR’s in which trial was instituted [but] were terminated by settlement” [thus, no final decision, and no direct benefit to any other defendants] seems shocking high? How many of these were on patents in plural-defendant suits in which the patent owner proceeded with the litigation against the other defendants who did not join in the IPR?

  10. 1

    Things are just as bad as the perception as far as I can tell from your article. You seem to be arguing that because claims are dropped by the applicant due to cost or a low likelihood of success that things are not so bad as people perceive. What? Your article makes no sense. All it means is that the patentees get that they are going to lose so they drop the claims so as not to waste money. Is it April 1st?

    1. 1.1

      Night, when only 9% of claims proceeding to trial are held valid, there is no perception problem.

    2. 1.2

      ? You are overlooking the fact that approximately 80% of IPRs are filed in response to D.C. patent suits. Would patent owners drop their corresponding pending D.C. suits if the IPR had not been filed to force their admission in advance of trial that the subject claims were invalid over prior art patents or publications by dropping their IPR challenged claims? [At substantial cost and time savings over the continuation of a D.C. suit discovery and trial.]

      1. 1.2.1

        Paul, that is circular reasoning. The issue is whether or not the PTAB IPRs are fair to patentees. E.g., BRI and preponderance of the evidence standard which is different than it would be at the DC.

        Besides, I am overlooking what? What has that to do with the perception vs. actual statistics for PTAB? Again, the perception of the PTAB as death squads is born out by the statistics presented in this blog post. The fact that patentees have learned that it is futile to maintain claims and voluntarily drop the claims does not change this.

        Now all we need is MM to generate more smoke….

      2. 1.2.2

        Paul, for the sake of simplicity, assume only litigated claims are IPR’ed, not 80%.

        Compare court “decisions” on validity vs. PTO “decisions.”

        Court > 50% valid.

        PTO 9% valid.


          Ned, I would like to see your data source for 50% “court” favorable claim validity decisions, because those are not odds I have seen reported before for a FINAL decision in suits contesting patent claim validity after JNOV decisions and the Fed. Cir. review of the validity decision on appeal [not just after a jury verdict]. Nor does it take into consideration the fact that approximately 97% of patent suits get settled before trial with no judicial validity determination, and far more are decided on non-infringement than validity.

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