I have seen lots of information regarding situations where the PTAB found challenged claims obvious during an IPR despite a contrary position by a district court. My query is whether there are examples (and perhaps statistics) on flip-side – perhaps where PTAB refused to grant an IPR petition but then the claims were invalidated in court on the same grounds?
Docket Navigator shows 200 of
263 patents where the PTAB disagreed with the District Court. This includes my Bunch O Balloons “substantially filled” dispute. I truly hope the Supreme Court is taking notice of the conflict.
200 -> Search for Patents where Determination = Not Invalid AND Determination = Unpatentable/Cancelled
263 -> Search for Patents where Determination = (Not Invalid AND Determination = Unpatentable/Cancelled OR Determination = Not Unpatentable)
Maybe I am not quite understanding, but shouldn’t all PTAB final decisions turn up in a search of “Unpatentable/Cancelled” OR “Not Unpatentable”? How can that have only 263 hits?
Greg, what about the many IPR petitions that are denied? They do not find any claims unpatentable.
That is why I specified “final decisions” in my 4.1.
But those numerous denied IPR petitions comprise many cases where an IPR in effect agrees with favorable D.C. decisions. So how can they be ignored in a statistical study of disagreements?
There are 263 patents where the District Court held the claims Not Invalid, and the PTAB also issued a Final Written Decision. The PTAB got a different answer on 200 of them, or 76% of the time.
Dennis, for your question, you will have to determine how many of these PTAB decisions were IPRs rather than reexaminations [ex parte and inter parties, and how many PTAB wins were by the same defendant that lost in a D.C., rather than some other party.
? Would not this 200/263 number mean that an IPR was filed AND decided in almost every district court case against that party that had a final district court decision on validity? But if I recall correctly PTO statistics indicate that IPRs are only filed in about 1/4 of district court cases. Could you provide the cite to this Docket Navigator study?
Yes, thanks, I do now recall as a second specific IPR – D.C. the “Bunch O Balloons” [multiple water balloon filler] cases, reported earlier on this blog.
Dennis wrote:
“…where PTAB refused to grant an IPR petition but then the claims were invalidated in court on the same grounds”
which leaves me wondering what is meant by “grounds”.
In Europe, the exact same patent can be litigated in a large number of jurisdictions, on the same “grounds” and result in contradictory findings. All it takes is a different matrix of fact. Court procedure will fix the matrix, and court procedure varies with the jurisdiction.
Simple example: x-exam of witnesses (the best way anyway to get to the facts)
Dennis, your statement that “I have seen lots of information regarding situations where the PTAB found challenged claims obvious during an IPR despite a contrary position by a district court” is a bit misleading. Yes there has been endless complaints on blogs and brief arguments on that subject, for reexaminations as well. But if there are even as many as 2 or 3 ACTUAL cases where that actually happened I do not recall seeing them, and would like to. That is, an IPR decision sustained by the Fed. Cir. that was inconsistent with a D.C. decision, on the same claims and prior art, sustained by the Fed. Cir.]
The one year IPR time bar running from the D.C. complaint date plus the one year processing time of an IPR, plus frequent D.C. stays for IPRs other than in E.D.TX, has made it highly unlikely that any significant number of D.C. decisions of “invalidity unproven” will get to trial, much less reach a final decision, before an IPR claim rejection decision on the same claims.
P.S. Plus, if the D.C. case produces material evidence while the IPR is still pending the IPR must consider it. Ultratec, Inc. v. CaptionCall, LLC, (Fed. Cir. Aug. 28, 2017).
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Here’s one recent case of different decisions between an IPR and a D.C. decision:
In Novartis v. Noven Pharmaceuticals, Inc., the Federal Circuit affirmed the USPTO Patent Trial and Appeal Board (PTAB) decisions invalidating certain claims of two Orange Book-listed Exelon patents. This decision garnered attention because the patents previously were upheld by the U.S. District Court for the District of Delaware in a decision that also was affirmed by the Federal Circuit. The Fed. Cir. cited the statement in the Sup. Ct. Cuozzo decision that such inconsistency is to be expected with different burdens of proof.
Another presumed limitation on the scope of your above question is that the same defendant is being sued in the D.C.? Because no D.C. patent decision is binding on any other defendant in any other court or proceeding anyway – except for an invalidity decision per Blonder – Tongue Labs, Inc. v. University of Illinois Foundations, 402 US 313 (1971)
Paul — there have been at least two valid-in-district-court-invalid-at-PTAB decisions reported at the Federal Circuit level, and I’d be very surprised if there were not several more that didn’t reach Federal Circuit (or taht were affirmed Rule 36 so I wouldn’t know about them).
Also keep in mind that in most cases, the district court stays proceedings in favor of the PTAB, PTAB cancels all claims, and then the district court dismisses, without ever telling us whether the patent would be valid or invalid on clear-and-convincing-over-ordinary-meaning standard. So there’s self-selection sample bias down.
It’s 10PM and I don’t want to look them up.
If those two represent just the visible tip of a much larger iceberg that is disguised behind Rule 36 affirmances, this is troubling. If, on the other hand, those two constitute two out of (e.g.) five such inconsistent cases (which would represent a truly miniscule percent of total patent appeals), I am not sure that one should be too concerned.
That is to say, I would find it troubling if D. Ct.s and the PTAB were routinely arriving at disparate outcomes. In a system operated by human beings, however, there are bound to be some errors (which, in the main, is how I would classify an inconsistent outcome), and as long as those errors are only few in number, we should not be too troubled.
It would take more research than I am prepared to invest in the subject to know how frequently such inconsistent outcomes occur. I gather from his question that Prof. Crouch is looking into this point, so I suppose that we will learn more in time.
Good points Dave.
But a D.C. case stayed for an IPR and then dismissed if the defendant wins in the IPR does not ever have any D.C. decision, and thus does not apply to the question that Dennis has raised here. But the losing party in the IPR would have a strong incentive to appeal that to the Fed. Cir. anyway. Furthermore, query if a Fed. Cir. panel presented with a conflict between an IPR decision and an actual D.C. decision would be likely to decide an appeal on a mere Rule 36 basis?
[Q]uery if a Fed. Cir. panel presented with a conflict between an IPR decision and an actual D.C. decision would be likely to decide an appeal on a mere Rule 36 basis?
I wish I could agree with this, but the frequency and casualness with which the CAFC uses Rule 36 is rather striking. I would not be at all surprised if they were to dispose of such occurrences with Rule 36.
I think that THAT was one of the drivers prompting the “Rule 36 is overly applied” issue.
Agreed.
Dennis, this premise: “challenged claims obvious during an IPR despite a contrary position by a district court” seems incorrect.
A finding under one standard (clear and convincing) by the district court is not contrary to a finding under another, lower standard (preponderance of the evidence). The two are wholly consistent.
I would suggest a more accurate phrasing is: “challenged claims obvious under the standards of IPR but no finding of obviousness under the standard applied in district court.”
Thanks Jane – I suspect we disagree with our definitions of ‘contrary’ in this particular context, with me having a looser definition. At the end of the day, if one court finds the patent invalid and another court finds the patent not-invalid, then I see the two holdings as contrary.
I have been spending substantial time working in the criminal law context, and those efforts have dispelled my notion that the “standard” being applied makes much of any difference.
[T]hose efforts have dispelled my notion that the “standard” being applied makes much of any difference.
Too true. One can count on one hand the number of reported cases where the difference between the PTAB’s “preponderance of the evidence” and the courts’ “clear & convincing” actually affects the outcome.
Just curious – but if it is in fact true that there is “no difference,” then why not just go with the more established standards and remove the “hint” that differences may matter?
Use the clear and convincing and be done with it. Why bother opting for the lower standard?
If that would reconcile hold-outs to the new regime, I would be delighted to see Congress specify a single standard in IPR & litigation for both claim construction and evidence of invalidity.
Greg —
Well, that’s because in most cases, the district court stays proceedings in favor of the PTAB, PTAB cancels all claims, and the district court dismisses. So there’s self-selection sample bias.
Read five randomly-selected district court validity/invalidity decisions, and five PTAB decisions. The gestalt, the footing, the general atmospherics — totally different.
Read five randomly-selected district court validity/invalidity decisions, and five PTAB decisions. The gestalt, the footing, the general atmospherics — totally different.
If you say so. I have read well more than five of each, and I cannot say that they strike me as all that different. It would be an interesting exercise to see, if one isolated the invalidity portions of D. Ct. opinions and the patentability analyses of PTAB rulings, mixed them together, and handed them (unmarked) to a group of experienced patent attorneys, whether the readers could reliable sort the decisions back into their respective categories any more often than one might expect from blind luck.
I recently had the opportunity to Prof. Crouch speak in a panel discussion with Bob Armitage and Kevin Collins. Prof. Crouch remarked that it had been his impression that if you read a bunch of PTAB decisions, they mostly appeared to arrive at the correct outcome. I agree with that.
There are not many that have gone clearly off the rails, although some are close enough cases that they could have rightly gone either way. The various Gnosis IPRs are the only ones that I can remember reading and thinking that a glaring mistake had been made, but then the CAFC affirmed on those, so I guess that I am the one who was wrong there, not the PTAB.
Goodness, I need to proofread.
“could reliable sort the decisions…” should read “could reliably sort the decisions…”
“I recently had the opportunity to Prof. Crouch speak…” should read “I recently had the opportunity to hear Prof. Crouch speak…”
That’s a great point, but it’s also worth noting that in this context there are also different standards for claim construction that are perhaps more likely to have a material impact.
I suggest that objectively the main IPR-D.C. difference is the difference between the claims and prior art being understandably read by patent attorney APJs with technical and legal educations and patent law experience on one hand, vis a vis jurors lacking any of that on the other hand and more vulnerable to attorney and hired expert witness argumentation and appearance versus the actual texts of claims and the prior art.
But I would not necessarily underestimate the repetition of the “clear and convincing evidence” requirement on top of burden of proof to jurors. Note the substantial % difference in jury and judge D.C. non-infringement decisions [where patent owner has the burden of proof] compared to invalidity decisions.
Very public example —
OJ was innocent on a criminal “beyond reasonable doubt” standard, but liable on a “preponderance of evidence” standard.
Sure. Of course there are examples where the standard applied was outcome determinative. Nobody denies as much. The point in question is whether those examples represent some sort of representative sample, or whether they are more in the nature of quirky outliers. From where I am standing, the latter appears nearer the mark.
Obviously Jane’s phrasing suggestion is more accurate but I too am curious about the info Dennis is seeking.
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