80/20 Rule: 80% of IPRs challenge patents already asserted in district court

Pedram Sameni at Patexia has an interesting new post titled Eighty Percent of IPR Filings are for Defensive Purposes.   As the title suggests, their study of the 6,580 IPR challenges filed 2012-2017, 80% challenge patents that were already being asserted in district court.

https://www.patexia.com/feed/patexia-chart-44-80-percent-of-ipr-filings-are-for-defensive-purposes-20171107

 

46 thoughts on “80/20 Rule: 80% of IPRs challenge patents already asserted in district court

  1. I would also like to see data on the following: How many IPRs are filed on Orange-Book listed patents for which the ANDA litigation in District court has already begun.

    What I have seen is that a generic company will file its ANDA. It will be sued by the brand pharma in district court. Then the generic will file the IPR on the patents. This way, the generic is teh “first filer” and enjoys the 180 days first filer exclusivity, but also benefits from the lower burden of proof in IPR proceedings vs. district court. I’d like to know if the data backs up my observations.

    1. This is my impression as well, but as you say, I would also like to see the data.

    2. If the patent is invalidated by the PTAB, does that still confer 180 exclusivity on the ANDA filer?

    3. xtian, any generic the does not pursue the procedure you described has incompetent counsel.

      If Oil States does not succeed, we are going to see a a lot more Indian tribes owning pharmaceutical patents.

      1. Should read, “any generic that does not pursue…”

  2. As Paul Morgan observes, this is more or less a “no brainer”.

    Compare the situation in two EPC countries, Germany and the UK. 70% of all oppositions filed at the EPO are by German entities. Why? Because under the national patent litigation regime in Germany, it makes sense to “get your retaliation in first”. In the UK (and also, I suspect, the USA) there is no such imperative.

    1. MaxDrei, referring to Germany, “it makes sense to ‘get your retaliation in first.'”

      Apt explanation for Belgium and Poland.

      1. Nice one Ned but, yawn, isn’t it time by now to “Leave it out, guv’nr”?

        As far as I know, the expression originated with Carwyn James, head coach on a British and Irish Lions Rugby Union Tour of New Zealand, in the 1970’s. Rugby players are unlikely to survive more than a few successive games without getting injured.

        The BI Lions is a revered institution. Domestically, England, Wales Scotland and Ireland go to “RU) war with each other every winter, but every 4th summer come together in one team to take on the RU giant countries of NZ Oz and RSA. Being a Lion is the most revered status of any RU player.

        And on the island of Ireland, they pick one national RU side, drawing players from both Northern Ireland and the Republic. Sport helps to dissolve the memories of war. Patent law too, one would hope.

    2. Max, there is not a valid comparison in cost, complexity, estoppel, etc. between an EPO opposition proceeding and an IPR trial.
      Also, surprisingly few applications about to issue, or newly issued patents, even if caught under a “watch”, are such recognizable threats to existing commercial products or product plans as to justify the costs and risks of an IPR or PGR, and also encouraging an infringement study and a strengthening reissue or reexamination by the patent owner.

  3. One of the commenters here prosecutes patents which rest on the proposition that nobody knows what a “proxy” is.

    You think that cr @p will cost $250k to liquefy? Think again.

    1. Anthropomorphication

      Proxy that.

      Then de-zombify your Mental Steps Doctrine.

  4. Thanks for the further confirmation. According the the PTABs own latest statistical report on IPRs somewhat more than 80% of all requested IPRs disclose parallel infringement suits in the IPR papers filed. [The statistical study “An Analysis of Multiple Petitions in AIA Trials” also demolishing the myth that serial petitions against the same patent are common.] [That 80% does not include IPRs filed before that in response to cease and desist letters, large license fee demands or other suit threats, which would presumably bring the percent of IPRs caused by lawsuits or their threat to more like 90%.] And, it also notes, IPRs are being filed in less than about 1/4 of all patent suits.
    I have been pointing the 80% number out on this and the Q-blog for several years now in response to allegations that patents are widely attacked and attacked without provocation in IPRs.

  5. I agree that the percentage of IPRs that are filed against patents that have not yet been asserted is too low. The cost of filing should be lowered for IPR filing against not-yet-asserted patents and losers should be required to pay at least a portion of the winner’s fees.

    1. Your cognitive dissonance and anti-patent feelings aside, Malcolm, how about instead we just FIX the examination quality issue instead of closing the gate after all the horses have run off?

      ANYONE with any real world experience can tell you that a post-hoc “warranty” type of fix – with zero tie to the actual initial process – has an absolute zero chance of actually doing what it is purported to be doing.

      1. Nobody cares what you think about anything and the idea that you or your cohorts wants to “improve examination” is laughable beyond belief.

        1. Proof? Nope. Just insults. As usual, Anon wins, you lose.

        2. Yeah, gotta agree with that. I’m getting tired of people talking about patent examination quality.

          I’ve been at this for decades now, and I’ve seen countless initiatives, pilot programs, proposals, etc., from the USPTO to improve “patent examination quality.” None of them lasts or makes any meaningful difference for the simple reason that the ex parte examination framework is inherently flawed. No matter what you do on the examination side, an examiner will never be able to match a motivated infringer in finding the best prior art or mounting the strongest validity challenge.

          And besides, the USPTO is now issuing more than 300,000 patents per year. The vast majority of those patents will never be asserted against, or even noticed by, anyone. It’s only a tiny fraction of those patents that will present problems for others, and it’s effectively impossible to identify those during the examination stage. So anything you do on the examination side will likely have little to no impact on the issuance of problematic patents; it will just bog down the examination process.

          IPR/PGR are simply put the best mechanisms available for identifying and further evaluating the tiny percentage of problematic patents that take up the time of other people, and that make the whole patent system look bad.

          1. “No matter what you do on the examination side, an examiner will never be able to match a motivated infringer in finding the best prior art or mounting the strongest validity challenge.”

            Of course that is true, but it is not clear that we are at the point of diminishing marginal examination. Even if the best prior art will not be found, better prior art will yield better claim scopes.

            Any significant increase in search time could also be used against POPA as leverage for policies to make it easier to get rid of rubber stamp examiners.

            “More time. More accountibility. Better Patents.”

            1. Ben, the examiner might be more motivated if he personally would have to pay for any IPRs addressed against the patents he issues.

              1. [T]he examiner might be more motivated if he personally would have to pay for any IPRs addressed against the patents he issues.

                I think that making the PTO pay for patents canceled in IPR (or for the costs involved in defending such invalidation proceedings) is a worthy incentive. Making the examiner personally liable, however, is both ill-advised in theory and unworkable in practice.

                In order for person examiner liability to work as an incentive, the examiner must be made to understand before starting work that the examiner’s agreement to be open to liability running into potentially the hundreds of thousands (perhaps millions) of dollars at some unspecified date in the future is a condition of employment. That is an obviously unattractive condition of employment, so the PTO will have to pay correspondingly more right now to make this job plausibly attractive. Moreover, unless that “correspondingly more” is really huge, no sane person would take that offer, which means that we would be selecting for people who are not that bright. An examiner core composed only of those too dim to realize what a dangerous arrangement they are making is scarcely likely to improve quality.

                Moreover, most IPRs occur years, maybe decades, after allowance. The average examiner is only in the job for a few years (I seem to recall reading an average of 5 years, but I cannot find a source for that number). That means that by the time that the liability would mature, the would-be beneficiary is going to have a time of it tracking down the responsible examiner. Given the high percentage of the foreign born working at the PTO, in some cases, the person in question will have moved back to Russia, or Vietnam, or what have you, where they will be essentially judgment-proof against liability under the terms of a U.S. contract. Indeed, if agreeing to liability becomes a precondition to taking the job, the result will likely be a dramatic increase in the percentage of foreign born examiners, because they will have confidence in their ability to escape crushing liability by moving to a jurisdiction beyond the reach of U.S. law.

                Like I said, I like the idea of making the PTO liable. Making the examiners personally liable, however, strikes me as unworkable and ill-advised.

                1. Greg, of course are was being somewhat facetious. It just that I think that the examiners should have some actual stake in the results of what they do. If they issue a patent that later the PTAB finds wanting, that fact should at least go in their file and adversely affect their career in some fashion.

            2. Ben.

              Bravo

              (no snark)

              Ned,

              Not even close to something workable – and will only exasperate one type of error at the expense of the other (have you forgotten Reject Reject Reject?)

          2. “IPR/PGR are simply put the best mechanisms available for identifying and further evaluating the tiny percentage of problematic patents…”

            No they’re not. Not enough flexibility, resulting in too many babies getting thrown out with the bathwater. EPO oppositions do a better job, and are fairer, because they allow the patentee to submit multiple sets of amendments in the alternative, each of which is examined by the opposition board until one set is found allowable or all are disqualified. It’s not a method to which users of the US legal system are accustomed. But it’s more likely than the take-it-or-leave-it IPR/PGR system to leave the patentee with something if indeed he’s invented and sufficiently described/enabled a novel, non-obvious invention.

            1. This is a very good point, and a very thoughtful reply. Honestly, I wish that those for and against IPRs could spend more time discussing, as you just have, how we might improve the procedures. Instead, most of the ink spilled on this subject is more to the effect of ecrasez l’infame.

              Indeed, I strongly suspect that many on the anti-IPR side really do not want the IPR process to be improved. They are a lot of gutter-Leninists who want to “heighten the contradictions” of the present IPR system, in the hope that the whole thing be effaced from the books, rather than reformed and improved.

          3. LD, as far as I am aware, the prior art searching has never been a USPTO quality criteria or examiner rating criteria? Presumably because it would require Quality Review to do a supplemental search to find the un-found material prior art?

          4. it will just bog down the examination process.

            Making examination process better “bogs down” the examination process….?

            Sorry Lode_Runner, but I am not buying what you are trying to sell.

            Perhaps the problem is one of perspective. Are you an examiner “forced to deal” with these “internal” Office initiatives?

            That would explain a lot.

      2. “how about instead we just FIX the examination quality issue instead of closing the gate after all the horses have run off?”

        Such pleas would be more effective if your side were actively trying to fix things while asking for the gate to be closed.

        1. I have personally made substantive comments about how to go about it, Ben, so the “your side” comment falls flat.

          I have also been adamant that YOUR metric problems should not be made into problems for my clients.

          These two positions are entirely compatible.

          1. I have personally made substantive comments about how to go about it…

            … none of which I am prepared to re-iterate here (I will disparage any suggestion that I do so as “hand-holding”), or to provide a link to any such alleged suggestions.

            1. I believe that the response that will be forthcoming to 1.1.2.3.1 will involve a suggestions about anatomical mastication. Allow me to spare you the effort to advise me to that effect, by assuring you that I already know to do so.

    2. MM, you’ve obviously never been involved in an IPR petition, because if you had, you’d know that neither of the things you’re proposing would have any impact on the number of IPR filings against not-yet-asserted patents.

      First off, everyone forgets that unlike ex parte reexamination, you cannot file an IPR petition anonymously. So unless you’re a public interest entity that has no risk of infringement liability, if you file an IPR petition against it, you’re dramatically increasing the likelihood that the patent owner will respond with an infringement suit.

      Your proposal to reduce the filing fees is, to say the least, peanuts. The filing fees are dwarfed by the high cost of preparing an IPR petition itself. Most of the good firms that I use are quoting around $250K+, all in, to prepare and handle an IPR proceeding up until PTAB hearing, against up to 20 claims in a single patent. About 75% of that cost is in the preparation of the petition itself, which is an enormous undertaking even if you’re already found the prior art you’re going to use. And unlike the previous reexamination regime, an expert declaration is practically required now, so you have a huge upfront investment of attorney time and expert time just to get an IPR proceeding started.

      To make matters worse, the PTAB has been rejecting a record number of IPR petitions on questionable grounds, as the institution rate drops and the lack of experience (and competence) of many of the newly hired PTAB judges is now revealing itself. And the non-institution decision is largely unappealable, so your upfront investment may be shot down arbitrarily at the institution phase.

      So it surprises me that the number isn’t actually 100%, not 80%. I would suspect that the 20% that are not technically in litigation are either in the same family or related to currently-litigated patents, or are the subject of aggressive prelitigation threats.

      The IPR procedure is far from perfect, for either side, but from an accused infringer’s standpoint, it’s obviously better than litigation and trial before a jury with a clear and convincing standard. That often makes IPR worth the investment for patents in litigation. But if the patent is not already in litigation, it’s hard to justify the expense associated with IPR.

      1. For the typical junky do it i a computer claim I can prepare an IPR petition for a tenth of that cost.

        1. I stopped using patent prosecutors for IPR work years ago; most of them have spent too many years “traversing” examiner rejections to be able to make a persuasive argument. They’re used to the fact that, for many applications, you could vomit on a piece of paper, submit it as the response to a rejection, and in many cases get a notice of allowance. Obviously I exaggerate, but overcoming the meager rejections of many examiners doesn’t exactly require the highest levels of advocacy, so someone who’s spent years doing that wouldn’t be my first choice when I need something that’s persuasive.

          I’ve never seen anyone quote $25k to prepare an IPR petition in the electronics/software field. If the patent is so simple and basic that it could be taken out so easily, I could probably settle the case for less than the cost of the IPR anyway. More complex patents (which are nonetheless still junk) take quite a bit more work to IPR than you’re suggesting.

        2. Let us know when someone takes you up on your bargin bin surgery prices, Dr. Nick.

        3. Words are wind, as they say. In any event, your boast still gets at the point that the PTO’s fees are not the rate limiting factor stopping more IPRs against not-yet-asserted patents. If you are eager to increase that number (for some inexplicable reason), you need to find a way to reduce the search/attorney costs. The PTO fees are such a trivial percent of the total cost that you could cut them 75% and not appreciably increase the number of petitions filed.

      2. Expert decs don’t cost that much to prepare. We prepare them routinely for prosecution.

        The key here is to avoid playing the game on the opponents turf. You take the kneecaps out, then you hammer the head into soup. That’s step one. Step 2 is laughing. I mean we’ve all seen the arguments.

      3. Litigators think they can do IPRs better. They’re wrong. They’ll just charge more.

        1. A good IPR team has attorneys with both prosecution and litigation experience. Both skill sets are important.

          Pure prosecutors don’t have experience in taking/defending depositions or oral argument. They also aren’t used to the rigorous claim construction you get in an IPR, which I think is closer to a Markman than anything in examination. Writing from litigators also tends to be better, more precise and persuasive.

          Pure litigators also have downsides for an IPR. Many don’t have the technical chops and want to take a discovery deposition. I love arguing against a trial attorney, full of bluster, who doesn’t realize that arguments made to a district-court judge aren’t going to work with technically trained APJs and can’t answer the APJs’ many high-level questions.

      4. LR, that is a very good point that “unless you’re a public interest entity .. if you file an IPR petition .. you’re dramatically increasing the likelihood that the patent owner will respond with an infringement suit” [against you]. Not even mentioning the estoppel risk the petitioner is taking.
        As to comment below on who to use for IPRs, some of the best qualified have been former interference practitioners, since IPR practice was specifically modeled after modern interference practice. They have both contested PTO declaration and document evidence experience and live cross examination experience and know how to deal with strict-trial-managing APJs. Of course by now there are also some real IPR experts in some firms with numerous IPRs under their belts. It is not at all like ex parte practice, and only partially like patent litigation.

    3. “The cost of filing should be lowered for IPR filing against not-yet-asserted patents and losers should be required to pay at least a portion of the winner’s fees.”

      so basically a large company could take down a small company by hiring expensive lawyers to file IPRs against all of its patents, and assuming it prevails in half, bankrupt the small company by having it foot the bill. Also, define “winner.” What if some (but not all) of the claims stand valid?

      1. Stop holding MM’s feet to the fire!

        1. I know – how dare critical thinking be applied to a desired narrative, right?

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