Data – 100 IPR petitions filed in January

AIA filings by month
Month	Number of petitions filed				Total
	IPR	CBM	PGR	DER
Sept 2012	17	8			25
Oct 2012	24	5			29
Nov 2012	24	2			26
Dec 2012	32				32
Jan 2013	25				25
Feb 2013	30				30
Mar 2013	38	2			40
Apr 2013	27	4			31
May 2013	45	7			52
Jun 2013	65	8		1	74
Jul 2013	69	3			72
Aug 2013	62	9			71
Sept 2013	73	8			81
Oct 2013	77	19		2	98
Nov 2013	89	18		1	108
Dec 2013	101	11			112
Jan 2014	60	9			69
Feb 2014	54	12		1	67
Mar 2014	76	22			98
Apr 2014	143	14		1	158
May 2014	131	19			150
Jun 2014	184	6			190
Jul 2014	116	10			126
Aug 2014	159	16	1		176
Sept 2014	120	21	1		142
Oct 2014	179	16			195
Nov 2014	102	13	1		116
Dec 2014	177	15		2	194
Jan 2015	100	14	1		115
Cumulative Total	2,399	291	3	8	2,702
Source: USPTO

According to statistics released by the USPTO, 100 inter partes review (IPR) petitions were filed with the Patent Trial and Appeal Board in January this year. This was down from the 177 filed in December 2014 but more than the 60 in January 2014.

Fourteen covered business method (CBM) review petitions were filed in January, down slightly from 14 in December 2014 but up from the nine in January 2014. January also had the fourth-ever post-grant review petition filed. This was filed by American Simmental Association against a patent owned by Leachman Cattle of Colorado and Verified Beef. This was the second PGR it has filed against a patent owned by Leachman and Verified, following one in November.

Samsung filed the most PTAB petitions in January, with 11 IPR petitions and one CBM petition. This included six IPRs against patents owned by e-Watch, four IPRs against patents owned by Queen’s University at Kingston, one IPR against a patent owned by Rembrandt Wireless and a CBM against a patent owned by Smartflash.

The other most active petition filers during the month were: Mitek and Praxair, which both filed five IPRs each; and Apple, Itron, and Sonis, which filed four IPRs each.

The January activity followed a record year for the PTAB in 2014 (you can see who the busiest companies and people at the PTAB were in 2014 in our analysis here).

The activity so far this month also suggests 2015 will also be a strong year. According to Docket Navigator, 60 IPR and six CBM petitions were filed between February 1 and February 9. This is already more than the 54 IPR petitions filed in the whole of February 2014. Twelve CBM petitions were filed in the whole of February 2014.

January was also notable for a decision by the PTAB on CBM petitions. On January 13 the Board denied institution of four CBM reviews of Orange Book-listed patents owned by Jazz Pharmaceuticals. The petitioners were Par Pharmaceutical, Roxane Laboratories and Amneal Pharmaceuticals, all of whom were sued by Jazz for patent infringement because of their plan to market generic versions of narcolepsy treatment Xyrem.

“The CBM petitions, filed June 24 2014, are notable because it is the first time generic drug markers facing an infringement suit under the Hatch-Waxman Act, or indeed any petitioners, have sought CBM review of Orange Book-listed patents,” noted lawyers from Ropes & Gray.

The petitioners had argue that the claims were eligible for CBM review because the methods “would be used in commerce” and distributing a prescription drug “is financial in nature”. The PTAB in its denial said, however, that the claims themselves do not recite a financial product or service.

“At bottom, this decision underscores that the PTAB is likely to exclude from CBM review Orange Book-listed patents unless they expressly recite or otherwise clearly encompass something financial in nature, or incidental or complementary to a financial activity,” said the Ropes & Gray lawyers.

In this instance the PTAB used a narrow interpretation of what qualifies as a CBM. But a case that is on appeal at the Federal Circuit will be worth keeping an eye on. Versata is arguing that the PTAB uses too broad a definition of business method and should not have invalidated its patent relating to methods for determining the price of products offered to purchasing organisations. Versata has since argued that the PTAB’s Jazz ruling shows that the definition should be narrower and that its patent is not a covered business method.

Number of AIA petitions, as of February 5 2015
FY (Oct 1-Sept 30	Total	IPR	CBM	PGR	DER
2012	25	17	8
2013	563	514	48		1
2014	1,494	1,310	177	2	5
2015	677	610	63	2	2
Cumulative	2,759	2,451	296	3	8
Source: USPTO

AIA petition technology breakdown FY 2015, as of February 5 2015
Technology	Number of petitions	Percentage
Electrical/computer - TCs 2100, 2400, 2600, 2800	432	63.8%
Mechanical/business methods - Cs 3600, 2700	163	24.1%
Chemical - TC 1700	27	4.0%
Bio/pharma - TC 1600	53	7.8%
Design - TC 2900	2	0.3%
Source: USPTO

Number of patent owner preliminary responses, as of February 5 2015
FY	IPR		CBM		PGR
	Filed	Waived	Filed	Waived	Filed	Waived
2013	237	63	33	2
2014	829	202	116	18
2015	459	84	54	6	1
Source: USPTO

AIA trials instituted/disposals, as of February 5 2015
		Trials instituted	Joinders	Denials	Total no. of decisions on institution	Disposals
						Settled	FWD*	RAJ**	Other***
IPR	FY13	167	10****	26	203	38	0	2	1
	FY14	557	15****	193	765	210	130	39	1
	FY15	286	78****	111	475	137	94	14	7
CBM	FY13	14	0	3	17	3	1	0	0
	FY14	91	1****	30	122	27	13	3	2
	FY15	22		12	34	19	16	2	4
PGR	FY15					2
DER	FY14	0	0	3	3	0	0	0	0
* final written decisions on the merits ** judgments based on request for advance judgment *** includes terminatins due to dismissal ****93 cases joined to 57 base trials for a total of 150 cases involved in joinder Source: USPTO