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Data – 100 IPR petitions filed in January

A total of 115 PTAB petitions were filed in January. The Board also made a notable decision to deny CBM reviews of four Orange Book-listed patents owned by Jazz Pharmaceuticals

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.

CBM review of Orange Book-listed patents denied

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


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