Record PTAB year ends with 1,681 petitions filed

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
Cumulative Total	2,299	277	3	8	2,587
Source: USPTO

According to figures released by the USPTO, a total of 2,587 PTAB petitions had been filed by the end of 2014 since they became available in September 2012. This consisted of 2,299 inter partes review (IPR) petitions, 277 covered business method (CBM) petitions, eight derivation proceedings (DER) petitions, and three post-grant review (PGR) petitions. The 2014 calendar year was easily the busiest year for the PTAB so far. There were 1,681 total petitions in 2014, up from 794 in 2013, and 112 in 2012. An average of 140 petitions were filed per month in 2014, up from 66 in 2013.

The vast majority of PTAB filings are IPR petitions, with 1,501 in 2014, 701 in 2013, and 97 in 2012. This means a total of 2,299 IPR petitions had been filed by the end of 2014, compared with 277 CBM petitions, eight DER petitions, and three PGR petitions.

An average of 125 IPR petitions were filed a month in 2014, up from 58 in 2013.

The 194 PTAB petitions in December 2014 made it the second-busiest month at the PTAB ever, after the 195 petitions in October 2014.

However, December was the third busiest month for IPR petitions. Its 177 IPR petitions is behind June 2014’s 184 and October 2014’s 179.

Apple and LG were particularly busy in December.

Apple filed 35 IPR petitions and three CBM petitions, targeting patents owned by ContentGuard Holdings, DSS Technology Management, and e-Watch.

LG filed 28 IPR petitions, targeting patents owned by ATI Technologies, e-Watch, Advanced Micro Devices, Black Hills Media, Delaware Display Group, and Innovative Display Technologies.

December also included the first final written decision to involve an Orange Book-listed patent. Generic drug company Amneal failed in its attempt to have three patents owned by Galderma cancelled.

The pharma industry has been slow to catch on to the potential of PTAB proceedings. Sherry Knowles, principal of Knowles Intellectual Property Strategies, said last month that only two IPRs were filed on Orange Book-listed patents in 2012 and three in 2013. But this jumped to 32 in 2014 through to the end of October.

December also included what appeared to be the first time the PTAB has sanctioned a party. In SAP America v Lakshmi Arunachalam, the patentee challenged the impartiality of one of the adminstrative patent judges in the case.

In its order expunging unauthorised filings and imposing sanctions, the PTAB wrote: “Prior to entry of this Order, we determined that the First Subject Papers contained sensitive information and unsubstantiated allegations concerning Judge Brian McNamara, who is administering the proceeding. On November 26 2014, the First Subject Papers were released publicly on an Internet web site referring to Patent Owner by name. The web site includes a picture of Judge McNamara superimposed on a background of simulated targets with a skull and crossbones in a yellow triangle and a link to the First Subject Papers. The ‘who is’ database for the linked site hosting the First Subject Papers lists identification information, at least some of which appears to be fabricated. Attempts to intimidate Judge McNamara, or any of the other persons identified on the Web site, are unacceptable.”

On the website referring to Arunachalam and featuring the offensive image of Judge McNamara, it is alleged that Judge McNamara has a conflict of interest in the case because of his holdings in JPMorgan. Arunachalam is no longer allowed to upload documents to the PTAB’s Patent Review Processing System and must submit paper filings instead.

In addition, at the end of December the PTAB designated as “informative” the decision rendered in August in Cisco Systems v C-Cation Techs. In the opinion, the expanded panel declined to consider arguments presented only in a declaration and incorporated by reference in the petition without sufficient explanation of the cited portions in the petition itself. This brings the number of decisions designated as informative to 13, as of January 5.

PTAB petitions are tipped to continue their growth. For example, Erich Spangenberg, owner of IP Nav, said in a blog post that the patent market should expect the number of IPR filings to continue to increase, “but not the reason you might think”.

“Even though IPRs were ostensibly put in place to help weed out weak patents allegedly being asserted by non-practicing entities (NPEs), in 2015 the number of IPRs filed against NPEs will decline as the number of NPE suits falls,” said Spangenberg.

“Look for an increase in IPRs filed against patents owned by operating companies – both by other operating companies and by others. Businesses will catch on that IPRs are a very effective way of clearing out annoying patent impediments – and far cheaper than licensing.”

Number of AIA petitions, as of January 1 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	505	458	44	1	2
Cumulative	2,587	2,299	277	3	8
Source: USPTO

AIA petition technology breakdown FY 2015, as of January 1 2015
Technology	Number of petitions	Percentage
Electrical/computer - TCs 2100, 2400, 2600, 2800	323	64.0%
Mechanical/business methods - Cs 3600, 2700	118	23.3%
Chemical - TC 1700	22	4.3%
Bio/pharma - TC 1600	40	8.0%
Design - TC 2900	2	0.4%
Source: USPTO

Number of patent owner preliminary responses, as of January 1 2015
FY	IPR		CBM		PGR
	Filed	Waived	Filed	Waived	Filed	Waived
2013	237	63	33	2	-	-
2014	829	202	116	18	-	-
2015	318	55	27	3	1	-
Source: USPTO

AIA trials instituted/disposals, as of January 1 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	207	67****	81	355	81	64	7	-
CBM	FY13	14	0	3	17	3	1	0	0
	FY14	91	1****	30	122	27	13	3	2
	FY15	18	-	4	22	18	13	2	4
PGR	FY15	-	-	-	-	1	-	-	-
DER	FY14	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