Many Patent Trial and Appeal Board (PTAB) observers are analysing success rates inaccurately, according to the Lex Machina Patent Trial and Appeal Board 2015 Report released this week.
Lex Machina’s PTAB dataset tracks trials from the filing of the petition to the ultimate disposition. “A number of other publications and commentators ignore the large number of petitions that never reach the institution decision, reporting a large percentage of post-institution trials in which PTAB holds claims unpatentable,” says the report.
The legal analytics company says this is inaccurate because 20%, or 543, of terminated petitions were denied institution, and another 19% were settled before the institution decision was reached. These two pre-institution resolutions are the most common of all resolutions.
The third most common resolution is victory for the petitioner. Some 18%, or 493, of terminated petitions resulted in all the petitioned claims being held unpatentable. This figure is 50 less than the number of petitions denied institution. Another 5% of petitions resolved with the patent owner disclaiming claims (1% before institution and another 4% after institution). Mixed findings were about as common as holdings of all claims upheld (3% each).
Institution decisions are highly consistent around a median of 181 days, while times to final decisions are more spread out around of a median of 533 days, or about 1.5 years.
Analysing different grounds
Lex Machina analysed trends in the different grounds for PTAB inter partes review (IPR) and covered business method (CBM) petitions.
Of the 281 terminated CBM trials, 40 have resulted in claims held unpatentable under Section 101, inventions patentable. Only one trial has resulted in claims upheld under Section 101. Twenty-five of the §101 claims were denied institution and another 88 terminated after institution.
In comparison, in terminated CBM trials including Section 112, conditions for specification, claims were far less likely to be instituted – 71 have been denied institution, 12 have reached a final decision and another 28 terminated after institution.
IPR Petitions based on prior art on grounds of Section 102 and Section 103 respectively appear to reach each of the various outcomes at approximately the same rate, said Lex Machina.
Wide range of judging experience
Top PTAB ALJs, as of January 14 2016 |
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Administrative Patent Judge |
No. of open trials |
No. of total trials |
Joni Chang |
30 |
314 |
Kevin Turner |
53 |
303 |
Jameson Lee |
30 |
294 |
Sally Medley |
47 |
267 |
Jennifer Bisk |
49 |
227 |
Michael Zecher |
22 |
210 |
Kari Easthorn |
40 |
206 |
Brian McNamera |
29 |
202 |
Source: Lex Machina Patent Trial and Appeal Board 2015 Report |
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The report reveals the most experienced administrative patent judges (APJs) at the PTAB have had more than 300 trials.
The most experienced judges are Joni Chang and Kevin Turner, with 314 and 303 trials respectively as of January 14 2016. Many judges have far fewer trials.
It is common for a judge to have 20 to 50 trials open at a time. “The wide range of experience among APJs makes it imperative to know your audience,” commented Lex Machina.
The most common technology centres for PTAB trials are communications (18% of terminated petitions) and semiconductors (17%), followed by transportation (15%) and computer architecture (15%).
Mechanical engineering (10%) and biochemistry (8%) are among the least common.
