On October 24, 2017, the PTAB held its inaugural “Chat with the Chief” webinar. The main topic of the webinar was to discuss multiple petitions filed against the same patent. The PTAB sought to address concerns that have been raised by patent owners that challengers just keep filing petitions until something sticks, and that petitioners presenting multiple petitions unfairly gain an advantage by obtaining information from the Patent Owner’s response to the first petition or the Board’s Institution Decision that help provide a roadmap for the subsequent petition. The PTAB presents results from an internal study that appears intended to alleviate these concerns.
As reported in the webinar by Chief Judge David Ruschke and Lead Judge William Saindon, the PTAB conducted an internal comprehensive review of IPR, PGR, and CBM petitions filed on or before June 30, 2017, to see what it could learn about these multiple petitions. The study included 7168 petitions involving 4376 patents. The slides used during the webinar are available at the Board’s website. This is an ongoing study and the PTAB encourages submission of additional questions for consideration.
One purpose of the study was to calculate some standard PTAB statistics, including institution rate and claim survival rate on a per patent basis. Previous PTAB data were primarily calculated on a per petition basis. The most striking result reported was that 58% of patents survive post-grant proceedings unchanged, meaning that all challenges to patent claims raised in the proceeding failed. For 7% of patents, some challenged claims were found unpatentable and for 29% of patents all challenged claims were found unpatentable. The Chief Judge definitely seemed to feel that this is an important data point in the Board’s constant battle to overcome its initial reputation as a Patent Death Panel.
The PTAB study considered eight questions, each of which are considered below with the study’s conclusions.
Question 1: Do IPRs represent a significant proportion of US patent litigation landscape?
The study concluded based upon data from Lex Machina’s 2017 PTAB report that approximately 85% of IPRs in Fiscal 2017 have a co-pending district court case. However, less than one fifth of district court cases involve patents that are challenged in an IPR. So, while IPRs are primarily used in connection with district court cases, there are still a large percentage of district court cases where IPRs do not play a role. The Board presented this data as a Venn diagram shown below:
Question 2: How many petitioners challenge patents?
The study concluded that the vast majority of patents are challenged only by a single petitioner (84.8%). Most of these petitioners were defendants in co-pending litigation proceedings.
Question 3: How many petitions are filed against each patent?
Again, the PTAB study found that the majority of patents face only a single petition (67%). Another 20% of patents are challenged in two petitions, but the number of petitions filed per patent drop off quickly from that point.
Question 4: Do petitioners often “wait and see” what the Patent Owner says in its Preliminary response or the Board says in a decision on institution?
The PTAB then looked at when petitions are filed. For 41% of the petitions in this data set, only one petition was filed. For those facing multiple petitions, 38% of those petitions were filed at or near the same day. In 5% of the petitions, a second petition was filed after the patent owner’s preliminary response, but before the Board’s decision on institution. Finally, in 16% of the petitions, a second petition was filed after the Board’s decision on institution. This last set, the 16%, provide the most concern to the Board so that category was considered more thoroughly in questions 5 and 6.
Question 5: Who are the petitioners filing petitions after the Board issues a decision on institution?
To determine who is filing another petition after a decision on institution, judges reviewed the case files for each instance where a subsequent petition was filed after the decision on institution. Looking at the 16% of cases where this happened, 9-10% of those cases resulted from some change in litigation (such as an amended complaint adding new claims) or a different petitioner seeking joinder (such a late-added defendant). The PTAB explained that it believes multiples petitions resulting from change in litigation or a motion for joinder may not be problematic. The remaining 6-7% of cases did not involve a change in litigation. The PTAB explained that it is generally more concerned that these cases may allow for road-mapping. As outlined in the newly-precedential decision General Plastic Industrial Co. v. Canon Kabushiki Kaisha (IPRs 2016-01357, 2016-01358, 2016-01359, 2016-01360, 2016-01361), the Board has identified a number of factors to be considered when deciding whether to institute on multiple petitions that address these concerns. I will discuss those factors further below.
Question 6: How often have petitioners been able to use the Board’s institution decision to inform another petition?
To consider this question, the Board looked at “rounds” of petitions, basically considering those situations where a first round of petitions was filed, an institution decision was made, then another round of petitions was filed. In 95% of all cases, there was only a single round of petitions. In 5% of cases, there was a second round of petitions and in less than 0.1% were there any subsequent rounds of petitions. From this, the PTAB concluded that there are really very few instances in which multiple rounds of petitions were filed.
Question 7: What is the institution rate counting by patent v. counting by petition?
Looking at the data gathered, the PTAB compared the institution rate by patent as compared to the rate by petition. As shown in the table below, while the institution rate by patent is higher than the institution rate by petition, the trend year over year is very similar whether measured by patent or by petition. For 2017, the institution rate by patent is 70%.
Question 8: What is the ultimate outcome by patent versus the ultimate outcome by petition?
As noted above, when considering the ultimate outcome by patent as compared to the ultimate outcome by petition, the Board determined that 69% of all petitions result in a patent remaining unchanged and 58% of patents are unchanged at the end of one or more AIA proceedings. The trial outcomes are shown in the chart below:
After reporting the results of the internal study, Chief Judge Ruschke addressed General Plastic Industrial, which the PTAB recently identified as precedential. In that case, the Board provided a list of factors to be considered in connection with the decision to institute on multiple petitions. These factors are listed below:
- Whether the same petitioner previously filed a petition directed to the same claims of the same patent;
- Whether at the time of the filing of the first petition, the petitioner knew or should have known of the prior art asserted in the second petition;
- Whether at the time of filing of the second petition, the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition;
- Length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition;
- Whether the petitioner provides adequate explanation for the time elapsed* between the filings of the multiple petitions directed to the same claims of the same patent;
- Finite resources of the Board;
- Requirement under 35 U.SC. ¶ 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review.
Chief Judge Ruschke also noted that three decisions have been newly designated as informative:
IPR 2016-01571 Unified Patents, Inc. v. Berman
IPR2017-00739 Hospira, Inc. v. Genentech
IPR 2017-00777 Cultec, Inc. v. Stormtech LLC
As a practical tip, the judges suggested that parties should be very explicit and clearabout the reason why you are filing multiple petitions. This will be considered in deciding whether to institute the petition.