Inter Partes Review by the Numbers

Brian J. Love
Assistant Professor of Law, Santa Clara U. School of Law
blove@scu.edu
&
Shawn Ambwani
COO, Unified Patents
shawn@unifiedpatents.com

In the roughly two years since inter partes review (IPR) replaced inter partes
reexamination (IPX), petitioners have filed almost 2,000 requests for the Patent Trial and
Appeal Board to review the validity of issued U.S. patents, more than the number of
requests for IPX made in the 13 years prior.

In a new essay forthcoming in the University of Chicago Law Review Dialogue, we crunch
the numbers for every IPR petition filed before April 2014, a window that includes the lion
share of IPRs to receive an institution decision before October 2014. In this post, we
highlight our most interesting findings and offer advice to counsel filing and defending
IPRs.

Termination and Pendency: The average time to termination was roughly 9 months
among the 979 petitions that fell within our study window. The 215 observed settlements
averaged about 7 months after filing. The 160 final determinations (final written decisions
and requests for adverse judgment) had an average pendency of 15 months vs. a 36-month
average for IPX.

Takeaway: IPRs are resolved more than twice as fast as inter partes
reexaminations.

Institution: Among IPRs with institution decisions, we found that the PTAB exercised its
discretion to institute review of at least one challenged claim almost 84% of the time
about 10% less often than the historical rate of acceptance for IPX (93%). The IPR
institution rate increases to 86% if we eliminate petitions that werent instituted on
challenged patents for which another IPR was instituted.

Among instituted IPRs, the PTAB instituted review of all challenged claims about 74% of
the time and instituted review of about 88% of all challenged claims. Breaking down
petitions based on the patented technology, we found these grant rates to be rather
consistent across industries.

Takeaway: IPR institution rates are lower, but similar to, those for IPX and
are consistent across different technologies.

Validity: Among IPRs with a final determination, we found that PTAB eliminated all

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instituted claims 77.5% of the time, resulting in the elimination of all challenged claims in
65% of IPRs pursued to a final decision. In IPX, all challenged claims were eliminated
31% of the time, an across-the-board win rate less than half that for IPR. Moreover,
among IPRs pursued to a final decision there has been only 1 successful motion to amend
(0.62%) vs. over 60% of all IPXs.

Claim Invalidation Rates

IPRs with decision on merits: 160
All instituted claims invalid or
disclaimed
All challenged claims invalid or
disclaimed
Motion to amend granted
77.5%

65%
0.62%

Takeaway: IPR invalidates all challenged claims more than twice as often
as IPX. 60% of IPX resulted in at least 1 amended claim vs. virtually none
for IPR

Practice tip: Patentees appear to be overestimating their chances of success
and, as a result, settling too infrequently. If settlement rates increase,
success rates in final decisions will likely fall.

NPEs: Additionally considering whether the respondent is an NPE or product-producing
company, we find that IPRs challenging NPE-owned patents (overall, about 48% of IPRs)
are about 9% more likely to be instituted and, on average, have a higher percentage of
challenged claims instituted than those with product company respondents. That said, in
final determinations, NPE claims are less likely to be invalidated or disclaimed, which in
large measure cancels out NPEs greater per-claim institution rate.

Takeaway: NPE patents dont appear to be faring any worse than
operating companies in IPR

Practice tip: No patents are safe from the PTAB, regardless of their owner.

Stays of Co-pending Litigation: Finally, we find that 79% of IPRs challenge a patent
asserted in litigation between the petitioner and respondent. Among patent suits co-
pending an instituted IPR, a motion to stay was filed in 75%. Overall, these cases were
stayed (at least in part) 82% of the time, though rates varied considerably across districts.
Among cases with a motion to stay filed before Markman briefing, court grant stays
slightly more often: 84% of the time. Compared to IPXfor which district courts stayed
co-pending litigation less than half the timeIPR is much more likely to halt litigation.




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Co-Pending Litigation Stays


Overall D. Del. N.D. Cal. E.D. Tex. C.D. Cal.
Suits co-pending an instituted IPR
No. with a motion to stay:
No. with a decided motion:
% granted:
249
190
171
81.9%
48
36
32
81.2%
31
26
25
80%
32
19
16
56.2%
11
9
9
77.8%
No. with a decided motion to
stay filed before markman
% granted:


140
83.6%


24
83.3%


18
77.8%


13
69.2%


8
87.5%

Takeaway: Motions to stay are 80% more likely to be granted in IPR than
in IPX. Stay success does not appear to be affected by motioning pre vs.
post-Markman.

Practice tip: You can wait to submit a motion to stay unless you are in the
Eastern District of Texas.