Beating the Odds in IPRs

By Tammy J. Dunn


Osha Liang is pleased to announce a recent series of victories on behalf of a firm client and patent owner in three inter partes review proceedings (“IPRs”) pending before the United States Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”).  Earlier this month, the PTAB issued Final Written Decisions in all three IPRs, finding that out of 42 patent claims challenged as unpatentable, 41 claims survived.

Statistically, the odds are against patent owners in IPRs and other post-grant review proceedings.  According to the PTAB’s August 2018 report on “AIA Trial Statistics”, since the enactment of the AIA in 2012 through August 2018, a total of 8,317 IPR petitions have been filed by petitioners seeking to invalidate patent claims in the PTAB.  Historically, the PTAB has instituted trial (i.e., determined to review the validity of challenged patent claims) in the vast majority of cases, with the percentage of cases resulting in institution peaking at 87% in Fiscal Year 2013.  Although these percentages have decreased over the years, the odds have remained stacked against patent owners with 60% of cases being instituted in Fiscal Year 2018.  Even more concerning for patent owners is that once a case has been instituted, challenged claims are much more likely than not to be cancelled—since the AIA’s enactment, only 19% of instituted cases have resulted in a finding of no challenged claims rendered unpatentable.  Meanwhile, 64% of instituted cases have resulted in all challenged claims being cancelled, and in a mere 16% of instituted cases only some claims were cancelled.

Aside from the already-established odds stacked against patent owners, the IPRs at issue here had two additional twists that created completely new and unique challenges not previously faced by patent owners in IPRs.  First, in April 2018 the United States Supreme Court issued its opinion in SAS Inst., Inc. v. Iancu, announcing that all PTAB final written decisions must decide the patentability of all claims challenged in a petition.  This decision ended the PTAB’s previous practice of issuing “partial” institutions in which trial would be instituted for some, but not all, challenged claims.  For cases in which the PTAB had instituted trial on all challenged claims, the SAS decision made no difference, but in pending cases in which the PTAB initially decided that the petitioners had not met their burden with respect to some of the challenged claims, the decision was a potential game changer.  Immediately the question became what would happen to those claims that were not previously instituted?  Not all PTAB panels facing this question handled the SAS decision in the same way.  Some panels issued orders that essentially allowed the rest of the pending proceeding to continue without any real change.  In our cases, however, the panel issued orders re-instituting trial with respect to all challenged claims and on all grounds, including those that had been previously rejected.

The second twist after SAS happened a few months later, when the PTAB issued revisions to its Trial Guide that created certain potential opportunities that had not previously existed.  They were “potential” opportunities because it was not guaranteed (or clear) that the new opportunities available to patent owners in future cases would apply in our cases—those questions had to be addressed for the first time in these proceedings as well.

Osha Liang’s expertise and experience in post-grant proceedings provided an advantage in these cases, allowing the team to expertly navigate through these new and challenging issues in a way that resulted favorably to our client.  We are grateful for these opportunities and look forward to many more in the future.

If you have any questions regarding post-grant proceedings, please feel free to contact Tammy Dunn at dunn@oshaliang.com.