AIA Statistics, Rulemaking, and Operational Update

June 12, 2020

What Do We Know?

PTAB senior judges presented new case statistics and operational FAQs in a webinar Wednesday afternoon June 11th (attached). A few highlights:

1. On a per patent basis, the Board continues to institute IPR/PGRs at a rate of nearly 70% (excluding settlements and dismissals; slides 13-14); on a per petition basis, the Board’s institution rate declined to 55% in the first three months of FY 2020 (slide 12);

2. On a per claim basis, if the Board institutes review and issues a Final Written Decision (FWD; no settlement), the Board finds 70% of the challenged claims unpatentable (slides 9, 18);

3. The Board’s Gen’l Plastic decision and recent guidance have caused a substantial decrease in patents being challenged by more than one petition (slide 19);

4. The USPTO is proposing a new rule for comment that would eliminate the presumption that a genuine issue of material fact, created by a patent owner’s testimonial evidence filed with a preliminary response, will be viewed in the light most favorable to the petitioner (slides 22-23); and

5. The Board has posted new FAQs regarding what to do in various AIA filing scenarios, including what to do if the E2E filing system is down and you need to file and serve a petition (and pay the filing fee!) to meet a filing deadline (slides 34-36).

Practice Tips:

1. The Board continues to use the Director’s substantial discretionary denial power, and guidance limits on filing parallel petitions, to limit a multiple-petition attack strategy. We expect to see a further softening of the Board’s institution rate on a per petition basis in FY 2020;

2. Board Institution and Final Written Decision rates, combined with Board resistance to claim amendments in the Claim Amendment Pilot Program, continue to provide a clear statistical indicator of unpatentability for most claims in Final Written Decisions;

3. The Board’s proposed roll-back of 37 CFR § 42.108(c) may well give patent owners greater impetus to file expert declarations in support of a preliminary response, but we continue to believe such new testimonial evidence should be limited to addressing rifle-shot technical issues.

4. If you need to pay an IPR filing fee on the statutory deadline, remember to have your customer account funded to cover the ~ $40,000 fee; credit card payment is limited to $25,000.