2/21/2018 1 Utah IP Summit State of the PTAB Scott R. Boalick Deputy Chief Administrative Patent Judge February 23, 2018 David P. Ruschke, Chief Judge Scott R. Boalick, Deputy Chief Judge Jacqueline W. Bonilla Vice Chief Judge for Operations William M. Fink Vice Chief Judge for Operations Michael P. Tierney Vice Chief Judge for Operations Scott C. Weidenfeller Vice Chief Judge for Operations Janet A. Gongola Vice Chief Judge for Engagement Dave Talbott Board Operations Division Board Executive Patent Trial and Appeal Board Organizational Structure 3
Transcript
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Utah IP Summit
State of the PTAB
Scott R. BoalickDeputy Chief Administrative Patent Judge
February 23, 2018
David P. Ruschke, Chief Judge
Scott R. Boalick, Deputy Chief Judge
Jacqueline W. Bonilla
Vice Chief Judge for Operations
William M.
Fink
Vice Chief Judge
for Operations
Michael P.
Tierney
Vice Chief Judge
for Operations
Scott C.
Weidenfeller
Vice Chief Judge
for Operations
Janet A.
Gongola
Vice Chief Judge
for Engagement
Dave Talbott
Board Operations
Division
Board Executive
Patent Trial and Appeal BoardOrganizational Structure
*Alexandria, Va. count includes judges who participate in TEAPP.
(18)(12)
(214)
(13)
(9)
Overview of PTAB Proceedings
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AIA Trial Overview
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AIA Trial Overview
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IPR is barred if petition is filed more than 1 year after date a complaint alleging infringement is served. 35 U.S.C. § 315(b)
AIA Trial Overview
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AIA Trial Overview
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� Estoppel for civil actions and ITC proceedings� Precludes petitioner, any real party in interest, or
privy from later challenging same patent claim
� IPR/PGR: any ground “raised or reasonably could have raised” during review that resulted in final written decision
� CBM: any ground “raised” during review that resulted in final written decision
AIA Trial Overview
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AIA Trial Overview
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AIA Trial Overview
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Trial StatisticsIPR, PGR, CBM
Patent Trial and Appeal Board December 2017
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16
Petitions by Trial Type (All Time: 9/16/12 to 12/31/17)
Trial types include Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM).
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Petitions Filed by Technology in FY18(FY18 to date: 10/1/17 to 12/31/17)
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Petitions Filed by Month (December 2017 and Previous 12 Months: 12/1/16 to 12/31/17)
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Preliminary Response Filing RatesPre- and Post-Rule To Allow New Testimonial Evidence (NTE)(All Time: 9/16/12 to 12/31/17)
The rule to allow new testimonial evidence was effective May 2, 2016.
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Institution Rates(FY13 to FY18: 10/1/12 to 12/31/17)
Institution rate for each fiscal year is calculated by dividing petitions instituted by decisions on institution (i.e., petitions instituted plus petitions denied). The outcomes of decisions on institution responsive to requests for rehearing are excluded.
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Institution Rates by Technology(All Time: 9/16/12 to 12/31/17)
Institution rate for each technology is calculated by dividing petitions instituted by decisions on institution (i.e., petitions instituted plus petitions denied). The outcomes of decisions on institution responsive to requests for rehearing are excluded.
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Status of Petitions(All Time: 9/16/12 to 12/31/17)
These figures reflect the latest status of each petition. The outcomes of decisions on institution responsive to requests for rehearing are incorporated. Once joined to a base case, a petition remains in the Joined category regardless of subsequent outcomes.
Appeal Statistics
Patent Trial and Appeal Board December 2017
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17,851
24,04026,570
25,437 25,527
21,556
15,53313,084 12,699
FY10 FY11 FY12 FY13 FY14 FY15 FY16 FY17 FY18
Pending Appeals(FY10 to FY18: 9/30/10 to 12/31/17)
Note: FY17 pending changed from 13,034 to 13,084 due to an internal end of fiscal year audit.
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21.8
18.315.6 14.3 14.9
19.622.5
26.6 25.2
9.2
19.4
14.012.3
10.1 9.7 9.811.7
19.1 18.016.0
5.0
13.3
1600 1700 2100 2400 2600 2800 2900 3600 3700 3900
Bio /
Pharma
Chemical Electrical / Computer Design Mechanical /
Business Method
*CRU Overall
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Pendency of Decided Appeals in FY17 and FY18 (pendency of appeals decided in December 2016 compared to December 2017 in months)
Pendency is calculated as average months from Board receipt date to final decision. *CRU (Central Reexamination Unit) includes ex parte reexams, inter partes reexams, supplemental examination reviews and reissues from all technologies.
December 2016 December 2017
Appeal Intake in FY18(10/1/17 to 12/31/17)
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*The Central Reexamination Unit includes ex parte reexams, inter partes reexams, supplemental examination reviews and reissues from all technologies.
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383
577
17
194
220
247
212
269
177
*Central Reexamination Unit 3900
Mechanical/Bus. Method 3700
Mechanical/Bus. Method 3600
Design 2900
Electrical/Computer 2800
Electrical/Computer 2600
Electrical/Computer 2400
Electrical/Computer 2100
Chemical 1700
Bio/Pharma 1600
Appeal Outcomes in FY18(FY18: 10/1/17 to 12/31/17)
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Affirmed
58.7%
Affirmed-in-Part
11.1%Reversed
28.3%
Administrative and
Panel Remands
0.7%
Dismissed
1.2%
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Appeals Filed(FY12 to FY18 Q1: 10/1/11 to 12/31/17)
12,734
11,08810,040
8,357 8,781
11,874
2,675
FY12 FY13 FY14 FY15 FY16 FY17 FY18 Q1
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Appeals Pending(FY12 to FY18 Q1: 10/1/11 to 12/31/17)
26,57025,437 25,527
21,556
15,53313,084 12,699
FY12 FY13 FY14 FY15 FY16 FY17 FY18 Q1
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Average Age of Appeals in Months(FY12 to FY18 Q1: 10/1/11 to 12/31/17)
23.0
26.028.4
29.7
25.6
17.815.414.2 15.0 16.1 15.7
12.7
9.1 8.8
FY12 FY13 FY14 FY15 FY16 FY17 FY18 Q1
Decided
Pending
Decided appeals are measured from receipt or docketing to the decision.
Pending appeals are measured from receipt or docketing to the end of the given period.
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Current Pending Appeals by Receipt Date(As of FY18 Q1: 12/31/17)
0
500
1,000
1,500
2,000
2,500
3,000
Before
FY16
Q1
FY16
Q2
FY16
Q3
FY16
Q4
FY16
Q1
FY17
Q2
FY17
Q3
FY17
Q4
FY17
Q1
FY18
An Analysis of Multiple Petitions
in AIA Trials
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District Court PTAB
Jurisdiction of Patent Challenges
• Approximately 85% of IPRs in Fiscal Year 2017 have a co-
pending district court case
• Less than a fifth of district court cases involve patents that are
challenged in an IPR
Data sourced from Lex Machina PTAB Report 2017
Jurisdiction of Patent Challenge
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Multiple Petition Study
Petitioners Per Patent
Data Through 6/30/17
Percentages may not add to 100% due to rounding
No. of Petitioners vs.
Patent
No. of
Patents
%
Patents
1 3711 84.8%
2 424 9.7%
3 132 3.0%
4 59 1.3%
5 28 0.6%
6 17 0.4%
7 2 <0.1%
8 3 <0.1%
Total 4376 100%
84.8% of Patents are
Challenged by a Single
Petitioner
9.7%
3.0%
NUMBER OF PETITIONERS PER PATENT1 2 3 4 5 6 7 8
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Multiple Petition Study
Petitions Per Patent
Data Through 6/30/17
No. of Petitions per
Patent
Patents % of Total
1 2932 67.0%
2 885 20.2%
3 256 5.9%
4 142 3.2%
5 54 1.2%
6 52 1.2%
7 or more 55 1.3%
Total 4376 100%
67.0%
20.2%
5.9%
NUMBER OF PETITIONS PER PATENT
1 2 3 4 5 6 7 or more
87.2% of Patents Challenged at
PTAB by 1 or 2 Petitions
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When Petitions Are Filed
Before
POPR
Before
DI
After DI
“POPR” “DI” “FWD”
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Multiple Petition Study Who are post-DI Petitioners?
*Random sample taken on 3/1/17 using data through 2/28/17 38
9-10% of petitions filed by:
• Defendant-Petitioner; or
• Same or Different Petitioner
• Filing due to a change in litigation;
or
• Seeking to join existing trial as a
party
• 16% of all petitions are filed
after a DI
• A random sample of the 1054
petitions filed after DI as of
3/1/17* was taken
• The sample included 169
petitions, and the results
were found to be statistically
significant, such that we can
use the sample (169
petitions) as an estimate of
the whole (1054 petitions).
6-7% of petitions filed by:
• Non-Defendant Petitioner; or
• Same Petitioner
• Filing not due to change in
litigation; and
• Not seeking party joinder
16%
Multiple Petition Study
Rounds of Petitions
• 95% of petitions are filed in a given petitioner’s first
round
• A “round” is all petitions filed before receiving a DI on
one of those petitions
Data Through 6/30/17
*Not included are 311 Petitions filed where a request to join as a party to another proceeding was granted
95% of a Given Petitioner’s
Petitions are filed
in One Round
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95%
5% 0%
PERCENT OF PETITIONS
One Round Two Rounds 3+ Rounds
95% of petitions are filed in a given
Petitioner’s first round
Rounds of PetitionsNo. of
Petitions
% of
Petitions
First Round of Petitions 6481 95%
Second Round of Petitions 369 5%
Third or Fourth Round of Petitions 7 <0.1%
Total 6857*
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Multiple Petition Study
Institution Rate
• Institution rate as measured by patent is only
slightly higher than the institution rate as
measured by petition
• “By patent” accounts for whether any one
petition against particular patent is instituted• Example against Patent A:
• Petition 1 instituted
• Petition 2 not instituted
• Net result = 100% institution rate
• “By petition” accounts for whether a particular
petition was instituted; publicly reported
monthly• Example against Patent A
• Petition 1 instituted
• Petition 2 not instituted
• Net result = 50% institution rate
Data Through 6/30/17 40
87%
75%
68%67%
64%
91%
81%
75%74%
70%
60%
65%
70%
75%
80%
85%
90%
95%
100%
2013 2014 2015 2016 2017
Institution Rate, by Petition Institution Rate, by Patent
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Status of Petitions(All Time: 9/16/12 to 12/31/17)
These figures reflect the latest status of each petition. The outcomes of decisions on institution responsive to requests for rehearing are incorporated. Once joined to a base case, a petition remains in the Joined category regardless of subsequent outcomes.
Multiple Petition Study
Ultimate Outcome
• 69% of all petitions result in a patent
being unchanged; 58% of patents are
unchanged at the end of one or more
AIA proceedings
• “By patent” accounts for whether any
one petition against particular patent
results in any unpatenable claims
• “By petition” accounts for whether a
particular petition results in any
unpatentable claims
Data Through 6/30/1742
29%
7%
6%
58%
21%
5%
5%
69%
0% 10% 20% 30% 40% 50% 60% 70% 80%
PTAB Finding All Claims
Unpatentable
PTAB Finding Some Claims
Unpatentable
Patent Owner Requests
Adverse Judgment
Patent Unchanged
Outcomes in AIA Trials
By Petition By Patent
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Multiple Petition Study Highlights• Studied: 7168 petitions addressing 4376 patents
• Who: 84.8% of patents are challenged by a single petitioner
• What: 87% of patents are challenged by 1 or 2 petitions
• Where: 85% of IPRs have a co-pending district court case
• When:
• 79% of petitions are filed before any Patent Owner Response or a Decision on Institution
• 95% of petitions are filed in a given petitioner’s first round
• Why: Often a petitioner could not have filed a petition earlier or may be prompted to file later
because of the litigation circumstances
• How:
• Institution rate by patent (FY17: 70%) is only slightly higher than by petition (FY17: 64%)
• 58% of patents challenged at the PTAB are unchanged 43
Motions to Amend and Aqua Products
45Data current as of: 9/30/2017
Reason for Denying Entry # of Motions % of Motions
§102/103 Anticipated or Obvious Over Art of Record 67 40%
§102/103/
112/316
Multiple Statutory Reasons
*All included at least 102, 103, and/or 112 as
a reason for denial
39 23%
§101 Non-Statutory Subject Matter 12 7%
§112 Written Description 10 6%
§112 Enablement 3 2%
§112 Definiteness 1 1%
§316 Claims Enlarge Scope of Patent 9 5%
§316 Unreasonable Number of Substitute Claims 3 2%
Procedural Reasons 22 13%
Total Motions to Amend Denied (in whole
or in part)166 100%
Motion to Amend Study
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In re Aqua Products: Procedural History
• October 23, 2014 – Original appeal of IPR2013-00159 (Paper 71) (PTAB Aug. 22, 2014)
– Board denied Aqua’s motion to substitute claims 22–24, which proposed to amend claims 1, 8, and 20 to include additional limitations
• May 25, 2016 – Federal Circuit (Prost, Reyna, Stark) affirmed Board decision, citing prior court decisions
• August 12, 2016 – Federal Circuit ordered rehearing en banc in relation to two questions
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In re Aqua Products(order granting rehearing en banc)
Questions for appellant and USPTO intervenor:
Q1: When PO moves to amend claims under 35 U.S.C. § 316(d), may PTO require PO to bear the burden of persuasion, or a burden of production, regarding patentability of amended claims as a condition of allowing them? Which burdens are permitted under 35 U.S.C. § 316(e)?
Q2: When petitioner does not challenge the patentability of a proposed amended claim, or the Board thinks the challenge is inadequate, may the Board sua sponte raise patentability challenges to such a claim? If so, where would the burden of persuasion, or a burden of production, lie?
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In re Aqua Products
• October 4, 2017 – Federal Circuit issued en banc decision, which included five separate opinions
– As noted in lead opinion: “[V]ery little said over the course of the many pages that form the five opinions in this case has precedential weight.”
– “The only legal conclusions that support and define the judgment of the court are: (1) the PTO has not adopted a rule placing the burden of persuasion with respect to the patentability of amended claims on the patent owner that is entitled to deference; and (2) in the absence of anything that might be entitled deference, the PTO may not place that
burden on the patentee.”
• November 21, 2017 – PTAB Chief Judge issued Guidance in view of Aqua Products decision
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Guidance on Motions to Amend in view of Aqua Products
• Board will not place the burden of persuasion on PO with respect to the patentability of substitute claims presented in a motion to amend;
• If PO files a motion to amend, Board will determine whether the substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner;
• Practice and procedure before Board will not change.
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Guidance on Motions to Amend in view of Aqua Products
• A motion to amend must meet requirements of 35 U.S.C. § 316(d)
– propose a reasonable number of substitute claims
– substitute claims do not enlarge scope of the original claims or
introduce new matter
• A motion to amend must meet requirements of 37 C.F.R. § 42.121 or § 42.221, as applicable
– set forth written description support and support for benefit of a filing date in relation to each substitute claim
– respond to grounds of unpatentability involved in the trial
• Under 37 C.F.R. § 42.11, all parties have a duty of candor
– including PO’s duty to disclose information that PO is aware of that is material to the patentability of substitute claims, if such information is
not already of record50
Guidance on Motions to Amend in view of Aqua Products
• Board will continue its current briefing practice as to types, timing, and page-limits of briefs;
• Parties with pending motions to amend may request briefing changes or additional briefing;
• PO may contact the Board to file new or substitute motion to amend under certain circumstances.
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Expanded Panels
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• Chief has discretion to expand a panel
• An expanded panel is rare and “ordinarily will not be used”
• Reasons for expanding a panel:
• Issue of exceptional importance
• Maintain uniformity of Board decisions
• Written request from Commissioner for Patents or the
Commissioner’s delegate identifying an issue:
o Of first impression; or
o Governed by a prior Board decision where Commissioner has
determined it would not be in the public interest to follow the
prior Board decision
SOP 1 - Reasons for Panel Expansion
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• Who may suggest the need for the designation of an expanded panel?
• Judge
• Merits panel
• Interlocutory panel
• Applicant or patent owner in an ex parte appeal
• Party in an inter partes reexam, interference, or AIA trial
• Suggestion must be in writing with reasons and basis for expansion
SOP 1 - Suggestion for Panel Expansion
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Expanded Panel Review
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• Current panel expansion practice:
• ensures predictable and uniform application of agency policy
• ensures that similarly situated parties, under the same facts, are treated the same
• provides notice to the public
• Current preferred panel expansion practice (see General Plastic):
• all expanded panel decisions explain the basis for expansion
• panel expanded without changing the underlying result
• emphasizes the underlying result or reasoning
• potential designation of decision as informative, and
• may consider the decision for precedential designation
• Early AIA practice expanded panels in families for case resource management
• Now discontinued
Expanded Panel Review
• The universe of IPR, PGR, and CBM petitions filed on or before 12/31/2017 includes:
• 7,930 petitions and their associated:
• 6,033 Decisions on Institution;
• 1,912 Final Written Decisions; and
• Thousands of Interlocutory Orders
• The underlying result changed after panel expansion in only two lines of cases,
both addressing the same legal issue (same-party joinder):• Target Corp. v. Destination Maternity Corp., Case IPR2014-00508, -00509;
• Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Case IPR2015-00762.
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Recent Precedential and Informative Decisions
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Precedential
• Facebook, Inc. v. Skky, LLC • Case CBM2016-00091, Paper 12 (Sept. 28, 2017)• AIA § 18, pre-institution statutory disclaimer
• Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha• Case IPR2016-01357 et al., Paper 19 (Sept. 6, 2017)• AIA § 314(a), discretionary factors re: multiple petitions
• Ex parte McAward• Appeal 2015-006416 (Aug. 25, 2017) • § 112(2), indefiniteness during prosecution
• Athena Automation Ltd. v. Husky Injection Molding Sys. Ltd.• Case IPR2013-00290, Paper 18 (Oct. 25, 2013)• AIA § 311(a), assignor estoppel
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Informative
•Luv N’ Care, Ltd. v. McGinley•Case IPR2017-01216, Paper 13 (Sept. 18, 2017)•AIA § 315(b), insufficient funds at filing
•Amneal Pharmaceuticals, LLC. v. Endo Pharmaceuticals Inc.•Case IPR2014-00360, Paper 15 (June 27, 2014)•AIA § 315(b), district court motion to amend complaint
•Cultec, Inc. v. Stormtech LLC•Case IPR2017-00777, Paper 7 (Aug. 22, 2017)•AIA § 325(d), deny institution – examination
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Informative (continued)
•Hospira, Inc. v. Genentech, Inc.•Case IPR2017-00739, Paper 16 (July 27, 2017)•AIA § 325(d), deny institution – examination
•Unified Patents Inc. v. Berman•Case IPR2016-01571, Paper 10 (Dec. 14, 2016)•AIA § 325(d), deny institution – examination
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Accessible via the public PTAB Website at the following address:https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
board/precedential-informative-decisions
Updated Precedential and Informative Decision Website
SOP 9 on Remands
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• Goal of issuing remand decisions within 6 month
• Meeting with the Chief, Deputy Chief, or their delegates
• Establishes default procedures for trial and appeal remand
scenarios
New SOP 9
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Default Trial Procedures for Common Remand Scenarios
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Remand Scenario Additional Briefing? Additional
Evidence?
Oral
Argument?
1 Erroneous claim
interpretation
Yes, unless the claim
interpretation to be applied on
remand was proposed by one of
the parties and the effect has been
fully briefed
No, unless evidence of record is
insufficient to afford due process
No
2 Failure to consider the
evidence
Yes, unless the evidence was fully
briefed on the record
No No
3 Inadequate explanation by
the Board
No, unless the briefing on the
issues is inadequate for the Board
to have made a decision in the first
instance
No No
4 Erroneous application of law Yes, unless the law was fully
briefed on the record but not
reflected in Board decision
No No
5 Law of due process/denial of
APA rights
Yes Yes, for parties whose rights have
been violated, unless additional
briefing on evidence of record is
sufficient to afford due process
Yes, if necessary to afford
due process
6 Improper consideration of
the arguments
Yes, unless argument is fully
briefed in the record
No No
Default Appeal Procedures for Common Remand Scenarios
