PTAB Selective on Trial Grounds
Having now completed the multi-city tour for the
Practicing Law Institute's USPTO Post Grant Patent Trials 2013 (on demand
I am still struck by the degree of doom and gloom expressed by the patent
monetization crowd. Throughout the program stops in Chicago, New York City and
earlier this week, San Francisco, many attendees expressed the concern
that the new post grant PTAB proceedings were "patent killers." Specifically,
the institution rate of the trial orders issued to date was
considered high (only two being denied). This, coupled
with the more favorable challenger standards of the PTAB, has more
than a few patentees quite worried.
While it is certainly true that the PTAB is a more
favorable venue for patent challengers (no presumption of patent validity, no
clear and convincing evidentiary requirements, etc), the trial orders issued to
date show an intent on behalf of the PTAB to simplify and focus the
dispute for trial. This simplification vastly reduces the workload of
patentees relative to the old inter partes patent reexamination system.
And with the addition of discovery before the PTAB, ultimate success for
patentees seems far more likely before the PTAB relative to the old,
never-ending, patent reexamination timelines.
Under the old reexamination model, patentees were
typically faced with 20+ rejections backed with declaration evidence. The declaration
evidence was taken at face value due to the inability to cross-examine the
declarant. In many cases, these reexamination proceeding were pending
(fully contested to the CAFC) for five years or more.
On the other hand in the PTAB Trial Orders to date,
redundant grounds are filtered out and trial is ordered on the strongest
grounds (as determined by the panel of judges). As to the
initial institution rate, this should not come as a
surprise. That is to say, given the one-sided nature of the preliminary
proceeding before institution (no declaration evidence permitted from the
patentee prior to Order), petitioner evidence will typically prevail over
attorney argument. The ultimate outcome of the trial could be quite different.
Below is an overview of the petition results to date.
"Denied/accepted" and "accepted/redundant" refer to instances
where a ground was treated differently (split) as to some claims. As you can
see below, the PTAB is denying grounds and finding grounds redundant in the
majority of filings.
View more from Patents Post-Grant.
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