The “Doubtful Validity” Type Of Case

Death squads.”  “Hanging judge[s].” A “reign of terror.”  “Patent killing fields.”

Even if we set aside the questionable taste shown in analogizing the review of patents to genocide, there’s some extremely overwrought rhetoric out there being used to describe the inter partes review (IPR) process.  The rhetoric is based on a perception that the Patent Trial and Appeal Board (PTAB) is unfairly invalidating patents.  It leads to claims that PTAB judges are unfairly biased against patents.

That perception is wrong.  

Those claims are wrong.

May 2017

Finnegan’s AIA Blog compiles monthly statistics on IPR outcomes at PTAB.  They recently posted their May 2017 summary.  Here’s the key graph:

May 2017 AIA Stats

That’s right.  Even after institution (i.e., after the judges decided there was “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition”), more than half of the challenged claims were upheld.  The judges made an initial assessment that the claims were reasonably likely to prove invalid.  And then, upon further review, they changed their minds about half the time.

This isn’t the first time we’ve seen these kinds of numbers, either.

March 2017

Let’s head back to March.  AIA Blog again compiled the statistics.  And again, we see similar outcomes (note that the color scheme is different between the two graphs.)

March 2017 AIA Stats

Around half the time, they changed their minds.

And let’s remember that it’s only approximately ⅔ of petitions that even get instituted—in other words, ⅓ of patents survive even before we get to this graph.

Overall

Now, these months were selected because they had particularly high rates of PTAB judges changing their mind.  In other months, the numbers are different, and generally more claims are cancelled.  But this fact suggests that, contrary to the rhetoric, PTAB judges are perfectly happy to find a patent valid—if it’s actually novel and non-obvious.  It’s only when a patent is invalid that it gets cancelled.

In other words: if the PTAB is invalidating a lot of patents, it seems to be because there are a lot of invalid patents being granted and challenged.

Plus Ça Change

I’ll end on a historical note.  This isn’t the first time that the point has been made that there’s a lot of patents of doubtful validity out there.  Here’s a gem from the debate over the 1952 Patent Act:
1952 Patent Act Testimony

The speaker here, quoted saying: “[m]ost patent cases that reach the Supreme Court are of the doubtful validity type” and questioning whether they ought to have made it to the Supreme Court is one Mr. McCabe, holder of 125 patents of his own.

I suspect that if Mr. McCabe were around today, he’d be filing a few IPRs.

Joshua Landau

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

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