Inter Partes Review (“IPR”) is a trial proceeding established by the America Invents Act that started in September 2012. Conducted before the Patent Trial and Appeals Board (“Board”), IPR allows an interested party to challenge claims in a patent for obviousness or lack of novelty, based on prior art patents or printed publications. Generally, IPR involves two steps: (a) filing a petition, which may (or may not) be followed by the patent owner’s response, and the Board rendering an “institution decision” within six months of petition; then (b) if the Board decides to institute IPR, it should in most cases enter its final determination within one year of institution. To institute an IPR (step “a” above), the Board must find that a reasonable likelihood exists that the petitioner would prevail with respect to at least one challenged claim.
Using IPR, petitioners have challenged thousands of claims contained in hundreds of issued patents. As discussed below, data existing on the USPTO website suggests a marked reduction over the last two calendar quarters in the number of petitions that have resulted in the institution of IPR. The data discussed in this post does not include covered business method review.
Of course, data suggesting a trend does not definitively establish a trend. Even looking at six quarters of data regarding institution decisions (see step “b” above), the sample size is still relatively small. Plus, certain assumptions have been made in developing the graphs contained here. The main assumption is that it did take six months – not less – for the Board to render its institution decisions. Using the six-month statutory period from petition to determination (step “a”), an approximation can be made that institution decisions rendered in, for example, July–September of one year, address petitions filed in January–March of the same year, i.e., six months before.
Flowing from this assumption, an apparent reduction is seen in the percentage of IPRs instituted over the last two quarters of 2014. The remainder of this post discusses the apparent reduction. The graph below simply tracks the number of IPR petitions filed since the beginning of the program in the fall of 2012. With increasing attention and focus placed on IPR, there is an upward trend in the number of petitions.
The second graph tracks the number of IPRs instituted by the Board during the last six quarters. (The number of IPRs instituted in the first six months of IPR was negligible because it requires up to six months to render an institution decision.)
This graph shows a steady incline at first, consistent with the increase in petitions filed. But during the period July-September 2014, there is a noticeable reduction in the number of IPRs instituted. This prompted us to consider how many petitions were filed in January-March 2013, the quarter six months before that data point. Although there was a slight drop in petitions filed for that earlier quarter, it was not proportional to the sharp drop seen in the above graph.
We then combined the two graphs, adjusting for the six-month period from petition filing to institution decision. The adjustment was made by sliding every data point on the bottom line, “IPRs Instituted,” two calendar quarters to the left. This provided the approximation that petitions filed during one quarter would have institution decisions rendered on them six months (two quarters) later.
When the graphs are viewed in this light, and using the assumption made above, the percentage-wise drop in IPRs instituted is evident for the petitions filed during January – March 2014 and April – June 2014. For example, with petitions filed in earlier periods, the percentage of IPRs instituted based on the above assumptions was consistently between about 79% – 81%. However, for petitions filed during January-March 2014, the percentage appears to drop to 32% (61 out of 190). The percentage appears to have remained 32% for April-June 2014 (146 out of 458).
There are possible explanations for these observations. Perhaps institution decisions take less than six months during some quarters, leaving less “inventory” in the quarters showing a lower percentage of IPRs Instituted. Or perhaps in the quarters with a lower percentage of IPRs instituted, the patent claims at issue were simply stronger. However, given the number of claims that have been challenged, this might seem like a statistical anomaly. Regardless of the explanation(s), the data indicates increasing importance on the quality of IPR petitions given that the Board has a finite capacity for how many trials it can reasonably conduct. It will be instructive to continue examining data quarter by quarter to see if there is any ongoing trend.