The United States Patent & Trademark Office published new analyses along with its most recent update of AIA Trial Statistics. The update includes data through end of March 2016 and shows “Percent of Petitions Instituted by Technology” (slide 7) and “Trial Outcomes for Instituted Claims by Technology” (slide 15).
The America Invents Acts (“AIA”) gives alleged infringers facing an infringement claim a choice—challenge validity in court or in an inter partes review (IPR). Like any choice, consequences have to be considered. The consequences of successfully prevailing are known—the claims are invalidated.
The amendments are in the April 1, 2016 Federal Register here. The amendments are effective May 2, 2016, and apply not only to new petitions, but to ongoing ones. Thus, for example, if the deadline for a preliminary response, or the new reply to a preliminary response falls on May 2 or later, it would behoove practitioners to start preparing those under the newly amended rules. Below are the highlights of the new rules:
The Patent Trial and Appeal Board’s (“PTAB”) rate of institution of trials under the America Invents Act (“AIA”) has been steadily declining since its inception. During the USPTO’s first fiscal year of AIA institutions, FY2013, the PTAB instituted trials at a remarkably high rate—86.2% of IPR and CBM petitions were instituted. For FY2014, the institution rate dropped dramatically, to 74.4%. Continuing this trend, the PTAB’s institution rate for FY2015, which ended at the end of September, was down to 65.6%. A quarter into FY2016, the statistics are nearly identical to those for FY2015.
On March 15, 2016, the Federal Circuit reversed and remanded the PTAB’s cancellation of claims 3 and 20 of Patent No. 6,948,021 directed to hot-swappable components in computer systems. See Dell Inc., v. Acceleron, LLC, No. 15-1513 and 15-1514; see also Dell Inc., v. Acceleron, LLC, IPR2013-00440 [PTAB, Dec. 22, 2014].
The Federal Circuit recently reversed the PTAB’s cancellation of a patent directed to point-to-point communications in a dynamically addressed network. Sipnet EU S.R.O. has challenged U.S. Patent No. 6,108,704 held by non-practicing entity Straight Path IP Group, Inc. in a petition for inter partes review. See IPR2013-00246. On October 9, 2014, the PTAB cancelled claims 1-7 and 32-42 of the ’704 patent.
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