December 8, 2021

Volume XI, Number 342

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December 07, 2021

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December 06, 2021

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IPR, CBM, and PGR Statistics for Final Written Decisions Issued in August, September, and October 2021

In August, the Patent Trial and Appeal Board issued 37 IPR, CBM, and PGR Final Written Decisions including decisions following remands from the Federal Circuit, cancelling 166 (44.39%) instituted claims while upholding the patentability of 74 (19.79%) instituted claims.  Patent owners conceded 134 (35.83%) instituted claims through motions to amend or disclaimer in cases reaching a final decision.  While this is an unusually high number of claims conceded as unpatentable, the concessions occurred in a small number of total cases in which the patent owners moved to amend a large number of instituted claims.  For comparison, the cumulative average rate of instituted claims cancelled in IPR, CBM, and PGR Final Written Decisions is about 73%.

On a per-case basis, no instituted or substitute claims survived in 20 (54.05%) decisions, all instituted claims survived in 10 (27.03%) decisions, and a mixed outcome occurred in 7 (18.92%) decisions.  A mixed outcome occurs where at least one instituted or substitute claim remains patentable, and at least one is cancelled, in a Final Written Decision. 

In September, the PTAB issued 49 IPR, CBM, and PGR Final Written Decisions, cancelling 408 (63.35%) instituted claims while upholding the patentability of 220 (34.16%) instituted claims.  Patent owners conceded 16 (2.48%) claims through motions to amend or disclaimer in cases reaching a final decision. 

On a per-case basis, no instituted or substitute claims survived in 27 (55.10%) decisions, all instituted claims survived in 9 (18.37%) decisions, and a mixed outcome occurred in 13 (26.53%) decisions. 

In October, a relatively unfavorable month for patent owners, the PTAB issued 31 IPR, CBM, and PGR Final Written Decisions, cancelling 334 (88.83%) instituted claims while maintaining the patentability of 42 (11.17%) instituted claims.  Patent owners did not concede any claims through motions to amend or disclaimer in cases reaching a final decision. 

On a per-case basis, no instituted or substitute claims survived in 20 (64.52%) decisions, all instituted claims survived in 2 (6.45%) decisions, and a mixed outcome occurred in 9 (29.03%) decisions. 

The overall cumulative instituted claim survival rate in IPRs, CBMs, and PGRs, broken down by technology center, is as follows:

More detailed cumulative statistics on the Board’s IPR, CBM, and PGR decisions, updated through October 31, 2021, are available here on the At the PTAB Blog. 

Statistics regarding the outcome of appeals to the Federal Circuit are available here.

Numbers of final written decisions by technology center and instituted claim survival rates by technology center are available here

© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 328
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About this Author

Daniel F. Klodowski Intellectual Property Lawyer Finnegan Washington DC
Associate

Daniel Klodowski’s practice focuses on post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), litigating patents in district court and at the International Trade Commission (ITC), and prosecuting patent applications in several mechanical and electrical technologies. 

Daniel has a breadth of experience in intellectual property law, with a particular focus on post-grant proceedings before the PTAB. Having appeared in dozens of PTAB proceedings, Daniel has both drafted successful...

202-408-4216
Michael R. Galgano Patent Litigation Attorney Finnegan, Henderson, Farabow, Garrett & Dunner Washington, DC
Associate

Michael Galgano focuses his practice on patent litigation and post-grant proceedings, primarily in the biotechnological and pharmaceutical areas. He concentrates on Hatch-Waxman litigation related to Abbreviated New Drug Applications (ANDA). 

Mike is involved in all phases of litigation, including pre-litigation analysis, discovery, and claim construction. His experience includes drafting pleadings, coordinating discovery, preparing expert reports, and handling day-to-day litigation activities. Mike also focuses on inter partes review (IPR) proceedings before the U.S. Patent Trial...

202-408-4153
Zachery D. Olah Patent Litigation Attorney Finnegan, Henderson, Farabow, Garrett & Dunner Washington, DC
Associate

Zachery Olah focuses on all aspects of patent litigation and prosecution in a variety of technologies, including mechanical systems, medical devices, biotechnology, aerospace and aviation systems, materials science, and computer security.

While in law school, Zachery worked at Finnegan as a summer associate and law clerk, assisting in all stages of patent prosecution and litigation. He is particularly experienced in patent application drafting, responding to office actions, litigation strategy, brief writing, and drafting motions. He has assisted in client interviews and patent...

202-408-4390
Aaron L. Parker Patent & Trade Secret Litigation Attorney Finnegan, Henderson, Farabow, Garrett & Dunner Washington, DC
Partner

Aaron Parker, leader of the firm’s mechanical practice group, focuses his practice on patent and trade secret litigation before U.S. district courts, client counseling on global patent litigation strategies, and patent and trade secret portfolio analysis and management. Much of Aaron’s work relates to counseling clients in the sports, fitness, and outdoor industries on all aspects of intellectual property. 

Additional areas of Aaron’s practice include complex patent prosecution, reexaminations, post-grant proceedings, licensing, preparing opinions of counsel, due diligence, and...

202-408-4387
Elliot C. Cook Intellectual Property Attorney Finnegan, Henderson, Farabow, Garrett & Dunner Reston, VA
Partner

Elliot Cook maintains a diverse intellectual property practice, including patent litigation, post-grant patent challenges, strategic patent prosecution and portfolio development, and patent monetization.

Elliot devotes a significant amount of his practice to helping clients strategically develop patent portfolios that effectively block competitors and build corporate value. He works closely with clients to ensure that their patents align with and advance their business goals, thereby optimizing value and minimizing cost.

Based on his involvement in more than 25 patent...

571-203-2738
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