November 22, 2022
By Daniel F. Klodowski; Umber Aggarwal; Matthew R. Ritter
Edited by Aaron L. Parker; Elliot C. Cook
After a long hiatus, Finnegan is pleased to resume publishing statistics on PTAB Final Written Decision outcomes in addition to statistics on PTAB appeals to the Court of Appeals for the Federal Circuit. This post provides cumulative statistics through the end of September, and in the future, we will resume publishing monthly statistics for PTAB decisions.
Through September, the Patent Trial and Appeal Board issued 4,274 Final Written Decisions across IPR, CBM, and PGR proceedings, including decisions following remands from the Federal Circuit. In these decisions, no instituted or substitute claims survived in 2,704 (63.27%) decisions, all instituted claims survived in 785 (18.37%) decisions, and a mixed outcome occurred in 785 (18.37%) 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.
On a per-claim basis, the Board cancelled 45,921 (72.97%) instituted claims, while 15,589 (24.77%) instituted claims survived all patentability challenges. Patent owners conceded 1,422 (2.26%) instituted claims through motions to amend or disclaimer in cases that otherwise reached a Final Written Decision. This overall disposition rate has remained steady at the PTAB over the past several years.
IPR proceedings represent the vast majority of PTAB Final Written Decisions. Patent Owners have fared slightly better in IPR proceedings than in CBM and PGR proceedings (collectively), with 41,127 (71.49%) instituted claims being cancelled, 15,158 (26.35%) instituted claims surviving, and 1,242 (2.16%) instituted claims being conceded in cases reaching a final decision.
On a per-case basis, 2,467 (61.81%) IPR decisions resulted in no instituted or substitute claims surviving, 758 (18.99%) decisions resulted in a mixed outcome in which at least one instituted or substitute claim survived, and 766 (19.19%) decisions resulted in all instituted claims surviving.
The Board has substantively considered the patentability of 3,348 substitute claims in Patent Owners’ motions to amend. In ruling on those motions, the Board has granted 565 (16.88%) substitute claims and denied (i.e., held unpatentable) 2,783 (83.12%) substitute claims.
While the availability of CBM reviews ended in late 2020, the number of PGR proceedings has gradually increased over time. In the 80 PGR decisions issued thus far, no claims survived in 51 (63.75%) of decisions, a mixed outcome occurred in 13 (16.25%) decisions, and all instituted claims survived in 16 (20%) decisions.
On a per-claim basis, 1,024 (75.18%) instituted claims were held unpatentable by the PTAB in PGRs, 291 (21.37%) instituted claims survived PGR review, and 47 (3.45%) instituted claims were conceded by Patent Owners in cases that otherwise reached a final decision.
The overall cumulative instituted claim survival rate in IPRs, CBMs, and PGRs, broken down by technology center, is as follows:
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