Patent Public Advisory Committee · 11/19/2015 · Quarterly Meeting Patent Trial and Appeal Board...
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Transcript of Patent Public Advisory Committee · 11/19/2015 · Quarterly Meeting Patent Trial and Appeal Board...
Patent Public Advisory Committee
Quarterly Meeting
Patent Trial and Appeal Board Update
Nathan K. Kelley
Acting Chief Administrative Patent Judge, PTAB
Scott R. Boalick
Acting Deputy Chief Administrative Patent Judge, PTAB
November 19, 2015
Appeals Statistics
12,489
17,754
23,963
26,484
25,308 25,658
21,451 21,308
0
5,000
10,000
15,000
20,000
25,000
30,000
FY 2009 FY 2010 FY 2011 FY 2012 FY 2013 FY 2014 FY 2015 FY 2016
(11/03/15)
PTAB Inventory – Pending Ex Parte Appeals (excluding appeals from reexamination proceedings)
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PTAB Inventory – Pending Ex Parte Appeals
(excluding appeals from reexamination proceedings)
22,976 22,915
22,761 22,723 22,722 22,629
22,493
22,286 22,267
22,149
21,744
21,451 21,465 21,534
21,543
21,292 21,308
20,000
20,500
21,000
21,500
22,000
22,500
23,000
23,500
24,000
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AIA Statistics
Narrative: This pie chart shows the total number of cumulative AIA
petitions filed to date broken out by trial type (i.e., IPR,
CBM, and PGR).
*Data current as of: 10/31/2015
3684
90% 393
10%
13
0%
4090 Total AIA Petitions*
Total IPR Petitions Total CBM Petitions Total PGR Petitions
Cumulative from 09/16/2012
Narrative: These line graphs display the number of IPR, CBM, and PGR petitions filed each month and the
total number of all petitions filed each month from the effective date of the AIA trial provisions.
*Data current as of: 10/31/2015
38 27 45 65 69 62 73 77 89 101
60 54 76
143 131
184
116 159
120
179
102
177
100
164 131 139 145
182
117
165 136
106
0
100
200
300
Number of IPR Petitions Filed by Month*
2 4 7 8 3
9 8
19 18 11 9 12
22
14 19
6 10
16 21
16 13 15 14 16 13 7
26
9 6 9 5
11
05
101520253035404550
Number of CBM Petitions Filed by Month*
0 0 0 0 0 0 0 0 0 0 0 0 0 0 0 0 0
1 1
0
1
0
1
0
1
0
3
2
0
3
0 0
0
1
2
3
Number of PGR Petitions Filed by Month*
40 31 52
73 72 71 81 96 107 112
69 66 98
157 150
190
126
176 142
195
116
192
115
180
145 146 174
193
123
177
141 117
0
40
80
120
160
200
240Number of TOTAL Petitions Filed by Month*
*Data current as of: 10/31/2015
Narrative: This bar graph depicts the
number of AIA petitions filed
each fiscal year, with each bar
showing the filings for that fiscal
year by trial type (i.e., IPR, CBM,
and PGR).
FY 2013 FY 2014 FY 2015 FY 2016*
0 2 11 0 48
177 149
11
514
1310
1737
106
Number of AIA Petitions Filed by Fiscal Year by Type
PGR CBM IPR
Narrative: This pie chart shows the total number of AIA petitions
filed in the current fiscal year to date as well as the
number and percentage of these petitions broken down
by technology.
*Data current as of: 10/31/2015
57
49%
31
26%
9
8%
20
17%
0
0%
117 Total AIA Petitions in FY 16*
(Technology Breakdown)
Electrical/Computer - TCs 2100, 2400, 2600, 2800
Mechanical/Business Method - TCs 3600, 3700
Chemical - TC 1700
Bio/Pharma - TC 1600
Design - TC 2900
Narrative: These three sets of bar graphs show the number of
patent owner preliminary responses filed and
waived/not filed each fiscal year in IPR, CBM, and PGR
proceedings.
*Data current as of: 10/31/2015
FY 2014 FY 2015 FY 2016*
829 1,326
120
202
223
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IPR - Number of Patent Owner Preliminary Responses by Fiscal Year
Filed Waived/Not Filed
FY 2014 FY 2015 FY 2016*
116 154
8
18 12
0
CBM - Number of Patent Owner Preliminary Responses by Fiscal Year
Filed Waived/Not Filed
FY 2014 FY 2015 FY 2016*
0
6
2 0
1
0
PGR - Number of Patent Owner Preliminary Responses by Fiscal Year
Filed Waived/Not Filed
Narrative: These three sets of bar graphs show the number of decisions
on institution by fiscal year broken out by trials instituted
(including joinders) and trials denied in IPR, CBM, and PGR
proceedings. A trial that is instituted in part is counted as an
institution in these bar graphs.
*Data current as of: 10/31/2015
FY 2014 FY 2015 FY 2016*
557 801
81
15
116
9 193 426
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IPR - Number of Decisions On Institution Per Fiscal Year by Outcome
Instituted Joinders DenialsFY 2014 FY 2015 FY 2016*
91 91
3
1 10
0 30 43 3
CBM - Number of Decisions On Institution Per Fiscal Year by Outcome
Instituted Joinders Denials
FY 2014 FY 2015 FY 2016*
0
3
0 0 0 0
PGR - Number of Decisions On Institution Per Fiscal Year by Outcome
Instituted Joinders Denials
Narrative: These three sets of bar graphs show settlements in AIA
trials broken down by settlements that occurred prior to
institution and settlements that occurred after institution
in IPR, CBM, and PGR proceedings.
*Data current as of: 10/31/2015
FY 2014 FY 2015 FY 2016*
106
275
33
104
189
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IPR - Settlements
Settled Before Institution Settled After Institution
FY 2014 FY 2015 FY 2016*
21
14
0
6
32
0
CBM - Settlements
Settled Before Institution Settled After Institution
FY2014 FY 2015 FY 2016*
0
2
0 0 0 0
PGR - Settlements
Settled Before Institution Settled After Institution
Narrative: This graph shows a stepping stone
visual depicting the outcomes for
all IPR petitions filed to-date that
have reached a final disposition.
*Data current as of: 10/31/2015 453 Trials
All Instituted Claims
Unpatentable (21%
of Total Petitions,
42% of Trials
Instituted, 72% of
Final Written
Decisions)
91 Trials Some Instituted
Claims Unpatentable
(4% of Total
Petitions, 9% of Trials
Instituted, 14% of
Final Written
Decisions)
86 Trials No Instituted Claims
Unpatentable (4% of
Total Petitions, 8% of
Trials Instituted, 14%
of Final Written
Decisions)
630 Trials
Completed Reached Final
Written Decisions
2203 Total
Petitions
1066 Trials
Instituted
1137 Trials Not
Instituted Petition Denied/
Settled/
Dismissed
436 Terminated
During Trial Settled/Dismissed/
Request for
Adverse Judgment
Disposition of IPR Petitions Completed to Date*
Narrative: This graph shows a stepping stone
visual depicting the outcomes for
all CBM petitions filed to-date that
have reached a final disposition.
*Data current as of: 10/31/2015 65 Trials
All Instituted Claims
Unpatentable (26%
of Total Petitions,
51% of Trials
Instituted, 82% of
Final Written
Decisions)
11 Trials Some Instituted
Claims Unpatentable
(4% of Total
Petitions, 9% of Trials
Instituted, 14% of
Final Written
Decisions)
3 Trials No Instituted Claims
Unpatentable (1% of
Total Petitions, 2% of
Trials Instituted, 4%
of Final Written
Decisions)
79 Trials
Completed Reached Final
Written Decisions
247 Total
Petitions
128 Trials
Instituted
119 Trials Not
Instituted Petition Denied/
Settled/
Dismissed
49 Terminated
During Trial Settled/Dismissed/
Request for
Adverse Judgment
Disposition of CBM Petitions Completed to Date*
Narrative: This graph shows a stepping stone
visual depicting the outcomes for
all PGR petitions filed to-date that
have reached a final disposition.
*Data current as of: 10/31/2015 0 Trials
All Instituted Claims
Unpatentable (0% of
Total Petitions, 0% of
Trials Instituted, 0%
of Final Written
Decisions)
0 Trials Some Instituted
Claims Unpatentable
(0% of Total
Petitions, 0% of Trials
Instituted, 0% of Final
Written Decisions)
0 Trials No Instituted Claims
Unpatentable (0% of
Total Petitions, 0% of
Trials Instituted, 0%
of Final Written
Decisions)
0 Trials
Completed Reached Final
Written Decisions
2 Total
Petitions
0 Trials
Instituted
2 Trials Not
Instituted Petition Denied/
Settled/
Dismissed
0 Terminated
During Trial Settled/Dismissed/R
equest for Adverse
Judgment
Disposition of PGR Petitions Completed to Date*
Narrative: This visual contains four cylinders. The
first cylinder shows the total number of
claims available to be challenged in the
IPR petitions filed. The second cylinder
shows the number of claims actually
challenged and not challenged. The
third cylinder shows the number of
claims on which trial was instituted and
not instituted. The fourth cylinder
shows the total number claims found
unpatentable in a final written decision,
the number of claims canceled or
disclaimed by patent owner, the
number of claims remaining patentable
(not subject to a final written decision),
and the number of claims found
patentable by the PTAB.
Note: “Completed” petitions include
terminations (before or after a decision
on institution) due to settlement,
request for adverse judgment, or
dismissal; final written decisions; and
decisions denying institution.
*Data current as of: 10/31/2015
69003
33266
14332 6774
1330 Claims Found Patentable by PTAB in Final WrittenDecision
4620 Claims Remaining Patentable (Not Subject to FinalWritten Decision)
1608 Claims Cancelled or Disclaimed by Patent Owner
18934 Claims Challenged but Not Instituted
35737 Claims Not Challenged
IPR Petitions Terminated to Date*
Claims Challenged
Claims Instituted
Claims Found Unpatentable by PTAB in Final Written
Total Number of Claims Available to be Challenged within 2203
Narrative: This visual contains four cylinders. The
first cylinder shows the total number of
claims available to be challenged in the
CBM petitions filed. The second
cylinder shows the number of claims
actually challenged and not challenged.
The third cylinder shows the number of
claims on which trial was instituted and
not instituted. The fourth cylinder
shows the total number claims found
unpatentable in a final written decision,
the number of claims canceled or
disclaimed by patent owner, the
number of claims remaining patentable
(not subject to a final written decision),
and the number of claims found
patentable by the PTAB.
Note: “Completed” petitions include
terminations (before or after a decision
on institution) due to settlement,
request for adverse judgment, or
dismissal; final written decisions; and
decisions denying institution.
*Data current as of: 10/31/2015
8820
5054
2384 1369
60 Claims Found Patentable by PTAB in Final WrittenDecision
834 Claims Remaining Patentable (Not Subject to FinalWritten Decision)
121 Claims Cancelled or Disclaimed by Patent Owner
2670 Claims Challenged but Not Instituted
3766 Claims Not Challenged
CBM Petitions Terminated to Date*
Claims Challenged
Claims Instituted
Claims Found Unpatentable by PTAB in Final Written
Total Number of Claims Available to be Challenged within 247
AIA Trial Rulemaking Update
AIA Rulemaking • In response to stakeholder requests, the Office moved forward with two rule packages:
1. A first final rule package that encompassed less difficult “quick-fixes” based upon both
stakeholder comments and internal PTAB suggestions, including more pages for briefing
for motions to amend and for petitioner’s reply brief; and
2. A second proposed rule package that published August 20, 2015.
• The second proposed rule package addresses the remaining issues raised in comments received
from the public, as well as providing more guidance concerning our growing experience with AIA
proceedings.
• The USPTO initially indicated that written comments must be received on or before October 19,
2015. In view of stakeholder requests for additional time to submit comments on the proposed
amendments to the rules of practice for trials, the USPTO extended the period for public
comment to November 18, 2015. The Office will issue a final rule, responding to these
comments, and also issue a revised Office Patent Trial Practice Guide reflecting guidance
concerning our current practice in handling AIA proceedings.
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AIA Rulemaking In the second proposed rule package, the Office:
• Proposes to allow patent owners to include, with their opposition to a petition to institute a proceeding, new testimonial evidence such as expert declaration, responding to commentary raising concerns that patent owners are disadvantaged by current rules letting petitioners’ evidence go unanswered before a trial is instituted
• Proposes a new requirement on practitioners before the PTAB, akin to the Rule 11 requirements in federal courts, that would give the USPTO a more robust means with which to police misconduct
• Proposes to clarify that the PTAB will use the claim construction standard used by district courts for patents that will expire during proceedings and therefore cannot be amended, while confirming the use of broadest reasonable interpretation (BRI) for all other cases
• Notes the PTAB’s development of motions-to-amend practice through its own body of decisions, including a recent decision that clarified what prior art a patent owner must address to meet its burden of proof
• Proposes using a word count for major briefing so that parties are free to present arguments and evidence to the Office in a way that a party deems is most effective, including presenting arguments in claim charts
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Pilot Programs
Expedited Patent Appeal Pilot (EPAP)
• Ex parte appeal accorded special status when another is withdrawn
• Pilot effective June 19, 2015 for up to a year
• Timing Goal - 2 months to decide petition & 4 months from the date of petition grant to decide appeal
• Data through November 16, 2015: 22 petitions filed (20 granted and 2 denied); Average time to decide petition approximately 2 days
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Small Entity Pilot Program
• Published 09/16/2015
• Provides opportunity for small entities to secure expedited review
• Small entities with a single pending appeal
• Agree to review based on one claim
• No rejections under §112
• Timing Goal - 2 months to decide petition & 4 months from the
date of petition grant to decide appeal
• Data through November 16, 2015: 12 petitions filed (8 granted and
4 denied); Average time to decide petition approximately 2 days
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Proposed Pilot Program Exploring an Alternative Approach to Institution Decisions
published August 25, 2015
• Goal is to explore efficiency of modifying the approach to institution
• Petition would be assigned to a single judge
• If instituted, two additional judges would be added
• The USPTO initially indicated that written comments must be received on or
before October 26, 2015. In view of stakeholder requests for additional time
to submit comments on the proposed pilot program, the USPTO extended
the period for public comment to November 18, 2015
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Proposals to Congress to
Amend AIA Trial Proceedings
September 2015 Study and Report on the
Implementation of the America Invents Act
• Two proposals to Congress to amend AIA
Trial proceedings:
– Clarify joinder provision for IPR proceedings to state that same party joinder is permitted
– Clarify that timely correction of real party in interest identification is permitted where error arose without deceptive intent
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Questions and Comments
Nathan K. Kelley Acting Chief Administrative Patent Judge, PTAB
Scott R. Boalick Acting Deputy Chief Administrative Patent Judge, PTAB
(571) 272-9797
