PTAB Selective on Trial Grounds
Having now completed the multi-city tour for the Practicing Law Institute's USPTO Post Grant Patent Trials 2013 (on demand program here), I am still struck by the degree of doom and gloom expressed by the patent monetization crowd. Throughout the program stops in Chicago, New York City and earlier this week, San Francisco, many attendees expressed the concern that the new post grant PTAB proceedings were "patent killers." Specifically, the institution rate of the trial orders issued to date was considered high (only two being denied). This, coupled with the more favorable challenger standards of the PTAB, has more than a few patentees quite worried.
While it is certainly true that the PTAB is a more favorable venue for patent challengers (no presumption of patent validity, no clear and convincing evidentiary requirements, etc), the trial orders issued to date show an intent on behalf of the PTAB to simplify and focus the dispute for trial. This simplification vastly reduces the workload of patentees relative to the old inter partes patent reexamination system. And with the addition of discovery before the PTAB, ultimate success for patentees seems far more likely before the PTAB relative to the old, never-ending, patent reexamination timelines.
Under the old reexamination model, patentees were typically faced with 20+ rejections backed with declaration evidence. The declaration evidence was taken at face value due to the inability to cross-examine the declarant. In many cases, these reexamination proceeding were pending (fully contested to the CAFC) for five years or more.
On the other hand in the PTAB Trial Orders to date, redundant grounds are filtered out and trial is ordered on the strongest grounds (as determined by the panel of judges). As to the initial institution rate, this should not come as a surprise. That is to say, given the one-sided nature of the preliminary proceeding before institution (no declaration evidence permitted from the patentee prior to Order), petitioner evidence will typically prevail over attorney argument. The ultimate outcome of the trial could be quite different.
Below is an overview of the petition results to date. (Click to Enlarge)
denied/accepted and accepted/redundant refer to instances where a ground was treated differently (split) as to some claims. As you can see below, the PTAB is denying grounds and finding grounds redundant in the majority of filings.