Prior to the passage of the America Invents Act (AIA) many district courts were less than impressed with the lengthy pendencies of patent reexamination proceedings at the USPTO. For this reason, motions to stay a litigation pending patent reexamination were often denied based upon the perceived prejudice of a 5-6 year delay (typical of reexaminations through appeal). The patent challenge proceedings of the AIA (IPR, CBM and PGR) were specifically designed, at least in part, to remedy the pendency issue.
The new patent challenge proceedings of the AIA are conducted before the USPTO’s Patent Trial & Appeal Board (PTAB) and must conclude, by statute, within 12 months of trial order. Many districts across the country have recognized the improved speed of the PTAB. Not surprisingly, the success rate for staying cases pending USPTO review has significantly improved.
(Click to Enlarge)
The chart above is accurate through June 16, 2014. As can be seen, stays are granted, granted-in-part, or granted with stipulations in 75% of the motions to date. (The stipulations are largely co-defendants agreeing to be bound by the estoppel of a failed IPR effort). Also, some of the denials were made without prejudice (i.e., based on the fact that an IPR was not yet instituted). So, given that some denials may change status in the weeks ahead, 75% is on the conservative side.
Given this outcome, and petitioner friendly IPR results to date, it is not surprising that the PTAB is seeing record filing rates in recent months.