Stays Pending IPR Granted in Most Cases

Prior to the passage of the America Invents Act (AIA) many district courts were less than impressed with the lengthy pendencies of USPTO patent reexamination proceedings. 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.



The first chart above, accurate through December 9, 2014, show the overall outcomes for Motions to Stay pending IPR. The second chart is specific to the District of Delaware, also accurate as of 12/9/14. As can be seen, stays are granted, granted-in-part, or granted with stipulations in roughly 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 initial denials were later granted once the PTAB instituted trial (i.e., the motion was initially considered after filing, but before institution)

Given this outcome, and petitioner friendly IPR results to date, it is not surprising that the PTAB continues to experience record filing rates.