Recent PTAB Studies: Expanded Panels and Orange Book-Listed Patents

28 March 2018 PTAB Trial Insights Blog

In connection with a recent “Chat with the Chief” webinar, the Patent Trials and Appeal Board (“PTAB”) released two studies – a study of expanded panels and a study of proceedings challenging orange book-listed patents.[1]  Practitioners may find value in reviewing these studies and the conclusions drawn by the PTAB. 

As to expanded panels, the PTAB study sought to answer four questions: (1) How common are expanded panels?, (2) When were panels expanded?, (3) Why were panels expanded?, and (4) What was the result of the expansion if on rehearing?  In studying these questions, the PTAB confirmed that expanded panels are rare, and that expanded panel decisions are usually issued as original decisions and not decisions on rehearing.  As for why panels were expanded, the PTAB notes that “[p]anels were expanded for guidance and consistency” – i.e. “to provide forward-looking guidance on reoccurring issues” and/or “to treat similarly situated parties the same.”  Lastly, the PTAB concluded that the “underlying result remained the same after panel expansion on rehearing,” save for two examples relating to same-party joinder issues.  In answering these questions, the PTAB offers some statistics and categorizations that Practitioners may find informative, particularly when considering requesting an expanded panel or when facing an expanded panel.

As for the Orange Book-Listed Patents Study, it offers a number of interesting statistics starting from the beginning of AIA trials and from the last fiscal year.  Notably, the PTAB highlighted the following:

  • 83% of all petitions challenging Orange Book-listed patents result in patent being unchanged by PTAB
  • The cumulative institution rate for Orange Book petitions (66%) is essentially the same as the cumulative overall institution rate (68%)
  • Just over half of all final written decisions for petitions challenging Orange Book-listed patents find all claims patentable
  • 80% of all challenged Orange Book-listed patents have 1 or 2 petitions, compared to 87% of all challenged patents
  • 85% of all challenged Orange Book-listed patents have 1 or 2 petitioners, compared to 94% of all challenged patents

Statistics of particular note include filing trends for petitions challenging orange book-listed patents, which are shown by the following pie charts noting an overall percentage of 5% since the beginning of AIA trials and 4% during fiscal year 2017:

 

 

 

The study also presents the following statistics relating to the outcomes of challenges to orange book-listed patents, including statistics relating to final written decisions and overall outcomes since the beginning of AIA trials:

 

In sum, each of these studies provide objective information directly from the PTAB that Practitioners should consider in connection with expanded panels and challenges to orange book-listed patents.  Additional observations regarding challenges to pharmaceutical patents can be found in an earlier study published on this blog.  Given the emphasis on consistency by the PTAB, and the existing practice of publishing trial related statistics and other studies, it is expected the PTAB will continue publishing studies such as these in the future.  Webinars and other study related information can be found on the “What’s New” page.

[1] Additional upcoming PTAB webinars include: Thursday, April 5, noon to 1 pm: Boardside Chat webinar on AIA Motion Practice; Thursday, June 7, noon to 1 pm: Boardside Chat webinar on Motions to Exclude and Motions to Strike; and Thursday, June 28, 9 to 5 pm: Judicial Conference.

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.

Related Services

Insights