Significant Jump in PTAB "Split Decisions"

03 June 2019 PTAB Trial Insights Blog
Authors: Michael R. Houston

The PTAB helpfully provides statistical data on the outcomes of AIA post-grant proceedings, including IPRs, CBMs, and PGRs.  Current and historical statistics are available here.

While the types of data reported and the report formatting have changed over the years, starting in April of 2017, the PTAB began reporting outcomes of Petitions that reached final written decisions, in terms of how many Petitions result in (1) all challenged claims being held unpatentable, (2) some but not all challenged claims being found unpatentable, and (3) no challenged claims being found unpatentable.  For example, in April 2017 the PTAB reported that of 1,554 petitions having been decided by Final Written Decisions since AIA proceedings began, 18% of those decisions found no challenged claims unpatentable, 17% of the decisions found some but not all of the challenged claims unpatentable, and 66% of the decisions found all challenged claims unpatentable, as seen from the chart below at the far right (reproduced from the PTAB report here):

  Status of Petitions

The April 2018 report shows similar outcomes: of the 2127 Petitions decided by Final Written Decision by that time, 19% found no challenged claims unpatentable, 16% found some challenged claims unpatentable, and 65% found all challenged claims unpatentable.  

The PTAB recently issued its April 2019 report, which facially appears to show similar numbers: of 2707 total Petitions decided by Final Written Decision, 19% found no challenged claims unpatentable, 18% found some challenged claims unpatentable, and 63% found all challenged claims unpatentable, as seen in the chart below (reproduced from the April 2019 PTAB report):

 Status of Petitions

However, a closer look at the April 2019 statistics in comparison with the cumulative data reported a year earlier shows an interesting trend.  Specifically, by comparing the data from the April 2018 and 2019 reports, one can deduce the outcome statistics from Final Written decisions issued in the twelve month period from May 2018 to April 2019.  

During this twelve-month period, 580 Petitions were decided by Final Written Decision.  Of those, 19% resulted in no challenged claims being found unpatentable – a remarkably consistent number from 2017 to 2019.  Yet, a significantly higher percentage of Final Written Decisions (25%) found some but not all challenged claims unpatentable, while only 56% of decisions found all challenged claims unpatentable, down from the life-to-date average of 65% as of April 2018.  

Thus, the past twelve month period has seen a pronounced uptick in the number of “split” decisions from the PTAB (16% → 25%), where some challenged claims are found unpatentable, while some are not.  This uptick in split decisions directly corresponds with a lower percentage of decisions finding all challenged claims unpatentable (65% → 56%).

Over the past 12 months, the PTAB is issuing fewer “winner take all” decisions, and is increasingly likely to find partially for both Petitioners and Patent Owners.  Potential reasons for this trend could be a conscious effort by the PTAB and Patent Owners to take a more comprehensive look at all challenged claims (as opposed allowing the challenge to stand or fall with a single claim), or the result of patent applicants drafting better claim sets with stronger dependent claims since the enactment of the AIA.

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