July 14, 2020

Issue Twenty-Eight: PTAB Trial Tracker

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB, district court, and Federal Circuit decisions relating to emerging post-grant issues. 

Statistics at the PTAB in Fiscal Year 2019

Vice Chief Judge Michael Tierney and Lead Judge William Saindon held a Boardside Chat to discuss new developments and statistics at the PTAB, including institution and unpatentability rates. The presentation also included discussion of the recently proposed rule changes and the Board’s PTAB Operation FAQs, released May 29, 2020, related to the practical day-to-day practice before the Board.

The statistics showed that of the 1641 proceedings that concluded in fiscal year 2019 (“FY19”), 51.2% of the petitions were instituted and 31% were denied.  Moreover, of the petitions that were instituted, 66% went on to a receive a final written decision.  Nearly 80% of the petitions that resulted in a final written decision had at least one claim found unpatentable.  Overall, 25% of all patent claims that were challenged were ultimately found unpatentable.  

The overall institution rate of petitions in FY19 was 63% — slightly higher than last year’s rate of 60%, but a significant decline from the early days after the enactment of the AIA, where the institution rate was nearly 90%.  Parties to AIA proceedings settled 15.8% of the petitions before institution and 14.8% after institution.


The overall number of petitions instituted has seen a relatively steady decrease year over year.  While patent owners may take some comfort in knowing fewer petitions are being instituted, if a petition is instituted, the overall likelihood is that a final written decision will find at least one claim unpatentable, with all claims surviving in only about 20% of petitions ending with a final written decision.

PTAB Applies Apple v. Fintiv Analysis in Instituting Two IPRs Despite Co-Pending Litigation

In Apple Inc. v. Seven Networks, LLC, the Board instituted two petitions challenging the same patent, even though the parties have a trial date scheduled before any final written decision would be due. See IPR2020-00156, Paper 10 (PTAB June 15, 2020); IPR2020-00157, Paper 10 (PTAB June 15, 2020). The Board followed the analysis in the recently-precedential Apple v. Fintiv (discussed in Issue 27) to weigh the impact of the district court proceedings.

The Board found that the upcoming trial (factor 2) only weighed moderately in favor of denial of institution. See Apple Inc. v. Seven Networks, LLC, IPR2020-00156, Paper 10 (PTAB June 15, 2020) at 7. While proceeding with a trial scheduled more than seven months before a final written decision is due may suggest inefficiencies, the Board looked at this factor “holistically.” Id. at 9.

The Board found factors 4 (overlap of issues) and 6 (other considerations/merits of the petition) “strongly” weighed in favor of institution. Id. at 22. The Board noted that sixteen of the twenty claims challenged in the petitions were not at issue in the District Court, and Petitioner did not rely on the “same prior art and arguments” with respect to four of the six grounds. Id. at 13, 17. The Board rejected arguments that the Petitioner was strategically “draw[ing] artificial, and forced, distinction” between the IPRs and the litigation, finding that Petitioner reasonably presented narrow arguments to be heard by the jury. Id. at 18.

The Board concluded that this IPR “does not involve an appreciable duplication of efforts with respect to the District Court Action.” Id. at 17. The Board also found that Apple presented a “strong showing of the merits” in both petitions that the claims were obvious. Id. at 20.

The Board found that the while the other factors were neutral and weighed slightly in favor of Seven Networks, factors 4 and 6 outweighed the other factors and declined to exercise its discretion to deny the Petition under § 314(a). See id. at 22.


While the Board may deny a petition in light of a parallel proceeding, an upcoming trial does not necessarily preclude institution. Petitioners and Patent Owners should consider including a discussion of the Apple v. Fintiv analysis in making their arguments to the Board.

The Board Will Not Issue Advisory Opinions in a Decision on Institution

In CallMiner Inc. v. Mattersight Corporation, IPR2020-00272, Paper 8 (PTAB June 18, 2020), the Board denied institution under § 314, declining to “review portions of the patent specification to determine if there is sufficient support” for the means-plus-function limitations in the claims. The Board stated that Petitioner did not provide sufficient information regarding its proposed claim construction positions and “in effect, seeks an advisory opinion from the Board as to whether the challenged claims are indefinite under 35 U.S.C. § 112 ¶ 2.” Id. at 13.


The Board has made it clear that it will not issue advisory opinions, and that the decision on institution is limited to making a threshold determination of likelihood of success on the statutory grounds that are available to Petitioner.

Petitioner’s Access to Prior POPR and/or Institution Decision Weighs in Favor of Denying Institution

In Intel Corporation v. Institute of Microelectronics, IPR2019-00834, Paper 14 (PTAB June 19, 2020), the Board denied a request for rehearing on a decision denying institution under § 314(a). Petitioner argued, inter alia, that the Board had erred in its analysis under the third General Plastic factor, i.e.,whether at the time of filing of a second petition the petitioner already received Patent Owner’s preliminary response or the Board’s decision on institution in the first petition. The Board explained that access alone to the earlier preliminary response was sufficient to satisfy this factor and weigh in favor of denying institution, explaining that “[r]egardless of the speed with which Petitioner moved after learning of [patent owner’s] arguments from the preliminary response in the first proceeding, responding to such arguments is an inadequate reason for delay, because it is precisely what General Plastic is designed to prevent.” Id. at 12.

Additionally, the Board rejected Petitioner’s argument that “discretionary denial of a second petition is always improper whenever a first petition remains pending.” Id. at 14. The Board explained that there was no authority for this position in either § 314(a) or § 325(d), as under § 314(a) institution is never compulsory and under § 325(d), discretion to “reject the petition” exists as long as “the same or substantially the same prior art or arguments previously were presented to the Office.” Id.


Petitioners should be aware that the third General Plastic factor will likely weigh in favor of denying institution as soon as the preliminary response is filed in the earlier proceeding.

Supreme Court Declines Review of PTAB-Related Decisions

See Celgene v. Peter; Collabo v. Sony Corp.; Enzo v. Becton, Dickinson and Company. In each case, the Federal Circuit found that the PTAB did not violate the Takings Clause of the Fifth Amendment by retroactively subjecting patents filed pre-AIA to IPR proceedings.

The Supreme Court also denied a petition for certiorari in Chrimar Systems Inc. v. ALE USA Inc., seeking review of the Federal Circuit’s decision that the PTAB’s invalidity determinations can override infringement judgments in district courts.

Precedential and Informative Decisions

The Precedential Opinion Panel (“POP”) designated a decision related to the filing requirements for settlement agreements as precedential. DTN, LLC v. Farms Technology, LLC, IPR2018-01412, IPR2018-01525, Paper 21 (PTAB June 14, 2019). In DTN, the parties filed a motion to terminate after having reached a settlement. Pursuant to 35 U.S.C. § 317(b), the parties also filed their settlement agreement. The Board, having reviewed the settlement agreement, requested that the parties also file two collateral agreements referenced in the settlement agreement. The parties filed the collateral agreements, but argued that the collateral agreements should be expunged as they did not fall within the requirements of 35 U.S.C. § 317(b).  The Board determined that any agreement, regardless of the parties, that is referenced in a settlement agreement between the parties, must be filed along with the settlement agreement. Further collateral agreements must be filed, even if they are not made in connection with the termination of the IPR proceedings.

The POP also designated the following as informative:

  • Sattler Tech Corp. v. Humancentric Ventures, LLC, PGR2019-00030, Paper 9 (July 26, 2019) (informative): Instituting PGR for a design patent after finding the Petitioner showed it was more likely than not that the claimed portions of the design were primarily functional, not ornamental.
  • Kokusai Electric Corp. v. ASM IP Holding B.V., IPR2018-01151, Paper 38 (Aug. 20, 2019) (informative): Terminating the proceeding due to settlement without deciding a motion to amend, explaining that Patent Owner may pursue the amendment in a reissue or reexamination proceeding.
  • Curt G. Joa, Inc. v. S.P.A., IPR2016-00906, Paper 61 (June 20, 2017) (informative): Providing guidance regarding the use of confidential information during a hearing.