Avoiding IPR Institution: Your Best Defense To An IPR Challenge

First in a series of posts by the Mintz IP team on avoiding institution

The United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) was once famously referred to by the former chief judge of the Federal Circuit, the honorable Randall Rader, as a patent death squad. While the PTAB has consistently pushed back on that characterization, the latest data set of published trial statistics show that patent owners best defense to an inter partes review or other post-grant challenge is still avoiding institution altogether.

Going by the numbers running through September 30, 2020, the PTAB has invalidated at least some issued claims in the vast majority of instituted proceedings that result in a final written decision. For example, the PTAB's Outcome of Concluded Proceedings chart shows that only 7% of post-grant proceedings have resulted in a determination that all issued claims are patentable. While this number goes up to just under 20%