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ARTICLE · 08 FEBRUARY 2016

Obviousness In Inter Partes Review Proceedings

Jones Day
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Apparently the Patent Trial and Appeal Board loves obviousness. In 2015, nearly two-thirds of claims instituted for inter partes review were based on obviousness grounds, as illustrated in Chart 1.

United StatesIntellectual Property
David Cochran
David Cochran
Thomas Ritchie
Thomas Ritchie
Yury Kalish Ph.D.
Yury Kalish Ph.D.
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Apparently the Patent Trial and Appeal Board ("PTAB", "the Board") loves obviousness. In 2015, nearly two-thirds of claims instituted for inter partes review ("IPR") were based on obviousness grounds,1 as illustrated in Chart 1.

Chart 1

While an IPR petition may be based on either anticipation or obviousness, 35 U.S.C. § 311(b), petitioners pursue obviousness at a much higher rate. And, the institution rate for claims based on grounds of anticipation (46 percent) is lower compared to obviousness (54 percent), as shown in Chart 2. This is unlike district court patent litigation, where a finding of obviousness occurs infrequently.

Chart 2

Although the principles of obviousness are the same as in district court litigation, it is instructive to examine their application by the PTAB given the volume of cases decided in the past three years since inception of IPR under the America Invents Act. Two critical lessons emerge from this analysis:

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