After a big bounce in petitions at the Patent Trial and Appeal Board in 2020, inter partes reviews took a tumble last year.
A total of 1,355 petitions were filed at the PTAB between January 1 and December 31 2021, representing an 11% drop from the 1,538 challenges filed in 2020.
Only 33 more filings were made at the board last year than in 2019 – the lowest number since 2013, which was the first full year that followed the PTAB’s creation.
Managing IP analysed data taken from Clarivate to determine the top petitioners, patent owners and law firms at the PTAB in 2021.
Click here to see the 2020 statistics.
One of the reasons for this drop was the lack of covered business methods filed – this type of post-grant proceeding was discontinued at the PTAB in September 2020.
Another might have been the increase of discretionary denials at the board as a result of the Fintiv rule. The rule, which compels PTAB judges to discretionarily deny challenges if parallel district court proceedings are set to finish first, was introduced in May 2020.
Scott McKeown, partner at Ropes & Gray in Washington DC (who is one of the most prolific IPR filers at the board), says more companies chose to file ex-parte reexams last year instead of post-grant petitions to avoid being discretionary denied.
Other counsel, including lawyers at Unified Patents and Cisco, told Managing IP a similar story in September.
That shift probably contributed to the drop of IPR petitions this year, adds McKeown.
“If you look at the statistics, you’ll see ex-parte reexams have gone up by at least 100%,” he says. “It’s less a case of patent challenges dropping than as much as challenges moving to a different part of the USPTO.”
McKeown says now Fintiv is being cited less often to deny institutions, IPRs will probably pick up again next year.
Only one more post-grant review (PGR) was filed last year than in 2020 after a small surge last year. Sources said last year's rise was probably due to more patents with a priority date later than 2013 coming into play.
McKeown reckons that the number of PGRs will probably stay steady from now on, mainly because there are several disadvantages to filing them – notably that they can be used to invalidate patents on more grounds than IPRs, which raises the risk of estoppel at the district courts.
PGRs have historically been far less popular than IPRs because they could only be used against patents with priority dates later than March 15 2013 and had to be filed within nine months of a patent's grant.
Samsung is top petitioner (by a mile)
Samsung was once again the top petitioner at the PTAB last year – but this time by a considerable margin.
The South Korea-based electronics company filed 133 petitions last year – 26 more than it made in 2020 and 67 more than Apple, the runner up for the past two years, filed in 2021.
Apple filed 66 challenges at the PTAB last year, 33 fewer than in 2020.
Naveen Modi, partner at Paul Hastings in Washington DC (another prolific IPR filer), says this disparity probably occurred because of where the two companies are based.
Samsung, a foreign company, probably wouldn’t have fancied its chances in the US district courts, particularly those in Texas.
It likely would have been less deterred by Fintiv than an American company (such as Apple) because the benefit of the PTAB’s relative neutrality would have outweighed the risk of being discretionarily denied.
But the iPhone maker wasn’t the only top petitioner to target fewer patents – the most notable being Unified Patents, which filed just 23 IPRs last year, almost half the number it made in 2020 (40) and more than half in 2019 (43).
Jonathan Stroud, chief IP counsel at Unified Patents, says this drop in PTAB activity was partly due to timing and partly caused by the increased number of ex-parte re-examinations the organisation filed instead of IPRs.
The most prolific IPR filers weren't necessarily the biggest users of PGRs, however. Google and Apple were the only companies that featured in the top IPR and PGR filer lists for last year.
PGR filings in 2020 were dominated by vacuum cleaner company Sharkninja, nutrition firm HumanN, construction business JS Global, payment tech innovators Kiosoft and TechTrex.
WSOU defends most filings
WSOU Investments, which trades as Brazos Licensing & Development, was the most challenged business at the board, having faced 31 IPRs last year.
WSOU’s ranking isn’t surprising given its recent litigation activity. The non-practising entity filed 179 patent cases in the US district courts in 2020, making it the most litigious company for patent matters that year.
The IPRs against WSOU were likely filed in response to that litigation.
Ericsson was the second most challenged firm. The Swedish telecoms company has been embroiled in patent litigation with Apple as of late and with Samsung before that. Most of these petitions were filed by those companies (mainly the latter).
Payrange, another payment tech innovator, had the most patents challenged by PGRs in 2020.
Other notable PGR defendants included Cisco, Genentech and Regeneron. One industry source points out that the latter two companies probably featured because of the increased popularity of PGRs for invalidating biologic patents.
Fish & Richardson and Knobbe Martens lead
Fish & Richardson once again emerged as the king of PTAB matters for last year – but only for petitioner businesses this time.
The Boston-based law firm managed 110 challenges for petitioners (six more than in 2020) but only 16 for patent owners compared to 94 in 2020.
One source at a law firm says this drop likely occurred because Fish had a few clients with large portfolios that were being targeted two years ago.
Finnegan came in second in the petitioner category (as it did last year), having helped manage 53 challenges, while Paul Hastings followed with 52.
Fish didn't do as well in the PGR category, however. Paul Hastings (six) and Finnegan (five), other top IPR firms, came first and second respectively.
Knobbe Martens rose to the top of the list of firms representing patent owners in the most IPRs, having managed 32 petitions that were made against its clients.
The Devlin Law Firm and Etheridge Law Group, which are better known for their district court work than PTAB work, came in second and third with 28 and 23 IPRs under their belts respectively.
Fish, a little more surprisingly, dominated the PGR rankings for patent owners in 2020 with five filings under its belt.
A few surprise names came out of the woodwork for PGRs last year too, the main one being Womble Bond Dickinson, a London-based firm, with three petitions.
Most of the top firms at the PTAB overall in 2020 were typical petitioner firms. Fish & Richardson represented clients in the most IPRs and PGRs (133), followed by Finnegan (71), Paul Hastings (65), Kirkland & Ellis (63), and Ropes & Gray (59).
W Karl Renner and Timothy Devlin are top lawyers
W Karl Renner, principal at Fish in Washington DC, was once again the top lawyer at the PTAB in terms of IPRs managed for petitioner clients – which is probably not surprising given that Fish was far and away the most active firm at the board.
Renner managed 68 petitions, more than half of the 133 in which Fish represented clients.
McKeown at Ropes & Gray and Modi at Paul Hastings, both partners in Washington DC, came in second and third with 51 and 50 post-grant proceedings respectively.
Timothy Devlin, the founder of the Devlin Law Firm, represented the patent owner clients in the most IPRS. Brett Mangrum and Jeffrey Huang of the Etheridge Law Group Brian Koide at Koide IP Law came joint second with 24 each.
