PTAB not a 'death squad' for patents, study finds

The inter partes review (IPR) mechanism at the Patent Trial and Appeal Board (PTAB) does not warrant the “death squad” nickname given to it by a former judge, a study has claimed.

In a study published yesterday (April 9) law firm Fitzpatrick, Cella, Harper & Scinto detailed its findings on the outcome of IPRs that were carried out during 2014.

Introduced as part of the America Invents Act in 2013 an IPR enables parties to challenge the validity of existing patents without going to court.

In October 2013, Randall Rader, formerly the chief judge at the US Court of Appeals for the Federal Circuit, said it would be a “death squad” for intellectual property rights and predicted that many patents would be invalidated under the method.

The study found that, in 2014, 73.5% of challenges to existing patents under the IPR were successful.

“While 73.5% is a significant rate of invalidation, it is not quite a ‘death squad’, particularly in view of rates of invalidation in district court cases and the number of claims cancelled by the patent owners,” the report said.

The study found that in 37.5% of the IPR cases, the disputed claims were ruled unpatentable because they were “anticipated” or “not novel”. In addition, claims were ruled invalid on the grounds that they were “obvious” in 57.6% of disputes. Patents in the remaining cases were invalidated for other reasons.

Justin Oliver, partner at Fitzpatrick Cella, said: “Knowing which venue will give you the best shot at invalidating a patent is paramount, and it depends on what your best grounds of invalidity are and which venue provides the best chance of success for those grounds.

“Choosing between venues for invalidity challenges is much more nuanced an analysis than most currently appreciate,” he added.