LegalMetric Inter Partes Review APJ Report Administrative ... · LegalMetric Inter Partes Review APJ Report Administrative Patent Judge Obermann September 2016 This report contains

LegalMetric Inter Partes Review APJ Report

Administrative Patent Judge ObermannSeptember 2016

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attempt has been made to correct that data. For example, cases may be misclassified in the official docket

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action are analyzed only under the primary cause of action identitied on the official court docket.

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1

Summary: The records of Inter Partes Reviews (IPRs) were reviewed to determine the success rate

of these reviews (both in terms of institution and final decisions) for those proceedings in which ALJ

Obermann participated in the institution decision and/or the final written decision. This data was

further broken down by technology (Tech Center), number of claims, and year. The institution and

patentability rates by patent are shown in the chart below. Rates by claim, and other metrics, follow.

This report for ALJ Obermann includes 160 IPRs, in which 57 final decisions have been rendered.

0

20

40

60

80

100

Perce

nt In

stitu

ted

Paten

t Rem

ains

Unc

hang

ed

Paten

t Ret

ains

at L

east S

ome

Valid C

laim

s

Proce

eding

Institu

ted,

Pat

ent R

emains

Unc

hang

ed

Proce

eding

Institu

ted,

Pat

ent R

etains

at

Leas

t Som

e Val

id C

laim

s

83.5

59.565.5

42.149.1

Petition Rates

Patentability Rates: The chart above illustrates the probabilities of a patent successfully surviving an

Inter Partes Review filing. For all filings (includes filings which did not result in the institution of a

review, filings which were settled, and filings which proceeded to a final decision), the patent

remained unchanged 59.5% of the time. Note that the institution of a review reduces that figure

significantly--to 42.1%. The chart above also shows the rate at which at least some claims survive

the filing of an IPR petition. For all filings, the rate at which at least some claims survive is 65.5%.

For those cases where the IPR is actually instituted, the "at least some claims survive" rate is 49.1%.

2

0

20

40

60

80

100

1 2 3 4 5 6 7 8 9 10 11 12

2013201420152016

Month

% In

sti

tute

d

Institution Rates by Year and Month of DecisionInstitution Rates by

Month and Year:

Trends in institution

rates (percentage of

proceedings

instituted) can be

seen in the chart to

the left, where each

year has its own line.

0

20

40

60

80

100

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 29 30 31 32 33 34 37 41 42 47 48 49 52 53 57 72

Percentage InitiatedNumber Instituted

Number of Claims Challenged

Institution Rate, by Number of Claims Challenged

Institution Rate, by Number of Claims Challenged: For those proceedings in which a decision

on the institution of the review is issued, the percentage of claims for which the review is initiated

varies generally between 60% and 80% of the claims challenged (see chart above and table

below). The chart above also shows the number of proceedings for each specific number of

claims challenged. Note that for any single ALJ the number of proceedings instituted is quite

small for each particular number of claims challenged, which results in a great deal of "jitter" in the

corresponding "percentage initiated" line.

Percentage of Claims for Which Review is Initiated Number of Proceedings

1 0.0 2

2 33.3 6

3 8.3 4

4 25.0 1

5 60.0 6

6 40.0 5

7 33.3 4

3


8 33.3 5

9 48.9 6

10 50.0 4

11 84.3 11

12 54.8 8

13 71.2 8

14 100.0 2

15 76.0 5

16 33.3 3

17 70.6 7

18 59.3 4

19 70.7 7

20 66.7 3

21 25.4 6

22 68.8 10

23 33.3 3

24 100.0 3

25 60.0 1

26 0.0 1

27 89.8 4

29 86.2 1

30 82.3 10

31 29.0 2

32 100.0 3

33 66.7 1

34 100.0 1

37 91.9 1

41 1

42 50.0 1

47 100.0 2

48 100.0 1

49 0.0 1

52 100.0 1

53 26.4 3

4


57 96.5 1

72 1

5

0

20

40

60

80

100

1 2 3 4 5 6 7 8 9 10 11 12

2013201420152016

Month of Decision

% o

f P

roc

ee

din

gs

Proceedings with All Claims UnpatentableAll Claims Unpatentable:

The fraction of

proceedings where all

claims are found

unpatentable is shown (by

year and month) in the

chart to the right. Note

that a decision not to

institute an IPR is

considered to be a

patentability holding for

this purpose. Note that

the percentage of

proceedings with a "final

written decision" of

unpatentability is a

different number, which is

discussed in a later

section.

0

20

40

60

80

100

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 29 30 31 32 33 34 37 41 42 47 48 49 52 53 57 72

Percentage ofChallenged ClaimsCanceled

Proceedings Instituted

Percentage ofChallenged ClaimsUpheld

Number of Claims Challenged

Patentability Rates, by Number of Claims Challenged

Patentability Rates, by Number of Claims Challenged: For those proceedings in which a

decision on the institution of the review is issued, the percentage of claims held unpatentable

(canceled) is generally around 20% of the claims challenged while the percentage of challenged

claims which are not held unpatentable (either original claims or amended) is around 80% (see

chart above and table below). The chart above also shows the number of proceedings for each

specific number of claims challenged. Note that the number of proceedings with more than 30

claims challenged is quite small, which results in a great deal of "jitter" in the "canceled" and

"upheld" lines.

Percentage of Claims Upheld Percentage of Challenged Claims Canceled

1 100.0 0.0

2 0.0 100.0

3 100.0 0.0

6


4 75.0 25.0

5 0.0 100.0

6 100.0 0.0

7 100.0 0.0

8 100.0 0.0

9 37.0 63.0

10 66.7 33.3

11 72.7 27.3

12 100.0 0.0

13 80.8 19.2

14 100.0 0.0

15 42.2 57.8

16 0.0 100.0

17 55.9 44.1

18 100.0 0.0

19 75.0 25.0

20 100.0 0.0

21 100.0 0.0

22 90.0 10.0

23 88.4 11.6

24 0.0 100.0

25 40.0 60.0

27 100.0 0.0

29 13.8 86.2

30 82.4 17.6

31 41.9 58.1

32 0.0 100.0

33 33.3 66.7

34 44.1 55.9

37 8.1 91.9

42 50.0 50.0

47 100.0 0.0

52 84.6 15.4

53 60.4 39.6

7


72 100.0 0.0

0 20 40 60 80 100

1500

1600

1700

2100

2800

3600

3700

3900

0.0

18.5

48.2

0.0

6.4

50.0

87.2

0.0

Tech

Cen

ter

Percentage of Claims

Percentage of Challenged Claims Which areCanceled

by Tech Center

Percentage of Challenged

Claims Canceled, by Tech

Center: The fraction of

challenged claims which

are canceled is shown in

the chart to the left. Note

that a decision not to

institute an IPR is

considered to be a

patentability holding for this

purpose. Note that not all

Tech Centers have

challenged claims which

are canceled.

8

0

20

40

60

80

100

1 2 3 4 5 6 7 8 9 10 11

201420152016

Month of Final Decision

% o

f P

roc

ee

din

gs

Final Written Decisions with All Claims Unpatentable All Claims Unpatentable in

Final Written Decision: In

those cases that proceed to a

final written decision, the

probability of a finding of

unpatentability of all claims is

quite high. The variation in

this rate is shown in the chart

to the left.

0

20

40

60

80

100

0 1 2 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 27 30 32 34 42 47 48 52 55

Number of Final WrittenDecisions

Percentage of ClaimsUpheldPercentage of ClaimsCanceled

Number of Claims At Issue

Patentability Rates, by Number of Claims at Issue

Patentability Rates, by Number of Claims at Issue: For those proceedings in which a final

written decision on patentability is issued, the percentage of claims held unpatentable

(canceled) is generally around 80% of the claims at issue while the percentage of challenged

claims which are not held unpatentable (either original claims or amended) is around 20% (see

chart above and table below). The chart above also shows the number of proceedings with a final

written decision for each specific number of claims challenged. Note that the number of such

proceedings is quite small for each number of claims at issue, which results in a great deal of

"jitter" in the chart.

Number of Final Written Decisions Upheld Patentability Canceled

1 1 0.0 100.0

2 1 0.0 100.0

5 2 0.0 100.0

6 1 100.0 0.0

7 3 33.3 66.7

8 1 0.0 100.0

9

Number of Final Written Decisions Upheld Patentability Canceled

9 2 50.0 50.0

10 3 33.3 66.7

11 4 50.0 50.0

12 2 50.0 50.0

13 3 66.7 33.3

14 3 100.0 0.0

15 2 3.3 96.7

16 1 0.0 100.0

17 1 0.0 100.0

18 2 50.0 50.0

19 3 66.7 33.3

20 1 100.0 0.0

21 1 0.0 100.0

22 4 75.0 25.0

23 1 65.2 34.8

24 1 0.0 100.0

25 1 0.0 100.0

27 1 100.0 0.0

30 5 80.0 20.0

32 3 0.0 100.0

34 2 10.4 89.6

42 1 0.0 100.0

52 1 84.6 15.4

10

0 20 40 60 80 100

1500

1600

1700

2100

2800

3600

3700

3900

0.0

38.9

87.2

8.9

100.0

100.0

Te

ch

Ce

nte

r


Percentage of Claims Which are Canceled in FinalWritten Decision

Claims Canceled in

Final Written

Decision: The fraction

of claims found

unpatentable is shown

(by Tech Center) in the

chart to the right.

11

Time from Filing to Institution Decision: The time from petition filing to institution decision

(initiation) varies slightly from Tech Center to Tech Center (see second chart below). But whether

the petition was granted or denied has little effect on the time to decision (see first chart below).

This time has remained fairly stable for at least one year.

0

1

2

3

4

5

6

All Decisions Granted Initiation Denied Initiation

5.9 5.9

5.6M

on

ths

fro

m F

ilin

g

Time from Filing to Institution Decision

0

1

2

3

4

5

6

7

15001600

17002100

28003600

37003900

6.4

5.7

6.25.8 5.8

6.1 6.1

4.1

Mo

nth

s f

rom

Fil

ing

Time from Filing to Institution Decisionby Tech Center

0

1

2

3

4

5

6

7

8

1 2 3 4 5 6 7 8 9 10 11 12

2013201420152016

Mo

nth

s f

rom

Filin

g

Time to Decision on Institutionby Year and Month

12

Time from Institution to Final Decision: The time from institution decision to final written

decision is around 11 months. Whether the decision is in favor of patentability or not has little

effect on the time to final written decision. There is some variation by Tech Center, however (see

charts below). Note that not all Tech Centers have final written decisions on at least one

proceeding. The variation from month to month is shown in the chart at the bottom of the page.

0

2

4

6

8

10

12

All Cases Patentable at Least in Part Unpatentable

10.9

11.6

10.1

Mo

nth

s f

rom

In

sti

tuti

on

Time from Institution to Final Decision

0

2

4

6

8

10

12

15001600

17002100

28003600

37003900

11.911.3

10.511.2

4.0

10.8

Mo

nth

s f

rom

In

sti

tuti

on

Time from Institution to Final Decisionby Tech Center

0

2

4

6

8

10

12

1 2 3 4 5 6 7 8 9 10 11

201420152016

Month

Mo

nth

s f

rom

In

sti

tuti

on

Time to Institution to Final Decisionby Year and Month

13

IPR Filings: The number of new IPR case filings by month and year is shown in the chart below.

0

2

4

6

8

10

12

14

16

1 2 3 4 5 6 7 8 9 10 11 12

20122013201420152016

Month

Nu

mb

er

of

IPR

Filin

gs

IPR Filings, by Month and Year

IPR Filings by Tech Center: The number of new IPR case filings by Tech Center is shown in the

chart below.

11500

541600

521700

32100

292800

23600

183700

13900

Filings by Tech Center

14

IPRs Instituted: The number of IPRs instituted by month and year is shown in the chart below.

The second chart shows the number instituted by Tech Center.

0

2

4

6

8

10

1 2 3 4 5 6 7 8 9 10 11 12

2013201420152016

Month

Nu

mb

er

of

IPR

s In

sti

tute

d

IPRs Instituted, by Month and Year

0 20 40 60 80 100

1500

1600

1700

2100

2800

3600

3700

3900

100.0

64.8

52.0

0.0

82.9

25.0

54.0

0.0

Tech

Cen

ter


Percentage of Challenged Claims for WhichProceedings Are Instituted

15

Final Written Decisions: The number of final written decisions by month and year, if any, is

shown in the chart below. The second chart shows the number of decisions, if any, by Tech

Center.

0

2

4

6

8

10

1 2 3 4 5 6 7 8 9 10 11

201420152016

Month

Nu

mb

er

of

IPR

s In

sti

tute

d

Final Written Decisions, by Month and Year

0 4 8 12 16 20

1500

1600

1700

2100

2800

3600

3700

3900

1

18

15

0

13

1

9

0

Te

ch

Ce

nte

r

Number of Decisions

Number of Final Decisions, by Tech Center

16

Tech Center 1500

Overview: The institution rates, rates at which patents remain unchanged after institution decision

and (if any) final decision, rates at which at least some claims survive IPR, rates at which patents for

which a decision granting institution survive the IPR unscathed, and rates at which patents survive at

least in part the IPR are shown in the chart below. Note that all these rates include proceedings

where the institution of an IPR was denied. Note as well that not all Tech Centers have proceedings

where the IPR was instituted. These are shown in the chart as blank (if applicable).

0

20

40

60

80

100

Perce

nt In

stitu

ted

Paten

t Rem

ains

Unc

hang

ed

Paten

t Ret

ains

at L

east S

ome

Valid C

laim

s

Proce

eding

Institu

ted,

Pat

ent R

emains

Unc

hang

ed

Proce

eding

Institu

ted,

Pat

ent R

etains

at

Leas

t Som

e Val

id C

laim

s

100.0 100.0 100.0 100.0 100.0

Petition RatesFor Tech Center 1500

0

20

40

60

80

100

8

2015

Month

% In

sti

tute

d

Institution Rates by Year and Month of DecisionFor Tech Center 1500

Institution Rates by

Month and Year: The

rates at which IPRs

are instituted is shown

in the chart to the left,

by month and year.

Note that many Tech

Centers have very few

institution decisions.

17

All Claims Unpatentable:

The fraction of


claims are found



chart to the right. Note that

a decision not to institute an

IPR is considered to be a

validity holding for this

purpose. Note that the

percentage of proceedings

with a "final written

decision" of unpatentability

is a different number, which

is discussed in a later

section.

-6

-4

-2

0

2

4

6

8

2016

Month of Decision

% o

f P

roc

ee

din

gs

Proceedings with All Claims UnpatentableFor Tech Center 1500

-6

-4

-2

0

2

4

6

8

2016


% o

f P

roc

ee

din

gs

Final Written Decisions with All Claims UnpatentableFor Tech Center 1500

All Claims Unpatentable in






quite high. Note that some

Tech Centers have no final

written decisions.

18

Time from Filing to Institution and from Institution to Final Decision: The time from filing to

institution decision and from institution decision to final written decision (if any) is shown in the

chart below.

0

2

4

6

8

10

12

Filing to Initiation Initiation to Final Decision

6.4

11.9

Mo

nth

sTime from Filing to Institution and to Final Decision

For Tech Center 1500

Number of Filings, Institution Decisions, and Final Written Decisions: The numbers of IPR

filings, institution decisions and final written decisions (if any) for this Tech Center are shown in

the chart below.

0

0.2

0.4

0.6

0.8

1

Filings Institution Decisions Final Decisions

1 1 1

Nu

mb

er

Filings, Institution Decisions, and Final DecisionsFor Tech Center 1500

19

Tech Center 1600







0102030405060708090

Perce

nt In

stitu

ted

Paten

t Rem

ains

Unc

hang

ed

Paten

t Ret

ains

at L

east S

ome

Valid C

laim

s

Proce

eding

Institu

ted,

Pat

ent R

emains

Unc

hang

ed

Proce

eding

Institu

ted,

Pat

ent R

etains

at

Leas

t Som

e Val

id C

laim

s

80.471.4 75.0

61.1 61.1


0

20

40

60

80

100

1 2 3 4 5 6 7 8 9 10 11

201420152016

Month

% In

sti

tute

d



Month and Year: The

rates at which IPRs



by month and year.

Note that many Tech



20


The fraction of


claims are found













section.

0

20

40

60

80

100

1 2 3 4 7 9 10 11

201420152016

Month of Decision

% o

f P

roc

ee

din

gs


0

20

40

60

80

100

1 2 4 7 9 11

20152016


% o

f P

roc

ee

din

gs










written decisions.

21



chart below.

0

2

4

6

8

10

12


5.7

11.3

Mo

nth





the chart below.

0

10

20

30

40

50

60


54 54

18

Nu

mb

er


22

Tech Center 1700







0

20

40

60

80

100

Perce

nt In

stitu

ted

Paten

t Rem

ains

Unc

hang

ed

Paten

t Ret

ains

at L

east S

ome

Valid C

laim

s

Proce

eding

Institu

ted,

Pat

ent R

emains

Unc

hang

ed

Proce

eding

Institu

ted,

Pat

ent R

etains

at

Leas

t Som

e Val

id C

laim

s

85.7

39.1

52.2

6.7

26.7


0

20

40

60

80

100

1 2 4 5 6 7 8 9 10 11 12

2013201420152016

Month

% In

sti

tute

d



Month and Year: The

rates at which IPRs



by month and year.

Note that many Tech



23


The fraction of


claims are found













section.

0

20

40

60

80

100

1 2 3 4 5 6 7

201420152016

Month of Decision

% o

f P

roc

ee

din

gs


0

20

40

60

80

100

1 2 3 4 5 6 7

201420152016


% o

f P

roc

ee

din

gs










written decisions.

24



chart below.

0

2

4

6

8

10

12


6.2

10.5

Mo

nth





the chart below.

0

10

20

30

40

50

60


51 52

15

Nu

mb

er


25

Tech Center 2100







0

20

40

60

80

100

Perce

nt In

stitu

ted

Paten

t Rem

ains

Unc

hang

ed

Paten

t Ret

ains

at L

east S

ome

Valid C

laim

s

Proce

eding

Institu

ted,

Pat

ent R

emains

Unc

hang

ed

Proce

eding

Institu

ted,

Pat

ent R

etains

at

Leas

t Som

e Val

id C

laim

s

0.0

100.0 100.0


-6

-4

-2

0

2

4

6

2 5

2015

Month

% In

sti

tute

d



Month and Year: The

rates at which IPRs



by month and year.

Note that many Tech



26


The fraction of


claims are found













section.

-6

-4

-2

0

2

4

6

2 5

2015

Month of Decision

% o

f P

roc

ee

din

gs


-6

-4

-2

0

2

4

6


% o

f P

roc

ee

din

gs










written decisions.

27



chart below.

0

1

2

3

4

5

6


5.8

Mo

nth





the chart below.

0

0.4

0.8

1.2

1.6

2

2.4

2.8

3.2


3 3

0

Nu

mb

er


28

Tech Center 2800







0

20

40

60

80

100

Perce

nt In

stitu

ted

Paten

t Rem

ains

Unc

hang

ed

Paten

t Ret

ains

at L

east S

ome

Valid C

laim

s

Proce

eding

Institu

ted,

Pat

ent R

emains

Unc

hang

ed

Proce

eding

Institu

ted,

Pat

ent R

etains

at

Leas

t Som

e Val

id C

laim

s

91.7 88.994.4

84.692.3


0

20

40

60

80

100

1 2 4 5 6 7 11 12

2013201420152016

Month

% In

sti

tute

d



Month and Year: The

rates at which IPRs



by month and year.

Note that many Tech



29


The fraction of


claims are found













section.

0

20

40

60

80

100

5 7 8 11 12

2013201420152016

Month of Decision

% o

f P

roc

ee

din

gs


0

20

40

60

80

100

5 7 8 11

201420152016


% o

f P

roc

ee

din

gs










written decisions.

30



chart below.

0

2

4

6

8

10

12


5.8

11.2

Mo

nth





the chart below.

0

4

8

12

16

20

24

28

32


29 29

13Nu

mb

er


31

Tech Center 3600







0

20

40

60

80

100

Perce

nt In

stitu

ted

Paten

t Rem

ains

Unc

hang

ed

Paten

t Ret

ains

at L

east S

ome

Valid C

laim

s

Proce

eding

Institu

ted,

Pat

ent R

emains

Unc

hang

ed

Proce

eding

Institu

ted,

Pat

ent R

etains

at

Leas

t Som

e Val

id C

laim

s

100.0

0.0 0.0 0.0 0.0


0

20

40

60

80

100

2

2016

Month

% In

sti

tute

d



Month and Year: The

rates at which IPRs



by month and year.

Note that many Tech



32


The fraction of


claims are found













section.

0

20

40

60

80

100

6

2016

Month of Decision

% o

f P

roc

ee

din

gs


0

20

40

60

80

100

6

2016


% o

f P

roc

ee

din

gs










written decisions.

33



chart below.

0

1

2

3

4

5

6

7


6.1

4.0

Mo

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35


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LegalMetric Inter Partes Review APJ Report Administrative ... · LegalMetric Inter Partes Review APJ Report Administrative Patent Judge Obermann September 2016 This report contains