IP Hot Topic: 2019 PTAB Year in Review: Analysis & Trends

Powerful. Resilient. Ever-evolving. These characteristics of the Patent Trial and Appeal Board (PTAB) were on full display in 2019. This past year the PTAB received more than 1,300 inter partes review (IPR), post grant review (PGR), and covered business method review (CBM) petitions, issued a similar number of institution decisions, and rendered nearly 500 final written decisions. These petitions and decisions involved more than 1,800 unique patents – most of which are involved in co-pending district court litigation with billions of dollars on the line.

In 2019, PTAB proceedings increasingly led to stays, were often case dispositive of the copending district court litigations, and commonly drove settlement discussions. Less directly, but perhaps more importantly, the establishment of the PTAB forever changed patent application drafting and prosecution, licensing dynamics, and enforcement strategies. The PTAB’s influence continued in 2019. The PTAB is powerful.

As in the past, the PTAB saw constitutional challenges to its very existence in 2019. And once again it survived, becoming ever stronger and more entrenched in the patent landscape. The PTAB is resilient.

Last year also saw updates to the Trial Practice Guide, more decisions designated precedential than ever before, new claim construction and motion to amend rules put into practice, the PTAB flexing its discretionary muscle, and almost 200 Federal Circuit decisions involving PTAB proceedings. The PTAB is ever-evolving.

Love it or hate it, the PTAB has had a tremendous impact on the patent landscape and continued to do so throughout 2019. This Year in Review explores the power, resilience and ever-evolving nature of the PTAB through a series of articles addressing many of the most significant developments that occurred over the past year. We do not simply summarize and rehash decisions. Rather, we apply our vast experience (75,000+ hours of PTAB experience by our authors) and data analytics to synthesize and dissect the many decisions, updates, and rule changes of 2019 to provide practical insights with an eye to the future.

We encourage you to not simply read the articles, but to critically challenge our analysis and consider the impacts on your patent strategies. And, of course, if you have questions or comments, let us know. We love to talk about PTAB matters and how they may impact your business. Lastly, we thank our authors and our entire PTAB team for making this publication possible.

You may view report content via the links below and/or download the full report by clicking the “Download PDF” button.

Table of Contents:

• Introduction
• Data & Trends
• Discretionary Denial: “Petitioners Beware Discretionary Denial”
• Claim Construction: “PTAB Operation Under Phillips: Business as Usual with New Strategic Implications”
• Motions to Amend: “Dramatic Changes to Motion to Amend Practice”
• Evidence: “The PTAB’s Evolving Evidentiary Standards: Printed Publications at the Institution Phase”
• Consistency: “Consistency at the PTAB”
• Design Patents: “Design Patents Show Resistance from Attack in Post-Grant Proceedings”
• Motions to Stay: “Success of Motions to Stay Rising, But Why?”
• Estoppels: “IPR Estoppel Questions Answered and Remaining”
• Constitutionality: “Challenges to the Constitutionality of the Patent Trial and Appeal Board”