Case 5:15-cv-02008-EJD Document 101-2 Filed 05/17/16 Page 1 of 9
`Case 5:l5—cv—O2008—EJD Document 101-2 Filed 05/17/16 Page 1 of 9
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`EXHIBIT 1
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`EXHIBIT 1
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`Case 5:15-cv-02008-EJD Document 101-2 Filed 05/17/16 Page 2 of 9
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`Patent Trial and Appeal Board
`Motion to Amend Study
`4/30/2016
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`Case 5:15-cv-02008-EJD Document 101-2 Filed 05/17/16 Page 3 of 9
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`Motion to Amend Study
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`There have been more than 4,850 inter partes review, covered business method review, and post-grant
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`review petitions filed since the inception of the America Invents Act (“AIA”). As of April 30, 2016, the Board had
`instituted and completed 1539 trials1 (either through post-institution termination due to settlement, request for
`adverse judgment, dismissal, or in a final written decision). Given the number of pending and completed trials, the
`Board undertook a study of motions to amend to determine: (1) the number of motions to amend that have been
`filed in AIA trials, both as a cumulative total and by fiscal year; (2) subsequent developments of each motion to
`amend; (3) the number of motions to amend requesting to substitute claims that are granted, granted-in-part and
`denied-in-part, and denied; and (4) the reasons the Board has provided for denying entry of substitute claims.
`The AIA provides that a patent owner may file a motion to amend its claims during a trial. A motion to
`amend may involve a request to cancel patent claims, to substitute claims in the patent, or a combination of the
`two. Requests solely to cancel claims typically are granted without substantive review. Requests that seek to
`substitute claims are generally decided only when the panel of judges determines that the claims as originally
`issued are unpatentable, because nearly all such motions are contingent on a decision unfavorable to patentability
`on the original claims. Because not all proceedings include a motion to amend, because some proceedings that
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`1 Joined or consolidated trials were counted as a single trial for purposes of the motion to amend statistics, because
`this study focuses on the outcome of a motion filed in one of those trials. The number of completed trials
`referenced in the motion to amend statistics, therefore, differs from the total number of petitions referenced in other
`Board statistics depicting outcomes for all petitions that have reached a final disposition.
`2
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`Case 5:15-cv-02008-EJD Document 101-2 Filed 05/17/16 Page 4 of 9
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`include a motion to amend do not result in a final written decision, because not all motions to amend seek to
`substitute claims, and because the Board does not need to reach the merits of a motion to substitute claims when
`the original claims are deemed patentable, the Board has decided the merits of a motion to amend to substitute
`claims in only a fraction (118 trials, or 8%) of the 1539 completed AIA trials.
`These graphs and table below provide the results of the motion to amend study. Graph I is a pie chart that
`shows the cumulative number of motions to amend that have been filed in AIA proceedings, both completed and
`pending. Patent Owners have filed a motion to amend in 192 of the 1539 completed trials (12%), and in 34 of the
`743 pending trials (5%).
`Graph II, a pie chart that depicts the subsequent developments of the motions to amend, focuses on the
`outcomes of the 192 completed trials in which Patent Owners filed a motion to amend. The panel of judges
`decided a motion to amend requesting to substitute claims in 118 of the 192 completed trials (61%2). In 74 of the
`192 completed trials (39%3), the motion to amend either: (a) requested solely to cancel claims (17, or 9%), (b) was
`rendered moot because the panel of judges found the original claims patentable (16, or 8%), or (c) was not decided
`because the case terminated prior to a final written decision (41, or 21%).
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`2 The label for Graph II indicates 62% rather than 61%. This is because the software program that was used to
`generate these graphs apportions rounding errors among each slice of the pie to ensure the percentage labels add up
`to 100%. Accordingly, a number may be rounded up or down when it typically would not. Here, 0.61458 was
`double rounded in the pie chart to 62% to ensure the slices add up to 100%.
`3 See n. 2.
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`3
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`Case 5:15-cv-02008-EJD Document 101-2 Filed 05/17/16 Page 5 of 9
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`Graph III is a pie chart that depicts the outcomes of the 118 motions to amend requesting to substitute claims
`that were decided, i.e., the number of motions to amend requesting to substitute claims that were granted, granted-
`in-part and denied-in-part, or denied. A panel of judges granted or granted-in-part and denied-in-part a motion to
`amend in 6 of the 118 trials (5%) and denied a motion to amend in 112 of the 118 trials (95%).
`The table to the left of Graph III focuses on the reasons provided in the final written decisions for denying
`entry of substitute claims in the 116 trials in which the motion to amend was denied or denied-in-part. The table is
`divided into two sections: (1) reasons based in whole or in part on 35 U.S.C., and (2) reasons based solely on
`procedure. The final written decision set forth at least one statutory reason for denying or denying-in-part a motion
`to amend in 94 of the 116 trials (81%), and based a denial solely on procedural reasons in 22 of the 116 trials
`(19%). For purposes of the study, a denial based on a patent owner’s failure to show that the substitute claims are
`patentable over the “prior art in general” was classified as a procedural reason. Of the 116 trials in which the
`motion to amend was denied or denied-in-part, only 1 trial had a motion to amend denied based solely on a patent
`owner’s failure to show patentability over the prior art in general.4
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`As set forth above, the motion to amend study also determined the number of motions to amend filed in each
`fiscal year. The bar chart corresponding to the data shows the total number of motions to amend filed in a given
`fiscal year. The data for fiscal year 2016 is from October 1, 2015 through April 30, 2016.
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`4 See Idle Free Systems, Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. 26–38 (PTAB January 7, 2014)
`(Paper 66).
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`4
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`Case 5:15-cv-02008-EJD Document 101-2 Filed 05/17/16 Page 6 of 9
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`How Many Motions to Amend Are Filed?
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`Subsequent Developments of the Motions to
`Amend
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`Completed Trials w/o
`MTA
`Completed Trials with
`MTA
`Pending Trials with
`MTA
`Pending Trials w/o
`MTA
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`1347
`59%
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`I.
`2282 Trials
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`709
`31%
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`192
`8%
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`34, 2%
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`Moot b/c Claims
`Patentable
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`MTA Withdrawn or
`Case Settled, Req. Adv.
`J, or Dismissed
`MTA Solely to Cancel
`Claims
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`MTA Substitute Claims
`Decided
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`41
`21%
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`16
`8%
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`17
`9%
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`II.
`192 Trials
`with MTA
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`118
`62%
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`[to next slide]
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`Data current as of: 4/30/2016
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`Case 5:15-cv-02008-EJD Document 101-2 Filed 05/17/16 Page 7 of 9
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` Reasons Provided for Denying Entry of Substitute Claims*
`Reason Given # of Cases
`Pct
`Reasons Based in Whole or Part on 35 U.S.C.:
`101
`Non-Statutory Subject Matter
`112(a)
`Written Description
`112(b)
`Definiteness
`102/103 Anticipated/Obvious Over Art of Record
`316(d)(3)
`Claims Enlarge Scope of Patent
`316(d)(1)(B)
`Unreasonable # Substitute Claims
`Multiple Statutory Reasons Given**
`Reasons Based Solely on Procedure:
`19%
`22
`Cases Where Only Procedural Reasons Given
`100%
`116
`Totals:
`* 116 MTAs requesting entry of substitute claims have been denied
` in whole or in part.
`** Of the "Multiple Statutory Reasons Given" trials,
` 24 of the 27 trials included "Anticipated/Obvious" as a reason.
`
`6%
`8%
`1%
`35%
`5%
`3%
`23%
`
`7
`9
`1
`41
`6
`3
`27
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`How Many Motions to Amend Substituting
`Claims Are Granted?
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`III.
`118
`MTAs With
`Substitute
`Claims Decided
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`2, 2%
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`4, 3%
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`112
`95%
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`Granted
`Granted in Part
`Denied
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`Data current as of: 4/30/2016
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`Case 5:15-cv-02008-EJD Document 101-2 Filed 05/17/16 Page 8 of 9
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`How Many Motions to Amend Were Filed in Each Fiscal Year?
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`2013
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`49
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`2014
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`92
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`2015
`9
`50
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`2016
`25
`1
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`100
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`90
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`80
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`70
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`60
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`50
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`40
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`30
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`20
`
`10
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`0
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`Trial Pending
`Trial Complete
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`MTAs Filed in FY
`
`Data for FY2016 are from October 1, 2015–April 30, 2016.
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`7
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`Case 5:15-cv-02008-EJD Document 101-2 Filed 05/17/16 Page 9 of 9
`Case 5:15—cv—O2008—EJD Document 101-2 Filed 05/17/16 Page 9 of 9