Mitsuba Corp. v. Intellectual Ventures
`IPR2018-00071
`I.V. Exhibit 2003
`
`
`IPR2018-00071
`I.V. Exhibit 2003
`
`
`
`Chat with the Chief
`
`An Analysis of Multiple Petitions in AIA Trials
`
`David P. Ruschke
`Chief Administrative Patent Judge
`
`William V. Saindon
`Lead Administrative Patent Judge
`
`October 24, 2017
`
`2
`
`
`
`Overview
`
`• Study methodology
`
`• Study results
`
`• New precedential opinion: General Plastic
`
`• New informative decisions on 35 U.S.C. §325(d)
`
`• Case studies
`
`• Board case management
`
`3
`
`
`
`Multiple Petition Study Methodology
`
`4
`
`
`
`Methodology
`• Comprehensive review of all IPR, PGR, and CBM petitions filed on or before
`6/30/2017
`
`• Covers 7,168 petitions and their associated:
`• 4,376 patents;
`• 1,633 patent owners; and
`• 1,423 petitioners
`
`• Relied upon metadata from a PTAB database that identified parties, filings, and
`milestones
`
`• Additional data was gathered manually to identify claim information
`(e.g., challenged, instituted) and to determine if the petitioner was a
`defendant in an associated district court litigation
`
`5
`
`
`
`Methodology (cont.)
`• Counting the numbers of petitions and identifying the parties tells only part of the story
`
`• Further identifies the context of a petition, i.e., how the petition relates to other petitions challenging the
`same patent by examining:
`o Who came first?
`o How long after?
`o Same party?
`• Considers a “net” challenge to the patent
`o Example 1:
`o Petition 1: Challenges claims 1-10
`o Petition 2: Challenges claims 11-20
`o Net challenge is to claims 1-20
`o Example 2:
`o Petition 1: Settled
`o Petition 2: Denied institution
`o Petition 3: Some claims unpatentable
`o Net result is some claims unpatentable
`
`6
`
`
`
`Multiple Petition Study Results
`
`7
`
`
`
`Multiple Petition Study Questions
`• Question 1: Do IPRs represent a significant proportion of the U.S. patent litigation landscape?
`
`• Question 2: How many petitioners challenge patents?
`
`• Question 3: How many petitions are filed against each patent?
`
`• Question 4: Do petitioners often “wait and see” what the Patent Owner says in its Preliminary
`Response or the Board says in a decision on institution?
`
`• Question 5: Who are the petitioners filing petitions after the Board issues a decision on
`institution?
`
`• Question 6: How often have petitioners been able to use the Board’s institution decision to
`inform another petition?
`
`• Question 7: What is the institution rate counting by patent versus counting by petition?
`
`• Question 8: What is the ultimate outcome by patent versus the ultimate outcome by petition?
`
`8
`
`
`
`Question 1: Where does the PTAB fit into the U.S.
`patent litigation landscape?
`
`9
`
`
`
`Jurisdiction of Patent Challenges
`
`Jurisdiction of Patent Challenge
`
`District Court
`
`PTAB
`
`• Approximately 85% of IPRs in Fiscal Year 2017 have a co-pending
`district court case
`
`•
`
`Less than a fifth of district court cases involve patents that are
`challenged in an IPR
`
`Data sourced from Lex Machina PTAB Report 2017
`
`10
`
`
`
`Question 2: How many petitioners file challenges
`against each patent?
`
`11
`
`
`
`Multiple Petition Study
`Petitioners Per Patent
`
`No. of Petitioners vs.
`Patent
`1
`2
`3
`4
`5
`6
`7
`8
`Total
`
`No. of
`Patents
`3711
`424
`132
`59
`28
`17
`2
`3
`4376
`
`%
`Patents
`84.8%
`9.7%
`3.0%
`1.3%
`0.6%
`0.4%
`<0.1%
`<0.1%
`100%
`
`NUMBER OF PETITIONERS PER PATENT
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`3.0%
`
`9.7%
`
`84.8% of Patents are Challenged
`by a Single Petitioner
`
`Data Through 6/30/17
`Percentages may not add to 100% due to rounding
`
`12
`
`
`
`Question 3: How many petitions are filed
`against each patent?
`
`13
`
`
`
`Multiple Petition Study
`Petitions Per Patent
`
`NUMBER OF PETITIONS PER PATENT
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7 or more
`
`No. of Petitions per
`Patent
`1
`2
`3
`4
`5
`6
`7 or more
`Total
`
`Patents
`
`% of Total
`
`5.9%
`
`2932
`885
`256
`142
`54
`52
`55
`4376
`
`67.0%
`20.2%
`5.9%
`3.2%
`1.2%
`1.2%
`1.3%
`100%
`
`20.2%
`
`67.0%
`
`87.2% of Patents Challenged at PTAB
`by 1 or 2 Petitions
`
`Data Through 6/30/17
`
`14
`
`
`
`Question 4: If more than one petition is filed
`against a patent, when are the additional petitions
`filed?
`
`15
`
`
`
`When Petitions Are Filed
`
`“POPR”
`
`“DI”
`
`“FWD”
`
`Before
`POPR
`
`Before
`DI
`
`After DI
`
`16
`
`
`
`Multiple Petition Study
`When Petitions are Filed
`
`WHEN PETITIONS ARE FILED
`Single Petition vs. Patent
`Multiple Petition Filed On or Near Same Day
`Multiple Petition Filed after POPR
`Multiple Petition Filed After DI
`
`Timing of Petition
`
`No. of
`Petitions
`
`Single Petition Filed
`Multiple Petitions Filed On or Near
`Same Day
`
`Multiple Petitions Filed After POPR,
`But Before DI
`
`Multiple Petitions Filed After DI
`
`Total
`
`2932
`
`2685
`
`381
`
`1170
`
`7168
`
`% of
`Petitions
`41%
`
`38%
`
`5%
`
`16%
`
`100%
`
`16%
`
`5%
`
`41%
`
`79% of Petitions are filed without
`the benefit of seeing a POPR or DI
`
`38%
`
`Data Through 6/30/17
`
`17
`
`
`
`16% of petitions are filed after a decision on institution.
`Question 5: Who are the petitioners filing these
`petitions?
`
`18
`
`
`
`Multiple Petition Study
`Who are post-DI Petitioners?
`
`16%
`
`• 16% of all petitions are filed
`after a DI
`• A random sample of the 1054
`petitions filed after DI as of
`3/1/17* was taken
`• The sample included 169
`petitions, and the results were
`found to be statistically
`significant, such that we can
`use the sample (169 petitions)
`as an estimate of the whole
`(1054 petitions).
`
`*Random sample taken on 3/1/17 using data through 2/28/17
`
`9-10% of petitions filed by:
`•
`Defendant-Petitioner; or
`•
`Same or Different Petitioner
`•
`Filing due to a change in litigation;
`or
`Seeking to join existing trial as a
`party
`
`•
`
`6-7% of petitions filed by:
`•
`Non-Defendant Petitioner; or
`•
`Same Petitioner
`•
`Filing not due to change in
`litigation; and
`Not seeking party joinder
`
`•
`
`19
`
`
`
`Question 6: How often do individual Petitioners file
`additional rounds of petitions after receiving a
`decision on institution?
`
`Round 1
`
`Round 2
`
`Round 3
`
`Petition
`Filed
`
`Institution
`Decision
`
`Petition
`Filed
`
`Institution
`Decision
`
`Petition
`Filed
`
`Institution
`Decision
`
`•
`
`A “round” is all petitions filed before receiving a DI on
`one of those petitions
`
`20
`
`
`
`Multiple Petition Study
`Rounds of Petitions
`
`•
`
`•
`
`95% of petitions are filed in a given petitioner’s first
`round
`
`A “round” is all petitions filed before receiving a DI on
`one of those petitions
`
`Rounds of Petitions
`
`First Round of Petitions
`
`Second Round of Petitions
`
`Third or Fourth Round of Petitions
`
`Total
`
`No. of
`Petitions
`6481
`
`% of
`Petitions
`95%
`
`5%
`
`<0.1%
`
`369
`
`7
`
`6857*
`
`PERCENT OF PETITIONS
`
`One Round
`
`Two Rounds
`
`3+ Rounds
`
`5%
`
`0%
`
`
`95% of a Given Petitioner’s 95% of petitions are filed in a given
`Petitions are filed Petitioner’s first round
`
`in One Round
`
`95%
`
`Data Through 6/30/17
`*Not included are 311 Petitions filed where a request to join as a party to another proceeding was granted
`
`21
`
`
`
`Question 7: What is the institution rate counting by
`patent versus counting by petition?
`
`22
`
`
`
`Multiple Petition Study
`Institution Rate
`
`•
`
`•
`
`Institution rate as measured by patent is only
`slightly higher than the institution rate as
`measured by petition
`
`“By patent” accounts for whether any one
`petition against particular patent is instituted
`Example against Patent A:
`•
`Petition 1 instituted
`•
`Petition 2 not instituted
`•
`Net result = 100% institution rate
`•
`
`•
`
`“By petition” accounts for whether a particular
`petition was instituted; publicly reported
`monthly
`Example against Patent A
`•
`Petition 1 instituted
`•
`Petition 2 not instituted
`•
`Net result = 50% institution rate
`•
`Data Through 6/30/17
`
`100%
`
`95%
`
`90%
`
`85%
`
`80%
`
`75%
`
`70%
`
`65%
`
`60%
`
`91%
`
`87%
`
`81%
`
`75%
`
`75%
`
`68%
`
`74%
`
`67%
`
`70%
`
`64%
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
` Institution Rate, by Petition
`
`Institution Rate, by Patent
`
`23
`
`
`
`Question 8: What is the ultimate outcome by
`patent versus the ultimate outcome by petition?
`
`24
`
`
`
`Status of Petitions
`(All Time: 9/16/12 to 9/30/17)
`
`These figures reflect the latest status of each petition. The outcomes of decisions on institution
`responsive to requests for rehearing are incorporated. Once joined to a base case, a petition
`remains in the Joined category regardless of subsequent outcomes.
`
`25
`
`
`
`Multiple Petition Study
`Ultimate Outcome
`
`69% of all petitions result in a patent
`being unchanged; 58% of patents are
`unchanged at the end of one or more
`AIA proceedings
`
`Patent Unchanged
`
`Patent Owner Requests Adverse
`Judgment
`
`PTAB Finding Some Claims Unpatentable
`
`Outcomes in AIA Trials
`
`69%
`
`58%
`
`5%
`
`6%
`
`5%
`
`7%
`
`•
`
`•
`
`•
`
`“By patent” accounts for whether any
`one petition against particular patent
`results in any unpatenable claims
`
`“By petition” accounts for whether a
`particular petition results in any
`unpatentable claims
`
`PTAB Finding All Claims Unpatentable
`
`21%
`
`29%
`
`0%
`
`10%
`
`20%
`
`30%
`
`40%
`
`50%
`
`60%
`
`70%
`
`80%
`
`By Petition
`
`By Patent
`
`Data Through 6/30/17
`
`26
`
`
`
`Multiple Petition Study Highlights
`• Studied: 7168 petitions addressing 4376 patents
`
`• Who: 84.8% of patents are challenged by a single petitioner
`
`• What: 87% of patents are challenged by 1 or 2 petitions
`
`• Where: 85% of IPRs have a co-pending district court case
`
`• When:
`• 79% of petitions are filed before any Patent Owner Response or a Decision on Institution
`• 95% of petitions are filed in a given petitioner’s first round
`
`• Why: Often a petitioner could not have filed a petition earlier or may be prompted to file later because of the
`litigation circumstances
`
`• How:
`•
`Institution rate by patent (FY17: 70%) is only slightly higher than by petition (FY17: 64%)
`• 58% of patents challenged at the PTAB are unchanged
`
`27
`
`
`
`Multiple Petition Study Next Steps
`
`• Slides available on the USPTO PTAB website
`
`• Data under continued review and future installments of study results
`anticipated
`
`28
`
`
`
`New Precedential Opinion: General Plastic
`Industrial Co. v. Canon Kabushiki Kaisha
`IPRs: 2016-01357, 2016-01358, 2016-01359,
`2016-01360, 2016-01361
`
`29
`
`
`
`Timeline for General Plastic
`
`First Set of
`Petitions Filed
`
`Institution
`Denied on Merits
`
`Second Set of
`Petitions Filed
`
`30
`
`
`
`Multiple Petition Study
`When Petitions are Filed
`
`WHEN PETITIONS ARE FILED
`Single Petition vs. Patent
`Multiple Petition Filed On or Near Same Day
`Multiple Petition Filed after POPR
`Multiple Petition Filed After DI
`
`Timing of Petition
`
`No. of
`Petitions
`
`Single Petition Filed
`Multiple Petitions Filed On or Near
`Same Day
`
`Multiple Petitions Filed After POPR,
`But Before DI
`
`Multiple Petitions Filed After DI
`
`Total
`
`2932
`
`2685
`
`381
`
`1170
`
`7168
`
`% of
`Petitions
`41%
`
`38%
`
`5%
`
`16%
`
`100%
`
`16%
`
`General Plastic
`
`5%
`
`41%
`
`38%
`
`Data Through 6/30/17
`
`31
`
`
`
`Factors Considered
`1. whether the same petitioner previously filed a petition directed to the same claims of the same patent;
`
`2. whether at the time of filing of the first petition the petitioner knew or should have known of the prior art
`asserted in the second petition;
`
`3. whether at the time of filing of the second petition the petitioner already received the patent owner’s
`preliminary response to the first petition or received the Board’s decision on whether to institute review in the
`first petition;
`
`4.
`
`length of time that elapsed between the time the petitioner learned of the prior art asserted in the second
`petition and the filing of the second petition;
`
`5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple
`petitions directed to the same claims of the same patent;
`
`6.
`
`7.
`
`finite resources of the Board; and
`
`requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on
`which the Director notices institution of review
`
`32
`
`
`
`New Informative Decisions Under 35 U.S.C. § 325(d)
`
`33
`
`
`
`Informative Decisions
`
`•
`
`•
`
`•
`
`IPR2016-01571 - Unified Patents, Inc. v. Berman
`
`IPR2017-00739 - Hospira, Inc. v. Genentech
`
`IPR2017-00777 - Cultec, Inc. v. Stormtech LLC
`
`34
`
`
`
`Multiple Petition Case Studies
`
`35
`
`
`
`Case Studies
`
`• Approximately 1% of patents are
`challenged by 7 or more petitions
`
`NUMBER OF PETITIONS PER PATENT
`1
`2
`3
`4
`5
`6
`7 or more
`
`• PTAB investigated the “extreme
`outliers” (aka, the last third of this 1%)
`to determine what commonalities, if
`any, exist
`
`6%
`
`20%
`
`67%
`
`87% of Patents are challenged
`by 1 or 2 Petitions
`
`36
`
`
`
`Extreme Outliers
`
`• Very unusual:
`o Almost 90% of patents face 1 or 2 petitions
`o 16 patents out of 4376 challenged patents (appx. third of 1%) have faced
`more than 10 petitions
`
`• Driven by extreme conditions:
`o Large numbers of claims;
`o Large numbers of defendants; and/or
`o Large numbers of joinders
`
`37
`
`
`
`Extreme Outlier #1: Largest Family
`
`• 125 petitions filed against 10 patents totaling more than 370 claims
`• (per patent: 23, 21, 19, 16, 15, 11, 10, 4, 4, 2)
`• All petitions filed by defendants
`• District Court required a petition for a stay
`• 65 petitions were merely requesting joinder to other petition – effectively a copy
`• Each claim faced only 1 ground total
`• No follow up petitions
`• All claims found unpatentable after PTAB trial
`• Federal Circuit Rule 36 opinions affirming all appealed cases
`
`38
`
`
`
`Extreme Outlier #2: Most Petitions
`
`• 26 petitions filed against a single patent having 306 claims
`• Petitions filed by 3 different petitioners
`• District court litigation filed in waves
`• 2 petitioners were current defendants; 1 was prior defendant
`• 13 petitions (includes 5 requests for joinder)
`• Two petitioners
`• Each petitioner filed all of their petitions on same day
`• All settled prior to DI
`• 13 petitions
`• One petitioner
`• Petitions filed to address over 200 claims
`
`39
`
`
`
`Multiple Petition Case Management
`
`40
`
`
`
`How Judges Coordinate Multiple Petitions
`
`• Generally, utilize the same panel on all cases, with one judge taking “point” on
`interlocutory matters
`
`• Coordinate briefing among petitioners – e.g., have one petitioner take “point”
`• Require meet and confer
`
`• Coordinate oral hearing schedules
`• Option of waiving oral hearings or limiting scope to reduce overlap
`
`• Stagger major due dates to allow attorneys more time to prepare briefs
`
`41
`
`
`
`Upcoming Boardside Chats
`
`Month
`Dec 7, 2017
`
`Topic
`Presenting Prior Art and Proving a Document is a Printed Publication in an Appeal or AIA Trial
`
`Feb 1, 2018
`Design Patent Appeals
`April 5, 2018
`AIA Motion Practice
`June 7, 2018 Motions to Exclude and Motions to Strike in AIA Trials
`
`Oct 4, 2018
`
`Motions to Seal, Protective Orders, and Confidential Information in AIA Trials
`
`Dec 6, 2018
`Feb 7, 2019
`
`Hearsay and Authentication
`Supplemental Information vs. Supplemental Evidence
`
`42
`
`
`
`UNITED STATES
`PATENT AND TRADEMARK OFFICE
`
`
`
`43
`IE
`
`
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