An Empirical Study Comparing Patent Validity Challenges at the Patent Trial and Appeal Board vs. the Federal District Courts
Posted: 3 Dec 2020 Last revised: 12 Dec 2020
Date Written: November 14, 2020
Using an originally-constructed database of over 12,000 patent decisions heard at the Patent Trial and Appeal Board (“PTAB”) and over 75,000 patent law decisions heard by the federal district courts from 2012 through October 2020, this Article analyzes the interplay between the two forums in how patent validity claims are adjudicated, particularly focusing on inter partes review (“IPR”). Reviewing over 7,500 patents assessed at the PTAB over the past six years of the adjudicative tribunal’s existence, the Article analyzes whether there are differences in institution rates and final outcomes depending on the type of patentee owner, the technology type, and whether or not there is a prior or past district court case and decision. While about 80% of PTAB proceedings involve a patent that has or is being litigated in at least one district court, there are only about 2,000 PTAB cases in which the district court has ruled on invalidity grounds. Further, in most cases that do involve a PTAB proceeding, the district court rules a patent invalid based on lack of statutory subject matter—a legal challenge that cannot even be brought in an IPR proceeding. Comparing district court cases where the court rules on eligible PTAB statutory sections—namely obviousness and anticipation grounds—indicates preliminarily that the district court and the PTAB largely agree on outcomes. Overall, this empirical research contributes to the debate about how the patent system—and in particular, the practices at the PTAB—should be reformed, and about the role that the administrative state has in patent policy and in influencing outcomes in the federal courts. Specifically, it questions whether the grounds for PTAB proceedings should be enlarged to encompass challenges based on section 101 subject matter issues.
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