By Kevin E. Noonan --
Earlier this month, Bloomberg Law and the American Intellectual Property Law Association released a report entitled "Patent Owners, Petitioners not Far Apart on PTAB Value." This report was the result of a research study performed in November and December of 2016 by AIPLA and Bloomberg Law, asking respondents their views on the Patent Trial and Appeal Board (PTAB), and in particular, the effects of post-grant review (particularly inter partes review proceedings) on patent litigation, value, licensing and other topics.
The study surveyed a total of 334 respondents, comprising 167 patent attorneys and agents, 62 in-house and 105 outside counsel. Overall, two thirds of respondents rated the benefits of IPRs to be 7 or greater (on a scale of 1-10). These results were variable with circumstance: 85% of petitioners in active litigation and 48% of patent owners rated the benefits of IPRs to be greater than 7 on that scale, with 42% of petitioners in litigation but only 16% of patent owners rating IPRs as a 10. The seemingly anomalous receptivity from patent owners may reflect resignation, but perhaps even more so the recognition that surviving an IPR raises litigation estoppel, enhances the perception of validity, and inspires confidence in enforcement, due to the broader scope of claims as considered by the PTAB and the lower evidentiary standard for petitioners compared with patent infringement litigation defendants. Both petitioners (88%) and patent owners (68%) believe IPRs provide lower cost benefits over district court litigation and similar statistics (80% petitioners, 57% patent owners) show that respondents believe that IPRs speed up litigation.
Petitioners (64%) appreciate the technical expertise of PTAB APJs, but 32% of patent owners believe that expertise is the reason for adverse PTAB outcomes. Petitioners (39%) and patent owners (49%) agree that the lack of a presumption of validity is an important aspect of IPRs that operate in their favor or against them, respectively, and similar responses were obtained (petitioners, 31%; patent owners, 48%) regarding the broadest reasonable interpretation standard for claim construction before the PTAB. Similarly, the majority of both patent owners and petitioners responded that IPR outcomes influence patent infringement litigation.
Finally, the value of licenses and the value of patents decreased somewhat, although license value was less strongly affected (26% vs. 43%). And the majority (60%) of respondents reported no change in patent application budgets as a result of infringers having the IPR option.
Bloomberg and AIPLA do not claim any statistical significance for this survey, inter alia, due to the small sample size. While somewhat intriguing, it will likely take a generation for any clear cut trend to emerge regarding the effects of IPRs on patenting, innovation, and whether the oft-invoked justifications for these and other post-grant review provisions yield the benefits their proponents so loudly predicted.