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March 16, 2014


In considering Board IPR invalidity statistics, would it not also be important to objectively examine how much better the prior art cited by the IPR requester [presumably the result of a very extensive and expensive prior art search] is, as compared to the prior art considered in the original examination? [An original application examiner would normally have only a few hours of search time, much less the claim charts for detailed analysis of the best art available provided in an IPR.]
The Fed. Cir. reversal rate of ex parte Board unpatentability decisions has been quite low. It will be interesting to see if there really will be a dramatic differences in Fed. Cir. appeals of IPR decisions, especially those in which the patent owner has presented effective evidence of unobviousness. Nor can valid IPR statistical comparisons be drawn vis a vis lay jury decisions made under a "clear and convincing evidence" burden and a presumption of validity.
I have not yet seen specific examples in which the additional difference of BRI claim interpretation would have clearly made a statistical difference? [Even BRI requires consideration of application prosecution history estoppels for claim interpretation.] I hope that someone will provide demonstrations of that BRI result difference, because it is the subject of a pending legislative proposal claiming that alone could be an IPR result difference "cure".]

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