Frequent Filers? What the Data Says about Parallel PTAB Cases

• Author: Roshan S. Mansinghani - Robert K. Jain
• Position: Roshan S. Mansinghani is a senior patent counsel at Unified Patents Inc. in Dallas, Texas. He manages legal strategy, litigation, and licensing for Unified, including PTAB proceedings and appeals. He can be reached at roshan@unifiedpatents.com. Robert K. Jain is in-house counsel at Unified Patents Inc. and specializes in high-tech PTAB...
• Pages: 43-47

Published in Landslide® magazine, Volume 12, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

September/October 2019 n LANDSLIDE 41

Frequent

Filers?

What the

Data Says about

Parallel

PTAB Cases By Roshan S. Mansinghani

and Robert K. Jain

Few other changes in patent law have caused as much uproar as the creation of the Pat-

ent Trial and Appeal Board (PTAB) under the 2011 America Invents Act (AIA). The

PTAB was created to more efciently address the swelling patent litigation docket of

the time via proceedings in the U.S. Patent and Trademark Ofce (USPTO) that often

occur in response to, and run parallel to, district court patent litigation (AIA challenges).

“In 2018, the PTAB was the most common venue for patent disputes overall, having

received more new patent disputes than the top three district courts combined.”1 Here,

we analyze patterns and trends in the use of AIA challenges by district court litigants.

AIA challenges are an efcient mechanism for challenging patent validity and result

in the cancellation of at least one patent claim just shy of 60 percent of the time.2 Multiple reports

estimate that somewhere between 80 and 90 percent of these challenged patents were previously

asserted in district court.3 This has led some to surmise that patent owners are too often facing AIA

challenges when asserting claims in district court. A closer examination of the data, however, indi-

cates that this risk is much smaller than one might expect.