Prior Art in Inter Partes Review

• Author: Stephen Yelderman
• Position: Professor of Law, Notre Dame Law School
• Pages: 2705-2734

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2705

Prior Art in Inter Partes Review

Stephen Yelderman*

ABSTRACT: This Essay is an empirical study of the evidence the Patent Trial

and Appeal Board relies upon when cancelling patents in inter partes review.

To construct our dataset, we collected every final written decision

invalidating a patent claim over a twelve-month period. We coded individual

invalidation events on a reference-by-reference, claim-by-claim basis. Drawing

on this dataset, we report a number of details about the prior art supporting

patent cancellation, including the frequency with which U.S. patents, foreign

patents, and printed publications were cited, the frequency with which the

invalidating prior art would have been amenable to a pre-filing prior art

search, and whether the invalidating prior art was known at the time of

examination.

I.INTRODUCTION ........................................................................... 2706

II. BACKGROUND ............................................................................. 2709

III.METHODOLOGY .......................................................................... 2715

A.COLLECTION AND CODING ..................................................... 2715

B.SELECTION EFFECTS ............................................................... 2717

IV.RESULTS ...................................................................................... 2719

A.ANTICIPATION VS. OBVIOUSNESS ............................................ 2719

B.CATEGORIES OF PRIOR ART .................................................... 2721

C.PRINTED PUBLICATIONS ........................................................ 2723

D.U.S. PATENTS AS PRIOR ART .................................................. 2726

E.FOREIGN PATENTS ................................................................. 2729

V. IPR’S RELATIONSHIP TO EXAMINATION ..................................... 2730

VI. CONCLUSION .............................................................................. 2733

*

Professor of Law, Notre Dame Law School. I am deeply indebted to my research ass istant

for this project, John Sabacinski. I would also like to thank the other participants in this

Symposium for their many helpful comments and suggestions.

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2706 IOWA LAW REVIEW [Vol. 104:2705

I. INTRODUCTION

In 2011, Congress created a new procedural tool—inter partes review

(“IPR”)—for the express purpose of making it cheaper and easier to contest

the validity of issued patents in an adversarial proceeding.1 The first IPR

petitions were accepted in 2012,2 and the first Final Written Decisions

(“FWDs”) issued in late 2013.3

In terms of cost and ease of access, IPR has undoubtedly been a success.

Several years after IPR’s launch, practitioners reported that the cost of

litigating an IPR to a final written decision was about $324,000, which pales

in comparison to the $1–2 million reported cost of litigating a patent in

court.4 The volume of patent invalidations has expanded as well. Whereas

district courts previously invalidated about 80 patents a year on prior art

grounds,5 the Patent Trial and Appeal Board (“PTAB”) now invalidates about

280 patents a year through IPR.6 Largely due to this new procedure, the

number of patents invalidated based on prior art increased by at least 400%

between 2011 and 2017.7

But these numbers hint at a counterintuitive counterpoint: that the

introduction of IPR may have actually increased the total number of dollars

spent adjudicating patents annually. While individual invalidity events are

cheaper in IPR than in district court, the sheer volume of IPR activity could

more than offset these lower unit costs. And though confounding factors

1. See Leahy–Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 299 (2011)

(“AIA”) (codified at 35 U.S.C. §§ 311–319 (2012)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.

2131, 2144 (2016) (discussing the purposes of the AIA amendments); Joe Matal, A Guide to the

Legislative History of the America Invents Act: Part II of II, 21 FED. CIR. B.J. 539, 600–04 (2012)

(summarizing the legislative history of the AIA).

2. See Garmin Int’l Inc. v. Cuozzo Speed Techs., LLC, No. IPR 2012-00001 (P.T.A.B. Sept.

16, 2012) (Petition for Inter Partes Review Under 37 C.F.R. § 42.100), available at https://

ptabdata.uspto.gov/ptab-api/documents/395242/native (last visited June 8, 2019).

3. See Garmin Int’l Inc. v. Cuozzo Speed Techs., LLC, No. IPR 2012-00001 (P.T.A.B. Nov.

13, 2013) (Final Written Decision—35 U.S.C. § 318(a) and 37 § C.F.R. 42.73), available at

https://ptabdata.uspto.gov/ptab-api/documents/340330/native (last visited June 8, 2019).

4. See AM. INTELLECTUAL PROP. LAW ASS’N, 2017 REPORT OF THE ECONOMIC SURVEY I-162,

I-115 (2017) [hereinafter, AIPLA SURVEY]. Note that the reported expense of litigated a patent

in district court changes dramatically depending on the am ount at issue in a case. The numbers

above are reported medians for mid-range cases, with stakes in the $10 million to $25 million range.

5. See Stephen Yelderman, Prior Art in the District Court, 95 NOTRE DAME L. REV.

(forthcoming 2019) (manuscript at 5) (currently on file at Notre Dame Law Sch. Legal Studies

Research, Paper No. 1858, 2018), https://papers.ssrn.com/sol3/pap ers.cfm?abstract_id=3286022.

6. See infra text accompanying note 53 (observin g 283 distinct patents invalidated over a

12-month period).

7. In 2016 and the first half of 2017, district courts were on pace to invalidate about 40

distinct patents per year on grounds of prior art. See Yelderman, supra note 5. Combined with about

280 distinct patents invalidated per year in IPR, about 320 patents are invalidated per year in one

forum or the other—compared with about 80 per year in district court in the early 2010s. The

increase is at least 400%, because these numbers do not include invalidation in post-grant review.