In September 2012, inter partes review (IPR) and covered business method (CBM) patent review procedures launched at the Patent Trial and Appeal Board (PTAB). Proponents of these processes believed that a PTO-affiliated forum could better evaluate the validity of a patent claim. They also argued the new system would improve the overall quality of patents. Early case results show that the PTAB's new processes have disproportionately favored patent challengers; patent owners whose patents are challenged have not done well. The promise of improving patent quality may be coming at the cost of invalidating incremental inventions that have long served as the life-blood of the patent system.
Through May 2014, the numbers speak for themselves:
In the PTAB's first 67 final written decisions, only 9 of the patents submitted for review have emerged unscathed.
Out of the 1,093 claims addressed by those 67 decisions, only 231 claims survived, resulting in a survival rate of about 21 percent.
Patent owners have also been largely unsuccessful in trying to introduce claim amendments. In 24 motions to amend, only one has been successful (and the successful patent owner was the United States government).
Is the PTAB Too Anti-Patent?
Claim survival in the PTAB to date has been the exception. The recent PTAB decisions have raised questions in the patent community about whether the IPR and CBM system is too anti-patent and pro-challenger. For example, during the AIPLA conference last fall, Former Chief Judge Randall Rader compared the roughly 300 PTAB judges to "death squads killing property rights" that 7,000 trained patent examiners worked to grant. Indeed, even with PTAB's access to information and specialization, the PTAB has shown an expansive view of the obviousness doctrine and little interest in considering evidence of secondary considerations. These tendencies of the PTAB should give pause to any patent holder facing an IPR or CBM review.
A broad interpretation of the obviousness doctrine: a means-to-an-end approach?
Early PTAB decisions, and the mass death of patent claims, suggest that broad claim cancellations is a desired end. It appears that the PTAB will quickly invalidate a claim if it finds limitations anywhere in the prior art. This was the case in Garmin International, Inc. v. Cuozzo Speed Technologies, Inc., IPR2012-0001, Paper 59 (PTAB Nov. 13, 2013), where the PTAB canceled the claims based upon combinations of three, and even four, references. Little discussion was made of the motivation to combine so many references together. In another example, one claim at issue in Microsoft Corp. v. Proxyconn, Inc., IPR 2012-00026/IPR2013-00109, Paper NO. 73 (PTAB Feb. 19, 2014) survived only because the PTAB could not find a claim limitation anywhere in the prior art. In both cases the inventions were incremental, building from already-existing, known elements.
Expert Testimony May Be Your Best Chance at Success
As it appears that the PTAB is applying greater scrutiny to these incremental inventions, it is important to muster persuasive expert testimony to improve your chances to convince the PTAB that the invention is patentable. Claims that have survived PTAB review in most, if not all, cases benefited from persuasive expert testimony. For example, in Synopsys, Inc. v. Mentor Graphics Corp., IPR2012-00042, Paper No. 60 (PTAB Feb. 19, 2014), the claims covered the simulation and prototyping of integrated circuits. In finding the claims not unpatentable, the PTAB stated:
For claims 1-4, 6, 7, 11, 28, and 29, however, we give significant weight to the testimony of Mentor Graphics's expert, Dr. Sarrafzadeh, who persuasively explains that Gregory does not disclose each and every element of the claims.
Id. at 28. The Board again repeated this sentiment later in its decision, giving the expert's testimony "substantial weight." Id. at 31. The Board's decision in Synopsys is consistent with many other decisions that credit the expert testimony of one party or the other as supporting the Board's final outcome. If you find yourself before the patent office, be sure that your expert testimony is specific and on point, because the Board affords no weight to conclusory statements. See 37 C.F.R. § 42.65.
Conclusion: Be Wary, Be Prepared
Is your patent guaranteed an inglorious death before the PTAB? Early PTAB final written decisions suggest that, if it can, the Board will find the limitations they need anywhere in prior art and invalidate your claim. For patent holders who want their patents to survive, the first line of defense comes from understanding the PTAB's approach and the need for specific, persuasive expert testimony to distinguish the prior art.
 United States Court of Appeals for the Federal Circuit.