In an effort to shed light on the practice of filing multiple petitions under the America Invents Act (AIA) at the Patent Trial and Appeal Board (PTAB), the United States Patent and Trademark Office (USPTO) recently released a detailed study. The study, spanning fiscal years 2015 through 2022, aims to analyze the frequency and effectiveness of multiple petitions filed by the same petitioner against the same patent. This blog post delves into the key findings of the study and discusses the implications for both petitioners and patent holders.

The USPTO acknowledged that while multiple petitions by a petitioner may occasionally be necessary, it should be the exception rather than the norm. In an effort to strike a fair balance between the interests of petitioners and patent holders, the USPTO issued decisions and guidance between fiscal years 2016 and 2019. These guidelines sought to ensure that meritorious challenges could be raised effectively, while discouraging repetitive or inefficient challenges for patent owners.

The updated study reveals that the majority of patents face challenges through a single petition, indicating a decrease in the filing of multiple petitions following the USPTO’s guidance. Noteworthy findings from fiscal year 2022 include:

• Single Petitions: Approximately 90% of all challenged patents involved only one or two petitions filed by any challenger, with 72% facing only one challenge throughout the process.
• Serial Petitions: Out of over 1,000 challenges filed, only 17 patents (1.7% of all challenges) encountered serial petitions by the same petitioner. Surprisingly, a mere three cases (0.3% of all challenges) resulted in institution based on a serial petition.
• Parallel Petitions: Around 7.5% of all challenges (76 patents) saw parallel petition attempts by the same petitioner. Of these attempts, only 35 (3.4% of all challenges) led to institution on parallel petitions.

The study reviewed serial petitions filed during fiscal years 2015 through 2022.10 The study shows that after the PTAB issued guidance in both NVIDIA (FY 2016) and General Plastic (precedential, FY 2018), serial petition filing attempts markedly decreased from 99 attempts (9% of challenges to a patent by a petitioner) in fiscal year 2015 to 17 attempts (1.7% of all challenges to a patent by a petitioner) in fiscal year 2022.  FIG. 1 of an executive summary of the study shows the decline of attempts to file multiple serial petitions over the years as well as associated challenges.

FIG. 2 of the executive summary shows that during the same time period, the “success rate” of serial petitions, i.e., the number of instituted AIA trials based on serial petitions, also declined from 46 institutions (4% of all challenges to a patent by a petitioner) in fiscal year 2016 to only 3 institutions (0.3% of all challenges to a patent by a petitioner) in fiscal year 2022.

Figure 3 of the executive summary shows the decline in parallel petition attempts with a marked decrease.  In particular, after the USPTO issued guidance as it pertains to parallel petitions in fiscal year 2019, petitioners filed fewer parallel petitions, both in terms of absolute numbers and as a percentage of all challenges to a patent by a petitioner, from a high of 206 attempts representing about 20 percent of all challenges (fiscal year 2019) to a low of 76 attempts representing about 7 percent of all challenges (fiscal year 2022).

Figure 4 of the executive summary shows that during the same period, the “success rate” of parallel petitions, i.e., the number of groups of parallel petitions resulting in multiple instituted trials, also declined from a high of 112 institutions (about 11% of challenges to a patent by a petitioner) in fiscal year 2019 to a low of 35 petitions (about 3.4% of challenges to a patent by a petitioner) in both fiscal years 2021 and 2022. Thus, parallel petition filings and their success rates have notably dropped since fiscal year 2019 and remain low today.