The current wisdom is that if you are planning to enforce a patent, you should budget to defend the inevitable IPR or CBM. However, a review of the first three years of AIA proceedings suggests that the chance of a litigated patent being challenged in the PTAB is only around 20%. This analysis is from the perspective of individual patents, rather than the number of cases impacted, and so does not directly address multiple assertions of the same patent.
To assess the overall rate of PTAB challenges, we surveyed the 11,782 patents that have been the subject of a complaint in district court or a petition to the PTAB for IPR, CBM, or PGR between September 16, 2012 and September 15, 2015. (All data were drawn from Docket Navigator.) For the period surveyed, 17.3% of patents that were the subject of a complaint in district court were also subject to a petition for AIA review.
Table 1
Looking to the trend over time, this petition rate remains relatively constant between 17% and 24%, disregarding district court complaints that were filed within the last year of the survey period. The tail of the survey period has a greatly reduced petition rate, suggesting that the majority of petitions are filed late in the one year window.
Figure 1
Perhaps unsurprisingly, the petition rate does vary significantly by class. Examining the top 20 classes by complaint count, Class 701, Data processing: vehicles, navigation, and relative location, shows the highest petition rate at 43%, while Class 514, Drug, bio-affecting and body treating compositions shows the lowest rate at 9%. Notwithstanding their overrepresentation in the top 20, the 700 classes, which most commonly appear on data processing patents, show an aggregate petition rate of 27%, much closer to the overall average. In comparison, the 600 classes, which most commonly appear on medical device and surgical method patents, show a petition rate of 19%, and the 500 classes, which most commonly appear on biochemical patents, show a petition rate of only 10%.
Table 2
The risk of an IPR petition is high enough from the perspective of an individual case and an important factor in budgeting. Over a larger sample size, however, the chance that an individual patent will be challenged is appreciably lower than might be expected.