Most Comprehensive Study of Patent Trial and Appeal Board Decisions Shows Rate of Unpatentability Findings Overstated

Second Annual Report by IP Law Firm Fitzpatrick, Cella, Harper & Scinto Uses Most Accurate Methodology

NEW YORK--()--The law firm Fitzpatrick, Cella, Harper & Scinto has released findings from its second annual study of decisions issued by the Patent Trial and Appeal Board (PTAB), which uses an exacting methodology to provide a precise picture of unpatentability findings. Despite the initial anecdotal reports that suggested a dire situation for patent owners, the study shows much more balanced outcomes.

In contrast with those early reports, the study reveals that 40% of patent claims challenged in Inter Partes Review (IPR) proceedings survived scrutiny, and that about 15% of patent claims withstood challenges in the Transitional Program for Covered Business Method Patents (CBM) reviews. The data also shows that the higher rate of unpatentability in CBM reviews has more to do with the Supreme Court’s decision in Alice v. CLS Bank, which made it more difficult to obtain protection for business method patents. The data shows that CBM decisions are significantly more likely to strike down claims under Alice-type challenges than on prior art challenges.

For the study, the firm reviewed all final written decisions in IPR and CBM proceedings as well as substantive decisions not to institute a proceeding, and took into account duplicative challenges. Fitzpatrick’s inclusion of cases in which the PTAB decided not to institute proceedings—rejecting the challenger’s case at the outset—adds critical information. The Fitzpatrick study includes in its data all substantive decisions not to institute trial, while excluding procedural decisions (e.g., missing filing deadlines). This added level of review provides the most accurate picture of the overall effect of challenges at the PTAB.

The enhancement to Fitzpatrick’s methodology was driven in part by a trend in which the PTAB has been denying institution at an increasing rate. The PTAB declined to institute 13.5% of the IPR cases in 2013. That rate climbed to 25.8% in 2014 and 34.7% in 2015.

“With this new, more accurate methodology, we’ve shown that, while PTAB proceedings still favor challengers, they do not have as significant an advantage as previously thought,” said Justin Oliver, partner at Fitzpatrick and head of the firm’s PTO Contested Proceedings practice. “In fact, the results indicate PTAB proceedings are more comparable to the European Patent Office’s opposition procedure and, on certain issues, district court litigations.”

In 2015, claims survived European opposition proceedings in unamended form in about 31% of the cases. The original claims survived IPR trials at a rate of 40%. However, in European oppositions, 38% of the decisions approved amended claims, giving patent owners viable claims 69% of the time. Conversely, the approval of amended claims in the PTAB has been virtually non-existent. Thus, the data shows that the real story may not be that the PTAB disfavors patent claims, but that it disfavors claim amendments.

“It is clear that the PTAB bench is evolving, and we may be moving even closer to a European opposition system,” said Jonathan Berschadsky, partner at the firm and chair of the Telecommunications and Networks practice group.

For both patent holders and challengers, the Fitzpatrick study continues to demonstrate the strategic choices that must be made in handling PTAB proceedings and litigations. “In navigating the issues, parties must consider a host of competing variables,” said Oliver. “We believe our data arms them with the information they need to make smart decisions.”

Other key findings from this year’s study include:

  • For IPRs, claims survived anticipation challenges 59% of the time, where the survival rate in district court litigations was about 69%; however, the story changes for obviousness challenges, where the survival rates at the PTAB and district courts are about 50% and 72%, respectively.
  • Subject matter challenges related to Alice have a success rate in CBMs of about 76%.
  • While the rate at which the PTAB denies institution has been rising, once instituted, the success rate of validity challenges in IPRs is about 85%.

“The data shows that obviousness challenges receive much better receptions in the PTAB as compared to district courts,” said Berschadsky. “It also shows that the most important decision in a PTAB trial may be the institution decision, rather than the final written decision.”

The full report, which includes additional analysis of IPR and CBM decisions, is available here.

For additional insight, please visit Fitzpatrick’s contested proceedings information hub, the Post Grant HQ.

About Fitzpatrick, Cella, Harper & Scinto

Fitzpatrick, Cella, Harper & Scinto (, founded in 1971, is a leading national intellectual property law firm of nearly 150 lawyers with offices in New York, Costa Mesa, California, and Washington, D.C. The Firm’s practice covers the spectrum of intellectual property services, including applying for patent and trademark protection, litigation, appeals, interferences, post-grant challenges (e.g., IPRs), alternative dispute resolution, licensing, opinions, corporate transactions, and due diligence. Fitzpatrick represents an international client base from Fortune 500 companies to start-up companies.


Fitzpatrick, Cella, Harper & Scinto
Linda Ficano, 212-218-2284

Release Summary

Fitzpatrick, Cella, Harper & Scinto's second annual study of Patent Trial and Appeal Board decisions uses most accurate methodology to show rate of unpatentability findings overstated.


Fitzpatrick, Cella, Harper & Scinto
Linda Ficano, 212-218-2284