Reasons for denial of IPRs: insufficient evidence, insufficient reasoning, and failure to timely file the petition
Note the law review article THREE HUNDRED NOS: AN EMPIRICAL ANALYSIS OF THE FIRST 300+ DENIALS OF INSTITUTION FOR INTER PARTES AND COVERED BUSINESS METHOD PATENT REVIEWS PRIOR TO IN RE CUOZZO SPEED TECHNOLOGIES, LLC, 14 J. Marshall Rev. Intell. Prop. L. 112 (2015) , with concluding remarks
As of the two-year anniversary of IPR and CBM proceedings, parties have filed over 2,000, surpassing even ambitious expectations for the program--and representing [p. 142] a sea change in patent law. Many have merited institution; many have not. While cases were instituted in over 75% of all proceedings, n172 that percentage might fall, as certain patents survive review, others are held unpatentable, and the Board faces more patents and patent families already challenged under IPR or CBM. n173 As some practitioners conjecture, perhaps the "low-hanging fruit" of particularly problematic patents may grow scarce in years to come, further depressing these percentages. n174 And as battle-tested patents emerge from the Board largely immune to further validity challenges, certain petitions may be denied under § 325(d) as presenting art and arguments substantially similar to those previously considered by the Office. n175
IPR and CBM proceedings, if used effectively, can lead to efficient outcomes, where good patents strengthen and poor patents return from issue. This Article seeks to help, to "improve patent quality and limit unnecessary and counterproductive litigation costs," n176 through discussing the main factors contributing to the denial of petitions for CBM review and IPR.
Reviewing all decisions to deny petitions to institute CBM review demonstrated that the standing factors--such as the "financial product" test--have not accounted for the denial of such petitions, but rather that the petitions have been denied on the basis of the challenged claims. Reviewing the first 100 denials of institution for IPRs illustrates that three primary factors resulting in denial: insufficient evidence, insufficient reasoning, and failure to timely file the petition.
This Article demonstrates that the primary factor, with increasing relevance, is the petitioner's insufficiently articulated arguments. Fortunately, this highlights the control experienced petitioners have in increasing the likelihood petitions for IPR will be instituted. If practitioners consider the foregoing, we look forward to a more complete, just, and efficient implementation of Article I, Section 8 of the Constitution.
See earlier post on IPBiz: