IRVINE, CALIF.—The numbers don’t lie: the volume of administrative patent challenges filed with the USPTO’s Patent Trial and Appeal Board (PTAB) is down from recent years.
Womble Bond Dickinson attorney Brent Babcock discussed the recent PTAB filing downturn with Bloomberg Law. In 2019, 1,321 validity challenges were filed with the PTAB. This is a 23 percent drop from the previous year and the lowest level since 2013, the first full year for the PTAB.
Babcock tells Bloomberg Law that recent changes in the PTAB’s review process have given petitioners more reasons to consider whether to file validity challenges with the PTAB. These changes include limiting repeat challenges for the same patent, improved abilities for the patent owner to amend its claims, and the PTAB’s adoption of the same claim construction standard used in district court litigation.
“Lawyers and clients are stepping back and thinking harder about ‘do I really want to take on this task?’”
“Lawyers and clients are stepping back and thinking harder about ‘do I really want to take on this task?’” Babcock said.
The decline also reflects a sharp downturn in patent infringement litigation in US District Courts. From 2013 to 2019, the number of patent infringement cases filed dropped from more than 6,300 to less than 3,600, according to Bloomberg Law. Finally, observers say the Supreme Court’s decision in the 2018 SAS Institute v. Iancu case has made validity challenges tougher.
“These are all little pieces on the scale that, as a lawyer and as a client, kind of depresses your notion of, ‘is this is going to be a good decision or not,” Babcock said.
Babcock also recently spoke about the downturn in PTAB filings with Law.com’s “Skilled in the Art” column. Click here to read more.
Brent Babcock represents high-technology clients in every aspect of intellectual property disputes, focusing on federal district court litigation throughout the country, trials and post-grant patent proceedings before the USPTO's Patent Trial and Appeal Board and alternative dispute resolution (ADR) proceedings, including domestic and international arbitrations. His practice also includes pre-litigation counseling, pre-interference and post-grant proceeding consulting, and appellate briefing and oral argument before the United States Court of Appeals for the Federal Circuit.