As part of our ongoing work to track the impact of COVID-19 on litigation, Lex Machina surveyed new petitions filed with the Patent Trial and Appeal Board (“PTAB”) that challenged patentability of claims in issued patents. We also reviewed recent PTAB trial activity to examine how the COVID-19 pandemic shutdown has impacted this administrative law body.
Here is a summary of our findings:
- New petition filings are trending upwards. The number of new PTAB petitions increased in May, June, and July 2020 compared to those months in 2019.
- More distinct patents were challenged. The number of issued patents where one or more claims were challenged at PTAB increased in 2020 compared to 2019.
- PTAB-issued decisions followed statutory time frames. PTAB Administrative Patent Judges (“APJs”) issued institution decisions and final written decisions within time frames similar to 2019 and 2018, and close to or within statutory time frames.
Methodology
Lex Machina’s basic PTAB data (e.g., trial title, patent number, filing date, termination date, etc.) comes from the United States Patent & Trademark Office’s website. Lex Machina enhances this data in numerous ways, including granular annotations of PTAB trials at five stages of proceedings (petition, pre-institution, institution decision, post-institution, and final decision). We conducted a month-over-month comparison from February through July for 2018, 2019, and 2020 of new petitions filed for inter partes review, post-grant review, and covered business method review, as well as trial proceedings that progressed to institution decision or final decision.
New PTAB Petitions Filed
The table below shows the new PTAB petitions filed for the months of February through July in 2018, 2019, and 2020.
There was a higher number of new PTAB petitions filed in 2020 than in 2019 for the months of May (127 in 2020 compared to 107 in 2019), June (159 in 2020 compared to 112 in 2019), and July (159 in 2020 compared to 113 in 2019). This follows a period in which the number of new PTAB petitions filed in 2020 were slightly lower than those filed in 2019 for the months of March (99 in 2020 compared to 126 in 2019) and April (94 in 2020 compared to 96 in 2019). We note that the number of new PTAB petitions filed in 2020 prior to the COVID-19 pandemic had been higher than the parallel period in 2019, with February 2020 seeing 76% more petitions filed than in February 2019 (162 in 2020 compared to 92 in 2019).
A factor that may have led to the drop in the number of petitions filed in March 2020 is the issuance of official government advisories around the COVID-19 situation, which were issued in very late February. A state of emergency in the US was announced March 15th. During March 1-15, only 34 new petitions were filed, while March 16-31 showed a significant rebound with 65 petitions filed, nearly double the first half of the month.
In addition to the brief drop in PTAB petitions filed in March 2020, there was an impact on the content of PTAB filings. From February 2020 to July 31, 2020, 75 filed petitions mentioned the current health crisis, using the keywords “COVID-19”, “coronavirus”, or “the pandemic”. While the majority of these mentions referred to procedural considerations (e.g., an agreement regarding e-filing or e-delivery of documents), a few petitioners have argued that their petitions should be considered due to the extreme delays and unreliability of federal district court. See petitioner arguments in IPR2020-01333 and IPR2020-01356.
New PTAB Petitions Filed Per Month
| Month | 2018 | 2019 | % Change | 2020 | % Change |
| February | 143 | 92 | -36% | 162 | 76% |
| March | 131 | 126 | -4% | 99 | -21% |
| April | 98 | 96 | -2% | 94 | -2% |
| May | 166 | 107 | -36% | 127 | 19% |
| June | 142 | 112 | -21% | 159 | 42% |
| July | 128 | 113 | -12% | 159 | 41% |
New PTAB Petitions Filed Per Month
Total Patents Challenged
Petitioners challenged the patentability of one or more claims for more issued patents in 2020 than in relevant time periods in previous years. In February 2020, for example, 141 distinct patents were disputed in newly filed petitions, more than double the 65 patents disputed in February 2019. With the exception of March 2020, where the number of disputed patents fell by 10% year-over-year (from 103 in 2019 to 93 in 2020), the number of disputed patents throughout 2020 increased from 2019 when comparing parallel time periods.
Total Patents Challenged at PTAB Per Month
| Month | 2018 | 2019 | % Change | 2020 | % Change |
| February | 111 | 65 | -41% | 141 | 117% |
| March | 106 | 103 | -3% | 93 | -10% |
| April | 80 | 68 | -15% | 72 | 6% |
| May | 129 | 90 | -30% | 112 | 24% |
| June | 107 | 91 | -15% | 132 | 45% |
| July | 97 | 99 | 2% | 126 | 27% |
Total Patents Challenged at PTAB Per Month
Timing of Institution Decisions at PTAB
The table below shows the median time to institution decision for each month listed. PTAB has recently issued institution decisions at, about, or close to statutory time limits, and at speeds consistent with or faster than in 2019 or 2018, despite the COVID-19 crisis. For example In March 2018, the median time to institution decision was 195 days, while in 2019 it was 188 days. During both February 2020 and February 2029, the time to institution was the same (188 days), which shows that COVID-19 did not slow the time to institution decision. The statutory guideline is six months from the petition to the institution decision (assuming a patent owner response is filed), and these time frames are close to the approximate statutory time frame (180 days), and as fast or faster than previous time frames, year-over-year.
The median time frames to institution decision in 2020 are nearly identical to or faster than those in 2018, and slightly faster than in 2019. With the exception of March, which shows no change from 2019, all time frames to institution in 2020 have been shorter than the previous year, with April, June, and July being significantly shorter (8%, 9%, and 10%, respectively).
March’s activity may have been impacted by the official orders regarding PTAB’s COVID-19 safety measures and other COVID-19-related policies that were implemented in March. Slightly faster time frames in 2020 might be attributed to USPTO policy changes promoting conservation of judicial resources. In addition, the lower number of filings during 2019 made the caseload in 2020 more manageable, leading to the slightly lower rate of PTAB activity in 2020.
Median Time to Institution Decision from Petition (Total Days)
| Month | 2018 | 2019 | % Change | 2020 | % Change |
| February | 195 | 203 | +4% | 195 | -4% |
| March | 195 | 188 | -4% | 188 | 0% |
| April | 191 | 201 | +5% | 185 | -8% |
| May | 192 | 191 | -1% | 186 | -3% |
| June | 188 | 204 | +9% | 186.5 | -9% |
| July | 189.5 | 205.5 | +8% | 184 | -10% |
Timing of Final Decisions at PTAB
The table below shows that PTAB has recently reached final decision stages at or below statutory time limits, and at speeds consistent with or just slightly slower than 2019 or 2018, despite the COVID-19 crisis. The statutory guideline is one year from institution decision to final decision.
For final decisions issued by PTAB in February-July 2020, the median time frames were within 365 days of the institution decision, which meets the statutory time frame. In addition, the time frames for each month are very uniform year-over-year (within a day or two of previous years), which demonstrates PTAB’s consistency in adhering to time frames.
Median Time to Final Decision from Institution Decision (Total Days)
| Month | 2018 | 2019 | % Change | 2020 | % Change |
| February | 362 | 364 | +1% | 364 | 0% |
| March | 362 | 363 | 0% | 364 | 0% |
| April | 363 | 363 | 0% | 363 | 0% |
| May | 361 | 364 | +1% | 364 | 0% |
| June | 361.5 | 361 | 0% | 363 | +1% |
| July | 362 | 362 | 0% | 363 | 0% |
Takeaways Regarding PTAB During COVID-19
PTAB is a unique adjudicative body within the USPTO that arose from the America Invents Act in 2011. Its function, however, has been served through various government bodies since at least the 1800s. PTAB provides a forum to review the patentability of issued patents, as well as to review appeals of patent examiner decisions.
The USPTO built the PTAB processes to work virtually, as well as in person. When PTAB began accepting petitions in September 2012, it accepted electronic filings. In addition, hearing rooms were built to accommodate remote presentations and interactions among judges and parties, allowing judges to be in different locations and communicate remotely.
COVID-19 safety policies were implemented for PTAB in mid-March 2020, similar to federal courts. At about the same time, rather than suspending ongoing trials, the USPTO ordered that scheduled conferences, hearings, and in-person meetings be conducted via phone or video conference. PTAB continued its trial flow in an effective, timely fashion. It has been reliable throughout this spring and summer, causing some parties to choose PTAB as a solution for stalled federal district court cases. Other factors that may have had some impact on PTAB trends include the option to request extensions or waive fees, which was implemented in mid-March, and makes PTAB arguably more petitioner-friendly. As the COVID-19 crisis continues, ongoing disruptions and delays to the federal processes may make PTAB an even more frequent choice.