Greenblum & Bernstein, P.L.C.



keePingTABs  No. 31


February 2018   

In This Issue


·    Taking Stock of AIA Petitions

·    Latest Versions of G&B Spreadsheets

·    Recent Developments In The Law

·    In the News




Contact Us:



Jill M. Browning

703-716-1191 (phone)


Taking Stock of AIA Petitions


The PTAB reports a total of 8067 AIA petitions filed through January 31, 2018.  Of that number, 92% or 7,437 are inter partes review (“IPR”) petitions; 539 Covered Business Method petitions and 91 Post-Grant Review (“PGR”) petitions. 


Of note, PGR petitions continue to grow in number, as the number of patents eligible to participate in these proceedings continues to grow. 


Institution rates for all proceedings have declined to 61%.  In FY16, the institution rate was 67% and in FY17, it was 63%.    


Post-institution settlements is about 23%, up slightly from the FY17 22% reported number.  


Latest Version of G&B Spreadsheets



Please click here for the latest G&B spreadsheet reflecting all IPR filings through January 31, 2018.


Please click here for the latest G&B spreadsheet reflecting all CBM filings through January 31, 2018.


Please click here for the latest G&B spreadsheet reflecting all PGR filings through January 31, 2018.








Recent Developments In The Law 


PTAB Designates Two Decisions “Informative”



Luv N’ Care, Ltd. v. McGinley, Case IPR2017-01216 (PTAB Sept. 18, 2017) (Paper 13).  The Board denied institution after determining that the Petition was not timely filed under 35 U.S.C. § 315(b) based on the date the payment was received.  The Office did not receive payment until after the date the Petition was filed and the Board determined that the Petitioner failed to show good cause to waive the fee requirement and denied Petitioner’s motion to assign an earlier filing date.


Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals, Inc., Case IPR2014-00360 (PTAB June 27, 2014) (Paper 15).  The Board deemed a Petition timely filed under 35 U.S.C. § 315(b) because filing a motion to file an amended complaint (adding a new patent) is not “service” of the amended complaint (even though the amended complaint was attached to the motion) that would trigger the one year statute of limitations to file an IPR.  Rather, the Court, in the district court litigation, granted the motion to file the amended complaint and set a deadline by which the amended complaint must be filed and responded to.  The date the plaintiff filed the amended complaint (and served it) is the date that constitutes “service” of the complaint, thereby triggering the one-year time bar under Section 315(b). 



Federal Circuit Rules PTAB’s Determination of Time Bar Under Section 315(b) Is Appealable


In Wi-Fi One, LLC v. Broadcom Corp.,  (Fed. Cir. January, 2018), the Federal Circuit issued an en banc decision holding that PTAB determinations of whether inter partes review petitions are time-barred under 35 USC 315(b) are appealable.

Wi-Fi argued that the USPTO Director was barred from instituting inter partes review under § 315(b) because Broadcom was in privity with defendants in the previous litigation, who had been served a complaint more than one year before Broadcom filed its petitions. The original CAFC 3-judge panel disagreed, citing prior court precedent that prohibited judicial review of the Board’s decision not to institute based on the time-bar of § 315(b).  The en banc panel vacated the prior decision, holding that the panel’s decision was inconsistent with the “strong presumption” that favors judicial review of administrative actions and further fining that Congress did not indicate a “clear and convincing” intent to preclude judicial review of the PTAB’s § 315(b) time-bar determinations.





In November, 2018, the Supreme Court heard argument on whether the post-grant AIA proceedings should be scrapped for violating the constitutional rights of the patent owners.  A decision finding the inter partes review proceedings unconstitutional would have a significant impact on patent litigation in the United States and would immediately raise concerns regarding the fate of those patents already found unpatentable under such a proceeding. 

It was reported that the justices Ginsburg, Kagan and Sotomayor seemed to believe that the IPR system is constitutional at least because the PTAB’s decisions are subject to review by an Article 3 court (the Federal Circuit).  However, other Justices (including Roberts, Kennedy and Breyer) asked questions that could easily be read as casting some doubt on the constitutionality of the proceedings.  At the end of the day, the question appears to be one that the Court will have a tough time grappling with and the consequences could be dramatic. 


We will continue to provide updates with respect to this case.  A decision is expected by the end of June, 2018.



Fee Increase:  In January, 2018, the USPTO patent fees increased. The fees associated with inter partes review increased 72%, from $9,000 to file an IPR request to 15,500.  The post-institution fee rose from $14,000 to $15,000, making the total $30,500 to file an IPR on 20 claims or less (if instituted). 







The GREENBLUM & BERNSTEIN keePing TABs NEWSLETTER is issued by GREENBLUM & BERNSTEIN, P.L.C., an intellectual property firm, to provide timely news in the field of intellectual property.  The NEWSLETTER provides monthly updates on recent issues of general interest in this field.  The views and/or opinions expressed herein do not necessarily reflect those of GREENBLUM & BERNSTEIN, P.LC.  Information regarding the contents of the Newsletter can be obtained by contacting Bruce Stoner at GREENBLUM & BERNSTEIN, P.L.C., 1950 Roland Clarke Place, Reston, VA 20191.  © 2018 GREENBLUM & BERNSTEIN, P.L.C.