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)

Tasked in 2011 with creating powerful new patent review trial regimes, the U.S. Patent and Trademark Office—through the efforts of their freshly empowered quasi-judicial body, the Patent Trial and Appeal Board—set to creating a fast-paced trial with limited discovery and concentrated efficiency. For two years, the proceedings have proved potent, holding unpatentable many of the claims that reached decisions on the merits. Yet a small subsection of petitions never make it past the starting gate, resulting in wasted time and effort on the parts of petitioners—and likely sighs of relief from the rights-holders. The AIA exempted institution decisions from appellate review, and the Federal Circuit recently held such decisions—denials and institutions alike—are outside that court’s appellate jurisdiction.

Parties bringing and defending petitions can learn volumes by looking to the set of denials of institution prior to In re Cuozzo Speed Technologies. In a regime where so many petitions have been granted, knowing the ones that haven’t could be the key to success.