Panelists on last week’s IP Chat Channel webcast discussed attempts to prove that a patent claim is non-obvious under Section 103 of the U.S. patent law by invoking the legal analysis of “commercial success” in inter partes review (IPR) cases at the USPTO’s Patent Trial and Appeal Board (PTAB). The speakers provided concrete solutions for beating the considerable odds on this issue by examining the overwhelming number of failed attempts to do so since IPRs were instituted under the America Invents Act in 2011. MICHAEL FLIBBERT of Finnegan said, “By understanding the failures, hopefully you’ll have a better idea of what’s needed to be successful.”
Mr. Flibbert and the other speakers—economist JOHN JAROSZ of Analysis Group and Professor PRADEEP CHINTAGUNTA of the University of Chicago—all agreed that patent owners have not been doing enough to prove that there is a concrete nexus between the patented features of the product and its commercial success. Additionally, IPR petitioners have been very adept at providing alternative reasons for a product’s success in the market, thereby calling into question the relevance of the patented features.
Mr. Jarosz noted that PTAB Chief Judge JAMES SMITH recently reported at a conference that the IPR process has found patent claims invalid in at least 80% of cases and the number of petitions has only gone up since the AIA took effect. “Patent owners haven’t spent enough effort and time showing that the patent is the driver of success,” said Mr. Jarosz.
Professor Chintagunta provided tips for crafting surveys that can help to demonstrate commercial success. While getting responses to such surveys can be a challenge under the tight timelines for IPR cases, they could mean the difference between winning and losing.
For more on how to prove commercial success at the PTAB, listen to the archived version of the webcast here.