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Tom Engellenner - IP Dispute Cost Comparison
Tom Engellenner - IP Dispute Cost Comparison
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AIPLA1
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AIPLA2
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Patent Infringement
And Invalidity Trials
In the Federal Courts
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AIPLA3
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35 U.S.C. 281:
A patentee shall have remedy by civil action for
infringement of his patent.
35 U.S. C. 282:
(a) A patent shall be presumed valid. . .
AIPLA4
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Source: PWC 2013 Patent Litigation Survey
AIPLA5
5
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AIPLA6
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$200,000
$100,000
$0
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AIPLA7
7
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Source: PWC 2013 Patent Litigation Survey
AIPLA8
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The US International
Trade Commission
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AIPLA9
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60
50
40
30
20
10
0
99
2010
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Source: David Hill, Report to WIPO on US Patent Litigation (2012)
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AIPLA
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ITC
Decision
maker
Timing
Burden of
Proof for
Invalidity
Average Cost
$1-10M:
$10-25M:
>$25M:
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$2,100,000
$3,554,000
$5,911,000
$1-10M:
$10-25M:
>$25M:
$1,967,000
$3,410,000
$6,242,000
$700,000
$600,000
$500,000
$400,000
$300,000
$200,000
$100,000
$0
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AIPLA
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$700,000
$600,000
$500,000
$400,000
$300,000
$200,000
$100,000
$0
Q1
Q2
Q3
Q4
Q5
Q6
Q7
Q8
Q9
Q10
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AIPLA
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New AIA
Alternatives
to Litigation
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AIPLA
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AIPLA
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CBM
PGR
Grounds
101 (ineligible
subject matter)
112 (enablement or
written description) &
all102/103 prior art
101 (ineligible
subject matter)
112 (enablement or
written description) &
all102/103 prior art
Timing
Pre-AIA patents:
Anytime
Post-AIA patents:
9 months after
issue and after
termination of PGR
challenges
Pre-AIA patents:
Anytime if sued or
threatened by PO.
Post-AIA patents:
9 months after issue
and after all PGR
challenges are
terminated
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Standard
Receivable
likelihood success
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AIPLA
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Key Features of
IPR proceedings
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AIPLA
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$80,000
$70,000
$60,000
$50,000
$40,000
$30,000
$20,000
$10,000
$0
Q1- Petition
Q2 - P.O. Discovery
Q3 - Petitioner
& Response
Discovery and Reply
Q4 - Motions
Q5 - Hearing
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AIPLA
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$700,000
$600,000
$500,000
$400,000
$300,000
$200,000
$100,000
$0
FirmQ1LogoQ2
Q3
Q4
Q5
Q6
Q7
Q8
Q9
Q10
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AIPLA
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IPR STATISTICS
9/16/2012 to 9/15/2013
FirmSpecial
Logothanks to Yasser El-Gamal, Ehab Samuel and Peter Siddoway
who compiled some of the following data for the AIPLA
http://www.aipla.org/learningcenter/live_webinars/Pages/Wednesday,-October-9,-2013-Webinar.aspx
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AIPLA
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Statistics
483 petitions filed in the first year
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AIPLA
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Statistics
Most IPR petitions have been against NPEs
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AIPLA
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Statistics
About 6% of IPRs involve Japanese companies
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AIPLA
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Statistics
During the first year, about 8% (37) of the IPR
petitions resulted in settlements (20 before, and
17 after, institution)
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AIPLA
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Statistics
403 of the 483 petitions (83%) were related to
pending patent litigation between the same parties
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AIPLA
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Statistics
The 403 Petitioners involved in related Federal
Court litigation has filed for stays 159 times
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Forum Comparison
USPTO (IPR)
ITC
DISTRICT CT
Grounds
101 (ineligible
subject matter)
112 (enablement or
written description)&
all102/103 prior art
101 (ineligible
subject matter)
112 (enablement or
written description) &
all102/103 prior art
Presumption
of validity?
No. Petitioner
need only show
that it is more
likely than not
that a claim is
invalidity
Yes. Respondent
must prove invalidity
by clear and
convincing evidence
Not conclusive
unless affirmed by
the CAFC
Not conclusive on
other proceedings
unless affirmed
Collateral
Conclusive on
effect of
all other
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invalidity?
proceedings
30
AIPLA
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ITC
DISTRICT CT
Jury Trial?
No
No
Yes
Timing
12 months from
Initiation to
Decision
12 Months from
Initiation to Initial
Determination
Damages?
No
No
Yes
Injunction?
No
Yes
Maybe
Resolve
Infringement
No
Yes
Yes
~$2M - $6M
~$2M - $6M
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Costs
~$300K 500K
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AIPLA
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AIPLA
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