How USPTO Examiner Type Affects Patents: Part 4

Law360 (August 21, 2020, 2:25 PM EDT)

How USPTO Examiner Type Affects Patents: Part 2

Patent procurement at the U.S. Patent and Trademark Office is affected by the type of examiner.

We gathered data from the LexisNexis PatentAdvisor database for each year from 2009 to 2019, for examiners in each of eight nondesign Tech Centers at the USPTO from the LexisNexis PatentAdvisor patent prosecution analytics database.

The data shows that the type of examiner can impact patent litigation, both in the U.S. district courts and in post-grant proceedings (e.g., inter partes review proceedings) at the Patent Trial and Appeal Board, in terms of numbers and winning percentages.

This is the final article in a four-part series. The first part discussed the examiner types (so-called green, yellow and red examiners) and their effect on the number of patents issued each year. The second part explored the relationship between the examiner types and the effort required to obtain a patent, and the third part covered how examiner type affects after-final practice.

Figure 1 illustrates the number of patents litigated in at least one U.S. district court proceeding sorted by the issue year of the patent and by the examiner type. The data point for each year does not represent the number of patent litigations in that year but instead represents the number of patents issued that year and then litigated at some point.

As can be seen, the numbers for each examiner type decrease from 2013 to 2019 as patents issuing in these years likely have not yet had a chance to be asserted. Further, patents examined by green examiners are litigated much more than patents examined by yellow and red examiners, and patents examined by yellow examiners are litigated much more than patents examined by red examiners.

Summing the data over the time period, patents examined by green examiners are litigated eight times more than patents examined by red examiners. Since more patents are issued by green examiners than yellow and red examiners and more by yellow examiners than red examiners as discussed in part one of this series, one might expect more litigated patents to show a similar relationship, which indeed occurred as shown in Figure 1.

Figure 1: Patents Litigated in U.S. District Courts Sorted by Issue Year and by Examiner Type
Figure 1: Patents Litigated in U.S. District Courts Sorted by Issue Year and by Examiner Type

While Figure 1 illustrates the number of patents litigated by issue year in U.S. district courts, Figure 2 illustrates the percentage of patents for each examiner type litigated by issue year and by examiner type. The percentages are calculated as the number of patents litigated by examiner type divided by the number of patents issued by examiner type.

Although more patents issued by green examiners are litigated as illustrated in Figure 1, a higher percentage of patents issued by red examiners are litigated as compared to yellow and green examiners, and a higher percentage of patents issued by yellow examiners are litigated as compared to green examiners.

Overall, averaging the data over the time period, the average percentage of patents litigated in U.S. district courts over this period for green, yellow and red examiners are 0.50%, 0.59%, and 0.76%, respectively.

Figure 2: Percentage of Patents Litigated in U.S. District Courts Sorted by Issue Year and by Examiner Type
Figure 2: Percentage of Patents Litigated in U.S. District Courts Sorted by Issue Year and by Examiner Type

Figure 3 illustrates the percentage of patent owner wins at U.S. district courts sorted by issue year and by examiner type, including the average of all examiner types. A patent owner win is a finding of infringement, no invalidity, or no unenforceability, and a patent owner loss is a finding of no infringement, invalidity, or unenforceability.

Each judgment is counted separately, such that more than one outcome may be counted for each litigation. The patent owner losses are not graphed, as the graph is the inverse of Figure 3.

Over the time period, the patent owner win rates varied almost annually with respect to which examiner type patents were more successful. Further, the average patent owner win rate generally tracks the rates for green and yellow examiners, instead of red examiners, due to the larger number of litigated patents of green and yellow examiners.

Figure 3 is an unusual presentation of the data, as the results are depicted based on the issue date of the patent, and not on the decision date of the litigation. As such, the data set for more recent years is smaller than the data set in later years (as illustrated in Figure 1), resulting in a wide variation in the litigation results for the examiner types in the more recent years.

Overall, averaging the data over the time period, the average annual patent owner win rate was 70%, and the average annual patent owner win rates for green, yellow and red examiners were 71%, 69% and 67%. This data set suggests that patents examined by green examiners are more likely to have more patent owner wins than those examined by yellow and red examiners, and that patents examined by yellow examiners are more likely to have more patent owner wins than those examined by red examiners.

Comparing patents examined by green examiners to patents examined by red examiners, patents examined by green examiners have a 6% better chance of a patent owner win in U.S. district courts than patents examined by red examiners.[1]

Figure 3: Percentage of Patent Owner Wins in U.S. District Courts Sorted by Issue Year and by Examiner Type
Figure 3: Percentage of Patent Owner Wins in U.S. District Courts Sorted by Issue Year and by Examiner Type

Turning from patent litigations in U.S. district courts to post-grant proceedings at the PTAB, Figure 4 illustrates the number of patents litigated in post-grant proceedings at the PTAB sorted by the issue year of the patent and by the examiner type. The data point for each year does not represent the number of patent litigations in that year but instead represents the number of patents issued that year and then litigated at some point.

As can be seen, the numbers for each examiner type decrease from 2013 to 2019 as patents issuing in these years likely have not yet had a chance to be asserted. Further, patents examined by green examiners are litigated much more than patents examined by yellow and red examiners, and patents examined by yellow examiners are litigated much more than patents examined by red examiners.

Summing the data over the time period, patents examined by green examiners are litigated nine times more at the PTAB than patents examined by red examiners. This relationship for PTAB litigations in Figure 4 also appears similarly in Figure 1 for U.S. district court litigations.

Figure 4: Patents Litigated at the PTAB Sorted by Issue Year and by Examiner Type
Figure 4: Patents Litigated at the PTAB Sorted by Issue Year and by Examiner Type

While Figure 4 illustrates the number of patents litigated by issue year at the PTAB, Figure 5 illustrates the percentage of patents for each examiner type litigated by issue year and by examiner type. The percentages are calculated as the number of patents litigated by examiner type divided by the number of patents issued by examiner type.

Although more patents issued by green examiners are litigated as illustrated in Figure 4, a higher percentage of patents issued by red examiners are litigated as compared to yellow and green examiners, and a higher percentage of patents issued by yellow examiners are litigated as compared to green examiners.

Overall, averaging the data over the time period, the average percentage of patents litigated at the PTAB over this period for green, yellow and red examiners are 0.14%, 0.18% and 0.20%, respectively.

Figure 5: Percentage of Patents Litigated at the PTAB Sorted by Issue Year and by Examiner Type
Figure 5: Percentage of Patents Litigated at the PTAB Sorted by Issue Year and by Examiner Type

In terms of success in post-grant proceedings at the PTAB, Figures 6, 7 and 8 illustrate these metrics.

Figure 6 illustrates the percentage of patent owner wins at the PTAB sorted by issue year and by examiner type, including the average of all examiner types. A patent owner win includes: a pre-institution decision where the proceeding is procedurally dismissed; an institution decision where institution is denied; a post-institution decision where the proceeding is procedurally dismissed; and a final decision with all claims upheld.

Over the time period, the average patent owner win rate generally tracks the rates for green and yellow examiners, instead of red examiners, due to the larger number of litigated patents of green and yellow examiners. In considering each year in the figure, the patent owner win rate for red examiners is higher than the patent owner win rate for green examiners.

Similar to Figure 3 above, Figure 6 (as well as Figures 7 and 8) is an unusual presentation of the data, as the results are depicted based on the issue date of the patent, and not on the decision date of the PTAB trial. As such, the data set for more recent years is smaller than the data set in later years (as illustrated in Figure 4), resulting in a wide variation in the results for the examiner types in the more recent years.

Overall, averaging the data over the time period from 2009 to 2019, the average annual patent owner win rate was 40%, and the average annual patent owner win rates for green, yellow and red examiners were 36%, 44%, and 48%, respectively. This data set suggests that patents examined by red examiners are more likely to have patent owner wins than those examined by yellow and green examiners, and that patents examined by yellow Examiners are more likely to have patent owner wins than those examined by green examiners.

Comparing patents examined by green examiners to patents examined by red examiners, patents examined by red examiners have a 33% better chance of a patent owner win at the PTAB than patents examined by green examiners, which is an opposite result for patents litigated in U.S. district courts.[2]

Figure 6: Percentage of Patent Owner Wins at the PTAB Sorted by Issue Year and by Examiner Type
Figure 6: Percentage of Patent Owner Wins at the PTAB Sorted by Issue Year and by Examiner Type

Figure 7 illustrates the percentage of patent owner losses at the PTAB sorted by issue year and by examiner type, including the average of all examiner types. A patent owner loss includes: a pre-institution decision where the patent owner disclaimed all claims; a post-institution decision where the patent owner disclaimed all claims; a final decision with all claims unpatentable; and a final decision with all claims amended.

Over the time period, the average patent owner loss rate generally tracks the rates for green and yellow examiners, instead of red examiners, due to the large number of litigated patents of green and yellow examiners. In considering each year in the figure, the patent owner loss rate for green examiners is generally higher than the patent owner loss rate for red examiners.

Overall, averaging the data over the time period from 2009 to 2019, the average annual patent owner loss rate was 24%, and the average annual patent owner loss rates for green, yellow and red examiners were 26%, 22%, and 21%, respectively. This data suggests that patents examined by green examiners are more likely to have patent owner losses at the PTAB than those examined by red examiners.

Comparing patents examined by green examiners to patents examined by red examiners, patents examined by green examiners have a 24% better chance of a patent owner loss at the PTAB than patents examined by red examiners.[3]

Figure 7: Percentage of Patent Owner Losses at the PTAB Sorted by Issue Year and by Examiner Type
Figure 7: Percentage of Patent Owner Losses at the PTAB Sorted by Issue Year and by Examiner Type

Figure 8 illustrates the percentage of neutral decisions at the PTAB sorted by issue year and by examiner type, including the average of all examiner types. A neutral outcome includes: a pre-institution decision where the proceeding is joined to another trial; a pre-institution decision where the proceeding is settled; a post-institution decision where the proceeding is joined to another trial; a post-institution decision where the proceeding is settled; and a final decision with mixed claim findings.

Over the time period, the average neutral decision rate generally tracks the rates for green and yellow examiners, instead of red examiners, due to the large number of litigated patents of green and yellow examiners. In considering each year in the figure, the higher neutral decision rate varies between green, yellow and red examiners.

Overall, averaging the data over the time period from 2009 to 2019, the average annual neutral decision rate was 36%, and the average annual neutral decision rates for green, yellow and red examiners were 37%, 34%, and 31%, respectively. This data suggests that patents examined by green examiners have a higher neutral decision rate than those examined by red examiners.

Comparing patents examined by green examiners to patents examined by red examiners, patents examined by green examiners have a 19% better chance of a neutral decision at the PTAB than patents examined by red examiners.[4]

Figure 8: Percentage of Neutral Decisions at the PTAB Sorted by Issue Year and by Examiner Type
Figure 8: Percentage of Neutral Decisions at the PTAB Sorted by Issue Year and by Examiner Type

In conclusion, the data shows that the type of examiner can impact patent litigation, both in U.S. district courts and at the PTAB. For both, more patents issued by green examiners are litigated than by yellow and red examiners, and more patents issued by yellow examiners are litigated than by red examiners.

However, percentage-wise, a higher percentage of patents issued by red examiners are litigated as compared to yellow and green examiners, and a higher percentage of patents issued by yellow examiners are litigated as compared to green examiners. Since PTAB proceedings are generally closely linked to U.S. district court litigations, similar statistical trends were expected and found; however, some unexpected results were also uncovered in the win rates between U.S. district court litigations and PTAB proceedings.

As to success, the data only captures the results of patents issued from 2009 to 2019 as of early 2020 and does not reflect the eventual assertion of more recently issued patents. However, based on this limited data set, for U.S. district court litigations, the examiner type does have a noticeable impact on the patent owner win rate. Particularly, the data suggests that patents examined by green examiners are 6% more likely to have patent owner wins in U.S. district court litigations than those examined by red examiners.

For PTAB litigation, the data also suggests that the examiner type has an impact on the success rates but opposite to U.S. district court litigations. Particularly, for patent owner wins, the data suggests that patents examined by red examiners are 33% more likely to have patent owner wins at the PTAB than those examined by green examiners. Conversely, for patent owner losses and neutral decisions, the data suggests that patents examined by green examiners are 24% more likely to have patent owner losses and 19% more likely to have neutral decisions than those examined by red examiners.

As explored in the prior parts of this series, green examiners tend to issue more patents, have a higher allowance rate, and have less office actions, less final office actions, less interviews, less requests for continued examination, and less appeals than red examiners. As such, patents issued by green examiners would tend to have less prosecution history than patents issued by red examiners.

In U.S. district court litigation, having less prosecution history may result in more favorable claim construction for a patent owner, which could tend to result in a patent owner winning more often. This viewpoint may help to explain why patents examined by green examiners are more likely to have patent owner wins in the U.S. district courts than those examined by red examiners.

Conversely, in considering PTAB litigation, patents examined by red examiners would tend to have more prosecution history than patents issued by green examiners. As explored in the prior parts of this series, red examiners tend to issue less patents, have a lower allowance rate, and have more office actions, more final office actions, more interviews, more requests for continued examination, and more appeals than green examiners.

Due to this additional prosecution history, patents examined by red examiners may tend to be more vetted by having more prior art applied and/or more narrowing claim amendments. Having a patent more vetted during prosecution could tend to result in a patent less prone to invalidity challenges at the PTAB. This viewpoint may help to explain why patents examined by red examiners are more likely to have patent owner wins at the PTAB than those examined by green examiners.

Michael Sartori, Ph.D., is a partner and Matt Welch is an associate at Baker Botts LLP.

The authors wish to thank Chris J. Hong, Brendan O’Callaghan and Dr. Linlin Cao at Baker Botts for their assistance in gathering the analytical data.

Law360 is owned by LexisNexis Legal & Professional, a RELX Group company.

The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

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