Patexia Insight - Improving the Methodology for Performance Calculation of IPR Attorneys and Law Firms

After we released our 3rd Annual IPR Intelligence Report, several members of our community provided us with some valuable feedback. This prompted us to rethink certain aspects of our methodology and consider some updates for the next year.

If you are a practicing PTAB attorney, we appreciate if you can complete this short survey:

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* 1. Please provide your work email address

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* 2. How should we allocate the points for settled cases?
Background: For the last three years, we assumed a settled case is a victory for the petitioner. While this is not always the case, we believe that in the majority of cases, when an IPR is settled, it is a sign that the petitioner’s prior art was strong and the patent owner decided to settle rather than continuing the fight and burning more cash.

1 point for the petitioner only (Current model)

split the point equally between the petitioner and the patent owner

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* 3. Should we give extra weight to attorneys with higher activity?
Background: For the last three years, we had a cut-off number (e.g., a minimum of 40 concluded cases in five years). Only attorneys or firms with more cases than the threshold were included in the rankings. But once included, we treated everybody the same.
We are considering to adjust our performance score function to a weighted function which takes into account the activity. That means having a higher activity in general, can have some positive weight on the performance score.

Give extra point to more active attorneys

Treat all attorneys the same, regardless of their activity level

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* 4. Should we continue to give the point for cases with invalided but amended claims to the petitioner?
Background: In some rare cases, the PTAB judge may determine that the challenged claims are unpatentable, but also accepts new claims to replace the invalidated claims (which are automatically considered patentable). For example, see IPR2018-00698.
Some say we should consider this a win for the patent owner as the patents came out of the IPR as valid and the co-pending litigation can continue forward, while others still consider this a win for the petitioner as claims invalidated and even the amended claims most likely have a narrower scope.

Petitioner wins (current model)

Patent owner wins

Split the point half and half between the two parties

Comment

Patexia Insight - Improving the Methodology for Performance Calculation of IPR Attorneys and Law Firms

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* 1. Please provide your work email address

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* 5. Do you have any additional feedback or comments?