Assessing Commercial Success at the U.S. Patent Trial and Appeal Board

Abstract

U.S. patents increasingly are challenged on validity grounds through inter partes reviews at the U.S. Patent Trial and Appeal Board (“PTAB” or “board”). In fact, from September 2012 through June 30, 2015, there have been over 3,000 inter partes review (“IPR”) petitions filed by petitioners. Filings per month have increased from an average of 28 petitions in 2012 to 58 in 2013 to 125 in 2014 to 144 so far in 2015. Many patent owners raise a “commercial success” defense in response to such challenges. They argue that the success of products embodying the challenged patent proves that the patented invention must not have been obvious. Had the invention been obvious, the argument goes, the products embodying the patented invention would not have enjoyed the marketplace success that they, in fact, did. If the invention was obvious, someone else would have introduced a product incorporating the patented features earlier. Patent owners rarely have been successful at the PTAB in invoking this defense. In 82 final written decisions in IPR proceedings (through June 2015) that considered commercial success as a potential defense to patentability, the patent owner prevailed only twice. In all other cases, the patent owner failed in proving non-obviousness through a showing of commercial success.