Richard Lloyd

Haynes and Boone and Wilmer, Cutler, Pickering, Hale & Dorr are the leading law firms when it comes to the institution of inter partes reviews (IPRs) and covered business method (CBM) reviews at the USPTO, according to new analysis from Unified Patents. The research found that Haynes and Boone has the highest rate of institution for IPRs and CBMs for its clients when measured by case, while Wilmer leads the way in having the highest proportion of client claim reviews instituted. Fish & Richardson and Sterne Kessler Goldstein & Fox have had the most cases instituted overall.

Unified filtered its findings to those law firms that have brought at least 40 IPRs and CBMs (so that it includes firms with a significant track record at the Patent Trial and Appeal Board) and only took into account cases which have reached an institution decision on the merits as of 1st July. So currently pending cases are included, as are terminated cases and those settled post-institution.

The ranking does not include cases that were settled or otherwise terminated prior to an institution decision. Neither does it include cases that were not instituted on procedural grounds (eg, because the petitioner was time-barred). 

An review typically challenges multiple claims in a patent. although upon institution the PTAB may decline to re-analyse some of the claims that have been challenged. So, by providing both case and claim level success rates, Unified has added an interesting level of detail.

Unified’s research comes as IPRs and CBMs celebrate another birthday - yesterday was the third anniversary of their introduction. Created by the America Invents Act (AIA) the IPR process, in particular, has revolutionised the way in which patent claims can be challenged post-grant at and has dramatically changed the patent landscape in the US.

They have given alleged infringers a powerful new tool to challenge patents being asserted against them; so creating what many believe to be a much tougher climate for righs owners

As we have reported previously, IPRs have become the counter-attacking weapon of choice for the tech giants who typically face the largest number of infringement lawsuits. But they are also increasingly popular with the automotive and pharmaceutical sectors. It is the growth in the number of review petitions facing the latter, particularly those challenges brought by the hedge fund investor Kyle Bass and IPNav founder Erich Spangenberg, that has fuelled a growing lobby calling for changes to the process. So, in just three years IPRs have scared the life out of patent owners, emboldened alleged infringers and helped reframe the debate around patent reform in Congress. 

But as well as changing the landscape for companies, IPRs and CBMs have also had a major impact on law firms’ patent practices. With the number of patent infringement lawsuits dropping last year, booming IPR and CBM practices have at least provided a fillip to some.

Using Unified’s data here are the top performers ranked by the number of cases. 

Petitioner law firm No. of cases Institution rate by case Institution rate by claim
Fish & Richardson 92 84.78% 80.86%
Sterne, Kessler, Goldstein & Fox 88 87.5% 83.01%
Oblon, McClelland, Maier & Neustadt 84 88.1% 80.96%
Wilmer, Cutler, Pickering, Hale & Dorr 83 91.57% 85.15%
Haynes and Boone 78 94.87% 77.32%
Finnegan, Henderson, Farabow, Garrett & Dunner 76 86.84% 80.18%
Foley & Lardner 63 76.19% 73.28%
Baker Botts 61 70.49% 53.6%
Sidley Austin 60 66.67% 64.6%
Ropes & Gray  46 78.26% 58.14%
DLA Piper 43 76.74% 69.23%

Source: Unified Patents