Richard Lloyd

Since the Patent Trial and Appeal Board (PTAB) was created in 2012, it has become a valuable source of work for US law firms. The popularity of its offering — the first quarter of this year saw the most inter partes reviews (IPRs) filed on record — has provided a boost to many IP practices just as patent litigation in district courts has gone into an 18-month slump. Last year in a sign of how PTAB groups have become an established part of IP practices, a PTAB Bar Association was launched and earlier this year held its first annual conference to a packed house.

But which law firms lead the way in terms of their performance at the PTAB? Some data providers, such as Lex Machina, provide fairly comprehensive breakdowns of how many reviews a firm has filed and how they have fared for their clients, by tracking things like the numbers of cases they have had instituted, the number that have been denied and the number that have settled.

Now, in a more specific attempt to pick out the winners and losers among PTAB counsel, Unified Patents has launched a new scoring mechanism, the institutional success index (ISIX). This is based on how successful a law firm has been in getting reviews instituted and having at least one claim in a patent invalidated. A firm receives one point for any successful institution but loses one for a non-institution and drops two for any final written decision in which all challenged claims are found patentable. That score is divided by the total number of institutions giving each firm a final score — the higher the score for petitioner counsel, the more successful that firm has been, while for those representing patent owners the lower the score the more success. You can read more about the methodology here.

Unified has used its scoring mechanism to publish a ranking of the top firms for representing both petitioners and patent owners (firms representing the former are ranked according to how many reviews were instituted and for the latter according to how many were not instituted on the merits). To qualify a firm needs to have more than 50 institution decisions to ensure there are enough reviews to score. Not surprisingly the upper echelons feature some of the leading IP practices. These include Wilmer Cutler, Oblon and Finnegan on the petitioner side; and Perkins Coie, Irell & Manella and McKool Smith for patent owners. Interestingly White & Case, a firm more closely associated with the finance world than IP, is the top performer representing petitioners, while Chicago IP boutique Fitch, Even, Tabin & Flannery tops the rankings for patent owners. Ropes & Gray also deserves a shout out for featuring high up in both rankings.

As IPRs remain far more popular that anyone envisaged, Unified’s new index should give operating companies and other prospective PTAB litigants, plenty to consider as they weigh up who to instruct on their next review.     

Top firms representing petitioners:

White & Case
Duane Morris 
Haynes and Boone
Wilmer Cutler
O'Melveny & Myers
Ropes & Gray
Oblon 
Finnegan 
Foley & Lardner
Perkins Coie 

 

Top firms representing patent owners

Fitch, Even, Tabin & Flannery
Perkins Coie
Irell & Manella 
McKool Smith 
Ropes & Gray 
Kilpatrick, Townsend
Sterne Kessler
Quinn Emanuel 
Knobbe
Paul Hastings