U.S. Patent & Trademark Office. (Photo: Diego M. Radzinschi/NLJ)
Intellectual property boutiques Fish & Richardson; Finnegan, Henderson, Farabow, Garrett & Dunner; and Sterne Kessler Goldstein & Fox maintain dominant positions in America Invents Act litigation, but global Am Law 50 firms continue making inroads at the PTAB.
That’s one of the takeaways from Lex Machina’s annual review of AIA litigation at the Patent Trial and Appeal Board. Lex Machina’s data also show that Apple Inc. and Samsung Corp. remain the most frequent petitioners, but pharmaceutical companies are starting to crack the top 10 on both the petitioner and patent owner side.
“Fish and Finnegan really have a lock on this in a lot of ways,” said Lex Machina legal data scientist Brian Howard. Fish & Richardson filed 123 petitions last year, nearly twice as many as any other law firm, while Sterne Kessler checked in at fourth with 63 petitions and Finnegan at seventh with 52.
On the patent owner side, Sterne Kessler ranked No. 1 by defending 98 petitions, while Fish was second with 82 and Finnegan third with 75.
Those three firms have consistently ranked in the top 10 since 2013, the first full year of AIA post-grant proceedings at the PTAB. Back then, other boutiques and Am Law 200 firms rounded out much of the top 10 for petitioners. It now includes Am Law 50 firms Wilmer, Cutler, Pickering, Hale and Dorr; Weil, Gotshal & Manges; Baker Botts; Wilson Sonsini Goodrich & Rosati; Morgan, Lewis & Bockius; Cooley; Paul Hastings and Perkins Coie. (The latter two tied for 10th place.)
The patent owner side is more boutique-heavy, with Knobbe Martens Olson & Bear; Irell & Manella; and the Gonsalves Law Firm joining Perkins; Robins Kaplan; Kramer Levin Naftalis & Frankel and Kirkland & Ellis.
Apple and Samsung remained the two most active petitioners in 2016. They were joined for the first time in the top 10 by a drug company, Mylan Pharmaceuticals Inc. And so far in 2017, Pfizer is among the top 10 petitioners, according to Lex Machina’s data.
Apple and Samsung were the most frequently targeted patent owners in 2016. Also making the top 10 patent owners were Allergan Inc., Genentech Inc. and Biogen Inc.
Howard said PTAB filings in the biochemistry area increased dramatically between 2013 and 2015, and have remained at about 9 percent of overall filings since. “The fact does stand for itself that we are seeing more pharmaceutical companies among the top petitioners and patent owners,” he said.
Meanwhile, overall filings spiked this January, rising from an average of about 150 the previous several months to 237. Howard said there was no obvious explanation for the spike.
He said that in general some practitioners expected PTAB activity to cool off after a few years once the weakest patents were invalidated. But, he said, the data show that “the PTAB is still going strong.”
Scott Graham writes about intellectual property and the U.S. Court of Appeals for the Federal Circuit. Contact him at firstname.lastname@example.org. On Twitter: @scottkgraham.
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