Perkins Coie Ranked as Law Firm With Best Patent-Defending Record at PTAB by IAM

SEATTLE (July 28, 2022)—Perkins Coie is pleased to announce that it was ranked as the law firm with the best record since 2013 for defending patents at the Patent Trial and Appeal Board (PTAB) by Intellectual Asset Management (IAM).

Plaintiffs or complainants asserting patents in the U.S. District Courts and the U.S. International Trade Commission (ITC) typically find the validity of those asserted patents challenged at the U.S. Patent and Trademark Office (USPTO) PTAB in an inter partes review (IPR) proceeding initiated by the defendants or respondents accused of patent infringement. IAM used Docket Navigator data to analyze the success rate of law firms who defend the validity of patents at the USPTO PTAB, using two metrics: (1) the rate at which the PTAB ordered an invalidity trial to be instituted based on the preliminary evidence presented, and (2) the rate at which the PTAB canceled patent claims in a final written decision.

Perkins Coie placed first in both of these metrics when representing patent owners, achieving the lowest institution rate with 38% out of 109 cases and the lowest unpatentability rate with 30% out of 109 cases while representing patent owners in the PTAB.

In comparison, IAM found that in 2021, the PTAB instituted trials 60% of the time. According to the fiscal year 2021 USPTO statistics, the PTAB found 68.4% of claims unpatentable in final written decisions.

The IAM study affirmed that avoiding institution of a patent trial is "the best thing that counsel can do for a patent owner" because it quickly eliminates the costly IPR threat and prevents delay of U.S. District Court litigation that is often stayed during the pendency of an IPR trial. IAM further remarked that the low institution rate achieved by Perkins Coie for patent owners was better than the second-ranked law firm by a "wide margin." If a trial is instituted, the IAM study noted that the next best outcome for the patent owner is to avoid a finding that patent's claims are unpatentable and thus cancelled.

"Defending patent invalidity challenges is a critical aspect of a successful enforcement campaign," said Bing Ai, firmwide co-chair of Perkins Coie's Post-Grant Proceedings practice. "IAM's study demonstrates the success of the comprehensive approach we take to defending against these challenges for our clients."

Perkins Coie's Intellectual Property (IP) practice combines the focus and flexibility of a boutique firm with the complementary services of one of the world's leading technology law firms. The internationally recognized IP practice consists of more than 250 attorneys and agents in the United States and Asia who provide innovative, holistic counsel at every stage of IP protection and development. Perkins Coie's Post-Grant Proceedings practice has represented and advised clients in post-grant trials since the inception of the America Invents Act (AIA). Perkins Coie's China IP Agency, licensed by the China National Intellectual Property Administration (CNIPA), supports the firm's IP practice.