Perspectives on the PTAB’s 70% All Claims Invalidation Rate

We have written before about the Patent Trial and Appeal Board’s (PTAB’s) 70% all-claims invalidation rate. That article explained (using numbers from the PTAB statistics page) that when a patent is subjected to an IPR, the all-claims invalidation rate is 70%. The all-claims invalidation rate is the rate at which the PTAB finds all challenged claims invalid (unpatentable), effectively killing off the patent. The all-claims invalidation rate is not just high; it has also varied considerably over the years, which raises additional concerns. For example, it increased from 55% in 2019 to 70% in 2024:

The PTAB statistics through the first half of FY2025 translate to an all-claims invalidation rate of 64%—a drop from 70% in FY2024—but that is still quite high.

The unavoidable question is: Why does the PTAB invalidate challenged claims at such a high rate? Before we get there, it is instructive to put the PTAB’s invalidation rate in context.

The PTAB’s Invalidation Rate versus Ex Parte Reexam and Inter Partes Reexam

The rate at which the U.S. Patent and Trademark Office (USPTO) finds all claims invalid in ex parte reexamination (EPR) is considerably lower than in IPRs. The table below depicts the statistics for EPRs compared to IPRs. Oddly, the USPTO provides statistics for EPRs using cumulative numbers that include all outcomes back to July 1, 1981. There are some errors in what is reported, so the exact figures for EPRs in the graph below are subject to that caveat. Just as one example, the USPTO reports that a cumulative total of 1,846 certificates were issued with all claims confirmed as of 2020, whereas a total of 1,667 certificates were issued with all claims confirmed as of 2021. Since the numbers are reported cumulative to 1981, the number in 2021 should not be less than the number in 2020.

As can be seen, the average all-claims invalidation rate for EPRs is about 14% compared to about 65% for IPRs.

Why are Central Reexamination Unit (CRU) examiners finding all challenged claims invalid at such a lower rate compared to the PTAB? One possible answer is that after filing the request for reexamination, the challenger in an EPR does not participate in the reevaluation of the patent—after all, it’s an ex parte process.

What about the inter partes reexamination proceedings taking place from 1999 to 2012? That should provide a good benchmark. In those proceedings, the CRU examiner would evaluate submissions from both the challenger and the patent owner—it was an inter partes process like IPRs.

The USPTO statistics indicate that the all-claims invalidation rate for inter partes reexamination was approximately 34%.

It is difficult to understand why the PTAB finds all claims invalid at a 65%-70% rate in IPRs compared to CRU examiners finding all claims invalid at a 34% rate for inter partes reexamination. The challenger can participate in both types of proceedings. The burden of proof—preponderance of evidence—is the same. The standard for claim construction in inter partes reexamination was broadest reasonable construction, which is more favorable to challengers than the Phillips district court standard used in IPRs from 2018 onwards.

Are APJs adjudicating IPRs tougher on patent owners than CRU examiners?

We don’t think so. Our experience is that APJs are extremely well-versed in technology as well as the law of obviousness. And APJs carefully and diligently evaluate the art against the claims in arriving at their decisions.

Then what accounts for the very different outcomes in IPRs compared to these other types of proceedings?

We submit that the answer largely lies in the extremely low rate of claim amendment permitted by the PTAB in IPRs. In EPRs, certificates of confirmation include amended claims 63% of the time. In inter partes reexamination, certificates of confirmation included amended claims in 60% of cases. On the other hand, the PTAB has only a 24% grant rate for motions to amend under the well-known pilot program that sought to improve upon the earlier dismal 17% grant rate. The USPTO study released in March 2024 reflects that patent owners have such a dim view of their prospects for amended claims that they filed motions to amend in only 9% of all proceedings from 2013 through 2024.

The relative unavailability of amendment in IPRs is a significant contributor to the elevated all-claims invalidation rate at the PTAB. Simply stated: If the PTAB granted more motions to amend, more motions to amend would be filed, and the all-claims invalidation rate would become more moderate.

Other Considerations: Effectiveness of Review

The all-claims invalidation rate in IPRs may be higher because of the effectiveness of review of Board decisions at the Federal Circuit. It’s no secret that the Federal Circuit is overwhelmed by the volume of PTAB appeals from IPRs. For example, the Federal Circuit decided 181 appeals from PTAB decisions in 2023 and 153 PTAB decisions in 2024. See Dan Bagatell, Fed. Circ. Patent Decisions In 2024: An Empirical Review (Jan. 8, 2025). That is a heavy workload.

The Federal Circuit’s affirmance rate for PTAB appeals was 86% in 2024. Id. Others have reported a slightly lower affirmance rate, but it’s still more than 80%. See E. Puknys, et al., Trending at the PTAB: Insights from 2024 Fed. Circ. Statistics, IPLaw360 (Feb. 21, 2025) (85% affirmance rate).

It’s a bit unfair to pick on the Federal Circuit because the AIA created this entire new category of appeals without increasing the number of active judges. Still, the affirmance rate of roughly 85% means that the Federal Circuit is extremely deferential to the PTAB.

On the other hand, in the case of EPRs there is available a first level of appeal within the agency (at the PTAB) before a case goes to the Federal Circuit. It’s reasonable to infer that this additional level of review results in the PTO getting the correct result more often. And critically, EPR appeals provide review of a subject-matter expert’s fact-specific findings by other subject-matter experts. Because PTAB judges share the examiner’s familiarity with the technology, they need not and do not give deference to the examiner’s decision. This is a much lower threshold than the Federal Circuit’s substantial evidence standard applied to the PTAB’s factual findings.

For IPRs, there is Director Review of IPR decisions available on the heels of the 2021 Arthrex decision. However, Director Reviews are granted at a very low rate, about 5% of the time. They do not (and are not designed to) constitute a right of internal appellate review like what is available for EPR decisions.

Closing Thoughts

The PTAB’s rate of invalidation in AIA proceedings has always been high—it was 72% in 2015 and 70% in 2024. Of late, Director Coke Morgan Stewart has taken some bold initiatives to bring some balance to the process, including the new bifurcated institution process outlined in her March 26, 2025 Interim Processes for PTAB Workload Management memorandum.

Director Stewart’s early decisions on discretionary denial have taken into account the equitable considerations of patent owners, such as whether a patent owner has “settled expectations” based on the patent having been in force for a number of years, the absence of earlier challenges to the patent, and the like.

One area where Director Stewart could go further is to fully reclaim the Director’s institution authority. Bifurcating the decision to institute on the merits and the final decision on validity and assigning them to different decision makers would at least provide a different decision maker to reassess the prior decision, akin to the PTAB reviewing an examiner’s rejection.

We hope that these reforms, if you will, continue and are extended to the trial process, particularly in the Board’s disposition as regards motions to amend.

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