Patexia Insight 159: The Most Important IPR Lateral Moves of 2022
In early September we released our sixth annual IPR Intelligence Report 2022. The report reviewed IPR activity in the past five years and covered high-level statistics related to all parties, cases, patents, and claims. The report further provides rankings of all stakeholders based on their performance and activity, including attorneys, law firms, patent owners / petitioners, and judges. Last week in Patexia 158, we covered some of the very best IPR firms that were mentioned in the report for their high activity or great performance. This week’s insight will focus on the lateral moves that took place since the publication of our previous report in September of 2021 and the law firms that acquired the most attorneys with IPR experience.
As per our tradition for this and our other intelligence reports, and to have a meaningful comparison, as well as compensate for the time required for each case from filing to completion (e.g., 6 to 18 months), we covered a period of five years from July 1, 2017, through June 30, 2022. While the cutoff day for cases was June 30, 2022, we used the latest updates for the cases as of August 25, 2022. During this period, a total of 7,030 IPR petitions were filed challenging 4,966 unique patents in one or more IPRs. Looking at the claim-level data, petitioners challenged 77,846 unique claims. On average, about 16 claims for each patent were challenged. Assuming patents have 20 claims on average, this indicates that petitioners tried to invalidate about 80% of the claims. The following chart shows the IPR filing trend, including the first half of 2022:
In our IPR Intelligence Report, we identified a total of 5,626 attorneys participating in one of the 7,030 IPR cases filed over the last five years. There were 3,403 attorneys representing petitioners and 3,886 attorneys representing patent owners, with some attorneys active on both sides.
By comparing the information we obtained from attorneys and law firms with those published in our 2021 report, we identified the IPR lateral moves that took place since September of 2021. In the IPR Intelligence Report 2022, we identified a total of 38 lateral moves in the first 1,000 most active IPR attorneys. The following table highlights the top 10 lateral moves of 2021-2022 sorted by their activity rank:
Since its inception in September 2012 through the end of the second quarter of 2022, 13,610 IPR petitions have been filed. They have become one of the most important procedures that are used primarily by defendants in district court cases to challenge the patents they are accused of infringing. As shown in Patexia 150, the increase in patent litigation in district courts is likely to be followed by an increase in IPR filings. Law firms continuously position themselves to benefit from the changes in the market. Using the above data for lateral moves, we calculated the net gain (number of attorneys joined/left) for each firm with IPR activity. The following chart shows the top five firms with the largest growth or decline in IPR attorneys:
A couple of observations:
McKool Smith ranked among the most active law firms with a focus on representing the patent owners in IPR matters. They have further expanded their IPR practice with three new attorneys including Arvind Jairam joining them from Paul Hastings. He was ranked 74th in overall activity, participating in a total of 84 IPR matters during the past five years. The firm has worked closely with Ericsson, Xerox, and Nokia.
McDermott Will & Emery has been expanding in multiple directions this year. We also mentioned them in Patexia 151 for their life science practice. As for the IPR, they have added two attorneys, Brian W. Oaks who came from Baker Botts, ranked as the 39th most active attorney overall, participating in 112 IPRs during the period of our study. ZTE USA, Next Caller Inc, and Intex Recreation Corp. were their top IPR clients.
Sterne, Kessler, Goldstein & Fox ranked as one of the most active law firms when it comes to IPR. In the past 12 months, they got two new IPR attorneys, including Christopher R. O'Brien who joined them from Desmarais LLP. He was the 169th most active attorney overall with 48 IPR matters during the past five years. The firm has worked closely with Xperi Corporation, Volkswagen Group of America, Inc., and Align Technology, Inc.
Allen & Overy is another law firm that is expanding their IP practice including IPR. We also covered them for their life science and ANDA practice in Patexia 151. The firm added two new attorneys with IPR background. Lisa K. Nguyen joined from Latham & Watkins, was the 195th most active IPR attorney with 44 IPR matters in the past five years. Fresenius Medical Care, ResMed, and Meta Platforms are among their top IPR clients.
Blue Peak Law Group LLP is a new IP boutique firm focusing on IP litigation. They were founded by a group of attorneys coming from Weil, Gotshal & Manges. Two attorneys joined the firm with a history of IPR work. Robert S. Magee who is one of the founding partners, was ranked 201st most active with 44 cases in the past five years.
The full IPR Intelligence Report goes further by providing different statistics related to the IPR filings, the most popular IPC codes of patents challenged, denial and invalidation analysis by technology area, the performance of judges, etc. The report is accompanied by an excel file covering the top 1000 companies, law firms as well as attorneys ranked by their activity and performance.
Stay tuned, as, in the coming weeks, we will uncover more statistics from this report including some of the top IPR attorneys coming ranked by activity and performance.