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Patexia. Insight - Cost Analysis and Attorney Performance for IPR Cases

Patexia is planning to release its popular IPR Intelligence Report (2020 Edition) in September. Similar to our other IP reports, we plan to measure the activity and performance of all the stakeholders including attorneys and law firms to rank them in the report.

We also plan to provide statistics about the cost, staffing and workload for IPR cases in the report. 

To make this possible, we need your input to create the most relevant and useful report for the IPR community.

The information you provide will ONLY be used statistically and in aggregate form, presented using charts or tables. You or your firm will not be quoted in relation to your answers. Furthermore, your information will not be shared with anyone outside our company.

Estimation of Cost and Workload 
The following questions will help us estimate the cost and workload in different stages of an IPR case. 

We understand that the cost estimation is not simple and is a function of many factors including the party (petitioner vs. patent owner), number of patents and defendants involved in the district court case (if there is a case), strategy, complexity, etc.

For simplicity, we only consider this from the petitioner's perspective and divide the process into the following 9 phases:

Phase 0: Patent and Prior Art Review
Phase 1: Draft and file IPR petition and one expert declaration
Phase 2: Evaluate the patent owner’s preliminary response
Phase 3: Evaluate Board’s institution decision, draft and file evidentiary objections as necessary, prepare the expert for deposition, defend the expert in the deposition, and responses and motions as necessary during patent owner’s discovery period
Phase 4: Evaluate the patent owner’s response and expert declaration, draft and file evidentiary objections as necessary, take the deposition of patent owner’s expert, and responses and motions as necessary during petitioner’s discovery period
Phase 5: Draft and file petitioner’s reply and supplemental expert declaration, draft and file motion to exclude evidence as necessary
Phase 6: Prepare for and conduct the oral hearing
Phase 7: Evaluate final written decision and draft and file request for rehearing as necessary
Phase 8: Appeal File and conduct appeal to Federal Circuit
1.How often do you manage an IPR project under a fixed or capped fee structure?
2.Which technology area covers a considerable area of your IPR projects?
3.What is your estimated attorney fee for Phase 0 - Patent and Prior Art Review?
4.What is your estimated attorney fee for Phase 1 - Draft and file IPR petition and one expert declaration?
5.What is your estimated attorney fee for Phase 2 - Evaluate patent owner’s preliminary response?
6.What is your estimated attorney fee for Phase 3 - Evaluate Board’s institution decision, draft and file evidentiary objections as necessary, prepare the expert for deposition, defend the expert in the deposition, and responses and motions as necessary during patent owner’s discovery period?
7.What is your estimated attorney fee for Phase 4 - Evaluate patent owner’s response and expert declaration, draft and file evidentiary objections as necessary, take the deposition of patent owner’s expert, and responses and motions as necessary during petitioner’s discovery period?
8.What is your estimated attorney fee for Phase 5 - Draft and file petitioner’s reply and supplemental expert declaration, draft and file motion to exclude evidence as necessary?
9.What is your estimated attorney fee for Phase 6 - Prepare for and conduct oral hearing?
10.What is your estimated attorney fee for Phase 7 - Evaluate final written decision and draft and file request for rehearing as necessary?
11.What is your estimated attorney fee for Phase 8 - Appeal File and conduct appeal to Federal Circuit?
12.Does the IPR cost change by the number of independent grounds of invalidity included in the IPR? For example, an IPR that tries to invalidate Claim 1 in one ground is less costly than arguing two separate grounds.
13.Is there any discount provided if there are more than one patent from the same family?
14.What is the estimated cost of Experts?
15.What is the average hourly rate for your IPR associates?
16.What is the average hourly rate for your IPR partners?
17.Additional comments on cost and workload:
Staffing
We understand that law firms allocate their resources differently. In terms of staffing, how many partners and associates are assigned to a typical IPR case by your firm:
18.For partners:
1
2
3
19.For associates:
0
1
2
20.How would the staffing be affected on the petitioner side, if the number of patents grows to 5 (how many more partners or associates are needed)?
21.Additional comments on staffing:
Performance Measurement
The following questions will help us calculate the points for each side (petitioner and patent owners) under different circumstances.
22.How should we allocate the points for settled cases?
Background: For the last three years, we assumed a settled case is a victory for the petitioner. While this is not always the case, we believe that in the majority of cases, when an IPR is settled, it is a sign that the petitioner’s prior art was strong and the patent owner decided to settle rather than continuing the fight and burning more cash.
23.Should we give extra weight to attorneys with higher activity?
Background: For the last three years, we had a cut-off number (e.g., a minimum of 40 concluded cases in five years). Only attorneys or firms with more cases than the threshold were included in the rankings. But once included, we treated everybody the same.
We are considering to change our performance score function to a weighted function which takes into account the activity. That means having a higher activity in general, can have some positive weight on the performance score.
24.Your work Email address (optional):
25.Any additional comments (other challenges, suggestions, ...)