Patexia Insight 27: Analysis of Firms Representing Apple in IPR Challenges

In last couple of weeks we reported that Apple, with 267 IPR challenges filed since 2012, has been at the top, responsible for almost 5 percent of all challenges filed. This week, we decided to review the company’s cases and see who has been winning its IPR business and how they have been performing. Our study revealed that Sidley Austin with a total of 93 cases (or almost one-third of all challenges Apple filed) has been the go-to firm for the company for IPRs. However, the filing trends show that recently Sterne Kessler is becoming Apple’s favorite firm. We also identified the top 10 most active attorneys working on Apple’s IPR cases.

Over the past four years, Apple has used 29 different firms to file 267 IPR challenges. In some cases, the firm only filed a single case. But in other cases, it filed many related to a single company or lawsuit (e.g., Ruffin Cordell from Fish & Richardson was on Ericsson IPR Cases). In some cases, a firm seems to be the preferred vendor when it comes to IPR filing. Overall, a total of 136 attorneys have been named on different petitions filed by Apple.

Apple’s IPR Stats (2012-2016)	Count
IPR Challenges	267
Law Firms	29
Attorneys	136

Last week we reported that 47 percent of IPR challenges filed by Apple were denied at the case-level. This percentage rises to about 55 percent at the claim-level. Some readers indicated that this percentage may be artificially high, as in some cases the petitions denied were 315(b) barred (the IPR one-year bar).

Assuming that the case-level denial rate is 47 percent, we looked at the law firms who represented Apple in all 267 cases, studying who has been above or below this denial rate. We looked at which firms have done better with more of their cases instituted or reaching the final decision phase.

The top five most active firms – Sidley Austin, Fish & Richardson, Sterne Kessler, DLA Piper and Haynes & Boone – represented Apple in more than two-thirds of all challenges. However, their denial rates varied significantly. Sidley Austin cases were denied at 70 percent, while Haynes & Boone has had zero denied cases so far.

The filing dates of recent cases suggest that Apple has recently shifted to Sterne Kessler and WilmerHale for the majority of its filings.

Firm	Cases	Final Decision	Instituted	Denied	Settled	Others
DLA Piper	24	1 (4%)	2 (8%)	14 (58%)	3 (13%)	4 (17%)
Haynes & Boone	13	0 (0%)	7 (54%)	0 (0%)	3 (23%)	3 (23%)
Sidley Austin	93	18 (19%)	2 (2%)	65 (70%)	4 (4%)	4 (4%)
Fish & Richardson	41	3 (7%)	9 (22%)	20 (49%)	5 (12%)	4 (10%)
Sterne Kessler	34	3 (9%)	0 (0%)	6 (18%)	0 (0%)	25 (74%)

 

We decided to measure the performance of the firms by taking into account both the quality and quantity of the cases filed. We came up with a weighted function that calculates the average of the total number of cases and the cases that were instituted or received the final written decision for each firm. Both variables were normalized relative to the numbers from all other firms. We excluded the cases that were recently filed and had not been yet instituted (i.e., pending).

Going with this function of quality and quantity, we found that Sidley Austin with almost 35 percent of cases was at the top. However, the next four had all their cases instituted and received the final written decisions. The following table shows the scores of the top five firms.

Firm	Score	Final Decision	Instituted	Denied	Settled	Others
Latham & Watkins	76%	5	0	0	0	0
Turner Boyd	76%	3	0	0	0	0
Sidley Austin	81%	18	2	65	4	4
Cooley	76%	5	0	0	0	0
Finnegan Henderson	76%	5	0	0	0	0

 

We then looked at the top 10 attorneys involved in Apple’s IPR cases. Jeffrey Kushan from Sidley Austin has been named in 81 petitions, or almost 30 percent of all cases Apple filed. Next in the list were attorneys from Fish & Richardson, DLA Piper and Sterne Kessler.

Attorney	Cases	Final Decision	Instituted	Denied	Settled	Others
Jeffrey Kushan	81	18	2	53	4	4
Joseph Micallef	26	8	0	18	0	0
Walter Renner	23	2	8	5	4	4
Michael Franzinger	23	0	0	23	0	0
Thomas Broughan, III	19	9	2	3	1	4
Edward Sikorski	15	0	0	12	3	0
Brent Yamashita	15	0	0	12	3	0
Yasser Mourtada	14	0	0	0	0	14
Steven Peters	14	0	0	0	0	14
Lori Gordon	14	0	0	0	0	14

 

Since IPR became available, Apple has filed 267 challenges through the end of 2016. The company has used 29 law firms and 136 attorneys to file these petitions. However, the top 5 firms represented Apple in more than two-thirds of the cases. Sidley Austin has been the company’s favorite firm when it came to IPR. However, recently Apple has engaged Sterne Kessler on more cases. Although PTAB has been an evolving area both for companies and law firms, and so many factors – including the technology area and/or quality of prior art – can impact the outcome of an IPR, our review indicates that not all law firms have had similar performance. Some work resulted in higher denial rates than the average, while some others reached the final decision phase more often.

Some of our readers suggested that we look at the most attacked companies and identify claims that survived, as in many cases, although Apple’s IPR was denied and/or claims survived, the same claims may have been invalidated by another IPR filed by a different company. They believe that looking from this angle may reveal surprising results about IPR and patents survival rates for some companies (e.g., NPE vs. non-NPE). We plan to perform a similar analysis on one of the most active defendants in IPR challenges to see if the system causes irreparable damages to a handful of companies.

We have done these calculations for all the firms and companies covering existing IPR challenges since 2012. If you are interested to understand the performance of your company / law firm relative to other companies / law firms – or the performance of your competition, as to how they manage their cases and whether their strategies are effective – please contact us for more info.