Ex Parte Reexamination Statistics I

PatentLawPic332Through its attorneys Microsoft requested ex parte reexamination almost thirty Avistar patents. In recent days, the PTO denied Microsoft’s request in 14 of those cases.

Standing alone, this denial does not appear to be big news — except for the fact that over 95% of requests for ex parte reexamination are granted. In FY 2003–07, for instance, the PTO reviewed 2389 requests for ex parte reexamination and only denied the request in 105 cases. (4.4%). (At this point, there is some possibility that the denials are procedural  as the documents are not yet available on PAIR).

To be granted, a reexamination request must present a “substantial new question of patentability” that affects at least one claim of a patent.  The request must be based on a prior art patent or publication.  Prior public use or sale are not admissible as evidence in an ex parte reexamination proceeding (although affidavits explaining the prior art publications is admissible).

In general, there has been a rise in requests for ex parte reexamination. As the chart below demonstrates, increase is entirely due to an increase in requests for reexamination that are filed by third parties.

PatentLawPic333

16 thoughts on “Ex Parte Reexamination Statistics I

  1. The many trial counsel advising “save the 103 arguments for litigation,” as one above commentator does, should be asked more often by their clients for actual statistics on the [shockingly small] number and percentage of patent claims sued on which are actually held invalid on THAT basis in final decisions in recent years, especially as compared to reexaminations.

  2. “I think that in most situations one who is accused of infringing a patent and has good published prior art (preferably not previously considered by the PTO) should be filing a reexam request.”

    Ex parte and Inter partes reexam are very different (I’m not going to discuss Inter Partes in this post). I think ex parte reexam should be the default prior to litigation whenever validity is an issue.

    If the patent is found invalid, you win. If the claims are narrowed, then you may no longer infringe. If the examiner finds that the claims are still valid, then you know that you need to do a search for better prior art.

    The only downside to an ex parte reexam is the lack of litigator legal fees.

  3. Since we’re speaking about reexamination…

    37 CFR 1.550 Conduct of ex parte reexamination proceedings.

    (a) All ex parte reexamination proceedings, including any appeals to the Board of Patent Appeals and Interferences, will be conducted with special dispatch within the Office.

    What does “special dispatch” mean? Whenever there’s a little free time? I’m watching a few reexaminations out of curiosity and can’t understand why some glaciers move more rapidly. For example, in 90/008,425 reexamination was ordered in April 2007. An IDS was filed in August 2007. Nothing came out of the PTO until May 19 of this year in which a reexam litigation search turned up.

    In 95/000,060 (I know it’s not ex parte, but the special dispatch still applies) the patentee sent in a status request on May 20 noting that the last paper filed was in August 2007 and that the Office of Patent Legal Administration promised in February a response by May 7, 2008. That response issued yesterday. Isn’t that special…

  4. “The USPTO, in granting the request for re-exam, noted that it would be using the infringement contentions as “admissions” by the patent owner.”

    Brilliant strategy. If defendants are quite sure that the judge will stay the case (not always guaranteed) it’s almost always worth waiting to get some discovery out of the plaintiffs before proceeding.

  5. With three examiners reviewing ex parte reexam papers and in a post KSR world, I think that in most situations one who is accused of infringing a patent and has good published prior art (preferably not previously considered by the PTO) should be filing a reexam request.

    Unfortunately, most of those people are being advised by litigators who have their own self-interest (as do I).

  6. I recently saw an interesting re-exam: The requestor was a defendant in a suit involving the patent, and in the request included the plaintiff’s infringement contentions. The USPTO, in granting the request for re-exam, noted that it would be using the infringement contentions as “admissions” by the patent owner.

    The re-exam is not too far along, but I would expect that the (broad) infringement contentions would allow the USPTO wide latitude in applying art in rejections.

  7. “I agree… (based upon my very limited knowledge), save the 103 arguments for litigation. ”

    Again, depends on the case. If it’s something you’re not sure about, then there’s a good change the issue will end up on appeal anyway. Why not skip a step?

    Also, there’s plenty of CAFC cases where patents were reexamined (multiple times in some cases) and still went up in flames. Especially right now where a typical jury is probably not in love with the US government, it shouldn’t be too hard to convince them that the PTO was doing a worse job at reexamining the patent than the OHS did with Katrina. Basically all you need to do is show evidence that the examiner made a mistake during the reexam. And if you think such a mistake is highly unlikely in the case of the patent you are worried about … then you should probably just be working on a settlement and not worrying about “litigation” versus “reexam”.

    I do think litigators overestimate the dangers. It’s in their self-interest to do so, in some ways, because if the patent tanks in reexam, it’s less work (=$$$) for them.

  8. “If they’re not valid and the PTO issued them, more power to Microsoft for letting the PTO’s “best of the best” examiners take another look at them with relevant art layed out.”

    Whether all examiners in the CRU are “best of the best” is questionable. Certainly, there are some very good examiners in there, but there are some that won’t see an anticipating reference if its stapled to their forehead.

  9. “If they’re not valid and the PTO issued them, more power to Microsoft for letting the PTO’s “best of the best” examiners take another look at them with relevant art layed out.”

    Whether all examiners in the CRU are “best of the best” is questionable. Certainly, there are some very good examiners in there, but there are some that won’t see an anticipating reference if its stapled to their forehead.

  10. Maybe Microsoft had slam dunk 102b references for all of them? But yes, I agree… (based upon my very limited knowledge), save the 103 arguments for litigation. Actually, I wouldn’t mind a nice “anonymous” reply spelling out the pro and con of re-exam vs. non re-exam decision making from someone who makes those decisions. (I’m lower on the patent food chain, but ignorance is curable.)

  11. I am not an expert on reexamination. I thought that it was disfavored, however, because of limitations on issues that could be raised in litigation after reexamination. (The rationale was always why use your best argument/evidence before the PTO, which already said the invention was patentable and has little motivation to declare the claims invalid?).

  12. If the non-reexamined patents do go to litigation, I suppose Avistar will argue that the “presumption” of validity is thereby “even stronger”.

  13. If they’re not valid and the PTO issued them, more power to Microsoft for letting the PTO’s “best of the best” examiners take another look at them with relevant art layed out. Certainly cheaper than litigation for David, I mean Avistar.

    Companies like Avistar and the media shouldn’t assume that just because a patent issued that it is valid (even if that is the PTO’s stance). We in the biz know otherwise. The count system, cut corners (on both sides of prosecution) and plenty of other things lend themselves to questionable patents.

  14. From the Avistar article:

    “While we don’t know the details of all 29 patents and can’t comment on which ones might or might not be legitimate (and while we’ll allow that some are probably stronger than others), we were never comfortable with the fact that Microsoft threw all 29 — pretty much Avistar’s entire U.S. patent lot — up for reexamination.”

    I’m surprised Microsoft doesn’t do this more often. It sounds like fun, frankly, and also reasonable if you are paranoid that the company is going to throw all those patents at you down the road apiece.

    The article does not explain why, if the PTO grants re-exam on 9 of a company’s 30 or so patents (which it has), anyone sould be surprised to find the PTO grant reexam on the remainder.

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