Inter Partes Reexamination Statistics

In August 2008, Messrs Baluch and Maebius of Foley & Lardner published an interim report on the results of inter partes reexamination proceedings. At the time of their writing, however, only 30 inter partes reexaminations had been pushed-through to conclusion with a reexamination certificate. In the past year, that total has more than doubled to 73 issued reexamination certificates.

Of course, the main point about inter partes reexaminations is that the process can be incredibly slow if either party pushes. Only about 50% of the inter partes reexaminations filed 2001-2005 have been completed either through issuance of a reexamination certificate (on the merits) or procedurally terminated. Overall, the reexamination certificates took an average of 37.5 months to issue (median of 34.4 months). When all is said and done, this pendency will be much longer since the slow and/or hotly disputed cases are all still pending. Only one (1) of the completed cases received a BPAI decision (all claims were cancelled after BPAI affirmed) and no completed cases have received a court decision.

Results of the reexamination certificates: Inter partes reexaminations continue to show promise as a mechanism for “killing” patent claims. Of the 73 issued reexamination certificates, 60% (44) cancel all the claims and only 12% (9) confirm all the original claims as patentable. The remaining 27% (20) change the claimset in some way. For the 19 inter partes reexamination certificates issued on patents with co-pending litigation, 42% (8) resulted in all claims being cancelled; 5% (1) confirmed all claims as patentable; and 53% (10) changed the claimset in some fashion.

    

28 thoughts on “Inter Partes Reexamination Statistics

  1. Blimpy writes: “f you think the pendency of reexams is bad, imagine what a quagmire post grant review would be, and Crouch seems to favor it.”

    As the delays and backlogs increase seemingly exponentially, the PTO cannot even handle its current examination duties (including appeals, reexams, etc.) The PTO should NOT be given any extra duties/responsibilities such as post grant reviews.

  2. The point of the blog entry is that inter partes re-exams are slowwww, and they are. The third party can file paper upon paper, each slowing the process. Also, i.p. re-exams are supposed to be “dispatched expediently” or some hooey like that in the CFR, but they are’nt. I.p. appeals don’t appear to get any priority. I.p. examination is often slower than in ex parte cases because the i.p. cases tend to be more bloated; the examiner has more paper to deal with.

    An interesting footnote. There’s an i.p. re-exam case out there (sorry, no app. no.) where the patent owner made a constitutional due process argument (something to do with merging the i.p. re-exam with an ex parte re-exam of the same patent). They won on appeal and PTO changed the MPEP as a result.

  3. Not to get in the middle of this debate of how directly relevant reexamination statistics are to average patent validity or invalidity [n.b. only after a far more extensive and expensive PTO prior art search and examination than most initial applicants are willing to pay for].
    However, as to reading tea leaves from statistics on claims surviving reexamination, note that: (a) reexamination does not need to be requested for all claims of a patent, and (b) the PTO is not obligated to, and usually does not, do any additional prior art searching of its own as to such claims [which were of no concern to the reexam requestor].

  4. “Of course, the main point about inter partes reexaminations is that the process can be incredibly slow if either party pushes. Only about 50% of the inter partes reexaminations filed 2001-2005 have been completed … either through issuance of a reexamination certificate (on the merits) or procedurally terminated. Overall, the reexamination certificates took an average of 37.5 months to issue (median of 34.4 months). When all is said and done, this pendency will be much longer since the slow and/or hotly disputed cases are all still pending.”

    If you think the pendency of reexams is bad, imagine what a quagmire post grant review would be, and Crouch seems to favor it.

    “blah, blah do you have a cite for this”

    Looks like the same dusty old trolls skulking around here ~ no big surprise.

  5. “there was no substantial new question of patentability (SNQ”

    That ignores 112 and 101 concerns. And with Bilski and written desc. on the prowl that reasonable person might think 2x.

    “I would go on to explain how a reasonable person can also infer that most patents are more valid than those that undergo reexam”

    How much more valid, exactly, would a reasonable person infer? A mere scintilla? A whole scintilla? More than a mere scintilla? More than a whole scintilla? A little bit? More than a little bit? A bit? More than a bit? A big bit? More than a big bit? A amount? More than an amount?

    Do you know this reasonable person on a first name basis or are you hearing this third hand? Perhaps at the CLE?

    Let me ask you broje, if I were to get a random list of recently issued patents from Aaron over at 1201 and do an in-depth validity review (with the help of the community here perhaps) how many would you accept as a reasonable sample size to determine what the invalidity rate really is with a reasonable degree of certainty?

  6. “A 12% affirmance rate is pathetic, no matter how you cut it.”
    Not really when higher ups make it in-your-face clear that your only downside risk career-wise is on the allowance/affirmance side of the equation. The PTO mgt. must have been celebrating all over Georgetown the night their crack squad knocked out that Method of Swinging on a Swing patent. woohoo! Bet there are a bunch of those easy ones in the stats.

  7. **********Mal Cum Loony said: “Do you have a cite for this?”********

    I attended a CLE on the subject recently. I would not expect you to have ever attended one of those. Do you know what a CLE is?

    I would go on to explain how a reasonable person can also infer that most patents are more valid than those that undergo reexam. For example, many patents are not reexamined because there was no substantial new question of patentability (SNQ), either in the opinion of the Examiner (who then denied the request) or in the opinion of the anonymous infringer (who then decided not to file a request). However, the glare from your tin foil hat is giving me a migraine.

    Given your lack of capacity for logical reasoning, and your aptitude for witty zingers, I suggest you pursue a career in comedy. I think you will find it highly rewarding taking pot shots at easy targets like Sarah Palin. You are wasting your talent here at Patently O.

  8. Actually I found the cite myself:

    link to patentlyo.com

    This is a good blog. I should read it sometime. ;)

    You are correct that most ex parte reexams are initiated by a third party. But I am not sure why you consider the involvement of a third party in an inter partes re-exam a “coincidence.”

  9. “Do you have a cite for this?”

    Translation: I have nothing witty to gratuitously add, but I am compelled by my train wreck nature to post something.

  10. broje “ex parte reexams usually occur when an infringer wants to try and avoid damages by forcing amendment of claims in a patent not yet asserted against it.”

    Tell me more. Do you have a cite for this?

  11. ******”I’m not sure what you’re referring to. My point is that the PTO issues invalid patents all the time and is forced to recognize that fact when it is brought to the PTO’s attention in a forthright manner (i.e., by a third party with an interest in the patent’s demise).”*******

    I find it saddening, but not surprising, that you think that the difference in the percentages in invalidity of patents that are reexamined inter partes versus ex partes is predominately a result of the participation of a third party.

    Much more likely, the participation of the third party is a symptom coincident with patents that are being actively litigated. In contrast, ex parte reexams usually occur when an infringer wants to try and avoid damages by forcing amendment of claims in a patent not yet asserted against it.

    This distinction is important in that the inter partes reexam participant has initiated the reexam because that it has concluded that there is a strong invalidity argument and that it is the better course of action over settling the suit. In contrast, the anonymous, ex parte reexam non-participant has initiated the ex parte reexam because it is the only option available, and is worth taking a shot in the dark.

    In other words, the inter partes reexams occur when there is a strong invalidity argument available, while the strength of the invalidity argument tends to be be more variable in ex parte reexams. The result is that invalidity occurs much more often in the case of inter partes reexams than in the case of ex parte reexams. That result is not a product of participation of a third party. The participation of the third party is just a coincidence.

  12. crystal “we can properly project statistics from inter partes reexams onto all extant issued patents.”

    I’m not sure what you’re referring to. My point is that the PTO issues invalid patents all the time and is forced to recognize that fact when it is brought to the PTO’s attention in a forthright manner (i.e., by a third party with an interest in the patent’s demise).

    It’s just too bad it takes so much time and money to accomplish that goal. And most of that time, of course, is spent debunking the bullcrap floated by the patent owner in defense of its garbage patent.

    A 12% affirmance rate is pathetic, no matter how you cut it.

  13. crystalchity “More likely that the inter partes reexams represent the “wading pool” section of the patent pool when it comes to invalidity arguments.”

    Really? What makes you say that?

  14. “all the wrongfully denied applications”

    One of you sunners should start a blog and document all of those “wrongfully denied applications.” I bet it would be really popular and would strengthen your, uh, movement.

  15. ***********”‘If what you say is true, then why is it that when you take ex parte rexams and inter partes reexams together, 90% still survive with at least one claim?’

    LOL. What do ex parte re-exams have to do with anything?”***********

    Malocom, for a reply to your question, please see crystalcityconcreteworld’s comment above. It’s probably over your head, so I suggest you take off your tin foil hat for a better chance of finding it.

  16. “This makes sense, given the selection error, and the fact that roughly half of the patents that are allowed each week are invalid for one reason or another.”
    Oh, I see, we can properly project statistics from inter partes reexams onto all extant issued patents. More likely that the inter partes reexams represent the “wading pool” section of the patent pool when it comes to invalidity arguments. Also, this statistical projection is on par with tin foil hat mindset that looks for examination “errors” exclusively in tentatively allowed applications while turning a blind eye to all the wrongfully denied applications. This is exactly why the PTO needs Kappos now; we need someone who can see the forest. Hopefully Godici also can do some good work in the short term as a consultant to the PTO.

  17. Confused SCOTUS, just think of George and Ira Gershwin: Summertime, and the livin’ is easy…

  18. Has anyone noticed a low output of patent cases from the Federal Circuit recently? Does this mean litigants are cuttin-back on appeals or litigation altogether?

  19. They have. They don’t want to issue an indefinite stay when they can decide validity right then and there.

  20. I wish the judges that refuse to stay trials pending reexam (are you listening EDTX?) would look at these statistics and reconsider the stay request…

  21. “If what you say is true, then why is it that when you take ex parte rexams and inter partes reexams together, 90% still survive with at least one claim?”

    LOL. What do ex parte re-exams have to do with anything?

  22. Malcolm says: “roughly half of the patents that are allowed each week are invalid for one reason or another.”

    If what you say is true, then why is it that when you take ex parte rexams and inter partes reexams together, 90% still survive with at least one claim?

  23. Malcolm says: “roughly half of the patents that are allowed each week are invalid for one reason or another.”

    Do you have any studies or reports (or objective facts of any kind) to support your statement?

  24. In comparing inter partes reexamination results [if one can even call what the PTO has done with most of them "results"] with ex parte reexamination results, one should logically subtract the inter partes reexaminations which were requested by the patent owner, rather than by an adverse party [as is the case with all inter partes reexamainations].
    Also, one must note that most of the small number of finally concluded inter partes reexaminations were those uncontested by the patent owner, which of course skews the results.

  25. “53% (10) changed the claimset in some fashion.”

    Diving into this part of the data is where the fun will be. IIRC, the patentee can not collect damages for the pendency of the IPRE if the claim to be enforced is amended during the IPRE. (Or is there a “substantially unchanged” wiggle room in that one?)

    So the money question is whether an enforceable, infringed claim survived untouched. Who cares if one claim gets trounced if there is at least one clean claim that can support damages for the three years you were fighting in the PTO.

    Come on DC, there are only ten of them to dig into. You can handle that . . . in the name of research, of course.

  26. “60% (44) cancel all the claims and only 12% (9) confirm all the original claims as patentable.”

    This makes sense, given the selection error, and the fact that roughly half of the patents that are allowed each week are invalid for one reason or another.

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