Reexam Filings Plateaued in Q1-Q3 2023

A recurring criticism of the Patent Trial and Appeal Board’s (PTAB’s) NHK-Fintiv rule is that it introduces undue uncertainty by conditioning institution on factors outside of a petitioner’s control. A notable early result of this uncertainty was a shift by frequent defendants from America Invents Act (AIA) reviews to ex parte reexaminations, which are not subject to discretionary denials to the same extent. The number of reexam requests went up by 21% in 2020 and then by 53% in 2021, with an increasing share of those patents having previously been litigated in district court and subjected to PTAB challenges—together, indicating that this prior uptick was the result of NHK-Fintiv.

However, discretionary denials began to fall in 2021, according to a USPTO study, and RPX data indicate that they have since remained lower in the wake of a June 2022 guidance designed to address criticisms of the NHK-Fintiv rule—including some changes that were later folded into a sweeping rulemaking proposal introduced in April 2023. As those changes began to reduce the impact of NHK-Fintiv, this in turn appears to have caused a corresponding decline in reexam filings. After one last spike in the second quarter of 2022, reexam requests dipped in Q3 (the first full quarter after Vidal’s late-Q2 guidance) and flattened out in Q4. Reexams then dropped even further in Q1 2023 and subsequently plateaued in Q2 and Q3. Year-to-date reexam filings are now 17% lower compared to Q1-Q3 2022. Moreover, the share of patents at issue in those reexam requests that have also been challenged at the PTAB continues to fall, falling from 33% in 2022 to 24% so far this year. That said, the number of patents that have been hit with reexam requests and also litigated in district court remains relatively steady at 61% so far this year (compared to 59% last year).

See RPX’s third-quarter review for more on the PTAB and other trends impacting patent litigation in Q3 and 2023 to date.