Reexams More Popular than Ever in 1H 2024

Ongoing uncertainty over discretionary denials at the Patent Trial and Appeal Board (PTAB) has apparently continued to discourage some defendants from filing America Invents Act (AIA) reviews. With institution in AIA review trials perceived as less predictable as a result of the NHK-Fintiv rule, those defendants have increasingly gravitated toward ex parte reexaminations, which are not subject to such denials to the same extent as AIA reviews.

Ex parte reexam filings first began to rise in response to the initial uncertainty triggered by the NHK-Fintiv rule: The number of such requests went up by 21% in 2020 and then by 53% in 2021, peaking that year. Since then, yearly reexam filings have held steady, remaining around 330 requests for each of in 2022 and 2023 (with the latter standing out as the second-highest filing year of the past decade).

Reexam filings so far this year suggest that 2024 could be an even busier year. Filings spiked in Q1, which saw 40% more reexam requests than that same quarter one year prior. The increase was smaller but still substantial for the second quarter, which saw 27% more requests than Q2 2023—with the total number of requests brought in the first half of the year 33% greater than that same period last year. The share of patents subject to reexam requests that were also previously challenged at the PTAB has also continued to fall, from 36% in 2021 to 24% in 2023 and to 21% in the first half of 2024. Meanwhile, the share of those reexam patents also litigated in district court has held steady since 2022. This all suggests that defendants have been relying less on the PTAB as uncertainty over discretionary denials persists, and that reexams have remained a frequently utilized defensive tool as a result.

See RPX’s second-quarter review for more on the PTAB, including a Supreme Court decision that could cause significant setbacks for the USPTO’s ongoing efforts to reshape discretionary denials through rulemaking.