Reexams Surged in 2024 as NHK-Fintiv Faces Uncertainty in the New Year
January 29, 2025
A cloud of uncertainty surrounds the PTAB’s discretionary denial practices under the NHK-Fintiv rule in the new year, between potential policy changes on the horizon due to the presidential transition and an ongoing legal challenge. One result of that uncertainty is that frequent defendants seeking to challenge validity have increasingly relied upon ex partereexaminations, which among other advantages are not subject to discretionary denials to the same extent as America Invents Act reviews.
The number of requests for ex parte reexam went up by 21% in 2020 and then by 53% in 2021. While reexam filings then held steady at roughly 330 requests per year in 2022 and 2023, they climbed substantially in 2024—increasing by 26%. The share of patents with reexam requests that have also been challenged at the PTAB continues to fall, reaching just 20% in 2024—further indicating a shift away from IPR. In addition, 55% of patents with reexam requests have also been litigated in district court, though this marks a drop from 2023 (when that overlap was 61%).
See RPX’s fourth-quarter review for more on the PTAB and other trends that shaped patent litigation in Q4 and 2024.