Reexam Filings Up by 51%, Likely Due to NHK-Fintiv Rule

Kathi Vidal now appears likely to be confirmed as USPTO director following the Senate Judiciary Committee’s vote to send her nomination to the full Senate, potentially capping off more than a year during which the agency has lacked a permanent head. Vidal will take the reins as the Patent Trial and Appeal Board (PTAB) faces continued controversy over its use of discretion to deny institution in America Invents Act (AIA) reviews—most notably, through the NHK-Fintiv rule, which allows the Board to do so based on the status of parallel litigation. RPX data show that defendants have increasingly shifted toward ex parte reexamination as an apparent result of NHK-Fintiv, seeking a process for challenging patent validity free from the same level of discretion.

In fact, the filing of requests for reexam was up dramatically in 2021 compared to the year before: 326 such requests were brought last year, up 51% from 2020. Additionally, the share of those patents that have been previously asserted in district court also increased in 2021, accounting for 64% of the patents with reexam requests (up from 60% in 2020 and 52% in 2019). Furthermore, the share of patents facing reexam requests that were previously challenged via AIA review grew as well—reaching 36% last year, compared to 33% in 2020 and 25% in 2019. Taken together, these datapoints suggest that district court defendants are filing more ex parte reexams in response to NHK-Fintiv.

See RPX’s review of the fourth quarter and 2021 for more on the NHK-Fintiv rule, Kathi Vidal, and the PTAB, as well as a deep dive on other trends impacting patent litigation and the patent marketplace.