Defendants Still Filing More Reexam Requests Despite Dip in NHK-Fintiv Denials
August 24, 2022
A recent USPTO study reveals both a drop in discretionary denials based on the NHK-Fintiv rule and a rise in stipulations that allow defendants to avoid some aspects of NHK-Fintiv. That analysis nevertheless also indicates that, despite this lower chance of success, patent owners continue to raise the rule in a rising number of America Invents Act (AIA) reviews, doing so in 50.6% of AIA reviews that saw institution decisions in Q4 2021.
Given that remaining uncertainty, it is perhaps not surprising that some would-be petitioners have instead been filing increasingly more ex parte reexaminations instead of AIA reviews. Reexams are not subject to the same level of discretionary denials and offer a variety of other advantages compared to AIA reviews, such as lower cost and the lack of estoppel altogether—no stipulations required.
As shown below, parties filed 331 reexam requests in 2021, 53.2% more than they did the year prior—and that trend appears to be continuing in 2022. The second quarter saw 93 new requests for reexam, a 27.4% jump from Q2 2021. With that upswing in second-quarter filings, the first half of the year is 13.1% ahead of that same period in 2021. A rising share of the patents subject to reexam requests were also previously challenged through AIA reviews, reaching 38% in the first half of 2022, up from 36% in 2021, 33% in 2020, and 25% in 2019. Additionally, the share of patents with reexam requests that have also been asserted in parallel district court litigation also remains high, at 62% in the first half of the year—a slight dip from 2021’s 64%, but still higher than 2020’s 60% and 2019’s 52%.
This high degree of overlap with AIA reviews and district court litigation strongly suggests that the uptick in reexam requests is the result of the NHK-Fintiv rule discouraging defendants from filing AIA reviews.
For more on the Patent Trial and Appeal Board, NHK-Fintiv, and other key litigation and marketplace trends, see RPX’s report on the second quarter.
