Ex Parte Reexam Requests Start to Dip as NHK-Fintiv Denials Decline
October 26, 2022
The Patent Trial and Appeal Board’s (PTAB’s) use of discretionary denials under the NHK-Fintiv rule has pushed some would-be petitioners to turn elsewhere to challenge patent validity over the past few years. One such result was an increase in ex parte reexaminations, which are not subject to the same level of discretion and offer a variety of other advantages compared to America Invents Act (AIA) reviews, such as lower cost and the lack of estoppel. Indeed, the number of reexam requests went up by 21% in 2020 and by 53% in 2021, with an increasing share of those patents having previously been litigated in district court and subjected to PTAB challenges.
Now, as discretionary denials appear to be declining, according to a recent USPTO study that accompanied the USPTO’s NHK-Fintiv guidance, additional data indicate that reexam requests have begun to drop as well. While quarterly filings peaked in Q2 2022 at 101 requests total, they fell to 67 in Q3, a dip of roughly one third compared to the prior quarter and a decline of 27% compared to Q3 2021. Data for the year to date also show that a decreasing share of patents subjected to reexam requests have previously been asserted in district court litigation (from 64% in 2021 to 59%), while the share of those patents also challenged in AIA reviews has gone down slightly as well.
See RPX’s third-quarter review for more on the PTAB, NHK-Fintiv, and other trends impacting patent litigation and the patent marketplace.
