Ex Parte Reexams Surged in the Third Quarter
October 23, 2024
The Patent Trial and Appeal Board’s (PTAB’s) practice of issuing discretionary denials under the NHK-Fintiv rule has led to some uncertainty in recent years, from litigation challenging the rule’s implementation as procedurally deficient, to the USPTO’s ongoing efforts to reform the practice via formal rulemaking, and now potential regulatory challenges to those rulemaking proposals in the wake of the Supreme Court’s decision to end Chevron deference in Loper Bright Enterprises v. Raimondo.
One development that is likely the result of this prolonged uncertainty is an increase in ex parte reexaminations. Among other potential advantages, ex parte reexams are not subject to discretionary denials to the same extent as inter partes reviews and do not trigger estoppel.
The number of requests for ex parte reexam went up by 21% in 2020 and then by 53% in 2021, peaking that year. Since then, reexam filings have held steady at roughly 330 requests per year in 2022 and 2023.
The data for Q1-Q3 2024 indicate that this year may substantially outpace both 2022 and 2023, as the total to date has already reached 308 reexam requests filed. Q3, in particular, was significantly higher than the last five third quarters, exceeding Q3 of last year by 62%. The share of patents with reexam requests that have also been challenged at the PTAB continues to fall, reaching just 22% in 2024 so far—further indicating a shift away from IPR. Additionally, 54% of patents with reexam requests have also been litigated in district court, though this marks a drop from 2023 (when that overlap was 61%).
For more on the PTAB and other key developments impacting patent litigation, see RPX’s third-quarter review.
