USPTO statistics demonstrate that Patent Owner’s fair much better in ex parte patent reexamination as opposed to inter partes patent reexamination. Current statistics indicate that all claims are canceled in patents subject to ex parte reexamination in 12% of cases, while the same statistic stands at 49% for patents subject to inter partes reexamination.
Of course, the number of concluded inter partes reexamination as compared to ex parte reexamination is still relatively small, likely skewing the statistics. Yet, it is quite clear that eliminating the active voice of the third party requester, as well as avoiding third party appeal of confirmed/allowed claims is highly desirable from a Patent Owner perspective.
Knowing that ex parte patent reexamination presents the most favorable odds to a Patent Owner, is there a preemptive strategy a patent owner can employ to diffuse the risk of inter partes patent reexamination?
In deciding to grant or deny a request for reexamination, the USPTO analyzes the proposed Substantial New Questions of Patentability (SNQs) presented with respect to previously considered art of the original prosecution, as well as concluded/ongoing reexamination proceedings. Where an earlier initiated ex parte reexamination includes the same, or cumulative art, a later request for inter partes reexamination that is based on such art and presented in the same light, must be denied MPEP 2642. Thus, by “front loading” prior art in a patent owner initiated ex parte reexamination request the opportunity to seek inter partes reexamination based on the same art may be foreclosed to a third party.
For example, Forecast Consoles filed an April 2005 request for ex parte reexamination of its own patent (U.S. Patent No. 6,857,712) which the USPTO assigned Reexamination Control No. 90/007,706. An SNQ was established based on a Catta patent and an Evan printed publication. Subsequently, in August 2005, third party requester TBC sought inter partes reexamination of this same patent. In addition to the Catta patent and the Evan publication used to establish an SNQ for the independent patent claims, other references were included to establish an SNQ, however, these other references were only used in connection with dependent claims.
In Reexamination Control No. 95/000,106 the USPTO did not order inter partes reexamination, finding that because the Catta and Evans references were used as the basis for an SNQ in the ex parte reexamination filed by the patent owner (i.e., presented in the same light), they could not be used as a basis for an SNQ by the third party requester against the independent claims in the IPR proceedings. Furthermore, TBC’s failure to raise an SNQ against the independent claims prevented them from presenting an SNQ against the dependent claims, although additional prior art was used with Catta and Evans against the dependent claims.
Subsequently, the ex parte reexamination proceeding terminated with all original patent claims confirmed; resulting in a true victory for Forest Consoles in preempting TBC’s inter partes reexamination efforts.
To be sure, a preemptive ex parte reexamination filing by a Patent Owner is a bold step, unlikely in many concurrent litigation contexts. Still, the lesson to be learned for third parties is to initiate inter partes reexamination promptly, especially in highly specialized technologies that have a limited universe of available prior art.